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.
Saturday, May 29, 2010
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-Ã -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-Ã -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.
Copyright Act, 1957
Section 50
Copyright Rules, 1958
Rule 16 read with Form IV
Held: It is now well settled that mechanism envisaged under rule 16, read with Form TV, of the Copyright Rules, 1958 as further strengthened through amendment in 1992 envisage a protection of infrastructure which is in substitution of publication of application and right to opposition provided under the Trade Marks law since ages. Courts have repeatedly held that in matter of disputes relating to labels, marks, etc., it is not that issues relating to the rights of the private persons are only involved. Public at large has a stake in these issues. For that reason, maintenance of the purity of register is emphasized time and again.
Copyright Rules, 1958
Rule 16 read with Form IV
Held: It is now well settled that mechanism envisaged under rule 16, read with Form TV, of the Copyright Rules, 1958 as further strengthened through amendment in 1992 envisage a protection of infrastructure which is in substitution of publication of application and right to opposition provided under the Trade Marks law since ages. Courts have repeatedly held that in matter of disputes relating to labels, marks, etc., it is not that issues relating to the rights of the private persons are only involved. Public at large has a stake in these issues. For that reason, maintenance of the purity of register is emphasized time and again.
Copyright Act, 1957
Section 50
Copyright Rules, 1958
Rule 16 read with Form IV
Held: It is now well settled that mechanism envisaged under rule 16, read with Form TV, of the Copyright Rules, 1958 as further strengthened through amendment in 1992 envisage a protection of infrastructure which is in substitution of publication of application and right to opposition provided under the Trade Marks law since ages. Courts have repeatedly held that in matter of disputes relating to labels, marks, etc., it is not that issues relating to the rights of the private persons are only involved. Public at large has a stake in these issues. For that reason, maintenance of the purity of register is emphasized time and again.
Copyright Rules, 1958
Rule 16 read with Form IV
Held: It is now well settled that mechanism envisaged under rule 16, read with Form TV, of the Copyright Rules, 1958 as further strengthened through amendment in 1992 envisage a protection of infrastructure which is in substitution of publication of application and right to opposition provided under the Trade Marks law since ages. Courts have repeatedly held that in matter of disputes relating to labels, marks, etc., it is not that issues relating to the rights of the private persons are only involved. Public at large has a stake in these issues. For that reason, maintenance of the purity of register is emphasized time and again.
Copyright Act, 1957
Section 50
Copyright Rules, 1958
Rule 16 read with Form IV
Held: It is now well settled that mechanism envisaged under rule 16, read with Form TV, of the Copyright Rules, 1958 as further strengthened through amendment in 1992 envisage a protection of infrastructure which is in substitution of publication of application and right to opposition provided under the Trade Marks law since ages. Courts have repeatedly held that in matter of disputes relating to labels, marks, etc., it is not that issues relating to the rights of the private persons are only involved. Public at large has a stake in these issues. For that reason, maintenance of the purity of register is emphasized time and again.
Copyright Rules, 1958
Rule 16 read with Form IV
Held: It is now well settled that mechanism envisaged under rule 16, read with Form TV, of the Copyright Rules, 1958 as further strengthened through amendment in 1992 envisage a protection of infrastructure which is in substitution of publication of application and right to opposition provided under the Trade Marks law since ages. Courts have repeatedly held that in matter of disputes relating to labels, marks, etc., it is not that issues relating to the rights of the private persons are only involved. Public at large has a stake in these issues. For that reason, maintenance of the purity of register is emphasized time and again.
Trade Marks Act, 1999
Section 95
Registered trade marks 'ALEX', 'VITARAL-G' and 'CANDID' . Interim orders
Oppositions filed within four month but without applications on Form TM-44 seeking extension of time .
Notices of opposition were received within the extendable time - No prejudice or hardship will be caused to the respondent - Applicants for registration can continue to use the trade marks, as have been using till now, under the common law even without registration certificates
HELD Impugned orders of registrar liable to be stayed.
Registered trade marks 'ALEX', 'VITARAL-G' and 'CANDID' . Interim orders
Oppositions filed within four month but without applications on Form TM-44 seeking extension of time .
Notices of opposition were received within the extendable time - No prejudice or hardship will be caused to the respondent - Applicants for registration can continue to use the trade marks, as have been using till now, under the common law even without registration certificates
HELD Impugned orders of registrar liable to be stayed.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
The plaintiff has filed a suit for permanent injunction restraining
infringement of copyright, trade mark, rendition of accounts, damages and delivery
up etc.
HELD That the the factum of rectification of trademark filed by the
defendant not disclosed by the plaintiff. Both the plaintiffg and
defendant simulatneosly using Trade name 'Vega Asia'.Conduct of the
plaintiff disentitle him from any injunction hence, Interim order vacated.
The plaintiff has filed a suit for permanent injunction restraining
infringement of copyright, trade mark, rendition of accounts, damages and delivery
up etc.
HELD That the the factum of rectification of trademark filed by the
defendant not disclosed by the plaintiff. Both the plaintiffg and
defendant simulatneosly using Trade name 'Vega Asia'.Conduct of the
plaintiff disentitle him from any injunction hence, Interim order vacated.
