Section 8
It appears that the submissions made involve the interpretation of the clauses in the agreement in order to determine whether the arbitration clause covers the present dispute. This Court is persuaded to hold that prima facie clause 2.1.2 does appear to cover the expression 'musical works' contemplated under Section 2(p) CR Act. This is, however, only a prima facie view taken for the purposes of determining whether the present applications under Section 8 should be entertained and the parties to be referred to arbitration. The court is at this stage not required to express a final view on this aspect. Given the scheme of the Act and the scope of the powers of the arbitral tribunal under Section 16 it is for the arbitral tribunal to decide this question. The better course is that the parties should be referred to arbitration and all the points urged by the Plaintiff concerning the scope and ambit of the arbitration clause can be urged before the arbitral tribunal.
Sunday, May 30, 2010
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
If we go by the family settlement/arrangement, there is a primafacie, case in favour of the appellants who are plaintiffs in two civil suits, as, after 31.3.96, the respondents are not entitled to use the trade mark "Kangaro". If we go only by the Retirement Deeds, excluding the family settlement/arrangement from consideration, the respondents who are plaintiffs in one suit have a prima facie case to exclusive use of the trademark "Kangaro". Keeping in view the fact that (i) trade mark "Kangaro" was being used more or less as a family trademark till 31.3.1995; (ii) both the groups are using this trademark since prior to 7.1.1997, when status quo order was passed; (iii) No serious effort was made by the respondents for vacation of status quo order dated 7.1.1997, even after dismissal of SLP of the appellants in the proceedings arising out of CO. No. 4/97; (iv) both the groups have substantial turnover from use of the trademark "Kangaro", though turnover of the respondents is stated to be much brighter than that of the appellants, (v) In some countries the appellants are using this trade mark while in some other countries it is being used by the respondents; (vi) the court can take a final view on the nature, admissibility and applicability of the documents termed as family settlement/arrangement by the appellants and proposal/counter proposal, by the respondents, only after recording evidence, to be adduced during trial, we direct as under:
(1) During pendency of these suits, the parties shall maintain the status quo, as it existed on 7.1.1997, as regards use of the trademark "Kangaro", but, in order to ensure that there is no confusion as regards the manufacturer of the product they shall also prominently display the name of the manufacturer on the box in which the product reaches the ultimate customer.
(2) Both the groups shall maintain and file, in court, quarterly un-audited accounts of the turnover, gross profit and not profit from manufacture and sale of the products sold by them under the trademark "Kangaro", so that the group which ultimately succeeds can recover suitable damages from the other group. The accounts should be filed within 90 days of the close of each quarter. They shall also file annual audited accounts, containing the same information, by 30th June each year. The Appeals stand disposed of. The observations made in this order shall not affect or influence the decision of the suits on merit.
If we go by the family settlement/arrangement, there is a primafacie, case in favour of the appellants who are plaintiffs in two civil suits, as, after 31.3.96, the respondents are not entitled to use the trade mark "Kangaro". If we go only by the Retirement Deeds, excluding the family settlement/arrangement from consideration, the respondents who are plaintiffs in one suit have a prima facie case to exclusive use of the trademark "Kangaro". Keeping in view the fact that (i) trade mark "Kangaro" was being used more or less as a family trademark till 31.3.1995; (ii) both the groups are using this trademark since prior to 7.1.1997, when status quo order was passed; (iii) No serious effort was made by the respondents for vacation of status quo order dated 7.1.1997, even after dismissal of SLP of the appellants in the proceedings arising out of CO. No. 4/97; (iv) both the groups have substantial turnover from use of the trademark "Kangaro", though turnover of the respondents is stated to be much brighter than that of the appellants, (v) In some countries the appellants are using this trade mark while in some other countries it is being used by the respondents; (vi) the court can take a final view on the nature, admissibility and applicability of the documents termed as family settlement/arrangement by the appellants and proposal/counter proposal, by the respondents, only after recording evidence, to be adduced during trial, we direct as under:
(1) During pendency of these suits, the parties shall maintain the status quo, as it existed on 7.1.1997, as regards use of the trademark "Kangaro", but, in order to ensure that there is no confusion as regards the manufacturer of the product they shall also prominently display the name of the manufacturer on the box in which the product reaches the ultimate customer.
(2) Both the groups shall maintain and file, in court, quarterly un-audited accounts of the turnover, gross profit and not profit from manufacture and sale of the products sold by them under the trademark "Kangaro", so that the group which ultimately succeeds can recover suitable damages from the other group. The accounts should be filed within 90 days of the close of each quarter. They shall also file annual audited accounts, containing the same information, by 30th June each year. The Appeals stand disposed of. The observations made in this order shall not affect or influence the decision of the suits on merit.
Copyright Act, 1957
Section 63
Code of Criminal Procedure, 1973
Section 482
Complaint— Quashing of.
The complaint which was essentially about violation of the complainant's registered design was made to appear as if the infringements were of its trademarks and copyright
HELD "The IO appears not to have considered either Section 15 (2) of the Copyright Act or the relevant provisions of the Designs Act, 2000 or the fact that the Respondent No. 2 in fact holds the registration of the design in respect of its products. Respondent No. 2 admittedly held four registrations under the Designs Act in respect of the product in question even as of that date. Under Section 15 (2) of the Copyright Act, a copyright granted in respect of a product for which a registration has been granted under the Designs Act, would cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright. There can be no manner of doubt that the product of Respondent No. 2 has been reproduced more than 50 times. Therefore, any copyright in such design would cease by operation of law. "
In the considered view of this Court, the FIR and chargesheet when examined as a whole do not even prima facie make out a case for violation of the Copyright Act 1957. In other words, the offence under Section 63 of the Copyright Act is not even prima facie attracted. FIR and all proceedings consequent thereto, quashed.
Code of Criminal Procedure, 1973
Section 482
Complaint— Quashing of.
The complaint which was essentially about violation of the complainant's registered design was made to appear as if the infringements were of its trademarks and copyright
HELD "The IO appears not to have considered either Section 15 (2) of the Copyright Act or the relevant provisions of the Designs Act, 2000 or the fact that the Respondent No. 2 in fact holds the registration of the design in respect of its products. Respondent No. 2 admittedly held four registrations under the Designs Act in respect of the product in question even as of that date. Under Section 15 (2) of the Copyright Act, a copyright granted in respect of a product for which a registration has been granted under the Designs Act, would cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright. There can be no manner of doubt that the product of Respondent No. 2 has been reproduced more than 50 times. Therefore, any copyright in such design would cease by operation of law. "
In the considered view of this Court, the FIR and chargesheet when examined as a whole do not even prima facie make out a case for violation of the Copyright Act 1957. In other words, the offence under Section 63 of the Copyright Act is not even prima facie attracted. FIR and all proceedings consequent thereto, quashed.
Trade and Merchandise Marks Rules, 1959
Rule 24(3)
Dispute as to certificate of search of trade mark "Bharat Marshal" — Resemblance of the two marks, which is likely to cause deception or confusion
HELD " in the present case I need not go into details and leave it open to the Registrar of Trade Marks to go into the question of resemblance and deceptive similarity as used in sub rule 1 and 3 of the Rule 24 of the Trade and Merchandise Marks Rule, 1959 as the matter is being remanded back. It is apparent that the Registrar of Trade Marks has given contradictory reports and the certificate dated 28th July, 1995 issued to the respondent No. 7 was without examining the earlier marks, which had been registered on the date when the application under TM Form No-60 was filed by the respondent No. 7 and when certificate was issued. The Registrar of Trade Marks will re-examine the matter in the light of the reports submitted by the Registrar of Trade Marks on the search carried out on the request of the petitioner. The impugned certificate dated 28th July, 1995 is accordingly quashed and set aside and the matter is remanded back to the Registrar of Trade Marks to re-examine the Form TM-60 filed by the respondent No. 7 and pass an appropriate order".
Dispute as to certificate of search of trade mark "Bharat Marshal" — Resemblance of the two marks, which is likely to cause deception or confusion
HELD " in the present case I need not go into details and leave it open to the Registrar of Trade Marks to go into the question of resemblance and deceptive similarity as used in sub rule 1 and 3 of the Rule 24 of the Trade and Merchandise Marks Rule, 1959 as the matter is being remanded back. It is apparent that the Registrar of Trade Marks has given contradictory reports and the certificate dated 28th July, 1995 issued to the respondent No. 7 was without examining the earlier marks, which had been registered on the date when the application under TM Form No-60 was filed by the respondent No. 7 and when certificate was issued. The Registrar of Trade Marks will re-examine the matter in the light of the reports submitted by the Registrar of Trade Marks on the search carried out on the request of the petitioner. The impugned certificate dated 28th July, 1995 is accordingly quashed and set aside and the matter is remanded back to the Registrar of Trade Marks to re-examine the Form TM-60 filed by the respondent No. 7 and pass an appropriate order".
Trade Marks Act, 1999
Section 92
Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14
Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.
Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.
Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14
Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.
Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.
Jurisdiction of Court Section 20, Code of Civil Procedure, 1908 read with Trade Marks Act, 1999 Section 134
Section 20(c) read as under:
"(c) the cause of action, whole or in part arises."
A bare reading of this provision leaves no room for any doubt that the present suit for injunction filed at this Court lies within its jurisdiction as the cause of action has arisen wholly or partly within the local limits of the same. No doubt, Section 20 has been codified for the purpose that the matter be tried as near as possible so that the defendant is not put to any inconvenience as regards expenses of travelling from long distances in order to defend himself. In the present case, according to the plaintiff company the suit is maintainable since a part of cause of action had accrued within the territorial jurisdiction of Delhi courts on the ground that the defendant is carrying on its business in Delhi, the defendant has issued a news article in the Delhi edition of Times of India, the defendant has a factory at Shivaji Marg, New Delhi and the defendant No. 3 who has been impleaded also resides in Delhi. It is no doubt true that the suit could have been instituted in Mumbai itself where the defendant has its registered office, but this fact however does not take away the right of the plaintiff to file its suit in this court as part of the cause of action has arisen here. In the present case it is specifically alleged by the plaintiff company that the plaintiffs rights have been violated in Delhi. Learned counsel has also argued that by means of the notice sent by defendant No. 1 the plaintiff has been threatened in Delhi, therefore, at the prima facie stage this Court is of the considered view that this court has jurisdiction to entertain the present suit.
"(c) the cause of action, whole or in part arises."
A bare reading of this provision leaves no room for any doubt that the present suit for injunction filed at this Court lies within its jurisdiction as the cause of action has arisen wholly or partly within the local limits of the same. No doubt, Section 20 has been codified for the purpose that the matter be tried as near as possible so that the defendant is not put to any inconvenience as regards expenses of travelling from long distances in order to defend himself. In the present case, according to the plaintiff company the suit is maintainable since a part of cause of action had accrued within the territorial jurisdiction of Delhi courts on the ground that the defendant is carrying on its business in Delhi, the defendant has issued a news article in the Delhi edition of Times of India, the defendant has a factory at Shivaji Marg, New Delhi and the defendant No. 3 who has been impleaded also resides in Delhi. It is no doubt true that the suit could have been instituted in Mumbai itself where the defendant has its registered office, but this fact however does not take away the right of the plaintiff to file its suit in this court as part of the cause of action has arisen here. In the present case it is specifically alleged by the plaintiff company that the plaintiffs rights have been violated in Delhi. Learned counsel has also argued that by means of the notice sent by defendant No. 1 the plaintiff has been threatened in Delhi, therefore, at the prima facie stage this Court is of the considered view that this court has jurisdiction to entertain the present suit.
Copyright Act, 1957
Section 52(l)(m) — Copyrights of scripts, books, publications re-publication of the works of E.V. Ramasami (Popularly called as Periyar)
HELD
The author of Kudiyarasu, i.e. Late Periyar, was the owner and the articles published in the newspapers mostly related to the then existed economical, political, social and religious topics. Therefore, unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright as per Section 52(l)(m) .
Reproduction in a newspaper, magazine or other periodical . Unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright . Copyright in literary materials can only be an intellectual property and there has to be material to show that it was specially assigned—No written or other materials to show that a copyright reserved by author of those articles and that he also assigned it in favour of the plaintiff . Unless it is shown that they intend to reproduce pre-existing works, an order of injunction cannot be granted on the basis of apprehension and unsubstantiated allegations . Plaintiff failed to establish any ownership of the copy right in their favour and a corresponding infringement of copyright on the part of the respondents. Application for interim injunction, dismissed.
HELD
The author of Kudiyarasu, i.e. Late Periyar, was the owner and the articles published in the newspapers mostly related to the then existed economical, political, social and religious topics. Therefore, unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright as per Section 52(l)(m) .
