Facts:

• Cutler-Hammer, Inc. registered trademarks including “Cutler/Hammer, CH Label, and CH Control”. Some of these registrations lapsed due to non-payment of renewal fees. Eaton Corporation later became a subsequent registered proprietor of these trademarks.
• Cutler-Hammer, Inc. formed a joint venture with Indian promoters, resulting in the formation of Bhartia Cutler-Hammer Ltd., later renamed to BCH Electric Ltd. Under various agreements, (the Plaintiff) BCH was granted rights to act as an agent in India for products manufactured by Cutler-Hammer Group.
• Both Eaton and BCH filed trademark applications under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908 seeking interim injunctions about certain trademarks.
  

Background

Eaton and its subsidiary filed the Suit bearing No. CS(OS) 156/2012 along with an interim application I.A. No. 1204/2012 which had been disposed of by the impugned order. Thereafter, in March, 2012, BEL filed a suit bearing No. 575/2012 along with I.A. No. 4318/2012. These IAs were disposed of by the impugned order.

(Paragraph 5-20)

Impugned Order

• In the impugned order, the court considered various issues regarding the trademark dispute between Eaton Corporation and BCH Electric Ltd. (BEL). Here's a summary of the court's findings and decisions:
• Issues: The court identified several key issues to decide, including infringement of the trademark CUTLER-HAMMER, passing off of goods, entitlement of BEL to claim proprietorship rights after the expiry of the license agreement, entitlement of Eaton for interim injunction despite delay, and balance of conveniences between the parties.
• Trademark Registrations and Licenses: The court noted Eaton's prior adoption and use of the trademark CUTLER-HAMMER worldwide, including in India. It emphasized that BEL's registration of trademarks was obtained fraudulently, as it had acknowledged Eaton's proprietary rights in previous agreements.
• Wrongful Acts by BEL: The court found BEL guilty of several wrongful acts, including claiming proprietorship rights during the license period, impairing Eaton's trademarks, and challenging Eaton's registrations despite acknowledging its ownership rights.
• No Acquiescence or Abandonment: The court rejected BEL's plea of acquiescence and abandonment, stating that BEL's use of the trademark during the license period did not confer proprietorship rights.
• Balance of Convenience: The court concluded that the balance of convenience favoured Eaton, considering its longstanding presence and reputation as a premier industrial company.
• Interim Injunction: The court granted Eaton's request for an interim injunction, restraining BEL from using trademarks similar to CUTLER-HAMMER and dealing in goods under those trademarks. BEL was given three months to dispose of the existing stock.At last the court found in favour of Eaton, holding that BEL's actions regarding the trademarks were fraudulent and that Eaton had established a prima facie case for an interim injunction.

Main issue:

1. Whether Eton abandoned and further acquiesced in their use by BEL?
2. Whether BEL was the proprietor of the trademarks CH Control Black, Cutler-Hammer, Bhartia Cutler-Hammer, and Bhartia CH Control?