Valmiki J. Mehta, J. - (1.) This Regular First Appeal under Section 96 of the Code of Civil Procedure, 1908 (CPC) is filed by the plaintiffs in the suit impugning the Judgment of the trial court dated 19.08.2006 by which the trial court has dismissed the suit for injunction, damages etc. filed by the appellants/plaintiffs against the respondent/defendant. By the suit, the appellants/plaintiffs essentially claimed two rights. The first right was in the trademark "555" and this trademark "555" was used with respect to haberdashery goods which include snap fasteners, needles of all kinds, hooks and eyelets etc.. The second right which was claimed was a copyright claimed in a label which the appellant no. 1/plaintiff no. 1 had got registered under the Copyright Act, 1957 and under this label, alongwith the trademark/wordmark "PONY", the appellant no.1/plaintiff no.1 was selling snap fasteners and press type fasteners of all kinds. The trial court dismissed the suit and decided issue nos. 2 to 7 in favour of the respondent/defendant. These issue nos. 2 to 7 which pertain to the aspect of whether there was passing off by the respondent/defendant of its goods as that of the appellants'/plaintiffs' when the respondent/defendant sold his goods, being spring snap fasteners, under the trademark "V.R." and a label containing the trademark "V.R." with a particular colour scheme and graphic representation of a pony, and the trial court held that there was no passing off.
(2.) Ld. counsel for the appellants/plaintiffs, after some preliminary arguments, states that the second claim with respect to seeking relief against the respondent/defendant on account of appellant no. 1/plaintiff no. 1 being the owner of the copyright work in its label having the trademark/wordmark "555" as part of a label containing a particular colour scheme and a pony, is not pressed. Therefore, essentially what the Ld. counsel for the appellants/plaintiffs states is that the appellants/plaintiffs do not question the decision of the trial court with respect to issue nos. 2 to 7 in favour of the respondent/defendant to the extent that it is held that there is no deceptive similarity in the two labels of appellant no.1/plaintiff no.1 and respondent/defendant, however, subject to and without prejudice to the arguments and rights of the appellants/plaintiffs for claiming entitlement to the trademark/wordmark "555". Therefore, this Court only has to examine as to whether the appellants/plaintiffs are owners of the trademark/wordmark "555" and whether the respondent/ defendant can use the trademark/wordmark which is used by the appellants/plaintiffs with respect to haberdashery goods. I may also further clarify that the entitlement to the trademark/wordmark "555" is now only of appellant no. 2/plaintiff no. 2 because the appellant no. 1/plaintiff no. 1 no longer claims to be the licensee of the trademark/wordmark "555".
(3.) The case of the appellants/plaintiffs was that appellant no. 2/plaintiff no. 2 was the registered owner of the trademark/wordmark "555" in India since 1951 and this registration was renewed from time to time. As per the licence agreement for the period from 1963 to 1981, the appellant no.2/plaintiff no.2 had permitted the appellant no. 1/plaintiff no. 1 to manufacture press studs with the world famous trademark "555" of the appellant no.2/plaintiff no.2. It was the case of the appellants/plaintiffs that appellant no.1/plaintiff no.1 carried on business for the licensed period from 1963 to 1981, and from a part of this period from December, 1977 to October, 1979 documents were filed so as to show the user of the trademark "555" by the appellant no. 1/plaintiff no. 1 as the licensee of the appellant no. 2/plaintiff no. 2. In law, user by a registered licensee is equal to the user of the owner of the trademark and the benefit of user by the licensee of the trademark can be taken by the registered owner of the trademark as its own user. It was pleaded that appellant no. 1/plaintiff no. 1 was selling its goods/ products under the descriptive trademark "PONY" as part of a label which contained a colour scheme of silver, grey and orange and this was in use since the year 1988. The sales figures with respect to the "PONY" card i.e. "PONY" trademark were pleaded to exist from 1979 to 1993. It was pleaded that in June, 1993 the appellants/plaintiffs came to know of the use of the trademark "555" by the respondent/ defendant in its label which had a similar colour scheme as that of the appellant no. 2/plaintiff no. 2. It was, therefore, pleaded by the appellant no. 1/plaintiff no. 1 that by using the label the respondent/defendant for selling its products, which was similar to the label of the appellant no. 1/plaintiff no. 1, the respondent/defendant was passing off its goods as that of the appellant no.1/plaintiff no.1. The plaint, thereafter, refers to correspondence being entered into between the parties via Legal Notices and Replies being sent from 23.06.1993 till 17.02.1994, which did not yield any result i.e. the respondent/defendant did not stop its impugned activities, and therefore, the subject suit was filed.;