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M/s. Johnson Appliances (P) Ltd. Vs. H.E. Industries and Others - Court Judgment

LegalCrystal Citation
CourtDelhi High Court
Decided On
Case NumberCS(OS) No. 816 of 2008
Judge
AppellantM/s. Johnson Appliances (P) Ltd.
RespondentH.E. Industries and Others
Excerpt:
trade and merchandise marks act, 1958 infringement of trademark plaintiff filed suit for infringement of registered trademark johnson, passing off, rendition of accounts, damages etc. against defendants - court held even if there is any delay, same is not taken in action of infringement of trademark even otherwise plaintiff is able to explain same and the court is satisfied with explanation given as there is cause of action in favour of plaintiff at time of filing of suit no cogent reason has been assigned by fourth defendant that suit lacks cause of action plaintiff has not been able to prove damages strictly as per law plaintiff is entitled for decree of permanent injunction in its favour and against defendants in terms of prayers (a) and (c) of plaint so far as prayer.....manmohan singh, j. 1. the plaintiff has filed the abovementioned suit for infringement of registered trademark "johnson", passing off, rendition of accounts, damages etc. against the defendants. 2. the plaintiff is a company existing under the indian laws. the plaint is signed by mr. rakesh jain who is one of the directors of the plaintiff-company who claims to be competent and authorized to sign and verify the present plaint and institute the suit on behalf of the plaintiff. the board resolution in favour of shri muni lal jain who is the father of shri rakesh jain has been exhibited as ex.pw-1/1. the averments made in the amended plaint and written statement have been reiterated in the deposition of the witnesses of the parties i.e. pw-1 and dw-1. in addition, only documents are.....
Judgment:

Manmohan Singh, J.

1. The plaintiff has filed the abovementioned suit for infringement of registered trademark "JOHNSON", passing off, rendition of accounts, damages etc. against the defendants.

2. The plaintiff is a Company existing under the Indian laws. The plaint is signed by Mr. Rakesh Jain who is one of the Directors of the plaintiff-Company who claims to be competent and authorized to sign and verify the present plaint and institute the suit on behalf of the plaintiff. The Board Resolution in favour of Shri Muni Lal Jain who is the father of Shri Rakesh Jain has been exhibited as Ex.PW-1/1. The averments made in the amended plaint and written statement have been reiterated in the deposition of the witnesses of the parties i.e. PW-1 and DW-1. In addition, only documents are exhibited/ mentioned in their respective affidavits which are filed by both the parties as evidence.

3. The defendant Nos.1 and 2 are engaged in the manufacturing of the electric water heaters (excluding the instant type geysers) under the mark "JOHNSON" which are being marketed by the defendant Nos. 3 and 4. Defendant No.5 is one of the distributors of defendant No.3. Defendant No.3 claims to be the licensed user of the mark JOHNSON in relation to the aforesaid goods by virtue of an alleged exclusive License/Permitted User Agreement dated 27th May, 2006 executed in its favour by defendant No.4 M/s Johnson Enterprises, who in turn claims to have acquired the rights in the said mark by virtue of an Assignment Deed dated 1st April, 1999 from M/s. Classic Equipments Pvt. Ltd. A copy of the exclusive License/Permitted User Agreement dated 27th May, 2006 entered into between defendant Nos. 3 and 4 has been exhibited as Ex.P-4.

4. The present suit relates to the use of the mark "JOHNSON'' by the defendants in relation to electric water heaters (excluding the instant type geysers). The trademark "JOHNSON" was originally adopted by and registered in the name of M/s Jain Industries, predecessors-in-interest of the plaintiff-Company in the year 1960. On 14th September, 1960, the mark "JOHNSON" was registered in the name of plaintiff's predecessor in respect of Hot Plates, Toasters and Water Boilers. The details of the said registration are as under:

Registration No. 197998-B

Date of Registration 14.09.1960

Registrant Shri Chain Lal Jain and Shri Muni Lal Jain trading as Jain Industries Class 11

Goods Hot Plates, Toasters and Water Boilers

Copy of the said Registration Certificate has been exhibited as Ex.PW-1/D1.

5. M/s Jain Industries was originally a partnership firm consisting of two partners, Sh. Chain Lal Jain and Sh. Muni Lal Jain. Subsequently, two more partners were included in the partnership firm namely Sh. Satish Kumar Jain and Sh. Subhash Chand Jain. The said firm was dissolved on 1st April, 1967 by virtue of Dissolution Deed dated 1st April, 1967 whereby the fourth partner Sh. Subhash Chand withdrew from the said firm.

6. On the same date i.e. 1st April, 1967, a new partnership was constituted with 3 partners. Sh. Chain Lal Jain, Sh. Muni Lal Jain and Sh. Satish Kr. Jain. Sh. Chain Lal Jain was the father of Sh. Muni Lal Jain and Sh. Satish Kr. Jain. The said firm continued its business under the mark "JOHNSON" in respect of electric water heaters and hot plates etc. A copy of the Partnership Deed dated 1 st April, 1967 which was admitted by the contesting defendant No.4 has been exhibited as Ex.P-5.

7. By Trust Deed dated 26th June, 1979, a Trust by the name of M/s Jain Youngsters Trust was constituted. A copy of the Trust Deed dated 26th June, 1979 as admitted by defendant No.4 has been exhibited as Ex.P-6. The said Trust took over the running business of M/s Jain Industries and by a Deed of Assignment dated 22nd September, 1979, wherein, the trademark "JOHNSON" registered in 3 different classes namely Class 9, 11 and 21 along with the pending applications namely 319954 in class 9, 319955 in class 11, and 319953 in class 21 for wider specification of goods in the aforementioned classes was assigned to Jain Youngsters Trust. Copy of the Deed of Assignment dated 22nd December, 1979, which was admitted by defendant No.4 has been exhibited as Ex.P-7. The relevant details of the mark "JOHNSON" forming part of this assignment have been set out as under:-

MarkRegn.No.ClassGoods
Johnson197997 B9Electric Flat Irons
Johnson197998 B11Hot Plates, Toasters and Water Boilers
Johnson19535921Frying Pan, Jug and Jar (Domestic Utensils not of precious metals nor coated therewith) not included in other classes

8. It is deposed in the affidavit of PW-1 that the actual manufacturing and marketing of the products bearing the mark "JOHNSON" was to be done by M/s Jain Industries. M/s Jain Youngsters Trust, thereafter by letter dated 21st March, 1979, gave the statement to the Trade Mark Registry that the application made by M/s Jain Industries bearing No. 319955 in class 11 for wider specification of goods as and when gets registered would be associated with the mark "JOHNSON" bearing Registration No. 197998 B in class 11. The original letter dated 21st March, 1979 addressed to the Trade Mark Registry by M/s. Delhi Registration Service on behalf of M/s. Jain Industries has been exhibited as Ex.PW-1/3. The copy of the Registration Certificate pertaining to the mark "JOHNSON" bearing Registration No. 319955 has been exhibited as Ex.PW-1/D2.

9. By Trust Deed dated 8th June, 1984, M/s C.L. Jain Trust was constituted with all the then family members of the Jain family as the beneficiaries and Sh. Chain Lal Jain, Smt. Lajwanti Jain, and Sh. Muni Lal Jain as the Trustees. A copy of the said Trust Deed which stands admitted by defendant No.4, has been exhibited as Ex.P-8. Subsequently, vide Deed of Assignment dated 1st July, 1984, M/s Jain Youngsters Trust assigned the trademark "JOHNSON" registered in 3 different classes namely Class 9, 11 and 21 along with the pending applications namely 398343 in class 7, 319954, 398341 and 390169 in class 9, 398342 in class 11 and 319953 in class 21 for wider specification of goods in the respective class to M/s C.L.Jain Trust. A copy of the said Deed of Assignment has been exhibited as Ex.P-9.

10. The relevant details of the mark "JOHNSON" forming part of this assignment have been set out as under:-

MarkRegn.No.ClassGoods
Johnson197997 B9Electric Flat Irons
Johnson197998 B11Hot Plates, Toasters and Water Boilers
Johnson31995511Hot Plates (electric), Toasters (electric), Water Boilers, Hot Cases, Cooking Range and Baking Ovens
Johnson19535921Frying Pan, Jug and Jar (Domestic Utensils not of precious metals, nor coated therewith) not included in other classes.

11. By Deed of Assignment dated 5th October, 1987, M/s C.L. Jain Trust assigned the trademark "JOHNSON" registered in 3 different classes namely Class 9, 11 and 21 along with the pending applications namely 398343 in class 7, 319954, 398341 and 390169 in class 9, 398343 in class 11 and 319953 in class 21 for wider specification of goods in the respective classes to M/s Johnson Sales (India) which was a partnership firm of Sh. Subhash Chand Jain S/o Sh. Chain Lal Jain, Smt. Gunmala Jain wife of Sh. Muni Lal Jain and Smt. Shashi Jain wife of Sh. Vinod Kr. Jain. A copy of the said Deed of Assignment which stands admitted by defendant No.4 has been exhibited as Ex.P-10.