Trade Marks Act, 1999
Sections 47 & 57
Rectification applications
It is the undisputed fact that the partnership firm has been using the trade mark MARDAN even after registration of MARDAN was removed from the register in 1991. The firm is therefore proprietor of the trade mark. In other words, the partners were co-proprietors or joint proprietors of the mark. The memorandum of understanding does not contain any whisper of goodwill, trade mark or dissolution of the partnership firm. Clause 6 of the memorandum of understanding reads thus: "6. That in the event of default in payment as mentioned in Cl.No. 5 the partnership under the name & style MARDAN INDUSTRIES will be deemed to have the same status as it was on 31-3-92 to be specific Mr. Harvinder Singh will retire from the firm on receipt of the said amount. Any liabilities contacted after 1-4-92 by Mardan Industries or Mardan Industries (India) will be reverted back to Mr. Jagmohan Singh." The respondents has stated in the affidavit evidence that the payment of Rs. 7.5 lacs and Rs. 5.77 lacs by the partners Shri Upkar Singh and Jagmohan Singh, respectively, have not been made to the third partner, Harvinder Singh. The averment of non-payment of the aforesaid amounts corroborates with a copy of notice dated 6.5. 1993 by Shri G.V.Dass, Advocate on behalf of the third partner issued to Shri Upkar Singh and Jagmohan Singh. If that be so, the partnership firm, in terms of clause 6, is in the same status as it was before the date of signing of memorandum of understanding and as such no taking over of running business of Mardan Industries occurred. The contesting parties have not furnished any information about the aforesaid payments, in terms of clause 5 of the memorandum of understanding, after service of the said notice on the defaulting partners. Further, the copies of Sales Tax Assessment orders placed on record also suggest that the firm was not dissolved at least till 1996. If the dissolution of the partnership has not taken place, the firm is the proprietor of the trade mark. When the firm is the proprietor of trade mark MARDAN due to non-dissolution thereof, the applicant could not have applied for registration of trade mark MARDAN and MARDAN NO. 1 in his name, i.e. in the name of Jagmohan Singh trading as Mardan Industrial Corporation. Likewise, Jagmohan Singh is not a person aggrieved as a partner cannot have a separate identical business in competition to the firm's business. However, this Appellate Board has no jurisdiction to interpret and determine whether the memorandum of understanding is acted upon or not, such jurisdiction lies with the Civil Court. During the course of hearing, the applicant furnished a paper detailing the dates and events that took place in the case, wherein it is noticed that the applicant has indicated two issues as disputed facts, namely, first, Whether the MOU was acted upon and second, Whether the Partnership Firm is presently subsisting. When the applicant was aware that the nature of issues involved are such which can be determined by the Civil Court, the present applications before this Appellate Board appears to be filed with mala fide intention to harass the respondents for which the respondents deserves to be compensated, howsoever, token amount it may be. [Para 20]
Rectification applications
It is the undisputed fact that the partnership firm has been using the trade mark MARDAN even after registration of MARDAN was removed from the register in 1991. The firm is therefore proprietor of the trade mark. In other words, the partners were co-proprietors or joint proprietors of the mark. The memorandum of understanding does not contain any whisper of goodwill, trade mark or dissolution of the partnership firm. Clause 6 of the memorandum of understanding reads thus: "6. That in the event of default in payment as mentioned in Cl.No. 5 the partnership under the name & style MARDAN INDUSTRIES will be deemed to have the same status as it was on 31-3-92 to be specific Mr. Harvinder Singh will retire from the firm on receipt of the said amount. Any liabilities contacted after 1-4-92 by Mardan Industries or Mardan Industries (India) will be reverted back to Mr. Jagmohan Singh." The respondents has stated in the affidavit evidence that the payment of Rs. 7.5 lacs and Rs. 5.77 lacs by the partners Shri Upkar Singh and Jagmohan Singh, respectively, have not been made to the third partner, Harvinder Singh. The averment of non-payment of the aforesaid amounts corroborates with a copy of notice dated 6.5. 1993 by Shri G.V.Dass, Advocate on behalf of the third partner issued to Shri Upkar Singh and Jagmohan Singh. If that be so, the partnership firm, in terms of clause 6, is in the same status as it was before the date of signing of memorandum of understanding and as such no taking over of running business of Mardan Industries occurred. The contesting parties have not furnished any information about the aforesaid payments, in terms of clause 5 of the memorandum of understanding, after service of the said notice on the defaulting partners. Further, the copies of Sales Tax Assessment orders placed on record also suggest that the firm was not dissolved at least till 1996. If the dissolution of the partnership has not taken place, the firm is the proprietor of the trade mark. When the firm is the proprietor of trade mark MARDAN due to non-dissolution thereof, the applicant could not have applied for registration of trade mark MARDAN and MARDAN NO. 1 in his name, i.e. in the name of Jagmohan Singh trading as Mardan Industrial Corporation. Likewise, Jagmohan Singh is not a person aggrieved as a partner cannot have a separate identical business in competition to the firm's business. However, this Appellate Board has no jurisdiction to interpret and determine whether the memorandum of understanding is acted upon or not, such jurisdiction lies with the Civil Court. During the course of hearing, the applicant furnished a paper detailing the dates and events that took place in the case, wherein it is noticed that the applicant has indicated two issues as disputed facts, namely, first, Whether the MOU was acted upon and second, Whether the Partnership Firm is presently subsisting. When the applicant was aware that the nature of issues involved are such which can be determined by the Civil Court, the present applications before this Appellate Board appears to be filed with mala fide intention to harass the respondents for which the respondents deserves to be compensated, howsoever, token amount it may be. [Para 20]
Copyright Act, 1957
Section 59
HELD that in case of use of the counterfeited and duplicate software Sum of Rs. 5 lacs awarded as
compensatory damages and a sum of Rs. 5 lacs as punitive/exemplary damages as well as
damages on account of loss of reputation and damage to the goodwill further the suit decreed.
HELD that in case of use of the counterfeited and duplicate software Sum of Rs. 5 lacs awarded as
compensatory damages and a sum of Rs. 5 lacs as punitive/exemplary damages as well as
damages on account of loss of reputation and damage to the goodwill further the suit decreed.
Tuesday, May 18, 2010
Trade Marks Act, 1999 Section 31
Plaintiff has filed the suit against the defendant for permanent injunction
for infringement of copyright and also passing of besides rendition of accounts and
damages with respect to plaintiffs packaging under the trademark NATRAJ in
respect of penciles alleging that the arrangement of features, lay out, colour scheme
of the plaintiffs carton is substantially an imitation of their artistic work.
No rebuttal to the claim of the plaintiffs Suit of the plaintiff for permanent
injunction decreed against the defendants.Plaintiffs also held entitled to damages
to the tune of Rs. 2 lacs.
for infringement of copyright and also passing of besides rendition of accounts and
damages with respect to plaintiffs packaging under the trademark NATRAJ in
respect of penciles alleging that the arrangement of features, lay out, colour scheme
of the plaintiffs carton is substantially an imitation of their artistic work.
No rebuttal to the claim of the plaintiffs Suit of the plaintiff for permanent
injunction decreed against the defendants.Plaintiffs also held entitled to damages
to the tune of Rs. 2 lacs.
Copyright Act, 1957 Section 59
The defendants claimed to be in the
business, inter alia, of publishing guides or what is in this part of the country called
Kunji or Dukki. It was the case of the defendants that the textbook of the plaintiff
subject matter of the suit was prescribed by the Guru Nanak Dev University,
Amritsar for the students of BA Part I, II and III; that they were merely for the
facility of the students and for better understanding of the subject matter by the
students publishing the guides; that the introduction before each exercise in the two
publications were different; that the illustrations in the textbook of the plaintiff
were not existing in the publication of the defendants; that while the answers in the
plaintiffs publication were at the end of the book, the questions and answers were
together in the publication of the defendants; that while the plaintiffs publication
contains two choice of answers for most of the questions, the defendants publication
gave only one answer. It was thus the case of the defendants that the plaintiffs
publication being a course book of the university and the defendants being engaged
in publishing guides as aforesaid, had to naturally publish the answers as in the
plaintiffs book and could not have published different answers. The defendants have
gone to the extent of stating that they have also given credit to the plaintiff in their
publication. It was, however, contended that the format of the two books was
different. It was the case of the plaintiffs themselves that while the plaintiffs
publication was for Rs. 95 only, the defendants publications were for over Rs. 600/-.