Reproduction in a newspaper, magazine or other periodical . Unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright . Copyright in literary materials can only be an intellectual property and there has to be material to show that it was specially assigned—No written or other materials to show that a copyright reserved by author of those articles and that he also assigned it in favour of the plaintiff . Unless it is shown that they intend to reproduce pre-existing works, an order of injunction cannot be granted on the basis of apprehension and unsubstantiated allegations . Plaintiff failed to establish any ownership of the copy right in their favour and a corresponding infringement of copyright on the part of the respondents. Application for interim injunction, dismissed.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit. [Paras 11 & 12;
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit. [Paras 11 & 12;
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
[Paras 11 & 12;
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
[Paras 11 & 12;
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
[Paras 11 & 12;
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
[Paras 11 & 12;
Trade Mark Act, 1999
Section 29 — the respondent/defendant has taken a stand that he has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 having entirely different from the quality of plaintiff such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with attachment of each figures of 'NAYA JET BRAND' colour combination and also a plea to the effect that there are lot of differences of the figures of'JET BRAND' of the plaintiff and 'NAYA JET BRAND' of the defendant in all aspects a cursory look of the appellant/plaintiffs label Ex.A. 1 and the Ex.A. 3 label of the respondent/defendant, this Court is of the considered view that the respondent/defendant has adopted the appellant/plaintiffs label Ex.A. 1 with small/minute changes in regard to the visual of flying of aeroplane and adding a word 'NAYA' before the word 'JET BRAND' in English and further there is phonetic similarity of'JET BRAND' except the word 'NAYA' and these will not alter the situation in any way in favour of respondent/defendant including the one the respondent/defendant even selling the lungies in the name of 'QUEEN JET BRAND' from 16.7.1999 with a device of aeroplane flying will not enure to his benefit and accordingly, this Court holds that the respondent/defendant with a dishonest intention has adopted the trading style label similar to that of appellant/plaintiff and has practised deception and has committed an act of passing off infringement of trade mark of the appellant/plaintiff and resultantly, the appellant/plaintiff is entitled to the relief of permanent injunction restraining the respondent/ defendant, his men, agents etc. claiming under him from using or attempting to use or enabling others to use the word NAYA JET the devise of the aeroplane or in combination thereof and (or in any other Trade Mark identical or deceptively similar or in any other manner infringing the plaintiffs Trade mark registered in Regn. No. 467004 in clause 24 in respect of Textile cloth including lungies and further that the respondent/defendant is directed to produce before the trial Court all his accounts of sales and profits from the year 1996-1997 for determining the damages/compensation payable by him to the appellant/plaintiff and in this regard, the appellant/plaintiff is directed to file necessary application by means of separate proceeding and the trial Court shall determine the same in the manner known to law and the points 1 to 4 are answered accordingly thereby perforcing this Court to interfere with the findings rendered by the trial Court and consequently allows the appeal to promote substantial cause of justice. [Para 25 & 33]
Trade Marks Act, 1999
Section 29 — Deceptively similar " For a deceptive similarity, the resemblance must be such as to be likely to . deceive or cause confusion. What degree of resemblance is necessary is, from the nature of things, a matter incapable of definition a priori. Each case must depend upon on its own facts and circumstances, in the considered opinion. The risk of deceptive and confusion ought not to be fancifully and it must be a real one the decree of similarity of the two marks in sight and sound, looking not just at the registered mark as a whole but also at its salient or essential features or the idea behind it, the whole range of potential customers for the goods protected by the registered mark, and not just customers for the goods of the particular type marked by the defendant, the nature and kind of customer likely to purchase the plaintiffs' and defendants' goods; the manner in which the purchasers of the goods are generally made."
Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.
Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.
Trade Marks Act, 1999
Section 27 — Passing off. "DABUR Dashmularishta" and "DABUR Ashokarishta" Sufficient evidence of the palintiff available to prove that the plaintiff is only the proprietor and prior user of the labels are of the palintiff. Labels of the defendant are simple imitations or substantial reproductions of the plaintiffs labels therefore the profits of the defendant are the losses suffered by the plaintiff HELD that the defendant must be directed to produce its account books. Compensatory damages awarded .The ploy of defendant is that it simply picked up the label in the advertisement of the plaintiffs product and used it as their label for 'Dashmularishta' in terms of Para 21 (i), (ii and (iii) of the plaint with costs along with damages to the tune of Rs. 1 lac as against the relief of Para 21 (iv) of the plaint. The decree be drawn accordingly.
Drugs and Cosmetics Act, 1940
Sections 17-B & 17-D — 'JOLEN" — Permission/approval granted to respondent for manufacturing cosmetics under the Trade Mark "JOLEN"
Claim that it was spurious cosmetics HELD
The Drugs Controller has not committed any illegality in granting licence to R-2 for manufacture of cosmetics under the trade name JOLEN, merely because the said trade name stands registered in the name of the petitioner, in the light of the facts of this case, particularly when the said "registration" is of no use and not into effective operation, by force of law. This Court finds no merit on the objections of the petitioner on this issue. There is no fault in the order of R-l dated 1.12.2007. It is once again clarified that any observations made by this court on the trade mark dispute fleetingly will not be taken as any observations of this Court on that dispute. The writ petition is, however, liable to be dismissed and is dismissed as such. No order as to costs.
It is not within the-scope and powers of the Drug Controlling Authority to examine as to whether any action of infringement or passing off is taking place between two rival contenders Non-disclosure of some facts by respondents are not so material so as to call the action as fraudulent, and to wrest away the licence Madras High Court granted injunction in favour of Rival mark . Entire case of the petitioner rests on "registration" of the trade mark, but he did not initiate any action of infringement rather action initiated by the rival against the petitioner. Held that there is no illegality in granting licence for manufacture of cosmetics
Claim that it was spurious cosmetics HELD
The Drugs Controller has not committed any illegality in granting licence to R-2 for manufacture of cosmetics under the trade name JOLEN, merely because the said trade name stands registered in the name of the petitioner, in the light of the facts of this case, particularly when the said "registration" is of no use and not into effective operation, by force of law. This Court finds no merit on the objections of the petitioner on this issue. There is no fault in the order of R-l dated 1.12.2007. It is once again clarified that any observations made by this court on the trade mark dispute fleetingly will not be taken as any observations of this Court on that dispute. The writ petition is, however, liable to be dismissed and is dismissed as such. No order as to costs.
It is not within the-scope and powers of the Drug Controlling Authority to examine as to whether any action of infringement or passing off is taking place between two rival contenders Non-disclosure of some facts by respondents are not so material so as to call the action as fraudulent, and to wrest away the licence Madras High Court granted injunction in favour of Rival mark . Entire case of the petitioner rests on "registration" of the trade mark, but he did not initiate any action of infringement rather action initiated by the rival against the petitioner. Held that there is no illegality in granting licence for manufacture of cosmetics
Saturday, May 29, 2010
Civil Procedure Code, 1908
Order 17 Rule 1(2) — When the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the following day is necessary — Instead of deciding the case at the interlocutory stage, the suit itself should be disposed of finally at a very early date.
Infringement of patents — Interim order — Suit pending for long time — Suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction — Matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction
Respondent shall be entitled to sell its product but it shall maintain an accurate records/accounts of its all India and export sales — No adjournment whatsoever ordinarily will be granted and the suit shall be finally disposed of on or before 30th November, 2009.
Infringement of patents — Interim order — Suit pending for long time — Suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction — Matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction
Respondent shall be entitled to sell its product but it shall maintain an accurate records/accounts of its all India and export sales — No adjournment whatsoever ordinarily will be granted and the suit shall be finally disposed of on or before 30th November, 2009.
Trade Marks Act, 1999
Section 45
Trade & Merchandise Marks Act, 1958
Section 44
Validity of the assignment. Interpretation of Section 45
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
When there is no apparent t on the face of the Deed of Assignment and petitioner having failed to prove that any dispute was pending in any court of law relating to the cancellation or validity of the assignment Deed then when once an Assignment Deed has been executed, the assignor ceases to have any right, title or interest in the property assigned . It is not open to the assignor to cancel the assignment by means of a communication therefore no infirmity in the impugned order.
Writ petition dismissed.
Trade & Merchandise Marks Act, 1958
Section 44
Validity of the assignment. Interpretation of Section 45
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
When there is no apparent t on the face of the Deed of Assignment and petitioner having failed to prove that any dispute was pending in any court of law relating to the cancellation or validity of the assignment Deed then when once an Assignment Deed has been executed, the assignor ceases to have any right, title or interest in the property assigned . It is not open to the assignor to cancel the assignment by means of a communication therefore no infirmity in the impugned order.
Writ petition dismissed.
Trade Marks Act, 1999
Sections 27 & 29
Trade Mark "ketpod" of the plaintiff against defendants' mark "zetpod"
HELD it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words "ket pod" used by the plaintiff and the word "zet pod" are in my view phonetically similar. While pronouncing both, these words the assent and stress is naturally on the syllable "et". It one replace the letter "k" in word "ket pod" with letter "t", the word "tet pod" would still have pronounced use of syllable "et". I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark at the plaintiff. It is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark, admittedly came to market recently in 2008.The defendants action smacks of this dishonesty.
Interim injunction made absolute.
Trade Mark "ketpod" of the plaintiff against defendants' mark "zetpod"
HELD it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words "ket pod" used by the plaintiff and the word "zet pod" are in my view phonetically similar. While pronouncing both, these words the assent and stress is naturally on the syllable "et". It one replace the letter "k" in word "ket pod" with letter "t", the word "tet pod" would still have pronounced use of syllable "et". I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark at the plaintiff. It is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark, admittedly came to market recently in 2008.The defendants action smacks of this dishonesty.
Interim injunction made absolute.
Trade Marks Act, 1999
Section 2(1)(zb)
Trademark 'TUFF' and 'TUFF LABEL'.
HELD Definition of 'trade mark' under the Act means a mark "which is capable of distinguishing the goods or services of one person from those of others Use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the Act the Defendant has been unable to show that its goods bearing the mark TUFF were at any point of time since 1991 and prior to 1996 available in the market. There is absolutely no evidence placed on record by the Defendant to show that it has actually sold its goods using the mark 'TUFF' or 'TUFF & TUFF' even thereafter. For proving prior user, the Defendant repeatedly referred to the two newspaper advertisements inserted by it in 1993, the six trade enquiries between 1994 and 1995 emanating from these advertisements. Between 1993 and 1995, there were seven indents of John and John Traders and one indent of Bolt House. There is also a letter from John and John Traders asking the Defendant to send goods from outside. Then we have the grant by the Postal Department of the telegraphic address 'TUFF' to the Defendant.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants
Interim injunction granted
Trademark 'TUFF' and 'TUFF LABEL'.
HELD Definition of 'trade mark' under the Act means a mark "which is capable of distinguishing the goods or services of one person from those of others Use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the Act the Defendant has been unable to show that its goods bearing the mark TUFF were at any point of time since 1991 and prior to 1996 available in the market. There is absolutely no evidence placed on record by the Defendant to show that it has actually sold its goods using the mark 'TUFF' or 'TUFF & TUFF' even thereafter. For proving prior user, the Defendant repeatedly referred to the two newspaper advertisements inserted by it in 1993, the six trade enquiries between 1994 and 1995 emanating from these advertisements. Between 1993 and 1995, there were seven indents of John and John Traders and one indent of Bolt House. There is also a letter from John and John Traders asking the Defendant to send goods from outside. Then we have the grant by the Postal Department of the telegraphic address 'TUFF' to the Defendant.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants
Interim injunction granted
Trade Marks Act, 1999
Sections 9, 30 and 35
'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.
We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.
We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
Trade Marks Act, 1999
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Code of Civil Procedure, 1908
Order 7 Rule 11 read with Trade Marks Act, 1999 Sections 134 and 135
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Trade Marks Act, 1999
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Code of Civil Procedure, 1908
Order 7 Rule 11 read with Trade Marks Act, 1999 Sections 134 and 135
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Trade Marks Act, 1999
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Code of Civil Procedure, 1908
Order 7 Rule 11 read with Trade Marks Act, 1999 Sections 134 and 135
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Criminal Procedure Code, 1973
Section 340
It cannot also be lost sight of that in criminal prosecution there is waste of public funds and time of courts. For this reason also in every case of perjury the court would not mechanically take cognizance or direct prosecution. Prosecution should beordered only when it is considered expedient and in the interest of justice to punish the delinquent. Every incorrect or false statement does not make it incumbent on the court to order prosecution. [Para 23]
This court in Rawal Singh v. Quality Stores, AIR 1986 (Delhi) 236 in spite of finding a document having been fabricated, yet dismissed the application under Section 340 of the Cr.PC finding it not to be a fit case for recourse to any such action. In my view, the application under Section 340 of the Cr.PC at this stage if allowed would give a handle to the defendants against the plaintiff and would give unfair advantage to the defendants over plaintiff in the suit proceedings. It is still to be investigated and found out by this court as to whether the plaintiff had devised improvements I modifications over and above the drawings of CMERI and if so whether the defendants have copied I infringed the said drawings of the plaintiff. Allowing the application at this stage would tantamount to this court returning finding that the drawings of the plaintiff are the same as that of the CMERI. While the proposition in R. Karuppan (Supra) & Mahila Vinod Kumari (Supra) cannot be disputed, it cannot also be lost sight of that too frequent prosecutions for such offences tend to defeat its very object. It is only in glaring cases of falsity where conviction is highly likely that the court should direct prosecution. [Para 25]
It cannot also be lost sight of that in criminal prosecution there is waste of public funds and time of courts. For this reason also in every case of perjury the court would not mechanically take cognizance or direct prosecution. Prosecution should beordered only when it is considered expedient and in the interest of justice to punish the delinquent. Every incorrect or false statement does not make it incumbent on the court to order prosecution. [Para 23]
This court in Rawal Singh v. Quality Stores, AIR 1986 (Delhi) 236 in spite of finding a document having been fabricated, yet dismissed the application under Section 340 of the Cr.PC finding it not to be a fit case for recourse to any such action. In my view, the application under Section 340 of the Cr.PC at this stage if allowed would give a handle to the defendants against the plaintiff and would give unfair advantage to the defendants over plaintiff in the suit proceedings. It is still to be investigated and found out by this court as to whether the plaintiff had devised improvements I modifications over and above the drawings of CMERI and if so whether the defendants have copied I infringed the said drawings of the plaintiff. Allowing the application at this stage would tantamount to this court returning finding that the drawings of the plaintiff are the same as that of the CMERI. While the proposition in R. Karuppan (Supra) & Mahila Vinod Kumari (Supra) cannot be disputed, it cannot also be lost sight of that too frequent prosecutions for such offences tend to defeat its very object. It is only in glaring cases of falsity where conviction is highly likely that the court should direct prosecution. [Para 25]
Trade Marks Act, 1999
Section 12
Honest concurrent user as to the trade mark "GEMCAL". Suit for permanent injunction, passing off and rendition of accounts on the basis of the prior user filed by appellant was dismissed.