12. The relevant details of the trademark "JOHNSON" forming part of this assignment have been set out here as under:

MarkRegn.No.ClassGoods
Johnson197997 B9Electric Flat Irons
Johnson197998 B11Hot Plates, Toasters and Water Boilers
Johnson31995511Hot Plates (electric), Toasters (electric), Water Boilers, Hot Cases, Cooking Range and Baking Ovens
Johnson19535921Frying Pan, Jug and Jar (Domestic Utensils not of precious metals, nor coated therewith) not included in other classes.

13. By Agreement dated 2nd April, 1992, M/s Classic Equipments Pvt. Ltd. (a company promoted by the members of the Jain family) took over the business of M/s Johnson Sales India, the partnership firm, along with all its assets and liabilities. M/s Classic Equipments Pvt. Ltd. thus became the proprietor of the trademark "JOHNSON" registered in 3 different classes namely Class 9, 11 and 21 along with the pending applications namely 398343 in class 7, 319954, 398341 and 390169 in class 9, 398342 in class 11, and 319953 in class 21 for wider specification of goods in the respective classes. A copy of the said Agreement has been exhibited as Ex. P-2.

14. By Deed of Assignment dated 9th March, 1994, the trademark "JOHNSON" in relation to electric storage type water heaters (excluding the instant type geysers) covered under Registration No.197998-B in class 11 was assigned in favour of one M/s Vidyut Udyog by M/s Classic Equipments Pvt. Ltd. The said M/s Vidyut Udyog was a partnership firm consisting of Sh. Sunil Jain S/o Sh. Subhash Chand Jain, Sh. Sameer Jain S/o Sh. Subhash Chand Jain and Sh. Amit Jain S/o Sh. Satish Jain. A copy of the said Deed of Assignment has been exhibited as Ex. PW-1/D4. The said document was initially objected by the defendants but later, as recorded in the judgment dated 25th March, 2010, the dispute qua this document was given up by the defendants.

15. On the same date i.e. 9th March, 1994 another Assignment Deed was entered into between M/s Classic Equipments Pvt. Ltd and M/s Jain Associates by which M/s Classic Equipments Pvt. Ltd. assigned the trademark "JOHNSON" in relation to Electric Coil Stoves, Electric Hot Plates and Electrical Cooking Ranges covered under Registration No. 319955 in class 11 in favour of one M/s Jain Associates, a partnership firm. The copy of the said Assignment Deed which stands admitted by defendant No.4 has been exhibited as Ex.P-1.

16. It is deposed in the affidavit of PW-1 that both these Assignment Deeds as mentioned above were drafted and prepared by M/s Delhi Registration Service, the Trade Mark Attorneys, who are also representing the defendant No.4-Company in the present suit. In fact, M/s Delhi Registration Service has also drafted and prepared various other assignment deeds which are already on record, namely:

(i) Deed of Assignment dated 1 st July, 1984 entered into between M/s Jain Youngsters Trust and M/s C.L. Jain Trust.

(ii) Deed of Assignment dated 5 th October, 1987 entered into between M/s C.L. Jain Trust and M/s Johnson Sales (India).

(iii) Deed of Assignment dated 9 th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog.

(iv) Deed of Assignment dated 1 st April, 1999 entered into between M/s Johnson Enterprises and M/s Classic Equipments Pvt. Ltd.

17. After having received the original Assignment Deeds entered into between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog and M/s Classic Equipments Pvt. Ltd and M/s Jain Associates dated 9 th March, 1994 from M/s Delhi Registration Service the same were duly signed and witnessed in the presence of PW-1. One such duly signed and witnessed copy of each Assignment Deed was retained by M/s Classic Equipments Pvt. Ltd for official records and the original deeds were handed over to M/s Delhi Registration Service for taking further steps/actions so as to give effect to these assignments. PW-1, Sh. Muni Lal Jain, who is one of the directors of the plaintiff-Company, stated in his evidence that subsequently it was discovered that the name of the assignee on the last page of both the said assignment deeds was typed as 'For Jain Associates through its partner Sh. Muni Lal Jain' whereas one of the said assignments in effect related to M/s Vidyut Udyog. This error was duly communicated to M/s Delhi Registration Service and necessary corrections were made in the copies of the said deeds retained by M/s Classic Equipments Pvt. Ltd. for official records.

18. Both these Assignment Deeds dated 9th March, 1994 were duly submitted to the Trade Mark Registry by M/s Delhi Registration Service. By letter dated 24th January, 1995, M/s Classic Equipments Pvt. Ltd. was informed by M/s Delhi Registration Service that the said assignments have been allowed by the Trade Mark Registry vide order No.PR-985 dated 20th January, 1995. The said original letter has been exhibited as Ex.PW-1/4.

19. By the said order, the mark "JOHNSON" bearing Registration No. 197998 B and 319955 in class 11 was split in the following manner:

MARKREGN.NO.CLASSGOODSPROPRIETOR
Johnson197998 B11Water Heaters (electric) (excluding the instant type geysers)M/s Vidyut Udyog
Johnson197998 B (split)11Hot Plates (electric), toastersM/s Classic Equipments
Johnson31995511Toasters (electric), Water Heaters (instant type geysers, Baking ovens)M/s Classic Equipments
Johnson319955 (split)11Hot Plates (electric) (coil stoves), Electric Cooking RangeM/s Jain Associates

The said original order No. PR/985 has been exhibited as Ex.PW-1/5. Further, a copy of Form TM-24 dated 17th May, 1995 filed by M/s. Vidyut Udyog before the Trade Mark Registry has been exhibited as Ex.PW-1/6.

20. The case of the plaintiff is that the question of forging or fabricating the original assignment deeds entered into between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog dated 9th March, 1994 does not arise as the original deed as well the copies thereof were duly signed and witnessed in the presence of PW-1 and after which the original deed was sent to M/s Delhi Registration Service for taking further actions in order to give effect to the said assignment.

21. After the split, the mark "JOHNSON" in relation to water heater (electric) (excluding the instant type geysers) became the proprietary of M/s Vidyut Udyog. It was subsequently affirmed again by the Trade Mark Registry vide order No. PR/25 dated 14th February, 1997. The said original order No.PR/25 has been exhibited as Ex.PW-1/7.

22. Subsequently to the execution of the Assignment Deed dated 9 th March, 1994, Form TM-16 dated 18th January, 1995 was filed on behalf of M/s Classic Equipments Pvt. Ltd. by M/s Delhi Registration Service, wherein a request was made to read the expression Electric storage type water heaters (excluding instant type geysers) that was used in the Assignment Deed dated 9th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog be read as Electric water heaters (excluding instant type geysers). A copy of the said form TM-16 which stands admitted by defendant No.4 has been exhibited as Ex.P-3.

23. Further, pursuant to the aforementioned Assignment Deed dated 9th March, 1994, M/s Classic Equipments Pvt. Ltd. made an application to the Trade Mark Registry vide Form TM-36 dated 17th May, 1995 through M/s Delhi Registration Service for striking out the goods i.e. Water Heaters (Electric) (excluding the instant type geysers) from the category of goods under their Registered Trademark No.197998 B in Class 11. A copy of the said Form TM-36 which stands admitted by defendant No.4 has been exhibited as Ex.P-21.

24. By order No. PR/25 dated 14th February, 1997, all the aforementioned requests made in Forms TM-16. TM-24 and TM-36 were allowed.

25. By Agreement dated 2nd April, 1997, M/s Johnson Appliances (P) Ltd, the plaintiff took over the business of M/s Vidyut Udyog along with all its assets and liabilities. Consequently, the trademark "JOHNSON" in relation to water heaters (electric) (excluding the instant type geysers) became the proprietary of the plaintiffCompany. The said original Agreement has been exhibited as Ex.PW- 1/8.

26. The plaintiff, thereafter had applied to the Registrar of Trade Marks for the recordal of its name as the subsequent proprietor of the mark "JOHNSON" in relation to the electric water heaters (excluding the instant type geysers). The Registrar of Trade Marks had issued Legal Proceedings Certificate on 26th September, 1997 recording the plaintiff as the proprietor of the mark "JOHNSON'" in relation to the aforesaid goods. A copy of the said Legal Proceeding Certificate in relation to the said Trade Mark Registration has been exhibited as Mark E.

27. The registration of the mark "JOHNSON" in relation to the aforementioned goods were renewed from time to time and the same is still valid and subsisting. However, when the said mark became due for renewal on 14th September, 2002, the plaintiff being not aware of the same for reasons beyond his control, could not take the necessary steps for the renewal of the said mark within the prescribed time. However, on coming to know about the same, the plaintiff immediately filed Form TM-13 for the renewal of the said mark but the same was disallowed by the Registrar vide order dated 15th September, 2004 as time barred. A copy of the said order has been exhibited as Ex.PW-1/9. The plaintiff, thereafter had filed an appeal in Intellectual Property Appellate Board (IPAB) against the Registrar's order which was set aside by the IPAB vide order dated 10th February, 2005. A copy of the appeal as preferred by the plaintiff before the IPAB against the Registrar s order dated 15th September, 2004 has been exhibited as Mark F.

A copy of the order dated 10th February, 2005 passed by the IPAB setting aside the Registrar s order has been exhibited as Ex.PW-1/10.

28. The plaintiff thereafter had filed afresh for the renewal of the said mark which has been duly renewed and is still subsisting. The original Renewal Certificate dated 14th March, 2007 has been exhibited as Ex.PW-1/11.