HELD This is a striking point in the present case. Normally, the purpose of
infringers of trademark, copyright and patent is to sell and/or use counterfeit or
pirated goods at a price much lower than that of the owner of the trademark or
copyright. The infringers are able to sell at a much lower price, having not incurred
the expense which the owner has incurred in creation of work etc. However, in the
present case the plaintiff themselves claims that the book / publication of the
defendants is of a value several time more than that of the plaintiff.
business, inter alia, of publishing guides or what is in this part of the country called
Kunji or Dukki. It was the case of the defendants that the textbook of the plaintiff
subject matter of the suit was prescribed by the Guru Nanak Dev University,
Amritsar for the students of BA Part I, II and III; that they were merely for the
facility of the students and for better understanding of the subject matter by the
students publishing the guides; that the introduction before each exercise in the two
publications were different; that the illustrations in the textbook of the plaintiff
were not existing in the publication of the defendants; that while the answers in the
plaintiffs publication were at the end of the book, the questions and answers were
together in the publication of the defendants; that while the plaintiffs publication
contains two choice of answers for most of the questions, the defendants publication
gave only one answer. It was thus the case of the defendants that the plaintiffs
publication being a course book of the university and the defendants being engaged
in publishing guides as aforesaid, had to naturally publish the answers as in the
plaintiffs book and could not have published different answers. The defendants have
gone to the extent of stating that they have also given credit to the plaintiff in their
publication. It was, however, contended that the format of the two books was
different. It was the case of the plaintiffs themselves that while the plaintiffs
publication was for Rs. 95 only, the defendants publications were for over Rs. 600/-.
HELD This is a striking point in the present case. Normally, the purpose of
infringers of trademark, copyright and patent is to sell and/or use counterfeit or
pirated goods at a price much lower than that of the owner of the trademark or
copyright. The infringers are able to sell at a much lower price, having not incurred
the expense which the owner has incurred in creation of work etc. However, in the
present case the plaintiff themselves claims that the book / publication of the
defendants is of a value several time more than that of the plaintiff.
Trade Marks Act, 1999 Section 31
Written statement on behalf of the defendant No. 1 stated that neither he nor anyone else was
carrying on business in the name and style as alleged . Defendant No. 1
raised other serious issues with respect to the existence of the address —
Sole witness of the plaintiff made no effort whatsoever to meet the said
pleas . No evidence on behalf of the Plaintiff in this regard HELD to be not found entitled
to any claim for delivery, rendition of accounts or damages or costs against
the defendants 1 and 3.Further HELD A decree for recovery of damages in
sum of Rs. 1 lac is also passed in favour of the plaintiff and
against the defendant No. 2.
carrying on business in the name and style as alleged . Defendant No. 1
raised other serious issues with respect to the existence of the address —
Sole witness of the plaintiff made no effort whatsoever to meet the said
pleas . No evidence on behalf of the Plaintiff in this regard HELD to be not found entitled
to any claim for delivery, rendition of accounts or damages or costs against
the defendants 1 and 3.Further HELD A decree for recovery of damages in
sum of Rs. 1 lac is also passed in favour of the plaintiff and
against the defendant No. 2.
Trade Marks Act, 1999 Section 31
HELD
Both parties are German Companies and are using the mark/word LOWENBRAU
all over the world and are distinguished by other mark/word on their
label/mark—Mark/word LOWENBRAU is a part of public juris in Germany
and in most countries with German beer and is not distinctive of a
particular manufacturer Further HELD Concurrent and honest user was a valid
defence against an action for infringement Therefore, ex parte stay order vacated
Both parties are German Companies and are using the mark/word LOWENBRAU
all over the world and are distinguished by other mark/word on their
label/mark—Mark/word LOWENBRAU is a part of public juris in Germany
and in most countries with German beer and is not distinctive of a
particular manufacturer Further HELD Concurrent and honest user was a valid
defence against an action for infringement Therefore, ex parte stay order vacated
Copyright Act, 1957 Section 2(c)
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Infringement of the Plaintiffs' copyright in their drawings. Illustration of Copper plates shows not only similarity but identical dimensions . Plaintiffs' former employees are presently Defendants' employees . The case of theft coupled with recovery of the drawings show access to the Plaintiffs' drawings by the Defendants. Recovery of the stolen copies of the Plaintiffs' drawings shows not only similarity, but identical dimensions in the Defendants' sketches — Drawings show no appeal and only mechanical devices and machine parts to perform specified functions -Plaintiffs' drawings are, therefore, not design rather are artistic works — Its theft, copying, and subsequent use constitute infringement under Section 2(m) of the Plaintiffs' copyright under Section 14(c)(l) — Defendants restrained from using the drawings.
Order 39 Rules 1 & 2
Infringement of the Plaintiffs' copyright in their drawings. Illustration of Copper plates shows not only similarity but identical dimensions . Plaintiffs' former employees are presently Defendants' employees . The case of theft coupled with recovery of the drawings show access to the Plaintiffs' drawings by the Defendants. Recovery of the stolen copies of the Plaintiffs' drawings shows not only similarity, but identical dimensions in the Defendants' sketches — Drawings show no appeal and only mechanical devices and machine parts to perform specified functions -Plaintiffs' drawings are, therefore, not design rather are artistic works — Its theft, copying, and subsequent use constitute infringement under Section 2(m) of the Plaintiffs' copyright under Section 14(c)(l) — Defendants restrained from using the drawings.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
HELD that in suit an order of status quo granted without assigning any reason such an order granting status quo cannot be sustained therefore order set aside.
HELD that in suit an order of status quo granted without assigning any reason such an order granting status quo cannot be sustained therefore order set aside.
Trade Marks Act, 1999
Section 28 — Identical product of the defendants shows a striking similarity — Trademark "CIALIS" of the plaintiff pronounced as "SI-ALIS" and the defendant's trademark is pronounced as "SC-ALIS" — Pronunciation of the two found to be identical or nearly identical, likely to cause confusion — Photocopies can be considered in the absence of any plea of the same not being true photocopies — Defendants, so as to defeat the interim order, while changing the name of their product from SCALIS to SCIFIL retained the same shape of the tablet — Defendants instead of appearing before court, attempted to overreach and reap benefits and pass off their goods as that of the plaintiffs, by making a marginal difference only in the trade name — Damages awarded to the plaintiffs in the sum of Rs. 10 lacs against the defendants jointly and severally.
Copyright Act, 1957 Section 50
Trademark LIFEBUOY of the plaintiff enjoying reputation. Respondent using a wrapper of same size, same colour, with same proportion of the segment of the colour red vis—vis white but for trade name LUCKY SOAP . Opposition before the Registrar of Trademarks . Registrar of Trademarks held that the wrapper of the respondent, if permitted to be registered, would cause confusion in the eyes of the consumer and hence is deceptively similar to that of the appellant . Copyright Board has arrived at a totally contradictory finding . Copyright Board gravely erred in not even discussing the order passed by the Registrar of Trademarks . HELD Impugned order, set aside.