HELD Both the parties have been selling products under the said mark for over two years prior to the notice sent by the plaintiff to the defendant in February 2003. The actual use by both parties has been thus almost concurrent except for the period of about three months for which the plaintiff was selling its product prior to sale by the defendant till the first notice was sent by the plaintiff to the defendant. As the mark has not been registered in the name of either party, the search in the trademark registry also did not yield any result in this regard. No instances of confusion between the products of the parties have been shown from any materials on the record. We had also seen the labels on the small boxes of the medicine manufactured by the appellant and respondent under the said mark which showed that they were visually distinct from each other. None of the parties were the registered owners of the trademark .
This clearly shows that the appellants were only creating a false image so as to marginalize and scuttle the functioning of a small time pharmaceutical manufacturer only on account of the fact that the appellant was a leading pharmaceutical company. Therefore, this contention of the learned counsel for the appellant that the respondent was not a bona fide concurrent user or that it had not taken the plea of concurrent user or that it was indulging in passing off of its pharmaceutical preparations in the name of pharmaceutical preparations of the appellant is not tenable in law.
Honest concurrent user as to the trade mark "GEMCAL". Suit for permanent injunction, passing off and rendition of accounts on the basis of the prior user filed by appellant was dismissed.
HELD Both the parties have been selling products under the said mark for over two years prior to the notice sent by the plaintiff to the defendant in February 2003. The actual use by both parties has been thus almost concurrent except for the period of about three months for which the plaintiff was selling its product prior to sale by the defendant till the first notice was sent by the plaintiff to the defendant. As the mark has not been registered in the name of either party, the search in the trademark registry also did not yield any result in this regard. No instances of confusion between the products of the parties have been shown from any materials on the record. We had also seen the labels on the small boxes of the medicine manufactured by the appellant and respondent under the said mark which showed that they were visually distinct from each other. None of the parties were the registered owners of the trademark .
This clearly shows that the appellants were only creating a false image so as to marginalize and scuttle the functioning of a small time pharmaceutical manufacturer only on account of the fact that the appellant was a leading pharmaceutical company. Therefore, this contention of the learned counsel for the appellant that the respondent was not a bona fide concurrent user or that it had not taken the plea of concurrent user or that it was indulging in passing off of its pharmaceutical preparations in the name of pharmaceutical preparations of the appellant is not tenable in law.
Civil Procedure Code, 1908
Sections 16 to 20
Territorial Jurisdiction ingredients to exercise territorial jurisdiction indicated.
HELD The mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely passive but is interactive permitting the users not only to have access to the contents thereof but, also subscribe to the services provided by the owners / operators, may in certain circumstances create jurisdiction in the court of that place where the website is accessible. Where the website is interactive, the level of interactivity becomes relevant and in cases of limited interactivity such interactivity may not be sufficient for a court to exercise jurisdiction. [Para 11]
In the present case, the website www.expresspharmapulse.com containing the information of the defendant company and also information regarding the drug Tadarich is passive in nature. It has no section for subscription to its services and the options which could be exercised by subscriber. This information in no manner can be said to be inviting any subscription from anyone including the consumers. [Para 15]
It is pertinent to mention here that the defendant company has dis-continued with its product "Tadarich" and instead they are manufacturing drug Tadalafil in the brand name of Tadasip which does not include the alleged trade mark "CIALIS" owned by the plaintiff. [Para 16]
As discussed above, the website proved on the record does not indicate that the defendant invited any subscription from anyone including Delhi for supply of their product. [Para 18]
Therefore, it is concluded that the website containing the information of the defendant company and its product "Tadarich" in no manner can be said to be interactive permitting the users, not only access to the contents thereof but, also subscribe to the services provided by the defendant. Even if it is taken that a limited interactivity is there in the information, this by itself is not sufficient for this court to exercise its jurisdiction. [Para 19]
Territorial Jurisdiction ingredients to exercise territorial jurisdiction indicated.
HELD The mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely passive but is interactive permitting the users not only to have access to the contents thereof but, also subscribe to the services provided by the owners / operators, may in certain circumstances create jurisdiction in the court of that place where the website is accessible. Where the website is interactive, the level of interactivity becomes relevant and in cases of limited interactivity such interactivity may not be sufficient for a court to exercise jurisdiction. [Para 11]
In the present case, the website www.expresspharmapulse.com containing the information of the defendant company and also information regarding the drug Tadarich is passive in nature. It has no section for subscription to its services and the options which could be exercised by subscriber. This information in no manner can be said to be inviting any subscription from anyone including the consumers. [Para 15]
It is pertinent to mention here that the defendant company has dis-continued with its product "Tadarich" and instead they are manufacturing drug Tadalafil in the brand name of Tadasip which does not include the alleged trade mark "CIALIS" owned by the plaintiff. [Para 16]
As discussed above, the website proved on the record does not indicate that the defendant invited any subscription from anyone including Delhi for supply of their product. [Para 18]
Therefore, it is concluded that the website containing the information of the defendant company and its product "Tadarich" in no manner can be said to be interactive permitting the users, not only access to the contents thereof but, also subscribe to the services provided by the defendant. Even if it is taken that a limited interactivity is there in the information, this by itself is not sufficient for this court to exercise its jurisdiction. [Para 19]
Trade Marks Act, 1999
Sections 2 & 29
Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.
HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths. [Para 20]
The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX. [Para 24]
With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver. [Para 25]
Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.
HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths. [Para 20]
The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX. [Para 24]
With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver. [Para 25]
Companies Act, 1956
Copyright Act, 1957 — Section 61
Contract Act
HELD The question which arises is that should this court come to the rescue of a plaintiff whose case is steeped in such illegality. The answer necessarily has to be in negative. The present is a case where the plaintiff as well as the defendant against whom the relief has been claimed are both not entitled to the property which is of a company in litigation. The witness of the plaintiff in his affidavit by way of examination in chief also supports the said view. From his affidavit, it is not borne out and is not believable that the plaintiff at the time of entering into the agreement was not aware of the illegality of the transaction. The plaintiff as a trade person is presumed to know of proceedings for winding up having been initiated against Magnasound and it is unbelievable that the plaintiff while acquiring the copyrights of Magnasound under the agreement dated 17th June, 2004 but through the defendant No.3 was not aware of the reason therefore.
Doctrine of pari delicto potiar est conditio
" the courts will refuse to enforce an illegal agreement at the instance of a person who is himself a party to an illegality or fraud, in detail."
Suit dismissed with exemplary costs copy forwarded to Official Liquidator.
Patents Act, 1970
Section 8
A detailed chart has been produced by the Defendant, which the Plaintiff has been unable to counter, which shows the history of the processing of the application by the Plaintiff in the US Patent Office. It shows that after the filing of Form 3 in India i.e. on 21st June 2001 and prior to the date of filing of reply i.e. on 19th October 2005 there were a series of developments in the US patent application. The examination report in the US is called as an Office Action. The final Office Action was prepared on 26th July 2001 whereby claims 1 to 8 and 10 to 16 were rejected. In response thereafter on 25th September 2001, the Plaintiff carried out a preliminary amendment of the claims. On 15th January 2002 some of these claims were rejected. A response was filed thereto by the Plaintiff on 8th February 2002. There was another non-final Office Action on 2nd July 2002 where again Clauses 1, 3 to 8,10 to 15 and 17 to 22 were rejected. There was yet another final office action on 19th November 2002 after the Plaintiff had sought to respond to the rejection by the earlier Office Action. The Plaintiff also filed an appeal on 18th February 2003 while simultaneously responding to the final Office Action of 19th November 2002. There was a final Office Action on 21st December 2004. From the Examiner Report of 20th June 2005 it is apparent from the chart that there were several developments in the US Patent Office Action which obviously did have a bearing on the examination of the application by the Indian authorities. When, by the letter dated 13th September 2004 (delivered to the Plaintiff on 20th October 2004), the Controller of Patents was asking for "details regarding the search and I or examination report in respect of same or substantially same invention filed as referred to in Rule 12(3) of the Patents Rules 2003 in respect of same or substantially same inventions filed in any one of the major patent offices, such as USPTO, EPO and JPO etc." the Plaintiff obviously was required to furnish the above details. The Plaintiff itself does not deny that it did not do so. The filing of the international search report in June 2001 was not in compliance with the above requirement. [Para 44]
It is not possible to accept the submission, made by referring to the Halsburyfs Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act. It cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff. The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims to the torus shape of the compression spring, which was a key feature of the subject device. Had the Controller been informed of the Plaintiff?s own patent No. 3932005 dated 13th January 1976, he would have been called upon to examine if that patent taught the use of a toroidal shape of a compression member and whether therefore the subject device was an inventive step within the meaning of the Act. [Para 45]
Under the amended Section 48 (1) of the Act, the patent granted shall, where the subject matter of the patent is a product, give the patentee the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Likewise, where the subject matter of the patent is a process, the patentee would have the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, as well as from the act of using, offering for sale, selling or importing any product obtained directly by that process in India. The change is therefore, that under the amended Section 48 a right is given to the patent holder Plaintiff, to prevent third parties from making, selling or offering for sale, the product for which such patent has been granted without the prior consent of the patent holder. The amended Section 48, however, does not in any manner change the position as regards the validity of the patent itself. It would still be vulnerable to challenge in terms of Section 13 (4) read with Sections 64 and 107 of the Act. A similar conclusion has been arrived at in Bajaj Auto Ltd. v. TVS Motor Company Ltd. (supra). [Para 48]
A plain reading of the above provision is that the patent in respect of the subject device "may be used by or on behalf of the Government for the purpose merely of its own use." This is an implied condition of the grant of patent. In the circumstances, if the government through the Ministry of Railways has itself supplied the drawings to the prospective suppliers and asked them to supply side bearing pads in conformity with those drawings, it cannot possibly be said that there is an infringement by either the Railways or its contractor of the patent. In the present case, the Plaintiff has also participated successfully in the very tender in which the Consortium of the defendants has been awarded a small percentage of the contract for supply of side bearing pads. It knew of the above stipulation and has not chosen to question it till the tender was finalised and the contract awarded. The Plaintiff, by participating in such tender, must be taken to have consented to the use of its patent by both the Railways as well as any supplier of the Railways to whom the contract for supply was to be awarded. It is also not in dispute that the Defendants have formed their Consortium only for supplying the subject device to the Railways. Although Section 156 of the Act states that patent will bind the Government, that provision has also been made "subject to the other provisions contained in this Act." A harmonious reading of Sections 47 and 156 of the Act would indicate that the object is not to involve the Government or its department or a contractor acting on its behalf in any litigation involving infringement of patent when the product or process in question is for the "own use" of the government. This is a price that the patent holder pays for getting a sizeable chunk of the contract, in this case 95%, which is virtually a monopoly. Where it is not for the governments own use, or where the Government supplies the drawings of c. patented product without the knowledge or consent of the patent holder, then Section 156 would permit enforcement and protection of the patent even against the govern ment. [Para 52]
For the above reasons, this Court is not satisfied that the Plaintiff has been able to make out a prima facie case for the continuation of the interim injunction in its favour. As will be seen hereafter, the balance of convenience at this stage also appears to be in favour of the Defendants 2, 3 and 4 for not granting an interim injunction in favour of the Plaintiff. Balance of convenience 55. The finalised tender document has been placed on record. What has been awarded to the Plaintiff is 95% of the total, quantity of the device to be supplied to the Railways. In fact Clause 7 of the "instructions" appended to the tender itself made it clear that "Item is reserved for bulk procurement for RDSO approved sources. Others can be considered for developmental order." What the Consortium has been awarded is the "developmental order" which is barely 5% of the total quantity. If the object of the Act is to ensure that the patent holder has the exclusive right to commercially exploit the patent, then that object is more or less achieved in the present tender as well, notwithstanding Section 47 of the Act. By refusing an injunction, while still imposing conditions on the Defendants 2, 3 and 4 to maintain accounts, the Court would be ensuring that in the event of the Plaintiff succeeding, it will be compensated even as regards the quantity. In the above circumstances, the balance of convenience is not in favour of grant of an interim injunction as prayed for by the Plaintiff. [Para 54]
Contract Act
HELD The question which arises is that should this court come to the rescue of a plaintiff whose case is steeped in such illegality. The answer necessarily has to be in negative. The present is a case where the plaintiff as well as the defendant against whom the relief has been claimed are both not entitled to the property which is of a company in litigation. The witness of the plaintiff in his affidavit by way of examination in chief also supports the said view. From his affidavit, it is not borne out and is not believable that the plaintiff at the time of entering into the agreement was not aware of the illegality of the transaction. The plaintiff as a trade person is presumed to know of proceedings for winding up having been initiated against Magnasound and it is unbelievable that the plaintiff while acquiring the copyrights of Magnasound under the agreement dated 17th June, 2004 but through the defendant No.3 was not aware of the reason therefore.