29. It is deposed in the affidavit of PW-1 that since 2nd April, 1997, the plaintiff is the sole and exclusive owner of the mark "JOHNSON" in relation to the electric water heaters (excluding instant type geysers). From the said date itself, the plaintiff and its permitted user (Johnson Sales (India), inside Jamna Mills, Clock Tower, Sabzi Mandi, Delhi-110007) have been manufacturing/trading the said products under the mark "JOHNSON" which are sold in various parts of the country through the plaintiff s dealers and distributors.

30. The sales figures of the plaintiff and its permitted user (Johnson (Sales) India) for the said products under the mark Johnson since the year 2001-2002 upto 2010-2011 are as under:- Statement of Sales-Plaintiff

PeriodSales Turnover (Rs.)
2001-20022,06,370
2002-200326,94,630
2003-2004-
2004-2005-
2005-200684,39,900
2006-200773,14,169
2007-20081,05,23,660
2008-20091,07,11,186
2009-201094,93,350
2010-201155,38,300

Statement of Sales- Johnson (Sales) India {Permitted User}

PeriodSales Turnover (Rs.)
2001-20021,49,37,364
2002-20031,87,00,398
2003-20041,40,43,860
2004-20051,23,09,119
2005-20061,70,80,720
2006-20071,83,03,479
2007-200885,14,685
2008-20092,49,565
2009-2010-
2010-2011-

Copies of the sales invoices of M/s Vidyut Udyog, the plaintiffCompany and its permitted user have been exhibited as Mark G (colly).

31. It is stated by the plaintiff that the plaintiff, over the years has extensively advertised the aforesaid mark in relation to the above mentioned goods which in turn have come to be associated exclusively with the plaintiff. Copies of the newspaper advertisements issued by the plaintiff-Company have been exhibited as Mark H (colly).

32. It is alleged that the trademark "JOHNSON" insofar as it relates to electric water heaters (excluding instant type geysers) belongs only to plaintiff and no one else. The disputes between M/s Classic Equipments Pvt. Ltd., M/s Blumac Electricals India and Sh. Vinod Kumar Jain or his business entities are not in any way related to the subject matter of the present suit which relates only to electric water heaters (excluding the instant type geysers).

33. It is submitted that an Assignment Deed dated 1st April, 1999 for the mark "JOHNSON" bearing Registration No. 197997 B in Class 9, 319955 in class 11 and 195359 in class 21 and also various pending applications at that time pertaining to the mark "JOHNSON" in various classes namely 398343 in class 7, 319954, 398341 and 390169 in class 9, 398342 in class 11 and 319953 in class 21 for wider specifications of goods in the respective classes was entered into between M/s Classic Equipments Pvt. Ltd. and defendant No.4 i.e. M/s Johnson Enterprises. The copy of the said Assignment Deed which stands admitted by defendant No.4 have been exhibited as Ex.P-11.

34. Both M/s Classic Equipments Pvt. Ltd. and Sh. Vinod Kumar Jain, (proprietor of defendant No.4) in his individual capacity till 12th March, 1999 were part of the joint family business of the Jain family comprising of four families headed by four brothers, namely, Sh. Muni Lal Jain, Sh. Satish Kumar Jain, Sh. Subhash Chand Jain and Sh. Vinod Kumar Jain. However, due to certain differences and disputes among the respective four families, a Memorandum of Partition was entered into between four brothers on 12th March, 1999 which was to serve as the basis of the final family settlement. All the four brothers were signatories to the said Memorandum of Partition.

35. It is stated by the plaintiff that the Assignment Deed dated 1st April, 1999 was the result of and in consonance with the terms set out in the aforementioned Memorandum of Partition dated 12th March, 1999. However, the same did not relate to the trademark "JOHNSON" in relation to the products in question inasmuch as the rights of M/s Classic Equipments Pvt. Ltd. in the said mark in relation to the said products had ceased to exist by Assignment Deed dated 9 th March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog (which was taken over by the plaintiff-Company vide Agreement dated 2nd April, 1997, along with all its assets and liabilities). Insofar as the present case is concerned, it only deals with the trademark "JOHNSON" in relation to electric water heaters (excluding instant type water geysers), for which the plaintiff is the registered proprietor and exclusive owner. It is stated by PW-1 that the disputes pending qua the said Memorandum of Partition and the cases involving M/s Blumac Electricals India are not being explained by him as they are subject matter of other cases pending before this Court.

36. Even the Trade Mark Application No. 398342 in Class 11 under which the defendant No.4 is claiming rights qua electric geysers was abandoned by the said defendant long ago. Thus, no rights whatsoever can be claimed by the defendant No.4 on the basis of the same. The original letter dated 9th July, 1999, issued by Trademark Registry stating that the said mark has not been renewed, has been exhibited as Ex.PW-1/12.

37. The present case only deals with the trademark "JOHNSON" in relation to electric water heaters (excluding instant type geysers) for which the plaintiff is the registered proprietor and exclusive owner. The original pamphlet, price list, guarantee card etc. issued by the plaintiff have been exhibited as Ex.PW-1/13.

38. The alleged exclusive License/Permitted User Agreement dated 27th May, 2006 entered into between defendant Nos.3 and 4 does not relate to the mark "JOHNSON" in relation to electric water heaters (excluding the instant type geysers) inasmuch as vide the Deed of Assignment dated 9th March, 1994, the trademark "JOHNSON" in relation to electric storage type water heaters (excluding the instant geysers) was assigned by M/s Classic Equipments Pvt. Ltd. in favour of M/s Vidyut Udyog which was taken over by the plaintiff-Company by the Agreement dated 2nd April, 1997 along with all its assets and liabilities. The Assignment Deed dated 1st April, 1999 entered into between the M/s Classic Equipments Pvt. Ltd. and defendant No.4 did not relate to the trademark "JOHNSON" in relation to the products mentioned hereinabove.

39. It is stated by the plaintiff that the plaintiff is the registered owner of the mark "JOHNSON" in relation to the products mentioned hereinabove. The use of the mark "JOHNSON" by the defendants in relation to the said goods results in the infringement of the registered trademark which exclusively vests in the plaintiff. The use of the mark "JOHNSON" by the defendants in relation to the aforesaid goods also results in passing off their goods as those of the plaintiff.

40. The original pamphlet issued by defendant No.4 has been exhibited as Ex.P-16. Also a copy of the invoice raised by the defendant No.1 on defendant No.3 for JOHNSON water heaters has been placed on record and has been exhibited as Ex.P-17. Copies of the invoices raised by defendant No.5 for JOHNSON water heaters have been exhibited as Ex.P-18. Further, the original photograph of the carton of JOHNSON water geyser indicating defendant No.1 as its manufacturer which stands admitted by defendant No.4 and not marked. The original carton of JOHNSON water geyser indicating defendant No.2 as its manufacturer and defendant No.3 as its marketer and also the licensed user of defendant No.4 which stands admitted by the defendant No.4 has been exhibited as Ex.P-19.

41. It is submitted that the use by the defendants of the mark "JOHNSON" in relation to electric water heaters (excluding the instant type geysers) is completely illegal and unlawful. The defendants do not have any right in law to use the mark "JOHNSON" in relation to the aforesaid goods. The sole endeavour of the defendants is to encash and ride upon the goodwill and reputation earned by the plaintiff in the mark "JOHNSON" in relation to the abovementioned goods and on account of the defendant s irresponsible manner of conducting its business, the plaintiff has suffered and will continue to suffer irreparable damage to its reputation, business and goodwill unless the defendants are restrained by an order of injunction to be passed by this Court. The plaintiff has suffered huge losses by virtue of the said illegal use of the impugned mark by the defendants. Thus, the plaintiff has also been seeking for relief of damages against the defendants and for the purpose of computing the same, the plaintiff has relied upon the sales figure as given by defendant No.4. The defendant No.4 in its written statement is claiming to be using the impugned mark "JOHNSON" since the year 1999. A copy of the sales turnover as filed by the defendant No.4 has been exhibited as Ex.PW-1/14.

42. The plaintiff is claiming for damages to the tune of Rs. 35,42,504.67/- as well as punitive damages in view of the malafide and dishonest adoption and use of the impugned mark apart from seeking relief of passing off and permanent injunction in its favour.

43. The written statement on behalf of the defendant No.4 has been filed, wherein, inter alia, the following main defences are raised:-

(i) The plaintiff has claimed on the basis of the alleged Deed of Assignment dated 9th March, 1994, which itself is a fraudulent and doctored document. A comparison of the said documents filed by the plaintiff and photocopy filed by the defendant No.4 would show the manipulation committed by the plaintiff. In the original, the document was signed on behalf of one M/s Jain Associates. In the original, there has been no cutting in the page. Not only that, the plaintiff on the basis of this doctored document, procured the split Trade Mark registrations and orders from the Trade Mark Office. The entire proceedings before the Trade Mark office and the present suit proceedings are fraud and stands vitiated.

(ii) Assuming the said Assignment to be valid, it is submitted by the defendant No.4 that the aforesaid Assignment dated 9th March, 1994 to M/s Vidyut Udyog was only in relation to "electric storage type water heaters (excluding the instant type geysers)". On the other hand, the alleged rights given by M/s Vidyut Udyog to the plaintiff as per the plaintiff's own pleadings pertain to "Electric water heaters (excluding the instant type geysers)". There is a difference between these two kinds of goods. The first type pertains to "Hammams" while the second type pertain to "Heating Elements" like immersion rods etc. Thus, neither M/s Vidyut Udyog had rights in these heating elements nor could he have assigned the same. The hammams in which it allegedly had rights have not been assigned. In either case, the plaintiff has no rights at all.

