UNIPLY INDUSTRIES LTD. versus UNICORN PLYWOOD PVT. LTD.

Citation: [2001] 3 S.C.R. 307 · Decided: 01-05-2001 · Supreme Court of India · Bench: S. RAJENDRA BABU · Disposal: Disposed off

Judgment (excerpt)

UNIPLY INDUSTRIES LTD. 
A 
-
v. 
.#--
UNICORN PLYWOOD PVT. LTD. 
MAY 1, 2001 
[S. RAJENDRA BABU AND K.G. BALAKRISHNAN, JJ.] 
B 
Trade and Merchandise Marks Act, 1958-Trade Marks-Appellant 
and respondent carrying on business in plywood with trade marks "Uniply'
1 
and "Uniboard"-Prior user-Trial Court and High Court held in favour of c 
respondent-Held, on facts, courts below not considered various aspects~ 
Matter remanded back to Registrar of Trade Marks to decide afresh. 
Appellant and respondent carry on business in all kinds of plywood. 
The appellant filed a suit seeking injunction before Trial Court against the 
respondent from using the trade marks "Uniply" and "Uniboard" for its D 
product. The Trial Court granted an ex parte temporary injunction in favour 
of the appellant. The respondent also filed a suit seeking injunction before 
the Trial Court against the appellant for the use of the trade marks. However, 
the Trial Court did not grant temporary injunction in favour of the respondent. 
The Trial Court allowed the suit of the appellant. By another order, the Trial 
Court allowed the suit of the respondent holding that the respondent was the E 
prior user of the trade marks. The High Court dismissed the appeal of the 
~ 
appellant. 
-
In appeal to this Court, the appellant contended that the principle of 
prior user was wrongly applied by the High Court; that the High Court ignored F 
the principles laid down by this Court in Cadila Health Care Ltd v. Cadila 
Pharmaceuticals Ltd, JT (2001) 4 SC 243 in deciding the case; and that the 
High Court has not given any findings on balance of convenience or irreparable 
hardship, if interim injunction is not granted. 
The respondent contended that it was the prior user of the trade marks G 
for its goods; that the infringement of the trade marks by the appellant would 
damage its reputation in business; and that the rule of prior user was correctly 
applied concurrently by the Trial Court and the High Court. 
Disposing of the appeal, the Court 
H 
307 
308 
SUPREME COURT REPORTS 
(2001) 3 S.C.R. 
A 
HELD: 1.1. The courts below should have been wary and cautious in 
granting an injunction which would affect the trade and business of another 
person using an identical trade mark. Both the appellant and the respondent 
have applied for registration of their respective trade marks before the 
Registrar under the Trade and Merchand~se act, 1958 and the respective 
B rights of the parties will have to be investigated by the Registrar and 
appropriate registration granted to either of them or both of them, as the 
case may be, bearing in mind the provisions of Section 12(3) of the Trade 
and Merchandise Marks Act, 1958. There are many precedents to the effect 
that for inherently distinctive marks, ownership is governed by the priority 
of use of such marks. The first user in the sale of goods or service is the 
C owner and senior user. These marks are given legal protection against 
infringement immediately upon adoption and use in trade .if two companies 
make use of the same trade mark and the gist of passing off in relation to 
goodwill an,d. reputation to goods. [312-E-F] 
1.2. The .Courts below hav'c merely looked at what the prima facie case 
D is and tried to decide the matter without considering various aspects. 
. 
' 
, 
' 
Therefore, the appropriate order to be made i.s that injunction either in fayour 
of the appelJant or against them or vice-versa is not appropriate and the 
proceedings in the suit shall be 'conducted as expeditiously as possible or the 
Registrar under the Act may decide the matter which may govern the rights 
E of the parties: There shall be no order of temporary injunction in favour of 
eith~r party. (313-B-C] 
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd .. JT (2001) 4 
SC 243, referred to • 
. p 
. , CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 3415-
3420 of 2001. 
.. 
From the Judgment and Order dated 20.10.2000 of the Madras High 
Court in CSA No. 265199 to 268/99. 
G 
Aryana Sur,idram, Praveen Anand, Ms. Indu Malhotra Baben and Ms. 
Shyel Trehan for the Appel!ant. 
,., 
C.S. Vaidyanathan, K.V. Viswanathan, Ms. Glady's, Kunwar AjitMohan 
Singh and K. V. Venkataraman for the Respondents. 
H 
The Judgment of the Court was delivered by· 
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UNIPLY INDU. LTD. v. UNICORN PLYWOOD PVT. LTD. [RAJENDRA BABU, J.] 309 
RAJENDRA BABU, J. Leave granted. 
A 
,, 
A suit was filed by the appellant in C.S. No. 705/99 stating that it ca

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