Doctrine of pari delicto potiar est conditio
" the courts will refuse to enforce an illegal agreement at the instance of a person who is himself a party to an illegality or fraud, in detail."
Suit dismissed with exemplary costs copy forwarded to Official Liquidator.
Patents Act, 1970
Section 8
A detailed chart has been produced by the Defendant, which the Plaintiff has been unable to counter, which shows the history of the processing of the application by the Plaintiff in the US Patent Office. It shows that after the filing of Form 3 in India i.e. on 21st June 2001 and prior to the date of filing of reply i.e. on 19th October 2005 there were a series of developments in the US patent application. The examination report in the US is called as an Office Action. The final Office Action was prepared on 26th July 2001 whereby claims 1 to 8 and 10 to 16 were rejected. In response thereafter on 25th September 2001, the Plaintiff carried out a preliminary amendment of the claims. On 15th January 2002 some of these claims were rejected. A response was filed thereto by the Plaintiff on 8th February 2002. There was another non-final Office Action on 2nd July 2002 where again Clauses 1, 3 to 8,10 to 15 and 17 to 22 were rejected. There was yet another final office action on 19th November 2002 after the Plaintiff had sought to respond to the rejection by the earlier Office Action. The Plaintiff also filed an appeal on 18th February 2003 while simultaneously responding to the final Office Action of 19th November 2002. There was a final Office Action on 21st December 2004. From the Examiner Report of 20th June 2005 it is apparent from the chart that there were several developments in the US Patent Office Action which obviously did have a bearing on the examination of the application by the Indian authorities. When, by the letter dated 13th September 2004 (delivered to the Plaintiff on 20th October 2004), the Controller of Patents was asking for "details regarding the search and I or examination report in respect of same or substantially same invention filed as referred to in Rule 12(3) of the Patents Rules 2003 in respect of same or substantially same inventions filed in any one of the major patent offices, such as USPTO, EPO and JPO etc." the Plaintiff obviously was required to furnish the above details. The Plaintiff itself does not deny that it did not do so. The filing of the international search report in June 2001 was not in compliance with the above requirement. [Para 44]
It is not possible to accept the submission, made by referring to the Halsburyfs Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act. It cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff. The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims to the torus shape of the compression spring, which was a key feature of the subject device. Had the Controller been informed of the Plaintiff?s own patent No. 3932005 dated 13th January 1976, he would have been called upon to examine if that patent taught the use of a toroidal shape of a compression member and whether therefore the subject device was an inventive step within the meaning of the Act. [Para 45]
Under the amended Section 48 (1) of the Act, the patent granted shall, where the subject matter of the patent is a product, give the patentee the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Likewise, where the subject matter of the patent is a process, the patentee would have the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, as well as from the act of using, offering for sale, selling or importing any product obtained directly by that process in India. The change is therefore, that under the amended Section 48 a right is given to the patent holder Plaintiff, to prevent third parties from making, selling or offering for sale, the product for which such patent has been granted without the prior consent of the patent holder. The amended Section 48, however, does not in any manner change the position as regards the validity of the patent itself. It would still be vulnerable to challenge in terms of Section 13 (4) read with Sections 64 and 107 of the Act. A similar conclusion has been arrived at in Bajaj Auto Ltd. v. TVS Motor Company Ltd. (supra). [Para 48]
A plain reading of the above provision is that the patent in respect of the subject device "may be used by or on behalf of the Government for the purpose merely of its own use." This is an implied condition of the grant of patent. In the circumstances, if the government through the Ministry of Railways has itself supplied the drawings to the prospective suppliers and asked them to supply side bearing pads in conformity with those drawings, it cannot possibly be said that there is an infringement by either the Railways or its contractor of the patent. In the present case, the Plaintiff has also participated successfully in the very tender in which the Consortium of the defendants has been awarded a small percentage of the contract for supply of side bearing pads. It knew of the above stipulation and has not chosen to question it till the tender was finalised and the contract awarded. The Plaintiff, by participating in such tender, must be taken to have consented to the use of its patent by both the Railways as well as any supplier of the Railways to whom the contract for supply was to be awarded. It is also not in dispute that the Defendants have formed their Consortium only for supplying the subject device to the Railways. Although Section 156 of the Act states that patent will bind the Government, that provision has also been made "subject to the other provisions contained in this Act." A harmonious reading of Sections 47 and 156 of the Act would indicate that the object is not to involve the Government or its department or a contractor acting on its behalf in any litigation involving infringement of patent when the product or process in question is for the "own use" of the government. This is a price that the patent holder pays for getting a sizeable chunk of the contract, in this case 95%, which is virtually a monopoly. Where it is not for the governments own use, or where the Government supplies the drawings of c. patented product without the knowledge or consent of the patent holder, then Section 156 would permit enforcement and protection of the patent even against the govern ment. [Para 52]
For the above reasons, this Court is not satisfied that the Plaintiff has been able to make out a prima facie case for the continuation of the interim injunction in its favour. As will be seen hereafter, the balance of convenience at this stage also appears to be in favour of the Defendants 2, 3 and 4 for not granting an interim injunction in favour of the Plaintiff. Balance of convenience 55. The finalised tender document has been placed on record. What has been awarded to the Plaintiff is 95% of the total, quantity of the device to be supplied to the Railways. In fact Clause 7 of the "instructions" appended to the tender itself made it clear that "Item is reserved for bulk procurement for RDSO approved sources. Others can be considered for developmental order." What the Consortium has been awarded is the "developmental order" which is barely 5% of the total quantity. If the object of the Act is to ensure that the patent holder has the exclusive right to commercially exploit the patent, then that object is more or less achieved in the present tender as well, notwithstanding Section 47 of the Act. By refusing an injunction, while still imposing conditions on the Defendants 2, 3 and 4 to maintain accounts, the Court would be ensuring that in the event of the Plaintiff succeeding, it will be compensated even as regards the quantity. In the above circumstances, the balance of convenience is not in favour of grant of an interim injunction as prayed for by the Plaintiff. [Para 54]
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Appellants had unsuccessfully approached the High Court and Honble single judge dismissed application of plaintiffs for interim injunction for restrainig the defendants from use of trade mark SUNSTOP as it had transborder reputation.. Reported as 2009 (41) PTC 234(Mad.)
HELD By DB "multinational corporations, which have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be, who is first in the market. In this case respondent passes the test.
Appellate court would not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material.
Appeal dismissed.
Appellants had unsuccessfully approached the High Court and Honble single judge dismissed application of plaintiffs for interim injunction for restrainig the defendants from use of trade mark SUNSTOP as it had transborder reputation.. Reported as 2009 (41) PTC 234(Mad.)
HELD By DB "multinational corporations, which have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be, who is first in the market. In this case respondent passes the test.
Appellate court would not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material.
Appeal dismissed.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Trade mark SUNSTOP used by plaintiffs defendants claming to have coined this word after research.
Action for passing off .
Crucial facts noted by court for grant of injunction "it is clear that the defendant's product arrived in the Indian market, earlier than the plaintiffs'. But the first plaintiffs product was earlier than that of the defendant's product in the world market."
Further held repelling the arguments of plaintiff for grant of injunction on basis of transborder reputation court held. " Even if the first plaintiff is presumed to have achieved a tansborder reputation, for the purpose of argument, the balance of convenience does not appear to be in favour of the plaintiffs for the grant of an order of injunction. As stated earlier, the defendant applied for the registration of the Trade Mark in India in August 2005 and obtained a Drug license in November 2005 and launched its product in May 2007. The plaintiffs have not produced any proof to show that they had any intention to appear in the Indian market till October 2007. There is no document to show that the plaintiffs had an intention to arrive, even in 2005 or 2006, but that by force of circumstances, they could actually arrive only in October 2007." it is hard to conceive that the first plaintiff had established a transborder reputation that entitle the plaintiffs to an order of injunction. The plaintiffs have failed to produce any evidence to show that they had at least undertaken a blitzkrieg sales promotion campaign in India, at any time prior to the actual arrival of their product in November 2007 Application for injunction therefore dismissed.Section 10 CPC
"It is seen that the bar under Section 10 of the Code is only to the Court proceeding with the trial of the suit and not with the hearing of any interlocutory applications. This is clear even from the plain language of Section 10. It merely says "no Court shall proceed with the trial of any suit".
Trade mark SUNSTOP used by plaintiffs defendants claming to have coined this word after research.
Action for passing off .
Crucial facts noted by court for grant of injunction "it is clear that the defendant's product arrived in the Indian market, earlier than the plaintiffs'. But the first plaintiffs product was earlier than that of the defendant's product in the world market."
Further held repelling the arguments of plaintiff for grant of injunction on basis of transborder reputation court held. " Even if the first plaintiff is presumed to have achieved a tansborder reputation, for the purpose of argument, the balance of convenience does not appear to be in favour of the plaintiffs for the grant of an order of injunction. As stated earlier, the defendant applied for the registration of the Trade Mark in India in August 2005 and obtained a Drug license in November 2005 and launched its product in May 2007. The plaintiffs have not produced any proof to show that they had any intention to appear in the Indian market till October 2007. There is no document to show that the plaintiffs had an intention to arrive, even in 2005 or 2006, but that by force of circumstances, they could actually arrive only in October 2007." it is hard to conceive that the first plaintiff had established a transborder reputation that entitle the plaintiffs to an order of injunction. The plaintiffs have failed to produce any evidence to show that they had at least undertaken a blitzkrieg sales promotion campaign in India, at any time prior to the actual arrival of their product in November 2007 Application for injunction therefore dismissed.Section 10 CPC
"It is seen that the bar under Section 10 of the Code is only to the Court proceeding with the trial of the suit and not with the hearing of any interlocutory applications. This is clear even from the plain language of Section 10. It merely says "no Court shall proceed with the trial of any suit".
Trade Marks Act, 1999
Section 27
Counterfeit products being manufactured by defendants. Commission also appointed.
HELD the operators such as the defendants frequently change their place of business and do not keep any account books of such surreptitious activities. No purpose would be served directing the defendants to render accounts. However following the principle laid down in Microsoft Corporation v. Yogesh Papat, 2005 (30) PTC 245 (Del) holding that the plaintiff would be-entitled to damages for the reason that it would be futile to direct the defendants to render accounts for the reason of the defendants carrying on business surreptitiously and in Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del) holding that where infringement is found, punitive damages should follow to discourage such law breakers, damages in the sum of Rs. 5 lac are awarded to the plaintiffs and against the defendants. The defendants having indulged in an action of infringement, passing off cannot avoid liability in damages merely for the reason of remaining ex-parte. Accordingly, besides the relief of permanent injunction, a decree for damages in the sum of Rs. 5 lac is also passed in favour of the plaintiffs and against the defendants.
Counterfeit products being manufactured by defendants. Commission also appointed.
HELD the operators such as the defendants frequently change their place of business and do not keep any account books of such surreptitious activities. No purpose would be served directing the defendants to render accounts. However following the principle laid down in Microsoft Corporation v. Yogesh Papat, 2005 (30) PTC 245 (Del) holding that the plaintiff would be-entitled to damages for the reason that it would be futile to direct the defendants to render accounts for the reason of the defendants carrying on business surreptitiously and in Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del) holding that where infringement is found, punitive damages should follow to discourage such law breakers, damages in the sum of Rs. 5 lac are awarded to the plaintiffs and against the defendants. The defendants having indulged in an action of infringement, passing off cannot avoid liability in damages merely for the reason of remaining ex-parte. Accordingly, besides the relief of permanent injunction, a decree for damages in the sum of Rs. 5 lac is also passed in favour of the plaintiffs and against the defendants.
Trade Marks Act, 1999
Section 100
Application for placing on record additional documents in the rectification application . Appellate Board has liberty and discretion to try and decide whether de novo proceeding or proceeding from the stage the matter was transferred should be held. No specific order passed by the Board in this regard .
HELD Normally, this Court would not have interfered with the order passed by the Appellate Board in exercise of jurisdiction under Article 226 of the Constitution of India. However, in the impugned order dated 30th June, 2006 several aspects/facts which are relevant and material for the decision of the application have not been taken into consideration. The errors pointed out are relevant and relate to the decision making process by which the final conclusion has been arrived at.