(iii) Even assuming that the plaintiff's claimed goods i.e., "electric water heaters (excluding the instant type geysers)" are same as "electric storage type water heaters (excluding the instant type geysers)" even then both these goods do not include heating elements like immersion rods etc.. These products in the trade, market and consumer parlance and in local language are commonly referred to as a "hammam" or "boiling chamber" and were so understood by the parties and in reference to which they are so traded and bought. The hammam is a product which consists of a portable drum and is kept on the floor and is not mounted on the wall.

(iv) This product viz. hammam is different from geysers which are mounted, fixed and stationed on the walls. The term 'instant type geysers' refers to fixed or portable type geysers which are however not hammams. In a hammam, water is stored and then heated. While in a geyser water flows in from one inlet, then passes through an element and then flows out from another.

(v) These two set of products viz. hammams and geysers are different in their engineering, mode of use, the functions they perform, the prices involved etc., and are considered as different products in the market, trade and consumer parlance.

(vi) Under the alleged Assignment to the plaintiff, only hammams were assigned and not geysers. The expression "(excluding the instant type geysers)" was so incorporated in the plaintiff's alleged assignment as to limit and highlight that its assignment was intended only for hammams as they were portable while instant type geysers could be both portable and fixed and thus, a reference was so made to highlight and clarify that the plaintiff's claimed goods were only restricted to portable hammam.

44. In the alternative to the aforesaid, it has been submitted by the defendant No.4 as under:-

a) The defendant No.4 had acquired all the proprietary rights in its said trademark "JOHNSON" under a written Deed of Assignment dated 1st April, 1999 executed in its favour by M/s Classic Equipments Pvt. Ltd.

b)Under the said Deed of Assignment, the defendant No.4 was assigned the trademark "JOHNSON" registered at Nos. 195359, 197997B and 319955 as per the goods specified therein as also the pending trademark applications for a wider specification of goods being trademark application Nos. 398341 in class 9, 398342 in class 11, 398343 in class 7, 319954 in class 9 and 390169 in class 9.

c) As it is apparent from the Trade Mark under application No.398342 in class 11, electric geysers for hot water and heaters as well as parts and accessories besides a whole lot of other electrical items and fittings forming part of the same applications, have been assigned to the defendant No.4 besides the trademark registrations for the goods mentioned. These assigned goods includes water boilers.

45. It is further stated by the defendant No.4 that the plaintiff claims to have acquired its said trademark in relation to its claimed goods viz. electric water heaters or water heaters electric (excluding instant type water geysers) (hereinafter referred to as the "said goods") from one M/s Vidyut Udyog who in turn claims to have acquired the same by written Deed of Assignment dated 9th March, 1994 from M/s Classic Equipments Pvt. Ltd. On the other hand, the defendant No.4 has also acquired his said trademark in relation to its goods from M/s Classic Equipments Pvt. Ltd. Geysers formed part of the defendants' goods as per Deed of Assignment dated 1st April, 1999 and duly covered inter alia by its pending class 11 applications and the trademark registration from which it was so allotted to him. These geysers to the defendant No.4 are different from hammams and are so taken by the market, trade and in accordance with honest industrial and commercial matters and practices.

45.1 Ever since its assignment, the defendant No.4 has been using the said trademark "JOHNSON" continuously and commercially in the course of trade and as proprietor thereof in relation to have a wide range of its said goods including electric geysers, heaters, kettles, grinders, juices etc and falling inter alia in classes 7,9, 11 and 21. The defendant No.4, however, is not using the said trademark in relation to hammams.

45.2. The business carried on by the defendant No.4 under the said trademark since 1999 in relation to the defendants' said goods has been open and to the knowledge of all including the plaintiff as also to the deemed knowledge of the plaintiff.

45.3. The defendant No.4 has built up a valuable trade goodwill and reputation under its said trademark which duly identifies its goods from their source and origin. The goodwill and reputation built up by the said defendant is enduring and expanding.

45.4. The defendant No.4 has built up handsome sales under its said trademark as also has been spending enormous amount of its time, money and efforts on the publicity and promotion thereof on a continuous and regular basis through various means and modes. The defendants' said business under its said trademark is extensive and extends far and wide across the length and breadth of the country. The defendant No.4-Company has been carrying on its said goods and business by itself as also through its licensee being defendant No.3 and its suppliers/dealers being defendant Nos.1, 2 and 5.

46. In the written statement, it is also stated that it is a clear case of delay and acquiescence as the plaintiff was aware about the activities of the defendants since very long after the assignment deed referred by the plaintiff. The following reasons are also stated:-

(i) The entire business was a family business and the parties are all related to each other being all real brothers, their wives and their offspring. The Johnson Group consisted of the family of four real brothers at the relevant time namely, Sh. Muni Lal Jain, Sh. Satish Kumar Jain, Sh. Subhash Chand Jain and Sh. Vinod Kumar Jain.

(ii) Sh. Amit Jain is the son of Sh. Satish Kumar Jain while Sh. Rakesh Jain, one of the alleged Director of the plaintiffCompany and the plaintiff's signatory is the son of Sh. Muni Lal Jain.

Sh. Amit Jain was one of the Director in the plaintiffCompany in the year 1999 when the Deed of Assignment dated 1st April, 1999 was executed by M/s Classic Equipments Pvt. Ltd in favour of the plaintiff. Sh. Amit Jain is a witness to the said Deed of Assignment. Sh. Muni Lal Jain, father of Sh. Rakesh Jain is the other witness/signatory to the said Deed of Assignment. At that point of time, even Sh. Rakesh Jain was the Director in the plaintiff-Company.

(iii) Sh. Muni Lal Jain became the Director in M/s Classic Equipments Pvt. Ltd on 1 st April, 1999 when defendant No.4 had resigned from his directorship in the said Company.

The various assignments including the Assignments of 1st April, 1999 and 9th March, 1999 were executed due to family arrangements and all the parties were aware and known to each other.

Accordingly, the said assignments were so acted upon including as to the scope of the goods involved in the respective Assignment of 1st April, 1999 and the alleged Assignment dated 9th March, 1994 as also as to the meaning of the goods to be restricted to hammams in the Assignment of 9th March, 1994 as explained above.

47. The plaintiff was aware of the defendants' said rights and use from the year 1999 till date and has stood by it. The defendants have grown and prospered under the plaintiff's very nose who has never objected to the defendants' said use. It is only now that the plaintiff has preferred the present suit and that too on vague, false and frivolous allegations. As it is apparent from the said allegations, the plaintiff appears to be well aware of the Form TM-24 proceedings between the defendant No.4 and M/s Classic Equipments Pvt. Ltd as also the two suit proceedings between the defendant No.4 and M/s Blumac Electricals India. In these proceedings, the said defendant had pleaded its rights and use and even placed documentary evidence coupled with the fact that the parties are well known to each other.

48. The plaintiff has suppressed its knowledge and/or deemed knowledge of the defendants' use since the year 1999. The plaintiff has made a false statement with regard to cause of action. The fact is that the defendants' has been in its said goods and business since the year 1999. The plaintiff has deliberately made false statements to the effect that the Deed of Assignment dated 1st April, 1999 of the defendant No.4 had been stayed by this Court vide order dated 18th March, 2008 in WP(C) No. 2157/2008.

49. Thus, the plaintiff's suit is barred by the principles of limitation taken from the year 1999 when the defendant had received the Assignment dated 1st April, 1999. The said Assignment was well within the knowledge of the plaintiff having regard inter alia to the nature of the family business involved and the Directors and the witnesses involved as also the defendants' use of the said trademark "JOHNSON" continuously since then in the course of trade in relation to their goods.

