N.G. Nandi, J.
(1) In a suit seeking to restrain the defendant from in any manner using the mark "COLLEGIATE" allegedly identical with the plaintiffs' registered trade mark "COLGATE" and also using the packing, tubes, cartons, bearing a colour scheme, get-up, logo and lay out as represented on "COLLEGIATE" carton and tube by the defendant, the plaintiff by Ia No. 7701/94 seeks to restrain the defendant in identical terms pending the hearing and disposal of the suit. (2) The defendant, vide Ia 8686/94 under Order 39 Rule 4 Civil Procedure Code prays for vacation of the ex parte, ad interim injunction granted vide order dated 1.9.1994.
(3) It is not in dispute that the plaintiff is a proprietor of the registered trade mark "COLGATE" and that the plaintiff has been manufacturing dental cream, selling the same in tube and cartons in red and white. The defendant is alleged to have infringed the plaintiffs' mark "COLGATE" by using the mark "COLLEGIATE".
(4) One of the arguments advanced on behalf of the defendant is that the plaintiffs have suppressed the fact that it had addressed a letter dated 7.1.81 (Annexure A) and had the fact of said letter, addressed to the defendant, been averred in the plaint, the court would not have granted ex parte injunction and this suppression being material, the plaintiff would not be entitled to the relief of injunction.
(5) It can not be disputed even for a moment that a party guilty of suppression of material fact would not be entitled to the equitable relief of injunction. In the instant case, plaintiff addressed letter dated 7.1.1981 (Annexure A) stating that the plaintiff is the registered proprietor of trademark No. 290361 for their product "Colgate tooth paste". It is also stated that it has recently come to the notice of the plaintiff that with the deliberate object of making illegal gain on the reputation of the plaintiff (Colgate Tooth Powder) defendant has commenced marketing its product with mark "COLLEGIATE tooth powder" in a can which is deceptively similar to and slavish imitation of the can used by plaintiff for its product colgate tooth powder. The defendant filed reply dated 22.1.1981 denying the alleged exclusive use of the carton for tooth powder in red and white colour. It is also stated that defendants are using the trade mark "Se- Collegiate" in respect of tooth powder and that the said mark has been registered with the copy right registry vide letter No. F-32-3400/78-CO dated 23.1.1979 also contending that adoption of the mark "COLLEGIATE" by the defendant are bonafide, honest and concurrent user. (6) Thus, it will be seen that letter dated 7.1.1981 was in respect of tooth powder to which the defendants say was that his mark was "SE- COLLEGIATE". In my opinion non-mentioning of letter of 7.1.1981 in the plaint can not be regarded as suppression of material fact so as to affect the grant or otherwise of the interim relief with regard to the defendant's mark "COLLEGIATE" for the tooth paste.
(7) One of the arguments advanced on behalf of the defendant is that the plaintiff would not be entitled to the equitable relief of injunction on the ground of delay and a sequence. It need hardly be said that delay by itself can not be a bar to the grant of relief of injunction. As far as a sequence is concerned, it has to be shown by the defendant that the plaintiff set by and allowed the defendant to grow despite the knowledge of the infringement by the defendant of its registered trade mark. In other words, the defendant has to show some positive act and/or inaction on the part of the plaintiff even after the knowledge of the infringement of its trade mark by the defendant. In the instant case, the advertisement of defendant's proposed mark "COLLEGIATE" appeared in Class-III in the trade mark journal dated April 22, 1994. Entry No. 438342 of May 25, 1985. The said advertisement refers to the user claimed by the defendant since 1.4.1979. Thus, the defendant's mark "COLLEGIATE" for the first time appeared in the said advertisement in the trade mark Journal dated 22.4.1994. It is only after the advertisement of proposed mark that one would come to know about the registration sought of the mark. Till then the plaintiff can not be said to have any knowledge about the defendant's mark "COLLEGIATE" for which registration was sought before the Registrar of Trade Marks. Before filing the suit, plaintiff filed notice of opposition to application for registration of trade mark "COLLEGIATE" on 28.7.94 thus, around 3 months time of the said advertisement, the plaintiff filed opposition to registration of defendant's mark "COLLEGIATE" before the Registrar Trade & Merchandise Marks. Thereafter the present suit is filed on 31.8.1994 i.e. after four months of above advertisement published in the Journal on 22.4.1994. (8) It is not prima-facie suggested that the plaintiff set by/connived at the defendant's assertion of mark "COLLEGIATE" and its registration sought under the Trade & Merchandise Marks Act as per the advertisement dated 22.4.1994 or that the plaintiff allowed the defendant to grow by some positive act or inaction so as to amount to have acquiesced to the user of the mark "COLLEGIATE" by the defendant.
(9) The colour combination of both the marks is red and white including the tubes and the cartons. The tube and the carton containing plaintiffs' mark "COLGATE" and that containing the defendants mark "COLLEGIATE" have been shown to me in the course of hearing (Annexure-I) at page 46 and (Annexure J) at page 47. Defendant's mark "COLLEGIATE" also appear in white lettering upon a red background. The infringing mark "COLLEGIATE" is written in logo script deceptively resembles with the plaintiffs' tube. The defendant's tube contains the same colour scheme identical to the plaintiffs' mark. The tube of plaintiff' mark and defendant's mark contain red cap and defendant's mark, prima-facie, appears deceptively similar to that of the plaintiffs' mark "COLGATE". It prima-facie appears from the available material on record that the user of mark "COLLEGIATE" by the defendant, though not registered, yet, attempted to be shown as registered by putting 'R' in a circle at the end of mark "COLLEGIATE" on the tube as well as the carton. Especially looking to the colour scheme of red and white is not only confusingly similar to that of plaintiffs' registered mark but may also lead a customer to believe the plaintiffs' association with the defendant's product and on every customer, who has to be protected might take the defendant's product as that of plaintiffs. The defendants' mark is not only jocularly similar to that of plaintiffs' registered mark but is phonetically similar and likely to cause confusion and deception to the every customer. The intention of defendant, prima-facie, appears to be to pass off his tooth paste as that of the plaintiff looking to the mark as well as the colour scheme on the tube and the carton. (10) A question would occur as to how defendant came to choose/select mark "COLLEGIATE" with colour scheme in red and white and letters identical to that of the plaintiffs' mark "COLGATE". It is suggested that plaintiff is the registered proprietor of trademark "COLGATE" since 1954 with the colour scheme in red and white. It appears that the plaintiff being a reputed manufacturer of dental cream, it must have occured to the defendant to use the mark "COLLEGIATE" phonetically and jocularly similar to the plaintiffs' mark with deceptively similar letters in white with red background so as to cause confusion in the mind of the customers and to pass off its product as that of the plaintiff in the mark and looking to the mark "COLLEGIATE" , one may believe plaintiffs' association with the defendant's product. Looking to both the marks, the user by the defendant of mark "COLLEGIATE" with letters and colour scheme, it will be nothing short of dishonesty on the part of the defendant and when it is suggested that the user of mark by the defendant is with dishonest intention, the user of mark "COLLEGIATE" has to be restrained by suitable injunction. (11) Therefore, the exparte ad interim injunction dated 1.9.1994 deserves to be confirmed pending hearing and disposal of the suit. Defendants restrained accordingly.
(12) In the result I.A. No. 7701/94 is granted and ex parte ad interim injunction dated 1.9.1994 is made absolute pending the hearing and disposal of the suit whereas Ia No. 8686/94 is dismissed.
(13) Cost to be in the cause.