Civil Procedure Code, 1908
Order 6 Rule 17
Amendment of the written statement — Liberal approach is a general view — In the event of allowing the amendment the other party can be compensated in money — At the initial stage of the suit, where the pleadings are not complete, the court will not go into the merits of the controversy while adjudicating upon the amendment of the pleadings — Application allowed subject to the costs.
Amendment of the written statement — Liberal approach is a general view — In the event of allowing the amendment the other party can be compensated in money — At the initial stage of the suit, where the pleadings are not complete, the court will not go into the merits of the controversy while adjudicating upon the amendment of the pleadings — Application allowed subject to the costs.
Civil Procedure Code, 1908
Order 39 Rules 1 &2
Interim injunction — defendants restrained from assigning, licensing or releasing of film titled Aashayein and from issuing any order/letter allowing and authorizing release of print of the film titled Aashayein in favour of any third party — Once the contract is vitiated by fraud or misrepresentation, it is a settled law that the party may either rescind the contract or recover damages or both — Damages would be more appropriate remedy than passing injunction because it would not only put the parties to the proceedings at loss but also cause hardship and losses to the other persons whose monies are invested in the film — Defendants to deposit 30% of total amount paid by the plaintiff in equal proportion — Subject to this condition, the defendants at liberty to release the film.
Interim injunction — defendants restrained from assigning, licensing or releasing of film titled Aashayein and from issuing any order/letter allowing and authorizing release of print of the film titled Aashayein in favour of any third party — Once the contract is vitiated by fraud or misrepresentation, it is a settled law that the party may either rescind the contract or recover damages or both — Damages would be more appropriate remedy than passing injunction because it would not only put the parties to the proceedings at loss but also cause hardship and losses to the other persons whose monies are invested in the film — Defendants to deposit 30% of total amount paid by the plaintiff in equal proportion — Subject to this condition, the defendants at liberty to release the film.
Civil Procedure Code, 1908
Order 3 Rule 4
Right to cross examine There is no bar on a Pleader duly authorized by a party under a vakalatnama to engage another pleader to plead the case on his or her behalf Appeal, allowed.
On a perusal of the provisions set out hereinabove as also the legal position as contained in the authorities of various high courts, this Court is of the opinion that there is no bar on a Pleader duly authorized by a party under a vakalatnama to engage another pleader to plead the case on his or her behalf. The power to "plead" would include within its scope and ambit, the right to examine witnesses, to conduct admission & denial, to seek adjournments and to address arguments etc., as may be authorized. Such pleader however would not have the power to compromise a case, withdraw a case or do any other act which may compromise the interest of his or her client. In procedural matters it is not only expedient but also in the interest of speedy delivery of justice that young lawyers who work with pleaders duly authorized by clients are permitted to appear in matters. This is necessary for speedy disposal of cases and also as an encouragement to the younger professionals who are in the initial /formative years of practice. [Para 9]
Judges also have a duty to ensure that such young pleaders and lawyers who enter the portals of courts are permitted to learn but at the same time to ensure that the interest of parties are not permitted to be compromised. In view of the abovementioned provisions of law and case law, this Court is of the view that when a counsel has been authorized under a vakalatnama to represent his client, the junior of the said counsel can be permitted to appear on behalf of the counsel representing the said client as and when the counsel himself is not in a position to appear. [Para 10]
Right to cross examine There is no bar on a Pleader duly authorized by a party under a vakalatnama to engage another pleader to plead the case on his or her behalf Appeal, allowed.
On a perusal of the provisions set out hereinabove as also the legal position as contained in the authorities of various high courts, this Court is of the opinion that there is no bar on a Pleader duly authorized by a party under a vakalatnama to engage another pleader to plead the case on his or her behalf. The power to "plead" would include within its scope and ambit, the right to examine witnesses, to conduct admission & denial, to seek adjournments and to address arguments etc., as may be authorized. Such pleader however would not have the power to compromise a case, withdraw a case or do any other act which may compromise the interest of his or her client. In procedural matters it is not only expedient but also in the interest of speedy delivery of justice that young lawyers who work with pleaders duly authorized by clients are permitted to appear in matters. This is necessary for speedy disposal of cases and also as an encouragement to the younger professionals who are in the initial /formative years of practice. [Para 9]
Judges also have a duty to ensure that such young pleaders and lawyers who enter the portals of courts are permitted to learn but at the same time to ensure that the interest of parties are not permitted to be compromised. In view of the abovementioned provisions of law and case law, this Court is of the view that when a counsel has been authorized under a vakalatnama to represent his client, the junior of the said counsel can be permitted to appear on behalf of the counsel representing the said client as and when the counsel himself is not in a position to appear. [Para 10]
Civil Procedure Code, 1908
Section 20
Trade Marks Act, 1999
Section 134
Territorial Jurisdiction — Permanent injunction in respect of trade mark "SAI RENAISSANCE" or any other trade mark incorporating word "Renaissance" or deceptively similar — defendant's hotel in Bangalore — Averments that defendants were targeting customers in Delhi, not only through travel agent but also on-line and off-line — Plaintiff carrying on business at Delhi through on-line operation by accepting bookings for its Renaissance chain of hotels for its Delhi based customers — Booking of hotel rooms by hospitality or Travel Agents spread over throughout the world would not give rise to the presumption that the Hotel's business was being done at the place of such agent — Place of business and place of work has to be understood not looking at the booking through e-mails but where the actual physical business of hospitality is being done — Court at Delhi has no territorial jurisdiction — Plaint, directed to be returned.
Trade Marks Act, 1999
Section 134
Territorial Jurisdiction — Permanent injunction in respect of trade mark "SAI RENAISSANCE" or any other trade mark incorporating word "Renaissance" or deceptively similar — defendant's hotel in Bangalore — Averments that defendants were targeting customers in Delhi, not only through travel agent but also on-line and off-line — Plaintiff carrying on business at Delhi through on-line operation by accepting bookings for its Renaissance chain of hotels for its Delhi based customers — Booking of hotel rooms by hospitality or Travel Agents spread over throughout the world would not give rise to the presumption that the Hotel's business was being done at the place of such agent — Place of business and place of work has to be understood not looking at the booking through e-mails but where the actual physical business of hospitality is being done — Court at Delhi has no territorial jurisdiction — Plaint, directed to be returned.
Trade Marks Act, 1999 Section 28
The plaintiffs selling their goods under the registered trademark of the plaintiffs "A-GLASS-AND-A-HALP1 for sale of chocolate and other allied goods. However trade dress/wrapper adopted by the defendants is similar/deceptively similar to that of the plaintiffs. Defendants adopted the same colour combination. All the persons are susceptible on seeing the trade dress adopted by the defendants, consider the product of the defendants as of the plaintiffs and thereby causing undue enrichment to the defendants . HELD plaintiffs are entitled to the relief of injunction as prayed.