50. The plaintiff had filed the replication wherein it has denied all the pleas raised by the defendant No.4 in its written statement. It has been stated as under:-

a) The plaintiff denies the allegation that the assignment and documents are fraudulent and doctored. It is stated that Sh. Muni Lal Jain, one of the Directors of the plaintiff-Company and also one of the Directors of M/s Classic Equipments Pvt. Ltd. has deposed in his affidavit dated 6th June, 2008 that on 9th March, 1994 apart from the Assignment Deed entered into between M/s Classic Equipments Pvt. Ltd. wherein the trademark "JOHNSON" was assigned to M/s Vidyut Udyog in relation to electric storage type water heaters (excluding the instant type geysers) covered under Registration No. 19799-B in class 11. There was another Assignment deed entered into between the M/s Classic Equipments Pvt. Ltd. and M/s Jain Associates vide which M/s Classic Equipments Pvt. Ltd. assigned the trademark "JOHNSON" in relation to electric coil stoves, electric hot plates and electrical cooking ranges covered under Registration No. 319955 in class 11 in favour of one M/s Jain Associates. It is further stated in his affidavit that both these Assignment Deeds mentioned above and also various other Assignment Deeds were drafted and prepared by M/s Delhi Registration Service. He has further stated that after having received the original Assignment Deeds entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog and M/s Classic Equipments Pvt. Ltd and M/s Jain Associates dated 9 th March, 1994 from M/s Delhi Registration Service along with the copies thereof, the same were duly signed and witnessed in his presence. One such duly signed and witnessed copy of each Assignment Deed was retained by M/s Classic Equipments Pvt. Ltd for official records and the original deeds were handed over to M/s Delhi Registration Service for taking further actions so as to give effect to these assignments in the Trade Marks Registry. He further stated that subsequently it was discovered that the name of assignee on last page of both the said assignment deeds was typed as 'For Jain Associates through its partner Sh. Muni Lal Jain', whereas one of the said Assignments in effect related to M/s Vidyut Udyog. This error was duly communicated to M/s Delhi Registration Service and necessary corrections were made in the copies of the said deeds retained by M/s Classic Equipments Pvt. Ltd for official records. He has also stated that both these Assignment Deeds dated 9 th March, 1994 were duly submitted to the Trade Mark Registry by M/s Delhi Registration Service and vide letter dated 24th January, 1995, M/s Classic Equipments Pvt. Ltd was informed by M/s Delhi Registration Service that the said assignments have been allowed by the Trade Mark Registry vide Order No.PR/985 dated 20th January, 1995. Accordingly, the question of forging or fabricating the original Assignment Deed entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog dated 9 th March, 1994 and obtaining the split Trade Mark Registrations and orders from the Trade Mark Registry on the basis of the same does not even arise as the original deed as well the copies thereof were duly signed and witnessed in the presence of Sh. Muni Lal Jain after which the original deed was sent to M/s Delhi Registration Service for taking further actions in order to give effect to the said assignment. The above facts establish that all the Assignments were well within the knowledge of the same Trade Mark Agents who were earlier acting on behalf of the entire Jain family and are now representing defendant No.4.

b) With regard to the second contention that the expression "Electric storage type water heaters (excluding instant type geysers)" has been used in the Assignment Deed dated 9th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog, is in fact hammam which is different from "Electric water heaters (excluding instant type geysers)" in which the plaintiff has no rights, it is submitted by the plaintiff that the defendant No.4 in fact has concocted this entire story and is trying to create an artificial distinction between Electric storage type water heaters (excluding instant type geysers) and Electric water heaters (excluding instant type geysers) and is in turn terming the former as "Hammams" with a view to mislead this Court. Further, in para 4 of the written statement, an attempt has been made to portray before this Court and to cast an impression that the expression "Electric Water Heater/Geyser" is confined and limited only to the instant type heaters/geysers. As it has been stated earlier, Electric Water Heaters/Geysers for the purposes of the present suit can broadly be classified in two categories, i.e. the instant type and excluding instant type or storage type. While the former is the one wherein the water is not required to be stored, in fact it gets heated instantly as and when it enters the heater/geyser and passes through the heating element before it exits the heater/geyser, the latter is the one wherein the water first gets stored and then gets heated. The fact that there is no distinction between the two expressions, namely Electric storage type water heaters (excluding instant type geysers) and Electric water heaters (excluding instant type geysers) is evident from the Form TM-16 dated 18th January,1995 that was filed on behalf of M/s Classic Equipments Pvt. Ltd by M/s Delhi Registration Service, wherein a request was made to read the expression Electric storage type water heaters (excluding instant type geysers) that was used in the Assignment Deed dated 9 th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog, as Electric water heaters (excluding instant type geysers). It is submitted that had there been any difference whatsoever between the aforementioned two expressions as alleged, the difference in wording in the Form TM-16 would not have occurred. The said two terms are in fact used and understood as being synonymous to each other. Be that as it may, it is submitted that, the nomenclature used by the defendant No.4 for its Geysers is also "Electric Storage Geyser". This is evident from page 49 of defendant's documents read with Page 26 of the said documents. The geyser in the defendant's brochure at page 26, bears the IS No. 2082 which also finds a mention at Pg 49 in relation to "Electric Storage Geyser". This being the case, one fails to understand as to by what stretch of imagination and on what basis the defendant No.4 is terming "Electric storage type water heaters" that has been used in the Assignment Deed dated 9th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog, as "Hammams" and distinguishing the same from Electric water heaters.

c) With regard to the submissions of the defendant No.4 in its written statement that the defendant No.4 had itself acquired rights in Trade Mark Application No. 398342 in class 11 qua Electric geysers by virtue of the Assignment Deed dated 1st April, 1999 entered into between M/s Classic Equipments Pvt. Ltd and defendant No. 4, it is submitted by the plaintiff that the present case only deals with the trademark "JOHNSON" in relation to electric water heaters (excluding instant type geysers), for which the plaintiff is the registered proprietor and exclusive owner. The aforesaid Assignment Deed did not relate to the trademark "JOHNSON" in relation to the products in question inasmuch as the rights of M/s Classic Equipments Pvt. Ltd. in the said mark in relation to the said products had ceased to exist vide Assignment Deed dated 9 th March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog which was taken over by the plaintiffcompany vide Agreement dated 2 nd April, 1997 along with all its assets and liabilities. In fact, pursuant to the aforementioned Assignment; M/s Classic Equipments Pvt. Ltd. made an application to the Trademark Registry vide Form TM-36 dated 17th May, 1995 through M/s Delhi Registration Service for striking out the goods i.e. Water Heaters (Electric) (excluding the instant type geysers) from the category of goods under their Registered Trademark No. 197998 B in Class 11. Accordingly, the defendant No. 4 cannot claim any statutory/common law rights in the trademark "JOHNSON" in relation to electric water heaters (excluding instant type geysers). Be that as it may, it is submitted that even the Trade Mark Application No. 398342 in class 11 under which the defendant No.4 is claiming rights qua electric geysers, was abandoned by the said defendant long ago. Accordingly, no rights whatsoever can be claimed by the said defendant on the basis of the same.

d) The plaintiff had also denied that the plaintiff has concealed/suppressed the knowledge of defendant No. 4. It is submitted that the plaintiff, in fact, has set out the entire background of the joint family business of Jain family, the Memorandum of Partition dated 12th March, 1999, the Deed of Assignment dated 1st April, 1999 and also the various legal disputes between M/s Classic Equipments Pvt. Ltd., M/s Blumac Electricals India and Sh. Vinod Kumar Jain or his business entities (defendant No. 4 being one of them) that are pending adjudication before this Court in para 17 to 20 of the plaint. It is denied by the plaintiff that the present suit has been with any vengeance to the legal disputes between M/s Classic Equipments Pvt Ltd., M/s Blumac Electricals India and Sh. Vinod Kumar Jain (proprietor of defendant No.4-Company) or it is a shadow of M/s Classic Equipments Pvt Ltd. and M/s Blumac Electricals India and the same has been filed to settle scores and open up another front against the defendant No.4. It is submitted that all these allegations are totally misplaced, misconceived and nothing but an exaggerated misconception of the defendant No.4. The said defendant having specifically and voluntarily agreed to the partition of the mark as stated in the plaint cannot now violate the said settlement both in letter and spirit. Insofar as the plaintiff is concerned, its business primarily depends on this particular product and hence, if the defendants use the same brand for the same product and sell in the market, it would completely erode the distinctiveness of the brand qua the plaintiff and would also completely wipe out its market as well.

e) It is also denied that the plaintiff has deliberately manipulated the array of defendants as the defendant Nos.1 and 2 are engaged in the manufacturing of the electric water heaters (excluding the instant type geysers) under the mark "JOHNSON" which are being marketed by defendant Nos. 3 and 4. Defendant No. 5 is one of the distributors of defendant No. 3 who claims to be the licensed user of the mark "JOHNSON" in relation to the aforesaid goods by virtue of an alleged exclusive License/Permitted User Agreement dated 27th May, 2006 executed in its favour by defendant No. 4. In view of the same, to say that the plaintiff has deliberately manipulated the array of defendants is nothing but an exaggerated misconception of the defendant. The very fact that the defendants have not filed any agreement to this effect on record itself speaks volumes of their conduct which is violative of all the statutory and common law rights vesting in favour of the plaintiff in respect of the mark "JOHNSON" in relation to water heaters (electric) (excluding the instant type geysers) and is causing grave injury/losses to the plaintiff whose running business is being severely impaired. The defendants have no right in law or equity over the mark "JOHNSON" in relation to the aforementioned goods. It is further submitted that the exclusive License/Permitted User Agreement dated 27 th May, 2006 entered into between defendants Nos.3 and 4 does not even relate to the mark "JOHNSON" in relation to electric water heaters, far less electric water heaters (excluding the instant type geysers).

f) It is submitted that the Assignment Deed dated 1st April, 1999 entered into between M/s Classic Equipments Pvt. Ltd and defendant No. 4 does not relate to the trademark "JOHNSON" in relation to the products in question inasmuch as the rights of M/s Classic Equipments Pvt. Ltd. in the said mark in relation to the said products had ceased to exist vide Assignment Deed dated 9th March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog which was taken over by the plaintiff-Company vide Agreement dated 2nd April, 1997 along with all its assets and liabilities. Accordingly, the defendant No. 4 cannot claim any statutory/common law rights in the trademark "JOHNSON" in relation to electric water heaters excluding instant type geysers.

