V. R. Industries Pvt. Ltd. (“VR”) is engaged in the business of selling food products such as corn flakes, muesli, porridge, etc.. It coined and adopted the trademark “8 AM”, in 2004. In the same year, it applied for registration of the trademark "8 AM" in Class 30, claiming use since 1st May, 2004. However, this trademark application was Opposed. It applied for the same in 2007 in respect of a label containing the term “8 AM”, in Classes 29, 30, and 32. This label was registered as a trademark.

In October 2007, VR came across Mohan Meakin Ltd.’s (“Mohan Meakin”) trademark application for “8 AM Corn Flakes (Label)” which was filed in 2005 on a proposed to be used basis. It observed that Mohan Meakin later changed its earliest date of use to 1st January 2004. In 2012, VR had also filed an application for removal of Mohan Meakin’s trademark registration and the same is pending.

In the instant case, VR approached[1] the Delhi High Court seeking injunction restraining Mohan Meakin from manufacturing and selling food items under the mark “8 AM” or any other deceptively similar mark. VR claimed that it had an exclusive right over the mark “8 AM”, by virtue of being a prior bona fide user and registered proprietor. VR further claimed Mohan Meakin’s corn flakes are advertised as “Mohun’s New Life Corn Flakes” and that it has not used the mark for which it has sought registration. Mohan Meakin pleaded that VR obtained the ex parte injunction by concealing the fact that Mohan Meakin was a prior adopter of the mark “8 AM” and not VR. It denied VR’s prior user claim.

The Court had granted an exparte interim injunction against Mohan Meakin restraining it from using the trademark “8 AM” or passing off its goods as those of VR by using the said mark.

Mohan Meakin claimed that VR has concealed the fact that a director of VR was employed with Mohan Meakin as a Senior Executive Officer and was living with his family in the premises of Mohan Meakin, till shortly before the institution of the suit and hence VR was fully aware of adoption and use of the mark “Mohun’s 8 AM Corn Flakes” by Mohan Meakin. It explained that its trademark application on a "proposed to be used" basis was a clerical error as was evident from documents showing use of the mark since 1st January 2004. Hence, Mohan Meakin requested the Court for vacation of the ex-parte stay.

The Court observed that VR also failed to offer any explanation as to why the facts regarding its director being aware of Mohan Meakin’s use of the mark 8AM were not disclosed to the Court at the time of obtaining ex parte injunction. The Court also remarked, “… it is thus imperative for the litigants to, at least when approaching the Court for ex parte relief, make a clean breast of the facts. The plaintiff is not found to have done so. I refrain from saying more. However, such conduct of the plaintiff also requires the plaintiff to be denied the equitable relief of interim injunction.”

The Court also observed that, the subsequent trademark application filed by VR, which was granted registration after institution of this suit did not include “corn flakes”, in respect of which VR sought to restrain Mohan Meakin. Thus, as on the date of institution of the suit, Mohan Meakin was the registered proprietor of the mark “8 AM” in relation to corn flakes. Presently, both, parties hold registrations and Mohan Meakin’s registration is prior to that of VR. Hence VR’s claim has to be construed as that of passing off alone.

The Court further remarked that VR could have proceeded with the suit, as for passing off, with only the suit on the ground of infringement being stayed awaiting the adjudication by the IPAB, but it chose to have the suit qua passing off also stayed, to perpetuate the ex parte injunction against Mohan Meakin. Therefore VR’s conduct was not bonafide and this again disentitles it to any equitable remedy.

The Court further held that merely because Mohan Meakin has not considered it worthwhile to restrain VR from using the mark or to seek cancellation of the registration in favour of VR also cannot be a reason to continue restraint against Mohan Meakin. The Court also held that Mohan Meakin’s mark “8 AM” in conjunction with “Mohun’s” even otherwise distinguishes its products from those of VR and that there is no case of irreparable injury made out. Based on the above reasons, the Court held that VR has not satisfied the essential ingredients for establishing a prima facie case, to be entitled to an interim injunction and hence it vacated the ex parte ad-interim injunction against Mohan Meakin.