Trade Marks Act, 1999 Section 28
Plaintiff registered proprietor of well trademark GENERAL ELECTRIC and GE and the GE monogram in relation to a number of services — defendants applied to the Registrar of Trademark for registration of the mark GE LITE in relation to motorcycle boxes — There does not appear to be any reason for the defendants to adopt the said trademark other than to encash the goodwill and reputation of the plaintiff to their undue enrichment — Nothing at all to show that the defendants were, in fact, carrying on business of manufacture and sale of the motorcycle boxes in the name and style of GE LITE — Suit decreed for the relief of permanent injunction.
Trade Marks Act, 1999
Section 28
Well known trade mark LARSEN and TOUBRO .
Application of the defendant also for registration of the mark LARSON in relation to plywood, veneer wood, venners, wood panelling, wood pulp board, timber, partitions not of metal, mouldable wood Clear case of use by the defendant of name/mark LARSON in relation to building related goods is an attempt to take advantage of the reputation and goodwill of the plaintiff and to pass off its goods and business as that of the plaintiff.
HELD Suit decreed with punitive damages in the sum of Rs 5 lacs inclusive of costs of the suit.
Well known trade mark LARSEN and TOUBRO .
Application of the defendant also for registration of the mark LARSON in relation to plywood, veneer wood, venners, wood panelling, wood pulp board, timber, partitions not of metal, mouldable wood Clear case of use by the defendant of name/mark LARSON in relation to building related goods is an attempt to take advantage of the reputation and goodwill of the plaintiff and to pass off its goods and business as that of the plaintiff.
HELD Suit decreed with punitive damages in the sum of Rs 5 lacs inclusive of costs of the suit.
Civil Procedure Code, 1908 Section 20
Principle of forum non-convenience'
It is appropriate to repeat that principle of forum non-convenience can be applied rarely when there are overwhelming facts and interest of justice requires that a Court that has jurisdiction should not adjudicate the suit/legal proceedings. The said principle is not to be applied liberally but with great caution and care and only when failure to do so, shall result in abuse of process of Court and cause grave injustice.
Principle does not confer jurisdiction on a court contrary to Section 20 of the Code but applies when a court otherwise has jurisdiction but for valid, sound and good reasons does not wish to entertain a suit . Plaints directed to be returned and rejected.
It is not disputed by both the parties that principle of forum non- convenience is a part of common law or private international law but the question is whether the said principle can be applied even when a party invokes territorial jurisdiction of a Court and satisfies requirements of Section 20(c} of the Code in the sense that apart of cause of action has arisen in Delhi. This question can be answered by examining whether Section 20 of the Code prohibits and oust applicability of the said principle. [Para 14]
As stated above, Section 20 of the Code gives dominus litis to the plaintiff to file a suit in the courts located at a place where defendant resides or works for gain or where cause of action, partly or wholly arises. However, it is also equally well settled that in spite of Section 20 of the Code, parties by a contract can confer sole or exclusive jurisdiction to courts at one location which otherwise has jurisdiction and exclude jurisdiction of other courts. In other words, it is accepted that Section 20 of the Code does not bar or prohibit parties from entering into a contract or mutual understand¬ing that courts only at a particular location will have exclusive jurisdiction to decide the disputes and oust jurisdiction of courts located at other locations. The only condition is that the exclusive or the sole Court should otherwise have territorial jurisdiction to decide the disputes in terms of Section 20 of the Code (Refer A.B.C. Laminart v. A.P. Agencies, 1989(2) SCC 163;. The legal position, therefore, recognizes that Section 20 of the Code does not bar or prohibit parties from entering into a mutual arrangement restricting territorial jurisdiction of the court which can entertain legal proceedings. Section 20 of the Code, therefore, stipulates that plain¬tiffs have dominus litis to determine and decide the location where they want to institute a suit but this can be restricted by a mutual contract. [Para 22]
In view of the above interpretation of Section 20 of the Code, it cannot be said that the principle of forum non-convenience is alien, barred or prohibited by Section 20 the Code. Section 20 of the Code indicates and specifies the courts which can have jurisdiction. Principle of forum non- convenience does not confer jurisdiction on a court contrary to Section 20 of the Code but applies when a court otherwise has jurisdiction but for valid, sound and good reasons does not wish to entertain a suit. Section 20 of the Code, does not prohibit or bar the principle of forum non-conve¬nience. [Para 23]
The present case, therefore, falls within one of those rare cases where a party has deliberately and intentionally invoked jurisdiction of a court, which has jurisdiction to entertain a suit under Section 20 of the Code but the interest of justice and equity requires that the plaintifffs) should be asked to approach the court where parties are already litigating. The twin conditions for applying the principle of forum non-con¬venience are satisfied in the present case. Any decision on the advertisement of the defendant will necessarily call for examination and comments on the advertisement of the plaintiff(s), which is subject matter before the Bombay High Court. Any comment or observation in the orders passed by the Delhi High Court will cause confusion, possibility of conflicting decisions, which will cause prejudice to the parties. Interim application for injunction is still pending before Bombay High Court. The present case, therefore, is an exceptional case wherein principle of forum non-convenience should be applied. The plaintiff (s) were aware and have consciously and deliberately invoked jurisdiction of this Court, in view of the litigation and issues pending before the Bombay High Court. [Para 36]
It is appropriate to repeat that principle of forum non-convenience can be applied rarely when there are overwhelming facts and interest of justice requires that a Court that has jurisdiction should not adjudicate the suit/legal proceedings. The said principle is not to be applied liberally but with great caution and care and only when failure to do so, shall result in abuse of process of Court and cause grave injustice.
Principle does not confer jurisdiction on a court contrary to Section 20 of the Code but applies when a court otherwise has jurisdiction but for valid, sound and good reasons does not wish to entertain a suit . Plaints directed to be returned and rejected.