g) It is denied that the plaintiff-Company has concealed/suppressed the knowledge of defendant No. 4 as alleged. In fact, the plaintiff has set out the entire background of the joint family business of Jain family, the Memorandum of Partition dated 12th March, 1999, the Deed of Assignment dated 1 st April, 1999 and also the various legal disputes between M/s Classic Equipments Pvt Ltd., M/s Blumac Electricals India and Sh. Vinod Kumar Jain or his business entities (defendant No. 4 being one of them) that are pending adjudication before this Court. It is further denied that the plaintiff has manipulated the cause of action as alleged. It is further denied that the plaintiff has misrepresented about the scope and extent of its alleged rights and has suppressed the defendant's rights and claims.

h) It is also denied that the defendants have any right in law to use the mark "JOHNSON" in relation to the goods in question. The defendants have no right in law or equity over the mark "JOHNSON" in relation to the aforementioned goods and are liable to be injuncted from using the mark "JOHNSON" in relation to water heaters (electric) (excluding the instant type geysers) in any manner whatsoever. The plaintiff has every right to protect its coveted intellectual property and the rights therein, and the same cannot be infringed/violated by the defendants with impunity who do not have any right in law to use the mark "JOHNSON" in relation to the aforesaid goods i.e. water heaters (electric) (excluding the instant type geysers). It is denied that the plaintiff has concealed the factum, cause and effect of the Form TM-16 dated 18th January, 1995 as alleged. The very purpose of filing the said Form TM -16 was merely to change the nomenclature of the goods and not to alter the specification/character/nature of the goods so assigned to M/s Vidyut Udyog vide Assignment Deed dated 9th March, 1994 as has been sought to be portrayed by defendant No. 4. It is reiterated that Sh. Vinod Kumar Jain, being part of the joint family business of the Jain Family comprising of four families headed by four brothers, namely, Sh. Muni Lal Jain, Sh. Satish Kumar Jain, Sh. Subhash Chand Jain, and Sh. Vinod Kumar Jain, till 12th March, 1999, when the Memorandum of Partition was entered into between four brothers, and also M/s Delhi Registration Service were very much aware of the factum of the said Form TM-16 since its inception. The said Form TM-16 was drafted and prepared by M/s Delhi Registration Service. Further, it was M/s Delhi Registration Service only who had sent the said form to the Registrar of Trademarks.

i) It is denied by the plaintiff in its replication that the present suit is barred by limitation. It is further denied that the plaintiff had the knowledge about the defendant's use of the impugned mark in relation to the products in issue since 1999 as alleged.

j) It is submitted that the plaintiff being the registered owner of the mark "JOHNSON" in relation to the products mentioned hereinabove, the use of the mark "JOHNSON" by the defendants in relation to the said goods results in the infringement of the registered trademark, which exclusively vests in the plaintiff. The use of the mark "JOHNSON" in relation to the aforesaid goods also results in passing off of the defendants' goods as that of the plaintiff. The use by the defendants of the mark "JOHNSON" in relation to water heaters (electric) (excluding the instant type geysers) is completely illegal and unlawful. The defendants do not have any right in law to use the mark "JOHNSON" in relation to the aforesaid goods. The sole endeavour of the defendants is to encash and ride upon the goodwill and reputation earned by the plaintiff in the mark JOHNSON in relation to the abovementioned goods.

k) It is denied that there is no cause of action for the present suit or that the same hasn't been disclosed. It is submitted that the plaintiff is the registered proprietor and exclusive owner of trademark "JOHNSON" bearing Registration No. 197998 B in relation to electric water heaters (excluding instant type geysers), in class 11. On the contrary, it is the defendants who do not have any right in law to use the mark "JOHNSON" in relation to the aforesaid goods.

51. From the pleadings, the following issues were framed in the matter on 29th September, 2011:-

1. Whether the plaintiff is the proprietor of the mark "JOHNSON" bearing Registration No.197998-B in relation to electric water heaters (excluding instant type geysers)? OPP

2. Whether there is any difference between the electric water heaters (excluding, instant type geysers) and electric storage type water heaters (excluding instant type geysers)? OPD-4

3. Whether the defendants are infringing the trademark "JOHNSON" of the plaintiff in respect of electric water heaters (excluding instant type geysers) if so, its effect? OPP

4. Whether the suit is not maintainable on account of delay/acquiescence on the part of the plaintiff? OPD

5. Whether the suit is without any cause of action? OPD

6. Whether the plaintiff is entitled to damages, if so to what amount? OPP

7. Relief.

52. Both the parties have led their evidence. The plaintiff had filed its evidence by way of affidavit of Sh. Muni Lal Jain as PW-1. The defendant No.4 had filed its evidence by way of affidavit of Sh. Vinod Kumar Jain as DW-1. The evidence was recorded by the Court Commissioner appointed by this Court.

53. In evidence, the following documents were exhibited by the plaintiff:-

S.No.Particulars
1.Ex.PW-1/1; Original Board Resolution dated 28th December, 2011
2.Ex.PW-1/D1; Copy of the Registration Certificate 197998 B for the mark "JOHNSON" in class 11.
3.Ex.P-5; A copy of the Partnership Deed dated 1st April, 1967 entered into between Sh. Chain Lal Jain and Sh. Muni Lal Jain and Sh. Satish Kr. Jain.
4.Ex.P-6; A copy of the Trust Deed dated 26th June, 1979 vide which M/s Jain Youngsters Trust was constituted.
5.Ex.P-7; A copy of the Deed of Assignment dated 22nd December, 1979 entered into between M/s Jain Industries and M/s Jain Youngsters Trust
6.Ex.PW-1/3; The original letter dated 21st March, 1979 addressed to the Trade Mark Registry by M/s Delhi Registration Service on behalf of M/s Jain Industries
7.Ex.PW-1/D2; Copy of the Registration Certificate pertaining to the mark "JOHNSON" bearing Registration No.319955
8.Ex.P-8; A copy of the Trust Deed dated 8th June, 1984 vide which M/s C.L. Jain Trust was constituted.
9.Ex.P-9; A copy of the Deed of Assignment dated 1 st July, 1984 entered into between M/s Jain Youngsters Trust and M/s C.L. Jain Trust.
10.Ex.P-10; A copy of the Deed of Assignment dated 5 th October, 1987 entered into between M/s C.L. Jain Trust and M/s Johnson (Sales) India.
11.Ex.P-2; A copy of the Agreement dated 2nd April, 1992 entered into between M/s Johnson (Sales) India and M/s Classic Equipments Pvt. Ltd..
12.Ex.PW-1/D4; A Copy of the Deed of Assignment dated 9th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog.
13.Ex.P-1; The copy of the Assignment Deed dated 9 th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd. and M/s Jain Associates.
14.Ex.PW-1/4; Original letter dated 24th January, 1995 addressed to M/s Classic Equipments Pvt. Ltd. by M/s Delhi Registration Service.
15.Ex.PW-1/5; The original order No.PR/985 dated 20th January, 1995 passed by the Registrar of Trade Marks
16.Ex.PW-1/6; A copy of Form TM-24 dated 17th May, 1995 filed by M/s Vidyut Udyog before the Trade Mark Registry.
17.Ex.PW-1/7; The original order No.PR/25 dated 14th February, 1997 passed by the Registrar of Trade Marks
18.Ex.P-3; The copy of the Form TM-16 dated 18th January, 1995 filed by M/s Classic Equipments Pvt. Ltd.
19.Ex.P-21; The copy of the Form TM-36 dated 17th May, 1995 filed by M/s Classic Equipments Pvt. Ltd.
20.Ex.PW-1/8; The original Agreement dated 2nd April, 1997 entered into between M/s Vidyut Udyog and M/s Johnson Appliances Pvt. Ltd.
21.Mark E; A copy of the Legal Proceedings Certificate dated 26th September, 1997 issued by the Registrar of Trade Marks.
22.Ex.PW-1/9; A copy of the order dated 15th September, 2004 passed by the Registrar of Trade Marks.
23.Mark F; A copy of the Appeal as preferred by the plaintiff before the IPAB against the Registrar s order dated 15th September, 2004.
24.Ex.PW-1/10; A copy of the order dated 10th February, 2005 passed by the IPAB setting aside the Registrar s order.
25.Ex.PW-1/11; The original Renewal Certificate dated 14th March, 2007.
26.Mark G (Colly); Copies of sales invoices of M/s Vidyut Udyog, the plaintiff-Company and its permitted user.
27.Mark H (Colly); Copies of the newspaper advertisements issued by the plaintiff-Company.
28.Ex.P-11; Copy of the Assignment Deed dated 1st April, 1999 entered into between M/s Classic Equipments Pvt. Ltd. and defendant No.4 i.e. M/s Johnson Enterprises.
29.Ex.P-4; Copy of the exclusive License/Permitted User Agreement dated 27th May, 2006 entered into between defendant Nos. 3 and 4.
30.Ex.PW-1/12; The original letter dated 9th September, 1999 issued by Trademark Registry to M/s Classic Equipments Pvt. Ltd.
31.Ex.PW-1/13; The original pamphlet, price list, guarantee card, etc., issued by the plaintiff
32.Ex.P-16; The original pamphlet issued by defendant No.4.
33.Ex.P-17; Copy of the invoice raised by defendant No.1 on defendant No.3 for Johnson water heaters.
34.Ex.P-18; Copies of the invoices raised by defendant No.5 for Johnson water heaters.
35.Ex.P-20; Original photograph of the carton of Johnson water geyser indicating defendant No.1 as its manufacturer.
36.Ex.P-19; The original carton of Johnson water geyser indicating defendant No.2 as its manufacturer and defendant No.3 as its marketer and also the licensed user of defendant No.4.
37.Ex.PW-1/14; A copy of the sales turnover as filed by defendant No.4 on the court record.

