D.K. Kapur, J.
(1) This is an appeal directed against the judgment of a learned Single Judge of this Court on the Original Side whereby an interim injunction to restrain the defendants from using the trade mark or trade name USHA in relating to electric irons and other electrical appliances like room heaters, stoves, angithis, ovens, hot plates, toasters and table lamps, which had earlier been granted was virtually withdrawn. The final order passed was that the defendants were allowed to use the mark 'USHA' with the word' GOLDEN' appearing thereafter till the decision of the suit.
(2) The suit in question was based on two registered trade marks both'USHA' which were registered in favor of the plaintiff-appellant in 1971 and1976 respectively. The trade mark no. 276920 was registered on 1 4/12/1971, and was based on the user since 1960, which was in respect of electric irons. The same mark 'USHA' bearing no. 311724 was registered on 17/01/1976, in respect of room-heaters, stoves, angithis (furnace),oven, hot plates for cooking, heating refrigerators, bread toasters, table lamps, etc., being used since 1971. Thus, there were two trade marks, one for electric irons based on the user since 1960, and one for other electrical goods registered since 1976, based on the under since 1971.
(3) According to the defendants whose name is M/s. Usha Industries(India), they had been using the trade marks from even an earlier date. It was also claimed that though the plaintiff had come to know of the alleged infringement in May, 1982. the suit was filed in 1984, so there was a considerable delay in applying for the injunction.
(4) The order under appeal has the effect of permitting the defendants to use the impugned mark during the pendency of the suit. In the case of a registered trade mark, this creates a very difficult situation. The effect of registration is to give an exclusive right of user to the proprietor of the registered trade mark. This is provided in section 28 of the Trade and Merchandise Marks Act, 1958. The only persons who can defeat this exclusive user are persons covered by section 33 of the Act, which provides as follows :"33. Saving for vested rights: Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain in the use by any person of a trade mark identical with or nearly resembling it in relating to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior:(a) to the use of the first mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his ; or(b) to the date of registration of the first mentioned trademark in respect of those goods in the name of the proprietor or a predecessor in title of his ; whichever is the earlier, and the register shall not refuse (on such use being proved) is registrar the second mentioned trade mark by reason only of the registration of The first mentioned trade mark." In short, if there is user prior to the date of registration, then the user may continue. According to the defendants, now respondents, they have been using the marks from a prior date. There are two portions of the section, one of which refers to the date of user and the other refers to the date of registration. The section seems to give the earlier date as the operative date,i.e., if the user is earlier than the registration it is that date. If we take the user of the two trade marks as being 1960 and 1971 respectively, it means that the defendants must show that they have used the trade mark 'US HA'prior to 1960 in relation to electric irons and prior to 1971 in respect of room heaters, stoves, angithis, hot plates, etc.
(5) According to learned counsel for the respondents, the prior user is established from a mass of documents placed on record. We have examined some of these documents and must admit that it is difficult to determine what the nature of that user was, if any. We are satisfied that the defendants did use the trade mark 'USHA' in certain radio goods like serials. Qua such goods, we find no reason why the defendants should not continue to use the trademark 'USHA.' The trade mark registered in favor of the plaintiff is not in respect of radio goods or wireless goods. It is restricted to electric irons and to room heaters, stoves, angithis, hot plates, etc.
(6) We think, that as far electric irons are concerned, the injunction has to continue because the user of the plaintiff, prima facie, appears to be since 1961, but in respect of the other goods like room heaters, stoves,angithis, ovens, breads toasters, etc., there is some user by the defendants which may be treated as concurrent user for some time. Mostly, these goods appear to have been sold in small quantities in odd places in South India.The matter is to some extent made more complex by the fact that the defendants are also named Usha Industries. We have not been able to find any advertisement or any reference in any journal relating to the trade mark showing that the defendants actually advertised that they were using the trade mark 'USHA' prior to 1971. If there is any user between 1971 and 1976,it is on a very limited scale.
(7) There is then the question of delay. Learned counsel for the respondents had urged that the delay is fatal to the grant of an injunction. We are not so satisfied. A delay in the matter of seeking an injunction may be aground for refusing an injunction in certain circumstances. In the present case, we are dealing with a statutory right based on the provisions of the trade and Merchandise Marks Act, 1958. An exclusive right is granted by the registration to the holder of a registered trade mark. We do not think statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity. The principles governing other types of injunctions are not to be readily applied to a case like the present. Of course, if it was a case of a similar mark as opposed to the same mark, the concurrent user coupled with delay might be a ground for refusing an injunction. However, when the same mark is being used, in a sense, the public is deceived into purchasing the defendant's goods on the belief that they are the plaintiff's goods, so a registered trade mark is a casualty, it is the duty of the Court to protect the registered mark. That is the whole concept of registration. So, we cannot refuse an injunction even if there is some delay especially when the mark is the same. To refuse the injunction would tantamount to permit a fraud being practiced on unwary customers.This is a matter of principle on which the Court cannot refuse the injunction.
(8) Considering all the aspects of the case we think we should issue an injunction to restrain the defendants from using the trade mark 'USHA' in respect of electric irons, but in the case of the other goods we have to pass a different order. The defendants will be free to use the trade mark 'USHA' in relation to radio components and aerials without any restraint. In regard to the other electrical goods such as room heaters, stoves, ovens, angithis, hotplates, bread toasters, table lamps, etc., the defendants-respondents will be permitted to use the word 'USHA' in conjunction with the word GOLDEN.' In other words, they can use the name 'USHA GOLDEN' as they appear to have done in some of the price lists shown to us. In this connection, a subsequent order passed by the learned Single Judge on a Contempt Petition seems to be the proper order to pass. By that order, the learned Single Judge has directed the defendants to use the name 'GOLDEN' and 'USHA' equally prominent, i.e., they will be entitled to use name "GOLDEN' provided the' GOLDEN' and 'USHA' appear equally prominent. The appeal is disposed of with this order. We want to make it clear that this judgment is based ona prima facie consideration of the material before us and will have no effect on the eventual determination of the facts on an examination of the evidence produced by the parties.
(9) We leave the parties to bear their own costs. Appeal allowed in part