It is not disputed by both the parties that principle of forum non- convenience is a part of common law or private international law but the question is whether the said principle can be applied even when a party invokes territorial jurisdiction of a Court and satisfies requirements of Section 20(c} of the Code in the sense that apart of cause of action has arisen in Delhi. This question can be answered by examining whether Section 20 of the Code prohibits and oust applicability of the said principle. [Para 14]
As stated above, Section 20 of the Code gives dominus litis to the plaintiff to file a suit in the courts located at a place where defendant resides or works for gain or where cause of action, partly or wholly arises. However, it is also equally well settled that in spite of Section 20 of the Code, parties by a contract can confer sole or exclusive jurisdiction to courts at one location which otherwise has jurisdiction and exclude jurisdiction of other courts. In other words, it is accepted that Section 20 of the Code does not bar or prohibit parties from entering into a contract or mutual understand¬ing that courts only at a particular location will have exclusive jurisdiction to decide the disputes and oust jurisdiction of courts located at other locations. The only condition is that the exclusive or the sole Court should otherwise have territorial jurisdiction to decide the disputes in terms of Section 20 of the Code (Refer A.B.C. Laminart v. A.P. Agencies, 1989(2) SCC 163;. The legal position, therefore, recognizes that Section 20 of the Code does not bar or prohibit parties from entering into a mutual arrangement restricting territorial jurisdiction of the court which can entertain legal proceedings. Section 20 of the Code, therefore, stipulates that plain¬tiffs have dominus litis to determine and decide the location where they want to institute a suit but this can be restricted by a mutual contract. [Para 22]
In view of the above interpretation of Section 20 of the Code, it cannot be said that the principle of forum non-convenience is alien, barred or prohibited by Section 20 the Code. Section 20 of the Code indicates and specifies the courts which can have jurisdiction. Principle of forum non- convenience does not confer jurisdiction on a court contrary to Section 20 of the Code but applies when a court otherwise has jurisdiction but for valid, sound and good reasons does not wish to entertain a suit. Section 20 of the Code, does not prohibit or bar the principle of forum non-conve¬nience. [Para 23]
The present case, therefore, falls within one of those rare cases where a party has deliberately and intentionally invoked jurisdiction of a court, which has jurisdiction to entertain a suit under Section 20 of the Code but the interest of justice and equity requires that the plaintifffs) should be asked to approach the court where parties are already litigating. The twin conditions for applying the principle of forum non-con¬venience are satisfied in the present case. Any decision on the advertisement of the defendant will necessarily call for examination and comments on the advertisement of the plaintiff(s), which is subject matter before the Bombay High Court. Any comment or observation in the orders passed by the Delhi High Court will cause confusion, possibility of conflicting decisions, which will cause prejudice to the parties. Interim application for injunction is still pending before Bombay High Court. The present case, therefore, is an exceptional case wherein principle of forum non-convenience should be applied. The plaintiff (s) were aware and have consciously and deliberately invoked jurisdiction of this Court, in view of the litigation and issues pending before the Bombay High Court. [Para 36]
Patents Act, 1970 Section 25
Opposition at a pre-grant stage to the Patent Application
Expression 'may' give the opponent an opportunity to be heard has been replaced by the word 'shall hear'
HELD Denial of personal hearing to the petitioner before deciding the petitioner's objection, is without jurisdiction — Grant of patent is non est in law.
Therefore, advisedly right to object at a pre-grant stage has been given to 'any person' by the said amendment. This is an illustration of statutorily broadening the concept of locus standi and widening the scope of objection procedure by giving access to 'any person', who has a concern for public interest in the area of public health and nutrition, to raise an objection. The grant of patent is virtually a grant of monopoly right against the whole world and that is why such wide ranging right of objection has been designedly given at a pre-grant stage. [Para 32]
The petitioners in this writ petition are asserting their rights and voicing their concern on a broad public interest angle. So, it cannot be said if their right is denied they will not suffer any prejudice by denial of an opportunity of hearing to them to establish their rights. A right is a legally protected interest. Therefore when law consciously confers right on a person to object at a pre-grant stage that right must be protected in the way it has been granted, namely the right to object with a right of hearing. For a Court to dilute the said right on the basis of an interpretative process and by looking at it from a rather narrow angle, would, in our judgment, be a travesty of justice. [Para 33]
The argument advanced on behalf of the fourth respondent that the expression 'the Collector shall hear' in Section25(l)(k) of the said Act should mean 'the Collector may hear' is not sound in law. Here we may refer to the provision for hearing which existed prior to the said amendment. Under the pre-amended Section 25(2) the provision relating to hearing is couched in the following words:
"25(2) Where any such notice of opposition is duly given, the Controller shall notify the applicant and may, if so desired, give to the applicant and the opponent an opportunity to be heard before deciding the case."
Therefore, it is clear that the expression 'may' give the opponent an opportunity to be heard has been replaced by the word 'shall hear'. Where legislature itself makes such alteration, making its intention clear in specific term, no option is left except to follow the strict letter of law. [Para 35]
As explained above, the concept of prejudice in a disciplinary enquiry is different from the concept of prejudice in the present case. Grant of patent virtually confers the right of monopoly, which is a right in rem granted in favour of the fourth respondent. Before such a right is granted, law has provided that right of objection to any person. As the patent right is a right in rem, law by the 2005 Amendment confers right of objection also on very wide terms on any person. Law futher mandates when objection is raised, the objector must be allowed to place his objection in a proceeding in which he should be personally heard. That is the language of Rule 55(5) and 55(6) of the Rules, which are quoted herein before. [Para 49]
There is another age old principle which enjoins when statutes provides for doing something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable. [Para 51]
The remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage. The insufficiency of the opportunity of hearing at the pre-grant stage cannot be made good by grant of opportunity at the post-grant stage. Since, statute has given remedy at both the stages, it must be made available at both the stages. One cannot be a substitute for the other. An unfair trial cannot be cured by a fair appeal. See Institute of Chartered Accountants of India v. L.K. Ratna, AIR 1987 SC 71. [Para 55]
In view of those principles the third respondent is required to act with a greater application in view of the specific stipulations for consideration contained in Rule 55(6), read along with Section 25(l)(k) of the Act. So by denying a personal hearing to the petitioner before deciding the petitioner's objection, the third respondent acted wholly without jurisdiction in its order of grant of patent in favour of the fourth respondent. The grant of patent is thus as non est in law and consequently is liable to be set aside. [Para 60]
Expression 'may' give the opponent an opportunity to be heard has been replaced by the word 'shall hear'
HELD Denial of personal hearing to the petitioner before deciding the petitioner's objection, is without jurisdiction — Grant of patent is non est in law.
Therefore, advisedly right to object at a pre-grant stage has been given to 'any person' by the said amendment. This is an illustration of statutorily broadening the concept of locus standi and widening the scope of objection procedure by giving access to 'any person', who has a concern for public interest in the area of public health and nutrition, to raise an objection. The grant of patent is virtually a grant of monopoly right against the whole world and that is why such wide ranging right of objection has been designedly given at a pre-grant stage. [Para 32]
The petitioners in this writ petition are asserting their rights and voicing their concern on a broad public interest angle. So, it cannot be said if their right is denied they will not suffer any prejudice by denial of an opportunity of hearing to them to establish their rights. A right is a legally protected interest. Therefore when law consciously confers right on a person to object at a pre-grant stage that right must be protected in the way it has been granted, namely the right to object with a right of hearing. For a Court to dilute the said right on the basis of an interpretative process and by looking at it from a rather narrow angle, would, in our judgment, be a travesty of justice. [Para 33]
The argument advanced on behalf of the fourth respondent that the expression 'the Collector shall hear' in Section25(l)(k) of the said Act should mean 'the Collector may hear' is not sound in law. Here we may refer to the provision for hearing which existed prior to the said amendment. Under the pre-amended Section 25(2) the provision relating to hearing is couched in the following words:
"25(2) Where any such notice of opposition is duly given, the Controller shall notify the applicant and may, if so desired, give to the applicant and the opponent an opportunity to be heard before deciding the case."