54. I shall now discuss the matter issues wise. Issues No.1 to 3 are connected with each other, thus the same are taken up together

55. Mr. Bansal, learned counsel for the defendants in support of his submission has referred the pleadings, documents as well as the answers given by the PW-1 in his cross-examination to the question Nos. 18, 19, 65, 44-46, 69, 70, 71, 74, 75, 97, 102. He submits that PW-1 has clearly admitted in his cross-examination that water boilers are covered by both the Registrations i.e. 197998 and 319955. The water boilers can heat upto 100 degrees and generate steam, and the water heaters (storage type) will not heat upto the boiling point, consequently generating steam because there is a thermostat along with the cut off device provided in it. The Assignment dated 9th March, 1994 between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog was by splitting the category of water boilers and goods assigned were water boilers being technically known as water boilers . In the water heaters, thermostat and cut off devices are fitted and therefore in the said water heaters, temperature cannot rise beyond a particular level thus the steam will not be generated. The electric water heaters (storage type) cannot boil water and generate steam. The Deed of Assignment dated 1st April, 1999 was witnessed by the plaintiff s witness himself and has identified his own signatures at Point A . The various disputes pending between defendant No.4 and M/s Classic Equipments Pvt. Ltd. and M/s Blumac Electricals India and Deed of Assignment dated 1 st April, 1999 are not relevant for the present proceedings.

56. In his examination and cross examination, DW-1 has not denied the factual position that when M/s Classic Equipments Pvt. Ltd. became the proprietor of the mark "JOHNSON" in relation to the goods in question on 2nd April, 1992, there were two Assignment Deeds executed by M/s Classic Equipments Pvt. Ltd. wherein one Deed of Assignment had assigned the trademark "JOHNSON" in relation to electric storage type water heaters (excluding the instant type geysers) covered under Registration No.197998-B in class 11 in favour of one M/s Vidyut Udyog and another Deed of Assignment had assigned the trademark "JOHNSON" in relation to electric coil stoves, electric hot plates and electrical cooking ranges covered under Registration No. 319955 in class 11 in favour of one M/s Jain Associates. The Trade Mark Registry vide their order PR/985 dated 20th January, 1995 allowed both the assignments dated 9th March, 1994.

57. Consequently, the Registered Trade Mark No. 197998 B got split up into 197998 B in Class 11 and 197998 B (Spl.) and the Registered Trademark No. 319955 got split up into 319955 and 319955 (Spl.).

58. In view of the said split, the item "Water boiler" which was covered under both the applications i.e. 197998 B and 319955 got bifurcated into "Water Heaters (electric) (excluding the instant type geysers)" and "Water Heaters (instant type geysers)". While the former went to M/s. Vidyut Udyog under Registration No. 197998 B (which was subsequently taken over by the plaintiff), the latter remained with M/s Classic Equipments Pvt. Ltd. under the Registration No. 319955. M/s Delhi Registration Service vide letter dated 24th January, 1995 informed M/s Classic Equipments Pvt. Ltd. about the order dated 20th January, 1995 whereby both the Assignment Deeds dated 9th March, 1994 were allowed by the Trade Mark Registry.

59. Subsequent to the order PR/985, the requisite Form TM-24 and Form TM-36 were filed by M/s Vidyut Udyog pertaining to the Assignment Deed dated 9th March, 1994 in its favour and the said order was reaffirmed by the Trade Mark Registry vide its order PR-25 dated 14th February, 1997. As far as the further split in the mark 319955 in the aforementioned order is concerned, the same was done because of an Assignment Deed entered on the same date i.e. 9 th March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s Jain Associates pertaining to Electric Coil stoves, electric hot plates and electric cooking ranges. The most important fact of the matter is that the Trade Marks Attorney who were handling the matters on behalf of both the parties, are same. The relevant date is the date of assignment. On that date and for reasonable time, one has to see the conduct of the parties and how they have understood and perceived the written documents. Once the document is a written document, and is duly signed, different inference cannot be drawn and thus, the same has to be read as it is.

60. Either at the time of assignment or within the reasonable time, the defendant No.4 or its assignee never protested or raised any objection that one of the descriptions of goods i.e. water boilers was retained by M/s Classic Equipments Pvt. Ltd. or it has at any time come to the share of the defendant. It appears that later on when the defendant No.4 felt aggrieved; it started raising the objection that the two sets of goods i.e. water boilers and electric storage of type water heaters are different items. Even the Assignment Deeds were silent in this regard. The second mark i.e. 319955 assigned to defendant No.4 was the associated mark with the earlier registered mark.

61. The defendant No.4 is now trying to create the artificial distinction between electric storage type water heaters (excluding instant type geysers) and electric water heaters (excluding instant type geysers) and is in turn terming the former as Hammams . But they are used and understood as being synonymous in common market parlance.

62. It is evident from the print out of the screen shot taken from the website www.indiamart.com and also the printout filed by the defendant No.4 from the same website demonstrates the same electric water heaters/geysers. For the purpose of the present suit, it can broadly be classified in two categories i.e. the instant type and excluding instant type. While the former is the one in which the water is not required to be stored, in fact it gets heated instantly as and when it enters the heater/geyser and passes through the heating element before it exits the geyser/heater, the latter is the one wherein the water first gets stored and then gets heated.

63. The expression excluding instant type itself connotes the said product is storage type .

64. The nomenclature used by the defendant No.4 for their product is also Electric Storage Geyser who is in fact using the expression geyser and heater interchangeably. Even the nomenclature used in ISI Specification i.e. IS 2082 filed by the said defendant No.4 for the product in question is stationary storage type electric water heaters.

65. There is no distinction between the two expressions as evident from Form TM-16 dated 18th January, 1995 that was filed on behalf of M/s Classic Equipments Pvt. Ltd. by M/s Delhi Registration Service, wherein a request was made to read the expression electric storage type water heaters (excluding instant type geysers) that was used in the Assignment Deed dated 9th March, 1994 entered into between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog as Electric water heaters (excluding instant type geysers)

66. It is stated that had there been any difference whatsoever between the aforementioned two expressions as alleged, the difference in wording in the FormTM-16 would not have occurred.

67. The defendant No.4 without any valid reasons is trying to create confusion about another assignment as the present suit is not even remotely connected with the Assignment dated 1st April, 1999 entered into between M/s Classic Equipments Pvt. Ltd. and defendant No.4 and/or other legal proceedings between M/s Classic Equipments Pvt. Ltd., M/s Blumac Electricals India and Sh. Vinod Kumar Jain. The Deed of Assignment dated 1st April, 1999 did not even mention the trademark "JOHNSON" in relation to the product in question inasmuch as the rights of M/s Classic Equipments Pvt. Ltd. are concerned.

68. Subsequent to the Deed of Assignment dated 9th March 1994 between M/s Classis Equipments Pvt. Ltd. and M/s Vidyut Udyog made an application to the Trade Mark Registry vide Form TM-36 dated 17th May, 1995 through Delhi Registration Service for striking out the goods i.e. water heaters (electric) (excluding the instant type geysers) from the category of goods under their registered trademark No. 197998 B in class 11.

69. With regard to Trade Mark Application No. 398342 in class 11 under which the defendant No.4 is claiming rights qua electric geysers has been abandoned by the said defendant. The details of the same have been filed by the plaintiff in the replication in CS(OS) No.166/2004 which has been annexed as Annexure C.

70. The Application No.319955 was to be associated with Application No. 197998 B. Both these applications contained the item water boiler . Subsequent to the two Assignment Deeds dated 9 th March, 1994, these two applications were split by order No. PR/985 dated 20th January, 1995 passed by the Trade Mark Registry and hence, water boiler got split into storage type geysers and instant type geysers. Accordingly, in Assignment Deed dated 1st April, 1999, M/s Classic Equipments Pvt. Ltd. could have assigned instant type geysers to defendant No.4. The defendant cannot take shield under PR/414 dated 26th September, 1997 which has been passed on the basis of an incorrect statement.

71. It is the settled principle that the assignor cannot possibly transfer more rights than he himself has to the assignee. Reliance is placed on Thukral Mechanical Works v. P.M. Diesel Pvt. Ltd. (2009) 2 SCC 768. Even Section 44 of the Act reads as under:-

44. Assignability and transmissibility or associated trade marks. Associated trade marks shall be assignable and transmissible only as a whole and not separately, but, subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as separate trade marks.

72. Thus, it is clear that in relation to the Trade Mark Registration No. 319955, the said trademark was associated with trademark 197998. Further, Section 44 of the Trade Marks Act, 1999 mandates that the associated trademarks have to be assigned as a whole and not separately. Thus, in the present case, since the trademarks No. 197998 and 319955 are associated, by virtue of the Deed of Assignment dated 9th March, 1994, they were assigned together, which resulted in orders being PR/985 and PR/25 being issued by the Trade Mark Registry. With regard to the Trade Mark Application No. 398342, it is the plaintiff's submission that the trademark No. 398342 was abandoned and the same was confirmed by the letter dated 9th July, 1999 issued by the Trade Marks Registry.