Writ petition allowed.
Application for placing on record additional documents in the rectification application . Appellate Board has liberty and discretion to try and decide whether de novo proceeding or proceeding from the stage the matter was transferred should be held. No specific order passed by the Board in this regard .
HELD Normally, this Court would not have interfered with the order passed by the Appellate Board in exercise of jurisdiction under Article 226 of the Constitution of India. However, in the impugned order dated 30th June, 2006 several aspects/facts which are relevant and material for the decision of the application have not been taken into consideration. The errors pointed out are relevant and relate to the decision making process by which the final conclusion has been arrived at.
Writ petition allowed.
Section 27
Action for Passing off
Plaintiffs trade mark and house mark 'PP'. Injunction sought.
HELD The Plaintiff PPJPL has perhaps been aware that PP by itself has no distinctiveness even for the jewellery trade. PPJPL has used those letters in combination with the word "Jewellers" or the letter "J" to form the marks PP Jewellers and the logo PPJ. It used the same pattern for the real estate business when it adopted the marks PP Towers and logo PPT. Likewise, PP Buildwell cannot claim distinctiveness for the letters PP except when combined with the word "Mall" or "Shopping Mall' for which marks it holds registrations. The Plaintiffs contend that in a written statement of PP Buildwell dated 2nd August 2008 (which incidentally is not on record) it has been admitted in para 9 at page 17 that the mark PP can be appropriated as a trademark and service mark; that PP is a trade mark and service mark and that PP is an essential part of its impugned trademark. This court is unable to agree with this submission.
Interim injunction denied.
Plaintiffs trade mark and house mark 'PP'. Injunction sought.
HELD The Plaintiff PPJPL has perhaps been aware that PP by itself has no distinctiveness even for the jewellery trade. PPJPL has used those letters in combination with the word "Jewellers" or the letter "J" to form the marks PP Jewellers and the logo PPJ. It used the same pattern for the real estate business when it adopted the marks PP Towers and logo PPT. Likewise, PP Buildwell cannot claim distinctiveness for the letters PP except when combined with the word "Mall" or "Shopping Mall' for which marks it holds registrations. The Plaintiffs contend that in a written statement of PP Buildwell dated 2nd August 2008 (which incidentally is not on record) it has been admitted in para 9 at page 17 that the mark PP can be appropriated as a trademark and service mark; that PP is a trade mark and service mark and that PP is an essential part of its impugned trademark. This court is unable to agree with this submission.
Interim injunction denied.
Patents Act, 1970
Sections 58 & 59
Revocation of Patent. Amendment in specifications by patentee.
HELD The law which emanates from reading of section 58 & 59 Patents Act is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court. The claims can be amended and such amendment may be allowed provided that is it clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.Therefore Amendment seeking to clarify the scope of the sensitising process by mentioning some sensitising material, namely tin does not lead to an altogether new invention Amendment merely clarificatory or elaborative.
Amendment allowed.
Revocation of Patent. Amendment in specifications by patentee.
HELD The law which emanates from reading of section 58 & 59 Patents Act is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court. The claims can be amended and such amendment may be allowed provided that is it clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.Therefore Amendment seeking to clarify the scope of the sensitising process by mentioning some sensitising material, namely tin does not lead to an altogether new invention Amendment merely clarificatory or elaborative.
Amendment allowed.
Trade Marks Act, 1999
Section 134, 135
Infringement of Trademark HELD application of plaintiff is maintainable as trade marks of the plaintiff have not been removed from the Register of Trade Marks .
Section 27
Passing off
Trade mark NEXXUS of the paalintiff having world wide presence . But the defendant engaged in the business of manufacture and trade of cosmetics, soaps, hair oil and other related products under name and style of Nexus Health and Home Care Pvt.Ltd defendant also stating that it is branding its products under trade mark SPA.
In the circumstances as a interim arrangement defendant restrained from using the trademark 'Nexxus' however defendant allowed to carry on its business under the trade name/trading style with condition that it shall not use the corporate name in any other manner which may be treated or may appear as a trade mark and submit quarterly accounts.
Applications disposed of
Infringement of Trademark HELD application of plaintiff is maintainable as trade marks of the plaintiff have not been removed from the Register of Trade Marks .
Section 27
Passing off
Trade mark NEXXUS of the paalintiff having world wide presence . But the defendant engaged in the business of manufacture and trade of cosmetics, soaps, hair oil and other related products under name and style of Nexus Health and Home Care Pvt.Ltd defendant also stating that it is branding its products under trade mark SPA.
In the circumstances as a interim arrangement defendant restrained from using the trademark 'Nexxus' however defendant allowed to carry on its business under the trade name/trading style with condition that it shall not use the corporate name in any other manner which may be treated or may appear as a trade mark and submit quarterly accounts.
Applications disposed of
Code of Civil Procedure Order 7 Rule 11
"It has been held by the court in a number of cases that at the initial stage of the suit, only the allegations made in the plaint are to be looked into while determining whether the Court has jurisdiction to try the suit or not. In M/s. International Film Distributors v. Sh. Rishi Raj, MIPR 2009 (2) 108 : 2009 (39) PTC 173 (Del.), a Division Bench of this court held as under:
"24. In LG Corporation & Anr. v. Intermarket Electroplasters(P) Ltd. and Anr.; 2006 (32) PTC 429 [Del.], following observations were made in para 7:-
"7.......The question as to whether the Court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint, that truth or otherwise thereof being immaterial as it cannot be gone into at this stage....."
Looking at the averments made in the plaint by the plaintiff, I am of the considered opinion that this court has jurisdiction to try the suit. As a result, the defendant's application under Order VII Rule 11 CPC is hereby dismissed."
IA. No. 2423/08 under Order XXV Rule 1 of the defendant dismissed with Rs 5000/- as costs.
"24. In LG Corporation & Anr. v. Intermarket Electroplasters(P) Ltd. and Anr.; 2006 (32) PTC 429 [Del.], following observations were made in para 7:-
"7.......The question as to whether the Court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint, that truth or otherwise thereof being immaterial as it cannot be gone into at this stage....."
Looking at the averments made in the plaint by the plaintiff, I am of the considered opinion that this court has jurisdiction to try the suit. As a result, the defendant's application under Order VII Rule 11 CPC is hereby dismissed."
IA. No. 2423/08 under Order XXV Rule 1 of the defendant dismissed with Rs 5000/- as costs.
Trade Marks Act, 1999
Sections 27 & 29
Suit for declaration that the use of mark 'champion' as suffix to the mark 'Mach 3 Turbo' by the defendant is identical and deceptively similar to the registered trade-mark champion of the plaintiff
HELD In an action for infringement of trade-mark or of passing off, in order to obtain an order of temporary injunction, it is incumbent upon the plaintiff to show that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of general public as goods of the plaintiff and that the user of the said trade-mark or the trade-name by the defendant is likely to deceive and cause confusion in the public mind and cause injury to the business reputation of the plaintiff.
Although the plaintiff is the proprietor of the trade-mark champion in relation to safety razor blades and safety razors, but the plaintiff never manufactured nor marketed safety razor under the said brand name. Therefore, the apprehension of the plaintiff that an unwary customer will be deceived or confused or mislead is misplaced. Prima facie, it appears the mark/expression champion is; used alongwith the trade-mark Gillette Much 3 Turbo, which is in conformity with the trade practice.
mark/expression commonly used by the members of the trade for brand imagery and as a laudatory epithet. There is no likelihood of any confusion or deception between the two marks. Therefore Application for temporary injunction dismissed. However defendant should keep the accounts in respect of manufacture and sale of its product bearing the mark/expression champion during the pendency of the suit.
Suit for declaration that the use of mark 'champion' as suffix to the mark 'Mach 3 Turbo' by the defendant is identical and deceptively similar to the registered trade-mark champion of the plaintiff
HELD In an action for infringement of trade-mark or of passing off, in order to obtain an order of temporary injunction, it is incumbent upon the plaintiff to show that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of general public as goods of the plaintiff and that the user of the said trade-mark or the trade-name by the defendant is likely to deceive and cause confusion in the public mind and cause injury to the business reputation of the plaintiff.
Although the plaintiff is the proprietor of the trade-mark champion in relation to safety razor blades and safety razors, but the plaintiff never manufactured nor marketed safety razor under the said brand name. Therefore, the apprehension of the plaintiff that an unwary customer will be deceived or confused or mislead is misplaced. Prima facie, it appears the mark/expression champion is; used alongwith the trade-mark Gillette Much 3 Turbo, which is in conformity with the trade practice.
mark/expression commonly used by the members of the trade for brand imagery and as a laudatory epithet. There is no likelihood of any confusion or deception between the two marks. Therefore Application for temporary injunction dismissed. However defendant should keep the accounts in respect of manufacture and sale of its product bearing the mark/expression champion during the pendency of the suit.
Trade Marks Act, 1999
Section 27
Dispute as to Trade mark "Atul" . The word "Atul" is a name which is quite commonly in use as a name therefore the name of a person commonly used is a generic term.
Plaintiff using trade name "Atul Chemicals" as against this the defendant's usage is of different kind. No confusion shown by the Plaintiff which could have been likely caused by the defendant in this regards have to been shown .
HELD - For want of any confusion having been caused by the Defendant in use of the name, no injunction can be issued against the defendants. Suit ordered to be dismissed.
Dispute as to Trade mark "Atul" . The word "Atul" is a name which is quite commonly in use as a name therefore the name of a person commonly used is a generic term.
Plaintiff using trade name "Atul Chemicals" as against this the defendant's usage is of different kind. No confusion shown by the Plaintiff which could have been likely caused by the defendant in this regards have to been shown .
HELD - For want of any confusion having been caused by the Defendant in use of the name, no injunction can be issued against the defendants. Suit ordered to be dismissed.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Permanent injunction restraining infringement of copyright, passing off, unfair competition, rendition of accounts, delivery up and damages.
In the present case, as mentioned by the plaintiff in the plaint that the plaintiff developed the idea of making animated mythological film on 'Ramayana' in the year 2004. The plaintiff has also filed the assignment deed dated 2nd February, 2005 between the plaintiff and Mr. Sarfaraj Ahmed who has assigned copyrights in the voice over, music and sound recording against consideration. The bill dated 4th January, 2005 is also filed by the plaintiff. The plaintiff has similarly filed another assignment dated 17th June, 2006, 20th May, 2006 and 5th June, 2006 in respect of purchasing various rights for making the animated film 'Ramayana'.
On the other hand, although the defendant has raised the defence that defendant No. 5 has created the work on this animated film 'Ramayana' in the year 2005 however, no cogent evidence in this regard has been filed. The defendant has filed the copyright registration bearing CL No. 1103/2007 in respect of registration of the work. In column No. 9 of the registration certificate, it is mentioned that the work in question was first time published in the year 2007 which is apparently subsequent to work created by the plaintiff in the year 2005. Therefore, the registration is immaterial. The copyright registration is always granted on the basis of declaration made by the party before the copyright office, hence, registration referred by the defendant has no substance. Work in question was first time published in the year 2007 which is apparently subsequent to work created by the plaintiff in the year 2005. Therefore, the registration is immaterial.
The copyright registration is always granted on the basis of declaration made by the party before the copyright office, hence, registration referred by the defendant has no substance.
Permanent injunction restraining infringement of copyright, passing off, unfair competition, rendition of accounts, delivery up and damages.
In the present case, as mentioned by the plaintiff in the plaint that the plaintiff developed the idea of making animated mythological film on 'Ramayana' in the year 2004. The plaintiff has also filed the assignment deed dated 2nd February, 2005 between the plaintiff and Mr. Sarfaraj Ahmed who has assigned copyrights in the voice over, music and sound recording against consideration. The bill dated 4th January, 2005 is also filed by the plaintiff. The plaintiff has similarly filed another assignment dated 17th June, 2006, 20th May, 2006 and 5th June, 2006 in respect of purchasing various rights for making the animated film 'Ramayana'.
On the other hand, although the defendant has raised the defence that defendant No. 5 has created the work on this animated film 'Ramayana' in the year 2005 however, no cogent evidence in this regard has been filed. The defendant has filed the copyright registration bearing CL No. 1103/2007 in respect of registration of the work. In column No. 9 of the registration certificate, it is mentioned that the work in question was first time published in the year 2007 which is apparently subsequent to work created by the plaintiff in the year 2005. Therefore, the registration is immaterial. The copyright registration is always granted on the basis of declaration made by the party before the copyright office, hence, registration referred by the defendant has no substance. Work in question was first time published in the year 2007 which is apparently subsequent to work created by the plaintiff in the year 2005. Therefore, the registration is immaterial.