Therefore, it is clear that the expression 'may' give the opponent an opportunity to be heard has been replaced by the word 'shall hear'. Where legislature itself makes such alteration, making its intention clear in specific term, no option is left except to follow the strict letter of law. [Para 35]
As explained above, the concept of prejudice in a disciplinary enquiry is different from the concept of prejudice in the present case. Grant of patent virtually confers the right of monopoly, which is a right in rem granted in favour of the fourth respondent. Before such a right is granted, law has provided that right of objection to any person. As the patent right is a right in rem, law by the 2005 Amendment confers right of objection also on very wide terms on any person. Law futher mandates when objection is raised, the objector must be allowed to place his objection in a proceeding in which he should be personally heard. That is the language of Rule 55(5) and 55(6) of the Rules, which are quoted herein before. [Para 49]
There is another age old principle which enjoins when statutes provides for doing something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable. [Para 51]
The remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage. The insufficiency of the opportunity of hearing at the pre-grant stage cannot be made good by grant of opportunity at the post-grant stage. Since, statute has given remedy at both the stages, it must be made available at both the stages. One cannot be a substitute for the other. An unfair trial cannot be cured by a fair appeal. See Institute of Chartered Accountants of India v. L.K. Ratna, AIR 1987 SC 71. [Para 55]
In view of those principles the third respondent is required to act with a greater application in view of the specific stipulations for consideration contained in Rule 55(6), read along with Section 25(l)(k) of the Act. So by denying a personal hearing to the petitioner before deciding the petitioner's objection, the third respondent acted wholly without jurisdiction in its order of grant of patent in favour of the fourth respondent. The grant of patent is thus as non est in law and consequently is liable to be set aside. [Para 60]
Monday, May 17, 2010
Doctrine of Trans border reputation
Trade Marks Act, 1999
Sections 18 & 20
Applications for registration of Trade Mark "Camel Collection" in respect of "all types of readymade garments, including foot wear and head gear" . Notice of opposition rejected .
Value of trans border reputation earned by the petitioner in respect of Camel brand Cigarettes .
HELD that In exercise of power under Article 226/227 of the Constitution, the High Court would be justified in not looking into any documents which were not produced before the Registrar of Trade Marks or before the Appellate Board and are sought to be produced for the first time .
Respondents conceived and adopted the trade mark "Camel Collection" along with device of "Camel, and Camel Trophy" during the year 1992 and has been doing extensive and continuous business . Impugned order, affirmed.
Sections 18 & 20
Applications for registration of Trade Mark "Camel Collection" in respect of "all types of readymade garments, including foot wear and head gear" . Notice of opposition rejected .
Value of trans border reputation earned by the petitioner in respect of Camel brand Cigarettes .
HELD that In exercise of power under Article 226/227 of the Constitution, the High Court would be justified in not looking into any documents which were not produced before the Registrar of Trade Marks or before the Appellate Board and are sought to be produced for the first time .
Respondents conceived and adopted the trade mark "Camel Collection" along with device of "Camel, and Camel Trophy" during the year 1992 and has been doing extensive and continuous business . Impugned order, affirmed.
Passing off - Trade Mark
.
Misrepresentation takes place when consumers or some of them, believe or are likely to believe that the defendants goods or services are associated or are from the same source as plaintiffs. When a representation is made so as to cause confusion about the source of goods / services, misrepresentation takes place. No one has a right to confuse consumers to make them believe that he is connected or associated with the plaintiff to take advantage of the faith in plaintiffs reputation. Misrepresentation infringes public rights and misleads them. A trader or a service provider should be fair in his dealings and not mislead or tell falsehoods about oneself. [Para 26]
Common law protects freedom of choice and rejects claim of monopoly over use of words and marks. While deciding question of misrepresentation or deception these two rights have to be balanced, depending upon facts of each case. This requires examination of nature and type of goods, services, area of business, location, extent of goodwill, class of consumers etc. There are cases where passing off claim has failed because goods I services are different or because of the nature of consumers possibility of confusion does not exist but in other cases inspite of difference in activities I good plaintiffs have succeeded. [Para 27]
Misrepresentation cannot exist in vacuum and is co-relatable to the extent, value and nature of 'goodiwill of the plaintiff. Greater the goodwill, greater is the need to protect and wider is the cover and the field of protection. Household, well known or popular marks are given greater protection, when they cause to represent quality and have become synonymous with the public to represent a particular source. Some marks are such that the public relates any product carrying the said name I mark would emanate from the said source. Such marks may be few but protective umbrella in such cases is wider and extensive. These are marks where line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular or specific type of goods or services. Mahindra and Mahindra Paper Mills Ltd. v. Mahendra and Mahendra Ltd., AIR 2002 SC 117 : 2002 (24) PTC 12KSC), Ciba Geigy Ltd. v. Surinder Singh, 1998 PTC (18) 545(Del.), Daimler Benz v. Hybo Hindustan, AIR 1994 Delhi 239 : 1994 (14) PTC 287 (Del), Honda Motors co. Ltd. v. Charanjit Singh and Others, 101 (2002) DLT 359 : 2003 (26) PTC 1 etc. are all cases where products / goods were different but the marks involved were household names that have come to embody reputation of pre-eminent excellence and quality and therefore given broader protec¬tion. The mark NFVEA is recognized by all as a product of high quality and one which has international acceptance and recognition. The plaintiff who has developed and nurtured this mark to make it a household name and associate the name with products of high quality, is entitled to protection from third persons who want claim benefit of its reputation. The word NTVEA is a associated with the plaintiff right from the very beginning i.e. from 1905 or at least in India from 1943. [Para 28]
The initial adoption by the defendants is therefore fraudulent and wrongful. The explanation given for the said adoption by the defendants is rejected. It is quite clear that the defendants have deliberately, intentionally and wrongly adopted the mark I word NFVEA which belongs to and is owned by the plaintiff. The defendants have made a misrepresentation by adopting and using the word I mark Nivea International. They have tried to mislead by claiming business connection or asso¬ciation with the plaintiff. [Para 29]
Damage refers to injury and loss caused to the reputation or trade of the plaintiff. Injury is to the goodwill of the plaintiff and can take place by various modes like diversion of sales, misappropriation of business reputation or misappropriation of personality. Injury is suffered by erosion of the distinctiveness of the brand name and debasement of the reputation. Depreciation or gradual damage, erosion or delusion of plaintiffs name causes injury. When a defendant acts with the intention to deceive the public, there is reasonable possibility of injury. In the present case, as already stated above, is one of fraudulent adoption and therefore I accept the argument of the plaintiff that there is injury as the defendants had acted in the manner calculated to deceive. Damage /loss in the present case can be presumed as a natural consequence of misrepresentation. The present case is one of misappropriation of business repu¬tation of the plaintiffs by the defendants by using the mark NIVEA International. The present case is also one of erosion and delusion of exclusiveness, which the plaintiff enjoys in the mark NTVEA, a coined word created by the plaintiff. It is invasion of this right of the defendants which has caused injury to the plaintiff. Thus, the third trinity is also satisfied in the present case. [Para 33]
Copyright Act, 1957
Section 2(qq), 52
Copyright in 'Yakshagana' Ballet dance — Decree of injunction — In passing of decree, court is obliged to consider statutory provisions — It has to be noted as to what is a copyright and in respect of the same can not be claimed or otherwise the same lodged by conditions and subject to statutory limitation — When a fair dealing is made, inter alia, of a literary work for purpose of private use including research and criticism or review, whether of that work or any other work, the right in terms of the said Act cannot be claimed - Some performance or dance is carried out within purview of the said Clause, order of injunction shall not be applicable -Similarly, appellant being an education institution, if the dance is performed within the meaning of Clause (i) of sub-section (1) of Section 52, strictly, order of injunction shall not apply thereto — If such performance is conducted before a non-paying audience by the appellant, which is an institution if it comes within the purview of amateur club or society, the same would not constitute any violation of the said order of injunction.