73. The real fact is that the defendant No.4 has no rights in the mark "JOHNSON" inasmuch as it relates to the electric water heaters (excluding instant type geysers) and is further corroborated by the fact that the said defendant had on 2nd March, 2009 filed a fresh Trade Mark Application bearing No. 1791284 under class 11 for the stationary storage type electric water heaters amongst other items.

74. Admittedly, the defendant No.4 was aware of the assignment made in favour of M/s Vidyut Udyog by M/s Classic Equipments Pvt. Ltd. in 1994 and the said defendant was also aware of the takeover of M/s Vidyut Udyog by the plaintiff on 2nd April, 1997 inasmuch as the said defendant was one of the Directors in the plaintiff-Company at that point of time. The said defendant had resigned from the directorship of the plaintiff-Company on 1st October, 1997. Even after the assignment in favour of the said defendant dated 1st April, 1999 by which the said defendant is claiming rights for the goods in question, the said defendant did not take any action against the plaintiff.

75. Pertaining to the issue No.4, regarding the delay and acquiescence, it is the admitted position that the defendant No.4 enjoys rights for the mark "JOHNSON" for various other electric appliances. The sporadic instances of the use of the mark "JOHNSON" by the defendant No.4 in relation to the product in question never came to the knowledge of the plaintiff till December, 2006. Even the advertisement placed by the defendant No.4 pertaining to the product in question is of 2007.

76. The defendant No.4 has admitted that there are several parties which are manufacturing storage type water heaters for the said defendant and the defendant No. 4 is being paid royalty for the same by the defendant No.3 (licensed manufacturer) in India.

77. In evidence, the defendant No.4 has not been able to bring any additional evidence or witness to prove that the Assignment Deeds in question were not properly documented and their terms are not applicable. One can understand that by virtue of assignment, the defendant No.4 may have lost the description of goods i.e. electric geysers however, once the assignment is complete, the documents cannot be treated as invalid document. The terms are to be read in a simple manner.

78. This Court vide order dated 25th March, 2010 granted injunction to the plaintiff and imposed a cost of Rs.1 lakh on the defendant No.4. The said order was challenged by the defendant No.4 in FAO (OS) 461/2010 which has also been dismissed by this Court vide judgment dated 8th February, 2011. The review petition 149/2011 preferred by the defendant No.4 against the said order dated 8th February, 2011 has been dismissed on 23rd March, 2011. Even the Supreme Court was not inclined to interfere with the said order dated 8th February, 2011 and dismissed the SLP(C) No.16615- 16/2011 vide its order dated 5th August, 2011.

79. As far as the issue No.1 is concerned, the Legal Proceeding Certificate showing the name of plaintiff as the subsequent proprietor has been filed as Mark E. The defendant No.4 has denied the fact that the said registration is entered in the name of the plaintiff. On the face of the record, the plaintiff has been able to discharge the burden of issue No.1. Thus, the same is decided accordingly.

80. With regard to issue No.2, the defendant No.4 has failed to discharge its burden, and the same is decided against the defendant No.4. Issue No.3 is pertaining to infringement. As already held that the plaintiff is the proprietor of the trademark in relation to goods in question, the same description of items cannot be permitted to defendant No.4 otherwise, it would amount to infringement and passing off. Thus, the plaintiff succeeds in issue No.3 which is decided against the defendants.

81. Now, with regard to question of delay, defendants submit that they have been using the mark in question since the year 2006 and the present suit was filed after eight years and the plaintiff had the knowledge about the use, thus there is delay in bringing an action. Hence, the plaintiff is not entitled to discretionary relief of injunction. There is no clinching, cogent and clear evidence available on record to show that the plaintiff was definitely aware about such user.

82. The issue of delay and acquiescence has been considered by Courts in various matters. Some of them are referred to as under:

a) In the case of Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and others, 2004 (28) PTC 121, relevant para-5 of the said judgment reads as under:

5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.

b) In the case of Swarn Singh v. Usha Industries (India) and Anr., AIR 1986 Delhi 343 (DB) it was held as under:

There is then the question of delay. Learned counsel for the respondents had urged that the delay is fatal to the grant of an injunction. We are not so satisfied. A delay in the matter of seeking an injunction may be aground for refusing an injunction in certain circumstances. In the present case, we are dealing with a statutory right based on the provisions of the trade and Merchandise Marks Act, 1958. An exclusive right is granted by the registration to the holder of a registered trade mark. We do not think statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity ..

a) In the case of Hindustan Pencils Pvt. Ltd. v. M/s India Stationery Products Co., AIR 1990 DELHI 19, it was held as under:

29. If an action is taken by the registered owner and no interim injunction is granted, the effect is that goods bearing the infringing mark or spurious goods would continue to be sold in the market. After a number of years when the case is finally disposed of, after trial, and the plaintiff succeeds and gets a permanent injunction then, possibly, the plaintiff may also be compensated by his being awarded damages or an account of profits. In that sense the non-grant of the interim injunction would not, ultimately, prejudice the plaintiff for he may be compensated with payment of money but during this period when the defendant is allowed to continue to infringe the intellectual property it is the consumer or the purchaser who alone suffers and who ultimately cannot be compensated. Therefore, in order to curb the menace of manufacture, production and sale of spurious goods and the blatant violation of intellectual property it will be proper for the Court to take into consideration the interest of the general public. In this regard reference may usefully be made to the following observations of McCarthy at page 346, para 30.21, which deals with the protection of third parties:

"Some Courts also consider the necessity of protecting third parties. In trade mark infringement cases, "third parties" means the buying public. If the equities are closely balanced, the right of the public not to be deceived or confused may turn the scales in favour of a preliminary injunction."

30. It would appear to be difficult to accept hat relief of temporary injunction should not be granted, because of the delay on, the part of the plaintiff, even though the Court feels, at that point of time, that, ultimately permanent injunction will have to be granted.

31. Even though there may be some doubt as to whether laces or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff s rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. The defense of laces or inordinate delay is a defense in equity. Inequity both the parties mud's come to the Court with clean hands. An equitable defense can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else's right cannot clarify the continued misuse of the usurped right. It was observed by Romer, J. in the matter of an application brought be J. R. Parkington and Co. Ld., (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history. In other words, the equitable relief will be afforded only to that party who is not guilty of a fraud and whose conduct shows that, there had been, on his part, an honest concurrent user of the mark in question. If a party, for no apparent or a valid reason, adopts, with or without modifications, a mark belonging to another, whether registered or not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party was noting honest one. The Court would be justified in concluding that the defendant, in such an action, wanted to cash in on the plaintiffs name and reputation and that was the sole, primary or the real motive of the defendant adopting such a mark. Even if, in such a case, there may be an inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the defendant has been using the mark for a number of years. Dealing with this aspect Harry D. Nims in his "The Law of Unfair Competition and Trade Marks", Fourth Edition, Volume Two at page 1282 noted as follows:

"Where infringement is deliberate and willful and the defendant acts fraudulently with knowledge that he is violating plaintiff s rights, essential elements of estoppels are lacking and in such a case the protection of plaintiffs rights by injunctive relief never is properly denied."The doctrine of estoppels can only be invoked to promote fair dealings"."

b) In the case of M/s. Bengal Waterproof Limited v. M/s. Bombay Waterproof Manufacturing Company and Another, AIR 1997 SC 1398, it was held as under:

20. ..It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts.

83. No party can be allowed to use the identical mark in any style whatsoever. The defendant No.4 has no rights in respect of it with respect to electric water heaters (excluding instant type geysers). The exclusive License/Permitted User Agreement dated 27th May, 2006 entered into between defendant Nos.3 and 4 does not even relate to the mark "JOHNSON" in relation to electric water heaters, (excluding the instant type geysers). The defendants have no right over the mark "JOHNSON" in relation to the electric water heaters (excluding the instant type geysers).

84. Even if there is any delay, the same is not taken in an action of infringement of trademark as referred above. In trademarks matter, every sale gives a fresh cause of action, the cause of action is of recurring nature. Even otherwise the plaintiff is able to explain the same and this Court is satisfied with the explanation given.

85. The issue is accordingly decided in favour of the plaintiff and against the defendant.

86. As issues No.1 to 4 are decided in favour of the plaintiff, the issue No.5 is also decided against the defendants in view of the findings arrived at in deciding the issues No. 1 to 4 as there was cause of action in favour of the plaintiff at the time of filing of the suit. No cogent reason has been assigned by defendant No.4 that the suit lacks cause of action. The said issue is accordingly decided against the defendant No.4 who has failed to discharge its burden.

87. With regard to issue No.6, the plaintiff has not been able to prove the damages strictly as per the law. Even otherwise, the parties are related to each other. This Court is not inclined to exercise its discretion to impose punitive damages in the nature of relations. The said issue is decided accordingly.

88. Issue No.7 is about relief. For the reasons mentioned above, the plaintiff is entitled for decree of permanent injunction in its favour and against the defendants in terms of prayers (a) and (c) of the plaint. So far as prayer (b) is concerned, no relief is granted, however, the plaintiff is entitled for actual costs and counsel s fee.

89. Decree be drawn accordingly.


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