S. Usha, Technical Member - (1.) THE applicants as a subsidiary of one of the largest manufacturers of needles, hand sewing needles, knitting pens and other haberdashery products were incorporated in 1949. THE applicants had also manufactured and marketed hand-sewing and hardware needles, knitting needles, crocket hooks, knitting pins, snap fasteners, hooks, eyes, safety pins, plastic headed pins, pearl headed pins. etc. THE applicants had adopted various trade marks and in particular the trade mark 'PONY' and the 'PONY distinctive device'.
(2.) The applicants are one of the largest exporters of the aforesaid products in India. They have number of sales offices in India to meet the demand. They had adopted the four legged version of 'PONY device' along with the trade mark in the year 1966 and have improved the four legged version to two legged version in or about 1990. The applicant's trade mark 'PONY' along with the 'PONY device has been registered under the Copyright Act under Nos. A-34686/81 and A-51945/92 respectively. The applicants have spent huge amount of money to register their trade mark as well to initiate legal proceedings against infringes. The applicants have also spent huge some of money towards sales promotion by advertisement through various medias. The applicant's application for trade mark registration of PONY along with 'PONY device' has been registered in class 21. They have prior registration of the trade mark 'PONY' along with the device of PONY in other various classes. The applicant's first registration has been of the year 1971. The public associate the said trade mark with the applicant's goods alone by virtue of its continuous use and wide publicity. The applicant's trade mark has thus become a well known trade mark.
(3.) THE respondent herein had deliberately adopted on identical trade mark 'PONY' and on 05.11.1999 filed an application for registration of the trade mark under No. 880085 in class 21 in respect of 'comb, tooth brush and shaving brush'. THE said application was advertised in the Trade Marks Journal on 14.11.2003 and the same was registered subsequently. THE applicants had not opposed the trade mark registration due to oversight had filed a civil suit in C.S. No. 687/04 before Hon'ble High Court of Madras against the respondent restraining the respondent from using the said trade mark. THE Hon'ble High Court of Madras had granted an order of interim injunction on 21.03.2006 restraining the respondent from using the trade mark 'PONY along with the PONY device'. THE application for registration under No. 880085 filed by the respondent had been registered on 03.03.2005.;