- (1.) Leave granted.
(2.) A suit was filed by the appellant in C.S. No. 705/99 stating that it carries on business in all kinds of Quality Plywood, Laminates, Block Boards of various types by claiming that it was established in the year 1996; that it has been pioneer in marketing international standard plywood in innovative ways, that it is the sole selling agent and has distributorship and selling agency from various foreign dealers, that it has associates and business partners all over the world; that the said goods are sold with the trade marks "UNIPLY", "UNIBOARD", and "UNIWUD" and so on the basis of which, it claims to have acquired a very high reputation amongst the Plywood and Wood Product Traders, Architects, Interior Decorators, Carpenters and users of plywood, boards and laminates, that it pays a very high tax both on the sale tax side and on the income-tax side; that it has the registered office at Tamil Nadu and branch offices at Kerala, Karnataka and Andhra Pradesh and has distributors and agents in Maharashtra, Gujarat, Delhi and Calcutta. The appellant claims to be the proprietor of the trade marks "UNIPLY" and "UNIBOARD" and has extensively advertised the same in various media. In July 1999 the appellant came to know that the respondents have copied the trade marks "UNIPLY" and "UNIBOARD" and have been selling and distributing the same in the city of Chennai and claimed for grant of an injunction with an application for temporary injunction. The trial Court granted an ex parte temporary injunction by order made on Sept. 10, 1999.
(3.) The respondents also filed a suit in C.S. No. 804 of 1999 against the appellant claiming that they are the manufacturers of plywood and also selling the same with the trade marks "UNIPLY" and "UNIBOARD" and "UNIDOOR"; that it has been registered as a small scale industry in the year 1993; that advertisements had been made in 1993 containing the above trade marks in newspapers and souvenirs or diaries; that they have been continuously using the trade marks from Sept. 14, 1993; and that the appellant is making use of the trade mark used by the respondents. However, no temporary injunction was granted in favour of the respondents. Thereafter, in the suit of the appellant an order was made on Nov. 2, 1999 in the following terms :- "The records filed by the plaintiff (appellant) indicate that they were using the trade marks Uniply and Uniboard anterior in point of time. Although the Defendants (respondents) had filed records, to show that there was inauguration and incorporation of the Company as early as 1993, no record filed to show that it was manufactured since 1993. As adverted to, the invoices and bills produced by the Defendants (respondents) only carried the name as Commercial Plywoods and the brand name has not been furnished. On the other hand, the invoices and bills produced on the side of the Plaintiff (appellant), in most of the documents the brand name finds a place. The first Defendant (respondent) has obtained excise registration only in 1997 and the trade mark application filed by him is only with reference to class 20. On the other hand, the trade mark application filed by the plaintiff (appellant) dated 14-1-1996 and it relates to the goods covered under Class 19. The Plaintiff (appellant) had also filed the turnover of the business for number of years and the plaintiff (appellant) has contributed Rs. 282.53 lakhs towards sales tax and also Rs. 58.85 lakhs towards income-tax. I am of the the view that the Defendants (respondents) have not made a case to suspend the order of interim injunction already granted to the plaintiff (appellant) on 10-9-1999. The balance of convenience is also only in favour of the Plaintiff (appellant) and, hence, there is no valid reason to suspend the said Order." However, by an order made on Nov. 29, 1999, the trial Court took the view that the respondents have establsihed their factory since 1993-94 and have been using their stickers since 1994 and up to date they have been using the trade marks by roller printing/screen printing on the board itself and it cannot be removed. While the appellant had only affixed stickers "UNIPLY" , "UNIBOARD" in the plywood; thus, there is a strong circumstance to show that even prior to the use by the appellant, the respondents have been using the trade marks in question. The trial Court held that there is prima facie material to come to the conclusion that the respondents alone had been using these trade marks since 1993 and the appellant had entered into trade only from 1996. On that basis, it held that the appellant has no prima facie case and balance of convenience is not in their favour, while the respondents alone have a prima facie case and also the balance of convenience is in their favour. On appeal against his order, the Division Bench of the High Court held that the material placed before them established that the respondents have been manufacturing the products at least from the beginning of 1994. On the question of carrying on business in the State of Kerala it was noticed that in two Malayalam daily newspapers and in two souvenirs or brochures, advertisements have been made in the years 1993 and 1995 and the appellant had not placed any material to show that inspite of the fact that such advertisements had been made in those respective years the said trade marks had not been used till the appellant started using the same. The High Court also relied upon certain invoices and declarations filed before the exercise authorities and certain letters from dealers. The High Court held that the advertisement of the respondents was only in relation to furniture and it could not be said that the trade mark was being used by the appellant in relation to plywood, boards, etc. and accepted the finding recorded by the trial Court on the question of prior user and held that prima facie case has been established to show that the respondents had made prior use of the trade marks in question.;