The copyright registration is always granted on the basis of declaration made by the party before the copyright office, hence, registration referred by the defendant has no substance.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2 —
"Where infringement is deliberate and wilful and the defendant acts fraudulently with knowledge that he is violating plaintiffs rights,essential elements of estoppel are lacking and in such a case the protection of plaintiffs rights by injunctive relief never is properly denied. "The doctrine of estoppel can only be invoked to promote fair dealings" Interim injunction, affirmed
"Where infringement is deliberate and wilful and the defendant acts fraudulently with knowledge that he is violating plaintiffs rights,essential elements of estoppel are lacking and in such a case the protection of plaintiffs rights by injunctive relief never is properly denied. "The doctrine of estoppel can only be invoked to promote fair dealings" Interim injunction, affirmed
Consumer Protection Act, 1986
Section 2(l)(r)(l)(i) and (vi) — Comparative advertisements — Intangible property right in the advertised description of a product by a manufacturer — by virtue of an advertising campaign a manufacturer gives his product a distinctive character which the market exclusively associates with the product or the manufacturer—Every nutritional drink has to be allowed the freedom to puff and emphasize on the features of growth that will result in its user gaining height, weight and mental sharpness for these are but attributes of growth that a nutritional drink would seek to profess — plaintiff and the first defendant use different grammatical variations of the words "tall" and "strong" and that "sharp" and "bright" are distinct, albeit bearing the same sense that is sought to be projected — If in puffing its product, the plaintiff and the first defendant hit upon features that are generic to the nature of the product, the earlier user or the bigger player or the larger spender cannot claim exclusivity on the epithets.
Trade Marks Act, 1999
Section 11(6) —
Due to long usage and extensive marketing, the trademark 'Sundrop' has garnered immense goodwill and has become a well-known trademark howeer defendants using the trade mark in respect of hosiery goods including Vests, Undergarments or any other product. HELD it is established by the plaintiff that 'Sundrop' is a coined word and is a well known trade mark Decree for permanent injunction passed in favour of the plaintiff restraining the defendant from using the trade mark 'Sundrop' awarded
Due to long usage and extensive marketing, the trademark 'Sundrop' has garnered immense goodwill and has become a well-known trademark howeer defendants using the trade mark in respect of hosiery goods including Vests, Undergarments or any other product. HELD it is established by the plaintiff that 'Sundrop' is a coined word and is a well known trade mark Decree for permanent injunction passed in favour of the plaintiff restraining the defendant from using the trade mark 'Sundrop' awarded
Trade Marks Act, 1999
I have compared the trade marks as well as copyright and packaging filed by the respective parties in the present suit. It appears to me that the trademark as well as the packaging of the parties are almost identical with and deceptively similar with each other. From the perusal of documents placed by the parties, both the parties are registered owners of the trade marks as well as copyrights for their respective packaging. However, the registration of Trade Mark and Copyrights have been obtained by the parties on different dates. The plaintiff has challenged the alleged assignment of the copyright in favour of the defendant. Infact, both the parties are claiming earlier user of the trade mark and copyright. I feel that the crucial and essential question at this stage is to decide the interim application and to see whether the plaintiff has made full disclosure of the material facts while filing the present suit before this court.
In the present case, in Para 35 of the plaint, it is stated that the plaintiff gained knowledge about the defendants‟ activities in the month of August, 2008. There are admittedly various proceedings/actions pending prior to August, 2008 i.e. (i) rectification of the plaintiff‟s trade mark pending from the year 2005 before the Appellate Board, (ii) the details of disposal of the complaint filed by the plaintiff against the defendant on 10th March, 2005 before the Food and Drug Administration, Maharashtra, (iii) the legal notice issued by the plaintiff to the defendant regarding the misuse of the trade mark on 7th February, 2005 and (iv) the filing of the suit by the defendant before the High Court of Mumbai against one M/s. Saviour Biotech Pvt. Ltd who later turned out to be the licensee of the plaintiff. The explanation given by the plaintiff in this regard is not satisfactory to the effect that the plaintiff did not have any knowledge about the same and in the said suit the plaintiff is not a party. The plaintiff himself has filed a copy of the license agreement between the plaintiff and M/s. Saviour Biotech Pvt. Ltd. In the said agreement, the plaintiff has allowed M/s. Saviour Biotech Pvt. Ltd to use the trade mark "Vega Asia 50‟, "Vega Asia 100‟ and "Vega Super‟ and appointed him as a licensee.
The plaintiff has failed to assign any valid reason as to why the plaintiff has not disclosed the above mentioned facts in the plaint as well as in the application for injunction. The overall circumstances show that the plaintiff has not come before this court with clean hands.
In the present case, in Para 35 of the plaint, it is stated that the plaintiff gained knowledge about the defendants‟ activities in the month of August, 2008. There are admittedly various proceedings/actions pending prior to August, 2008 i.e. (i) rectification of the plaintiff‟s trade mark pending from the year 2005 before the Appellate Board, (ii) the details of disposal of the complaint filed by the plaintiff against the defendant on 10th March, 2005 before the Food and Drug Administration, Maharashtra, (iii) the legal notice issued by the plaintiff to the defendant regarding the misuse of the trade mark on 7th February, 2005 and (iv) the filing of the suit by the defendant before the High Court of Mumbai against one M/s. Saviour Biotech Pvt. Ltd who later turned out to be the licensee of the plaintiff. The explanation given by the plaintiff in this regard is not satisfactory to the effect that the plaintiff did not have any knowledge about the same and in the said suit the plaintiff is not a party. The plaintiff himself has filed a copy of the license agreement between the plaintiff and M/s. Saviour Biotech Pvt. Ltd. In the said agreement, the plaintiff has allowed M/s. Saviour Biotech Pvt. Ltd to use the trade mark "Vega Asia 50‟, "Vega Asia 100‟ and "Vega Super‟ and appointed him as a licensee.
The plaintiff has failed to assign any valid reason as to why the plaintiff has not disclosed the above mentioned facts in the plaint as well as in the application for injunction. The overall circumstances show that the plaintiff has not come before this court with clean hands.
Designs Act, 2000
Section 24
Section 22(4)
Transfer of proceedings — Every ground on which registration of design may be cancelled under Section 19 of the Act is available as a ground of defence — Once such a ground is taken in defence, then under Section 22(4) of the Act of 2000, the suit or any such proceeding is to be transferred to the High Court for decision — Petition allowed — Suit transferred to High Court.
Copyright Act, 1957
Section 45(1) — Respondent duty bound to inform the Registrar of Trade Marks about the pendency of the Civil suits and objections raised by the petitioner therein with regard to the colourable imitation of the petitioner's goods — Registrar of Trade Marks did not have the knowledge of the inter-se disputes which were pending — Certificate, quashed.
Section 24
Section 22(4)
Transfer of proceedings — Every ground on which registration of design may be cancelled under Section 19 of the Act is available as a ground of defence — Once such a ground is taken in defence, then under Section 22(4) of the Act of 2000, the suit or any such proceeding is to be transferred to the High Court for decision — Petition allowed — Suit transferred to High Court.
Copyright Act, 1957
Section 45(1) — Respondent duty bound to inform the Registrar of Trade Marks about the pendency of the Civil suits and objections raised by the petitioner therein with regard to the colourable imitation of the petitioner's goods — Registrar of Trade Marks did not have the knowledge of the inter-se disputes which were pending — Certificate, quashed.
Section 22(4)
Transfer of proceedings — Every ground on which registration of design may be cancelled under Section 19 of the Act is available as a ground of defence — Once such a ground is taken in defence, then under Section 22(4) of the Act of 2000, the suit or any such proceeding is to be transferred to the High Court for decision — Petition allowed — Suit transferred to High Court.
Copyright Act, 1957
Section 45(1) — Respondent duty bound to inform the Registrar of Trade Marks about the pendency of the Civil suits and objections raised by the petitioner therein with regard to the colourable imitation of the petitioner's goods — Registrar of Trade Marks did not have the knowledge of the inter-se disputes which were pending — Certificate, quashed.
Section 24
Section 22(4)
Transfer of proceedings — Every ground on which registration of design may be cancelled under Section 19 of the Act is available as a ground of defence — Once such a ground is taken in defence, then under Section 22(4) of the Act of 2000, the suit or any such proceeding is to be transferred to the High Court for decision — Petition allowed — Suit transferred to High Court.
Copyright Act, 1957
Section 45(1) — Respondent duty bound to inform the Registrar of Trade Marks about the pendency of the Civil suits and objections raised by the petitioner therein with regard to the colourable imitation of the petitioner's goods — Registrar of Trade Marks did not have the knowledge of the inter-se disputes which were pending — Certificate, quashed.
Trade Marks Act, 1999
Section 23(1)
HELD
Section 23( 1) of the Act clearly mandates that only after the statutory period for filing opposition has expired a registration certificate could be granted. The appellant had filed an application for extension of time in filing opposition to the registration of trade mark of the 4th respondent and the notice of opposition was taken on record by the Registrar. The above fact is evident from the show cause notice dated 16th February, 2004 and the interim order of 26th May, 2005. In the absence of an order rejecting such application, it cannot be held that time for filing opposition had expired. The entire issue was considered by the Appellate Board which is a tribunal as per Section 2(ze) of the Act. The tribunal had ultimately come to the conclusion that the registration was in contravention of the provisions of the Act and directed the Registrar to decide the application of the 4th respondent on merits.
After taking into consideration the above facts and contentions of the parties we hold that no injustice has been done by the Appellate Board in directing de novo hearing of the case. Consequently the appeal is allowed
HELD
Section 23( 1) of the Act clearly mandates that only after the statutory period for filing opposition has expired a registration certificate could be granted. The appellant had filed an application for extension of time in filing opposition to the registration of trade mark of the 4th respondent and the notice of opposition was taken on record by the Registrar. The above fact is evident from the show cause notice dated 16th February, 2004 and the interim order of 26th May, 2005. In the absence of an order rejecting such application, it cannot be held that time for filing opposition had expired. The entire issue was considered by the Appellate Board which is a tribunal as per Section 2(ze) of the Act. The tribunal had ultimately come to the conclusion that the registration was in contravention of the provisions of the Act and directed the Registrar to decide the application of the 4th respondent on merits.
After taking into consideration the above facts and contentions of the parties we hold that no injustice has been done by the Appellate Board in directing de novo hearing of the case. Consequently the appeal is allowed
Civil Procedure Code, 1908
Section 30
Order 11, Rule 14
Discovery of documents
Documents sought to be discovered need not be admissible in evidence in the enquiry of the proceedings and it is sufficient that the documents would be relevant for the purpose of throwing light on the matter in controversy
HELD
apart from addressing the merits of the suit, the defendants are not claiming any overbearing prejudice; they have also not put up privilege of any kind, in answer to the applications for discovery. The object of discovery is to shorten litigation, as held by the Supreme Court. The court, while considering the application, for such purpose, is not expected to rule on the relative strength or merits of the case; indeed, it cannot even rule on the admissibility of the documents for which discovery is claimed. It should be satisfied that the application further the ends of justice, and trial; it should throw light in the proceedings. Whether the plaintiffs can eventually establish that their confidential information and secrets were or are utilized by the defendants, or that their copyrights were violated, are aspects which can be gone into at the stage of trial. If this court starts prejudging on those aspects, it would be ruling on the application for discovery, on considerations which are not germane. In view of the above discussion, the plaintiffs applications are to be allowed. Accordingly, discovery, of the documents, referred to in Paras 11 (b) and (c) in IA 8624/07 and Para 12 (a) and (b) of IA 8625/2007 is hereby directed, by the defendants, within six weeks.
Order 11, Rule 14
Discovery of documents
Documents sought to be discovered need not be admissible in evidence in the enquiry of the proceedings and it is sufficient that the documents would be relevant for the purpose of throwing light on the matter in controversy
HELD
apart from addressing the merits of the suit, the defendants are not claiming any overbearing prejudice; they have also not put up privilege of any kind, in answer to the applications for discovery. The object of discovery is to shorten litigation, as held by the Supreme Court. The court, while considering the application, for such purpose, is not expected to rule on the relative strength or merits of the case; indeed, it cannot even rule on the admissibility of the documents for which discovery is claimed. It should be satisfied that the application further the ends of justice, and trial; it should throw light in the proceedings. Whether the plaintiffs can eventually establish that their confidential information and secrets were or are utilized by the defendants, or that their copyrights were violated, are aspects which can be gone into at the stage of trial. If this court starts prejudging on those aspects, it would be ruling on the application for discovery, on considerations which are not germane. In view of the above discussion, the plaintiffs applications are to be allowed. Accordingly, discovery, of the documents, referred to in Paras 11 (b) and (c) in IA 8624/07 and Para 12 (a) and (b) of IA 8625/2007 is hereby directed, by the defendants, within six weeks.
Civil Procedure Code, 1908
Order 7 Rules 10 & 11
Plaintiffs "Parshwanath Group" enjoying reputation and goodwill in the trade and general public for last three decades . Defendant "Parsvanath' in respect of identical business
Passing off
Doctrine of "Quia timet action" which means because he fears or apprehends.
Object of the law of passing off is to protect some form of property usually the goodwill of the plaintiff in his business or his goods or his services or in the work which he produces or something of that kind.
HELD
(a) The plaintiffs have made necessary averments in plaint and plaintiffs have satisfied that the plaint fulfills the ingredients of Order 7 Rule 1.. of the Code of Civil Procedure. The plaintiffs have been able to show and prove how the cause of action has been arisen and how the City Civil Court has jurisdiction to try and entertain the Suit. The plaintiffs have also made necessary averments for claiming reliefs in the plaint.
