17 June, 2017
It is a settled principle that the Plaintiff must come to the court with clean hands and no material facts should be concealed. Recently, the Delhi High Court has set aside an ex-parte interim injunction order in a trademark infringement and passing off case filed by Paramount Surgimed Limited (hereinafter referred as ‘the Plaintiff’) against Paramount Bed India Private Limited (hereinafter referred as ‘the Defendant’). The centre of dispute is the use of the trademark PARAMOUNT for hospital beds. In the instant suit, it was pleaded by the Plaintiff that the word PARAMOUNT was first adopted in the year 1993 as part of its corporate name and it has been engaged in manufacturing and supplying intensive care hospital beds in India. The Plaintiff also obtained the trademark registration for PARAMOUNT label under class 10 (surgical, medical, dental etc.) as well as in class 20 (furniture, mirrors, picture frames etc.) and its first registration dated back to January 14, 2000. Based on registration and prior use in India, the Plaintiff has claimed to be the lawful owner of the trademark/name PARAMOUNT. The suit was filed in the year 2017 averring that the Plaintiff learnt about the presence of the Defendant’s use of an identical trademark PARAMOUNT only in February of 2017. Initially, an ex-parte order had been passed whereby the Defendant was restrained from using the mark PARAMOUNT.
Aggrieved by the ex-parte order, the Defendant filed an application to set aside the interim injunction. The Defendant argued that the ex-parte order was obtained by concealing material facts. It was denied by the Defendant that the Plaintiff had only recently learnt about the activity of the Defendant for the sale of hospital beds. It was put forth by the Defendant that the Plaintiff had filed an opposition in the year 2009 against the Defendant’s trademark application seeking registration of the trademark PARAMOUNT for the sale of hospital beds. Later in the year 2012, the parties were also involved in active negotiations. It was argued by the Defendant that it is the prior user of the mark PARAMOUNT which it adopted as early as in the year 1950 and that its trans-border reputation has travelled to various parts of the world including India. In order to establish trans-border reputation and use, the Defendant placed on record old newspaper clippings, audited balance sheets, and invoice for supply of 50 beds.
Having examined the documents filed by the Defendant, the Court held that the Defendant has been promoting his business of the sale of hospital beds under the name of PARAMOUNT in India since the year 2002, his publicity campaigns date back to the year 2007, and his actual sales were effected from the year 2010. It was held that the opposition filed in the year 2009 and emails exchanged clearly established that the Plaintiff was fully aware of the presence of the Defendant in the Indian market. Referring to Plaintiff’s use of the mark PARAMOUNT for hospital beds, the Court held that a minuscule sale of five single beds in one current year and there being a gap of almost seven years between 2010 to 2017 when there was no sales effected of any hospital bed, established that Plaintiff is not really into the business of sale of hospital goods. Since the Plaintiff approached the Court with a dishonest mind, the Court rejected the Plaintiff’s argument that delay and acquiescence by itself could not be a ground for dismissing its claim for relief, especially when it is the owner of the registered trade mark PARAMOUNT. The Court held that this is not a case simplicitor of delay in approaching the court but approaching the court with incorrect submission.
The Court observed that the object of an interlocutory injunction is to protect a plaintiff against an injury which may not be adequately compensated in damages recoverable in action at later point of time. Similarly, a defendant’s rights must also be taken in due consideration when deliberating on the grant of an interim injunction. Considering the unsavoury conduct of the Plaintiff in the present case, the Court set aside the ex-parte order.
The judgment by Delhi High Court is clearly in sync with the maxim "he who has committed iniquity shall not have equity". It is essential that the right holders must come to court with clean hands and without concealing material facts. In absence of this, the litigants cannot be permitted to seek equitable relief such as obtaining an injunction.
For further information, please contact:
Omesh Puri, LexOrbis
mail@lexorbis.com
