‘Classic Trinity Test’ of ‘Goodwill, Misrepresentation and Damages’ [Reckitt and Colman Products Ltd. v. Borden Inc,  1 All ER 873] – Satisfied.
Both parties claim proprietary rights and utilize the mark ‘GeoCrete’ in respect of identical goods. To permit concurrent use, in factual situation noted, would cause public confusion and result in violation of ‘one mark, one source, one proprietor’ principle [Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448].
SHAMROCK has asserted its statutory right. TIMAB, not being a registered proprietor, is seeking injunction against SHAMROCK, purely on basis of common law rights – on ground of passing off premised on, inter-alia, prior use, deception and fraudulent registration by SHAMROCK.
A claim of prior use may rebut rights of a registered proprietor. Due to lack of documentary proof and inability of SHAMROCK to sustain its claim of use in India, its registration of the impugned mark and rights flowing therefrom become subservient to superior rights of prior user-TIMAB.
It is not disputed by SHAMROCK, it does not have any manufacturing facility in India and goods are being imported from Germany – where at present SHAMROCK cannot use the impugned mark. It is evident, SHAMROCK has approached this Court with unclean hands, without complete disclosure, and is not entitled to any equitable relief.
A dishonest registration of the impugned mark by SHAMROCK has resulted in public confusion, violative of ‘one mark, one source, one proprietor’ principle. Therefore, on a prima facie basis, it appears, registration in favour of SHAMROCK is invalid. TIMAB’s continuous use of the impugned mark, in India and internationally, entitles it to assert its common law rights over SHAMROCK’s registration.
– Hon’ble Justice Sanjeev Narula of Hon’ble High Court of Delhi, Shamrock Geoscience Ltd. v. Timab NL BV, [CS(COMM) 308/2021] & Timab NL BV v. Shamrock Geoscience Ltd., [CS(COMM) 324/2021] decided on 06.10.2022.