(b) In view of the provisions of the Code of Civil Procedure, particularly Sections 15 to 20 read with judgement of the Hon'ble Supreme Court in the case of A.B.C. Laxminart Pvt. Ltd. (supra) the plaintiffs have been able to prove that right to sue has arisen within city limits of Ahmedabad.
(c) The plaintiffs' Suit for passing off of trade name and trading style against defendant as quia timet action is maintainable at law.
(d) In view of several decisions cited by the learned counsel for the plaintiffs, this Court has considered only averment made by the plaintiffs in plaint and two advertisements produced by the plaintiffs alongwith the plaint (Exh. 4/21,4/22 (pages 84 & 86) regarding maintaining action of passing off.
(e) In view of the fact that the defendant has published advertisements one in Divya Bhaskar and another in Financial Times which are widely circulated in city of Ahmedabad and plaintiffs have also been able to prove and deception and confusion has arisen within city limits of Ahmedabad, the plaintiffs have been able to prove that cause of action has arisen within city limit of Ahmedabad.
(f) The application made by defendant under Order 7 Rule 10 at Exh. 26 is rejected at law.
(g) The application filed at Exh. 26 by defendant under Order 7 Rule 11 is also rejected in spite of several decisions by the learned counsel for the defendant as all the decisions cited by the learned counsel for the defendant are distinguishable in the facts and circumstances of the case which I have already discussed above. [Para 35]
Thus, present writ petition under Article 227 of the Constitution of India is hereby rejected. The impugned order dated 22.12.2006 passed by the City Civil Court No. 9, Ahmedabad below application Exh. 26 in Regular Civil Suit No. 785 of 2006 is hereby confirmed. Interim relief, if any, stands vacated. There shall be no order as to costs. [Para 36]
Patents Act, 1970
Sections 48,64 & 107
As amended in 2003
Registered patent of the plaintiff regarding safety I.V. catheters/cannulae . Exclusive right given to the patent holder to prevent a third party from infringing the patent . However in any suit for infringement of a patent every ground on which the patent may be revoked under section 64 shall is available as a ground for defence . Merely registration of the patent per se does not entitled the plaintiffs to an injunction .
HELD
Patent has been recently registered and is under a serious challenge as to the validity of the patent Therefore validity of Patent not free from doubt . Prayer for an ad interim injunction liable to be rejected.
Civil Procedure Code, 1908
Section 47
Preliminary decree. Execution case. Report of Commissioner appointed for valuation of the trade mark.
HELD
On a perusal of the preliminary decree, it is noticeable that there has been direction that the goodwill of the business carried on by the plaintiff and defendants and the stock-in-hand be sold on the premises and that the Commissioner may on the application of any of the parties fix a reserved building for all or any of the lots at such sale and the either of the parties is at liberty to bid at the sale. The learned single Judge has directed that there would be an auction of the trade mark as that is in consonance with the Intention behind the decree. As there has been direction to carry out auction of the goodwill of the business and the real purpose is to sell the property as assets by way of auction and the trade mark having a different existence, there is no bar to put the same in auction. In fact, it is in accord with the decree.
Writ appeal, dismissed.
Plaintiffs "Parshwanath Group" enjoying reputation and goodwill in the trade and general public for last three decades . Defendant "Parsvanath' in respect of identical business
Passing off
Doctrine of "Quia timet action" which means because he fears or apprehends.
Object of the law of passing off is to protect some form of property usually the goodwill of the plaintiff in his business or his goods or his services or in the work which he produces or something of that kind.
HELD
(a) The plaintiffs have made necessary averments in plaint and plaintiffs have satisfied that the plaint fulfills the ingredients of Order 7 Rule 1.. of the Code of Civil Procedure. The plaintiffs have been able to show and prove how the cause of action has been arisen and how the City Civil Court has jurisdiction to try and entertain the Suit. The plaintiffs have also made necessary averments for claiming reliefs in the plaint.
(b) In view of the provisions of the Code of Civil Procedure, particularly Sections 15 to 20 read with judgement of the Hon'ble Supreme Court in the case of A.B.C. Laxminart Pvt. Ltd. (supra) the plaintiffs have been able to prove that right to sue has arisen within city limits of Ahmedabad.
(c) The plaintiffs' Suit for passing off of trade name and trading style against defendant as quia timet action is maintainable at law.
(d) In view of several decisions cited by the learned counsel for the plaintiffs, this Court has considered only averment made by the plaintiffs in plaint and two advertisements produced by the plaintiffs alongwith the plaint (Exh. 4/21,4/22 (pages 84 & 86) regarding maintaining action of passing off.
(e) In view of the fact that the defendant has published advertisements one in Divya Bhaskar and another in Financial Times which are widely circulated in city of Ahmedabad and plaintiffs have also been able to prove and deception and confusion has arisen within city limits of Ahmedabad, the plaintiffs have been able to prove that cause of action has arisen within city limit of Ahmedabad.
(f) The application made by defendant under Order 7 Rule 10 at Exh. 26 is rejected at law.
(g) The application filed at Exh. 26 by defendant under Order 7 Rule 11 is also rejected in spite of several decisions by the learned counsel for the defendant as all the decisions cited by the learned counsel for the defendant are distinguishable in the facts and circumstances of the case which I have already discussed above. [Para 35]
Thus, present writ petition under Article 227 of the Constitution of India is hereby rejected. The impugned order dated 22.12.2006 passed by the City Civil Court No. 9, Ahmedabad below application Exh. 26 in Regular Civil Suit No. 785 of 2006 is hereby confirmed. Interim relief, if any, stands vacated. There shall be no order as to costs. [Para 36]
Patents Act, 1970
Sections 48,64 & 107
As amended in 2003
Registered patent of the plaintiff regarding safety I.V. catheters/cannulae . Exclusive right given to the patent holder to prevent a third party from infringing the patent . However in any suit for infringement of a patent every ground on which the patent may be revoked under section 64 shall is available as a ground for defence . Merely registration of the patent per se does not entitled the plaintiffs to an injunction .
HELD
Patent has been recently registered and is under a serious challenge as to the validity of the patent Therefore validity of Patent not free from doubt . Prayer for an ad interim injunction liable to be rejected.
Civil Procedure Code, 1908
Section 47
Preliminary decree. Execution case. Report of Commissioner appointed for valuation of the trade mark.
HELD
On a perusal of the preliminary decree, it is noticeable that there has been direction that the goodwill of the business carried on by the plaintiff and defendants and the stock-in-hand be sold on the premises and that the Commissioner may on the application of any of the parties fix a reserved building for all or any of the lots at such sale and the either of the parties is at liberty to bid at the sale. The learned single Judge has directed that there would be an auction of the trade mark as that is in consonance with the Intention behind the decree. As there has been direction to carry out auction of the goodwill of the business and the real purpose is to sell the property as assets by way of auction and the trade mark having a different existence, there is no bar to put the same in auction. In fact, it is in accord with the decree.
Writ appeal, dismissed.
Copyright Rules, 1958
Rule 16(3)
Copyright Act, 1957
Sections 2(c)(d), 15 (2), 17 and 50
Designs Act, 2000
Sections 2(d)
Designs Rule, 2001
Schedule III
HELD
In the given context the products for which mark is being used is detergent powder. In order to ensure that the product for which label is being used relates to a product mentioned in the Third Schedule of the Designs Rules, 2001, it is clear that the gamut of that Schedule is wide enough to include any industrial product. The products in question can relate to class 28-03 - Toilet articles. In any case, Class 99 bearing heading Miscellaneous with the entry thereunder "Note.-Includes all products not included in the preceding classes." is wide enough to include any industrial product. In the counter statement, the respondent has given his sale figures beginning with 1990-91 and the most recent figures relate to 2006-07 which is to the tune of Rs. 37,49,725. The fact that the article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person is self evident from the volume of sale. Hence, the copyright in the design registered as copyright under the impugned registration has ceased to be effective.
Copyright Act, 1957
Sections 2(c)(d), 15 (2), 17 and 50
Designs Act, 2000
Sections 2(d)
Designs Rule, 2001
Schedule III
HELD
In the given context the products for which mark is being used is detergent powder. In order to ensure that the product for which label is being used relates to a product mentioned in the Third Schedule of the Designs Rules, 2001, it is clear that the gamut of that Schedule is wide enough to include any industrial product. The products in question can relate to class 28-03 - Toilet articles. In any case, Class 99 bearing heading Miscellaneous with the entry thereunder "Note.-Includes all products not included in the preceding classes." is wide enough to include any industrial product. In the counter statement, the respondent has given his sale figures beginning with 1990-91 and the most recent figures relate to 2006-07 which is to the tune of Rs. 37,49,725. The fact that the article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person is self evident from the volume of sale. Hence, the copyright in the design registered as copyright under the impugned registration has ceased to be effective.
Copyright Act, 1957
Section 45
Section 19
Copyright Rules, 1958
Rule 16(3)
Held:
Nothing about the evidence relating to the certificate issued by the Registrar of Trade Marks under section 45 of the Copyright Act, 1957 has been submitted. It is evident that application under number 609245 dated 12th October, 1993 of the petitioner herein for mark PARAKH was published in Trade Marks Journal No. 1218(Suppl) dated 8th March, 2000. In face of this fact, any certificate issued by the Registrar of Trade Marks, if any, as to there being no application pending of similar mark or deceptively similar mark does not support the cause of the respondent in relation to the impugned registration. In face ofTM-5 opposing trade mark registration number 1078627 filed by the petitioner herein dated 21.4.2004 under notice to the petitioner, there is inescapable conclusion that on or about that date, respondent was aware about the interest of the petitioner in the impugned subject matter which is relatable to the same subject matter. Though the application for the impugned registration was filed on 12.11.2003, but the registration thereof was issued 8.4.2005. Hence, there was a statutory duty cast upon the respondent to serve a notice under rule 16(3) of the Copyright Act, 1957 upon the petitioner at all relevant time till the registration was granted. Learned counsel for the respondent has heavily relied upon the Deed of Assignment and the affidavit of Shri Kishan Lai. Affidavit of Shri Kishan Lai dated 6th September, 2008 executed at Varanasi is drawn upon a Rs. 10 stamp paper bearing the place of origin and as such issue as West Bengal printed in Bengali, Hindi and English. Operative part of the Deed of Assignment is Part A thereof. It is in relation to trade mark PARAKH. Again, throughout the deed, the transaction relating to assignment of trade mark has been narrated. There is no whisper of artistic work or copyright relating thereto. Trade mark and copyright are two distinct intangible property rights - one cannot be taken in substitution of the other. IfDau Dayal had created the work for Shri Kishan Lai, there should be a deed of assignment therefore in terms of section 19 of the Copyright Act, 1957 in favour of Shri Kishan Lai as assignee. There is none. Name of the artist mentioned in column 7 of the impugned certificate of registration is "RADU DAYAL", name of the applicant is "RAM NAGAR KHADI GRAMODYOG VIKASH SAMITI". No deed of assignment by Shri Radu Dayal in favour of the applicant, the Samiti has been produced. The deed of assignment exhibited as from Shri Dau Dayal is no deed of assignment of copyright. First owner of copyright is the creator, an individual, of the artistic work. He can assign the work in writing in terms of section 19 of the Copyright Act, 1957 even to a corporate person. The deed of assignment produced is not valid one - rather there is none.
Section 19
Copyright Rules, 1958
Rule 16(3)
Held:
Nothing about the evidence relating to the certificate issued by the Registrar of Trade Marks under section 45 of the Copyright Act, 1957 has been submitted. It is evident that application under number 609245 dated 12th October, 1993 of the petitioner herein for mark PARAKH was published in Trade Marks Journal No. 1218(Suppl) dated 8th March, 2000. In face of this fact, any certificate issued by the Registrar of Trade Marks, if any, as to there being no application pending of similar mark or deceptively similar mark does not support the cause of the respondent in relation to the impugned registration. In face ofTM-5 opposing trade mark registration number 1078627 filed by the petitioner herein dated 21.4.2004 under notice to the petitioner, there is inescapable conclusion that on or about that date, respondent was aware about the interest of the petitioner in the impugned subject matter which is relatable to the same subject matter. Though the application for the impugned registration was filed on 12.11.2003, but the registration thereof was issued 8.4.2005. Hence, there was a statutory duty cast upon the respondent to serve a notice under rule 16(3) of the Copyright Act, 1957 upon the petitioner at all relevant time till the registration was granted. Learned counsel for the respondent has heavily relied upon the Deed of Assignment and the affidavit of Shri Kishan Lai. Affidavit of Shri Kishan Lai dated 6th September, 2008 executed at Varanasi is drawn upon a Rs. 10 stamp paper bearing the place of origin and as such issue as West Bengal printed in Bengali, Hindi and English. Operative part of the Deed of Assignment is Part A thereof. It is in relation to trade mark PARAKH. Again, throughout the deed, the transaction relating to assignment of trade mark has been narrated. There is no whisper of artistic work or copyright relating thereto. Trade mark and copyright are two distinct intangible property rights - one cannot be taken in substitution of the other. IfDau Dayal had created the work for Shri Kishan Lai, there should be a deed of assignment therefore in terms of section 19 of the Copyright Act, 1957 in favour of Shri Kishan Lai as assignee. There is none. Name of the artist mentioned in column 7 of the impugned certificate of registration is "RADU DAYAL", name of the applicant is "RAM NAGAR KHADI GRAMODYOG VIKASH SAMITI". No deed of assignment by Shri Radu Dayal in favour of the applicant, the Samiti has been produced. The deed of assignment exhibited as from Shri Dau Dayal is no deed of assignment of copyright. First owner of copyright is the creator, an individual, of the artistic work. He can assign the work in writing in terms of section 19 of the Copyright Act, 1957 even to a corporate person. The deed of assignment produced is not valid one - rather there is none.
Thursday, May 20, 2010
Civil Procedure Code, 1908
Order 6 Rule 17
Amendment of pleadings
HELD
Privy Council in Ma Shwe My a v. Maung Mo Hnaung, AIR 1922 PC 249 succinctly summarises the principle which may be kept in mind while dealing with the prayer for amendment of the pleadings: (IA pp. 216-17)
"All rules of court are nothing but provisions intended to secure the proper administration of justice, and it is therefore essential that they should be made to serve and be subordinate to that purpose, so that full powers of amendment must be enjoyed and should always be liberally exercised, but nonetheless no power has yet been given to enable one distinct cause of action to be substituted for another, nor to change, by means of amendment, the subject-matter of the suit."
Where amendment not likely to change the nature of matter as cause of action in infringement and passing off actions are substantially the same in law therefore proposed amendment is necessary for the purpose of determining the real matter in controversy. HELD amendment sought by the plaintiff is allowed as no prejudice is caused to the defendants in any manner.
Application, disposed of.
Amendment of pleadings
HELD
Privy Council in Ma Shwe My a v. Maung Mo Hnaung, AIR 1922 PC 249 succinctly summarises the principle which may be kept in mind while dealing with the prayer for amendment of the pleadings: (IA pp. 216-17)
"All rules of court are nothing but provisions intended to secure the proper administration of justice, and it is therefore essential that they should be made to serve and be subordinate to that purpose, so that full powers of amendment must be enjoyed and should always be liberally exercised, but nonetheless no power has yet been given to enable one distinct cause of action to be substituted for another, nor to change, by means of amendment, the subject-matter of the suit."
Where amendment not likely to change the nature of matter as cause of action in infringement and passing off actions are substantially the same in law therefore proposed amendment is necessary for the purpose of determining the real matter in controversy. HELD amendment sought by the plaintiff is allowed as no prejudice is caused to the defendants in any manner.
Application, disposed of.
Trade Marks Act, 1999
Section 134 (2)
Copyright Act, 1957
Section 62(2)
Code of Civil Procedure , 1908
Order 7.
Registration of a trademark in Delhi cannot be a ground to invoke jurisdiction of Delhi Courts . It is well settled legal position that cause of action is a bundle of material facts which are necessary for the plaintiff to prove his case in order to entitle him to succeed in a given case. However, each and every fact pleaded in the plaint does not ipso facto lead to conclusion that those facts give rise to cause of action within the Court' territorial jurisdiction. The facts pleaded must have a nexus or relevance so as to show that the Court where the suit has been filed is the proper Court of jurisdiction. Facts, which have no bearing with the lis or the dispute involved in the case, do not given rise to a cause of action so as to confer territorial jurisdiction.
HELD
The plaintiff, who was resident of USA could have easily filed this suit at Courts at Bombay/Maharashtra and pursued the matter. Filing of suit in Delhi on the basis of vague allegations that the goods of defendants were being sold clandestinely throughout the country including Delhi makes no sense. No cause of action can be said to have arisen in Delhi. Such allegations of clandestine sale can be made against any person without any foundation and the plaintiff even during trial can always escape giving proof of such clandestine sale saying that he has stated in the plaint that the sale was clandestine and no bills were being issued. The Court cannot be used as a tool to put such a burden on the defendant that the defendant is unable to even defend the suit.
Copyright Act, 1957
Section 62(2)
Code of Civil Procedure , 1908
Order 7.
Registration of a trademark in Delhi cannot be a ground to invoke jurisdiction of Delhi Courts . It is well settled legal position that cause of action is a bundle of material facts which are necessary for the plaintiff to prove his case in order to entitle him to succeed in a given case. However, each and every fact pleaded in the plaint does not ipso facto lead to conclusion that those facts give rise to cause of action within the Court' territorial jurisdiction. The facts pleaded must have a nexus or relevance so as to show that the Court where the suit has been filed is the proper Court of jurisdiction. Facts, which have no bearing with the lis or the dispute involved in the case, do not given rise to a cause of action so as to confer territorial jurisdiction.
HELD
The plaintiff, who was resident of USA could have easily filed this suit at Courts at Bombay/Maharashtra and pursued the matter. Filing of suit in Delhi on the basis of vague allegations that the goods of defendants were being sold clandestinely throughout the country including Delhi makes no sense. No cause of action can be said to have arisen in Delhi. Such allegations of clandestine sale can be made against any person without any foundation and the plaintiff even during trial can always escape giving proof of such clandestine sale saying that he has stated in the plaint that the sale was clandestine and no bills were being issued. The Court cannot be used as a tool to put such a burden on the defendant that the defendant is unable to even defend the suit.
Code Of Civil Procedure, 1908
Order 7 Rule 11- Return of plaint
It is settled position in law that at the stage of Order 7 Rule 11 CPC the plaint and the plaint alone is to be looked into. From a bare look of the plaint in the present case, it cannot be said that the same does not disclose this Court to be having territorial jurisdiction. The Senior Counsel for the defendants has also not argued that even if the defendants were to be carrying on business at Delhi, this court would still not have jurisdiction over the reliefs to which objection has been taken (there being admission with respect to the relief qua infringement of registered trademark and copyright).
Since the plaint in the present case also avers of the defendants carrying on business at Delhi, it cannot be said that the plaint does not disclose any territorial jurisdiction of this court vis-à-vis the reliefs claimed besides the reliefs of infringement of registered trade mark and copyright. This is more so in the face of the admission of the defendant of having entered into an agreement with a dealer/distributor in Delhi for sale of products in Delhi. The termination pleaded by the defendant of the said agreement is a matter of evidence. The plaintiff by entering into the agreement with a dealer at Delhi for sale of its products at Delhi, would cause passing off and breach of contract at Delhi, conferring jurisdiction on this court. The denial by the defendant of the said averments is of no avail at this stage and it cannot be said that the plaint and the documents filed do not disclose this court to be having territorial jurisdiction.
It is settled position in law that at the stage of Order 7 Rule 11 CPC the plaint and the plaint alone is to be looked into. From a bare look of the plaint in the present case, it cannot be said that the same does not disclose this Court to be having territorial jurisdiction. The Senior Counsel for the defendants has also not argued that even if the defendants were to be carrying on business at Delhi, this court would still not have jurisdiction over the reliefs to which objection has been taken (there being admission with respect to the relief qua infringement of registered trademark and copyright).
Since the plaint in the present case also avers of the defendants carrying on business at Delhi, it cannot be said that the plaint does not disclose any territorial jurisdiction of this court vis-à-vis the reliefs claimed besides the reliefs of infringement of registered trade mark and copyright. This is more so in the face of the admission of the defendant of having entered into an agreement with a dealer/distributor in Delhi for sale of products in Delhi. The termination pleaded by the defendant of the said agreement is a matter of evidence. The plaintiff by entering into the agreement with a dealer at Delhi for sale of its products at Delhi, would cause passing off and breach of contract at Delhi, conferring jurisdiction on this court. The denial by the defendant of the said averments is of no avail at this stage and it cannot be said that the plaint and the documents filed do not disclose this court to be having territorial jurisdiction.
Civil Procedure Code, 1908 Order 39 Rules 1 & 2
Dismissing Appeal against injunction . Where Defendants started manufacturing a product under the trade mark 'Voni Gel' which was deceptively similar and identical to the registered trade mark Volini . Offending carton of the ointment Voni Gel phonetically, visually and structurally identical with the plaintiffs mark barring a few un-noticeable change of letters colour combination also having vast similarity
Mr. Dhond submitted list of some of the products available in the market against which no action is taken by the plaintiff. In our view this stand is not helpful for the defendant and more particularly in view of the fact that the respondent has not given . any details so as to show that what efforts were taken by the respondents to promote their product in the market. As far as the arguments ofShri Dhond that no action was taken by the plaintiff against some other companies who were dealing in products of similar name is concerned, we lend support from the judgment of this High Court in Pidilite Industries, 2003 (5) Bom.C.R. 295 wherein similar stand was taken and it is observed in para 59 thus -
"The argument was that if the Plaintiffs have not objected to these two marks the Plaintiffs are disentitled from objecting to or at any rate securing interim relief against the Defendants mark Coriderm. We find no substance in the plea. Apart from producing tubes and cartons and some bills the Defendants have not shown the extent of the sales of these products. Indeed, at the most it can be assumed that two similar products are in the market in January, 1990. That will not, in our opinion, non-suit the Plaintiffs or disentitle them to interim relief against the Defendant." [Para 15] After hearing both the counsels at length and on perusal of the product (of the plaintifflviz. Volini and product (of the defendant) viz. Voni Gel it was noticed that caption "for quick relief from pains,swelling and inflamation", pictures and figures having cap l;on "low back pain joint pain, sprains and strains, muscular pain", the component and sequence of the component, colour combination at the background and letters are having vast similarity. Though it was tried to be contended that by the respondent that the colour of the product VONIGEL differs from the colour combination of the product VOLINI we find that there is no such difference. On the contrary the colour combination is having vast similarity. We confirm the order of Single Judge. Therefore, we dismiss the appeal. [Para 17]
Mr. Dhond submitted list of some of the products available in the market against which no action is taken by the plaintiff. In our view this stand is not helpful for the defendant and more particularly in view of the fact that the respondent has not given . any details so as to show that what efforts were taken by the respondents to promote their product in the market. As far as the arguments ofShri Dhond that no action was taken by the plaintiff against some other companies who were dealing in products of similar name is concerned, we lend support from the judgment of this High Court in Pidilite Industries, 2003 (5) Bom.C.R. 295 wherein similar stand was taken and it is observed in para 59 thus -
"The argument was that if the Plaintiffs have not objected to these two marks the Plaintiffs are disentitled from objecting to or at any rate securing interim relief against the Defendants mark Coriderm. We find no substance in the plea. Apart from producing tubes and cartons and some bills the Defendants have not shown the extent of the sales of these products. Indeed, at the most it can be assumed that two similar products are in the market in January, 1990. That will not, in our opinion, non-suit the Plaintiffs or disentitle them to interim relief against the Defendant." [Para 15] After hearing both the counsels at length and on perusal of the product (of the plaintifflviz. Volini and product (of the defendant) viz. Voni Gel it was noticed that caption "for quick relief from pains,swelling and inflamation", pictures and figures having cap l;on "low back pain joint pain, sprains and strains, muscular pain", the component and sequence of the component, colour combination at the background and letters are having vast similarity. Though it was tried to be contended that by the respondent that the colour of the product VONIGEL differs from the colour combination of the product VOLINI we find that there is no such difference. On the contrary the colour combination is having vast similarity. We confirm the order of Single Judge. Therefore, we dismiss the appeal. [Para 17]
Trade and Merchandise Marks Act, 1958
Section 56 — Wide Power of expunction for equitable right of waiver, delay, acquiescence or estoppel
HELD
"Shall" in the context of the Copyright Board, in contradistinction to "may" in section 56 in the relevant trade mark law in relation to the Registrar of Trade Marks or the High Court, as the case may be, creates a mandate upon the Copyright Board to proceed with the expunction where a case therefor is made out by the applicant. Use of "shall" in section 50 of the Copyright Act, 1957 is with a purpose including causing dilution in the rigorous use of equitable right of waiver, delay, acquiescence or estoppel. Application for the impugned registration was filed on 11.5.1999 and the registration thereof was granted on 1999. According to submission of the respondent, it was aware about the existence of mark Rolex as on 26.8.1991 when the petitioner wrote a letter to it about the infringement of the trade marks of the petitioner by the respondent. We believe that that is enough to conclude that the petitioner had interest in the subject matter of the impugned registration. Respondent had a statutory obligation to give a notice of its proposed application for registration which he failed to do.
HELD
"Shall" in the context of the Copyright Board, in contradistinction to "may" in section 56 in the relevant trade mark law in relation to the Registrar of Trade Marks or the High Court, as the case may be, creates a mandate upon the Copyright Board to proceed with the expunction where a case therefor is made out by the applicant. Use of "shall" in section 50 of the Copyright Act, 1957 is with a purpose including causing dilution in the rigorous use of equitable right of waiver, delay, acquiescence or estoppel. Application for the impugned registration was filed on 11.5.1999 and the registration thereof was granted on 1999. According to submission of the respondent, it was aware about the existence of mark Rolex as on 26.8.1991 when the petitioner wrote a letter to it about the infringement of the trade marks of the petitioner by the respondent. We believe that that is enough to conclude that the petitioner had interest in the subject matter of the impugned registration. Respondent had a statutory obligation to give a notice of its proposed application for registration which he failed to do.
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