A dramatic work may also come within the purview of literary work being a part of dramatic literature. The new Encyclopaedia Britannica (Vol-IV) 15th Edition, provides the following information about "Dramatic Literature. "Dramatic Literature: the texts of plays that can be read, as distinct from being seen and heard in performance." We must, however, notice that the provisions the Act make a distinction between the 'literary work' and 'dramatic work'. Keeping in view the statutory provisions, there cannot be any doubt whatsoever that copyright in respect of performance of 'dance' would not come within the purview of the literary work but would come within the purview of the definition of'dramatic work'. We, however, do not mean to suggest that any act of literary work will be outside the purview of the Will dated 18.6.1994 Our exercise in this behalf was only for the purpose of clarifying the provisions of the Act with reference to the findings arrived at by the High Court.
For the aforementioned reasons, we agree with Dr. Dhavan that paragraph 12 of the Will, namely, residuary clause shall apply in the instant case apart from thm areas which are otherwise covered by paragraph 11 of the Will. The residuary clause will apply because it is well settled that no part of the stay lies in limbo. It was also not a case where respondent in any manner whatsoever waived her right.
Decree for injunction is an equitable relief. The courts while passing a decree for permanent injunction would avoid multiplicity of proceedings. The court while passing such a decree, is obligated to consider the statutory provisions governing thm same. For the said purpose, it must be noticed as to what is a copyright and in respect of the matters the same cannot be claimed or otherwise the same is lodged by conditions and subject to statutory limitation.
The High Court, in our opinion, should have clarified that the appellants canl also take the statutory benefit of the provisions contained in clauses (a), (i) and (l) on sub-section (1) of Section 52 of the Act. Section 52 of the Act provides for certain acts] which would not constitute an infringement of copyright. When a fair dealing is made, inter alia, of a literary or dramatic work for the purpose of private use including research and criticism or review, whether of that work or of any other work, the right in terms of the provisions of the said Act cannot be claimed. Thus, if some performance or dance is carried out within the purview of the said clause, the order of injunction shall not be applicable. Similarly, appellant being an educational institution, if the dance is performed within the meaning of provisions of clause (if of sub-section (1) of Section 52 of the Act strictly, the order of injunction shall not apply thereto also. Yet again, if such performance is conducted before a non-paying audience by the appellant, which is an institution if it comes within the purview of amateur club or society, the same would not constitute any violation of the said order of injunction.
Copyright Act, 1957
Sections 13(4) & 60
In the instant case it appears that it has been submitted by RTB before the Delhi High Court that a licence is yet to be issued by the Government and there was no immediate threat for which interim order would be required. Based, inter alia, on this submission of RTB, the Delhi High Court refused to grant an interim order in favour of IPRS. In the order of the Delhi High Court, the pending proceeding before this Court has also been noticed. In our opinion, the action of the defendant in the present suit, i.e., IPRS, instituting the latter suit at Delhi High Court is a clear indication that they have initiated legal action against the appellant herein. [Para 36]
While we are convinced that a quia timet relief can be granted in favour of the appellant, having regard to the facts and circumstances of the instant case as discussed in detail above, we are also of the opinion that the same ought not to be in the nature of a relief which, if granted, would, in effect, allow the present suit itself, at the interlocutory stage. Therefore, although it may not be open to the plaintiff / ap¬pellant to invoke section 60 of the Copyright Act, 1957, and seek quia timet relief as contemplated under that provision of law, consequent to filing of the subsequent suit at Delhi High Court by IPRS, we are nevertheless of the prima facie opinion that in the facts and circumstances of the instant case, as discussed above, the appellant is entitled to a quia timet relief in the nature of an injunction restraining the respondent IPRS from initiating any proceeding against the plaintiff as well as the added defendants, under Chapter XIII of the Copyright Act, 1957, until disposal of the present suit. The impugned judgement and order stands modified accordingly. [Par 40]
Trade Marks Act, 1999
Section 115
HELD Police can act only on the sanction being accorded by the competent authority . Any opinion of the police is subservient to the opinion of the competent authority under the Act.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Registration after following the procedure is in itself an injunction in rem against all persons from infringing or copying the same.
Appellant marketing nappies as 'Cozy Care' . Both 'Tiny Care' as well as 'Cozy Care' . When the trade mark registered is of a packed product being sold across the shelf and in such a case, no doubt if the trade marks, names and descriptions are exactly similar, even in such a case, the statutory injunction only requires to be formalised
As such, considering that there is a public notice and thereafter one becomes the registered proprietor of the trade mark or trade description, in law, the registration after following the procedure is in itself an injunction in rem against all persons from infringing or copying the same. That being so, the infringement or violation of the trade mark itself in its exact form or nearly similar would stand on a different footing. Hence, if a particular trade mark or trade description is violated and if it is clearly visible to the naked eye, when an action against the same is brought before a Civil Court seeking relief in that regard and in such a suit if an order of temporary injunction is sought, on the satisfaction of the court prima facie that the very mark itself or description itself has been infringed on the face of it, nothing more requires to be looked into before granting an order of injunction since it is merely an act of formalising the statutory injunction granted by way of registration and making it an injunction in personam by exercising the discretion available under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. However, insofar as the injunctions being sought for in the case of infringements of a registered trade mark on the contention that the trade mark or description used by the defendant is deceptively similar, an element of common law remedy also creeps into the situation inasmuch as the infringement or violation would not be exactly similar but would be deceptively similar either visually or phonetically which would have to be decided based on evidence. But at the prima facie stage, the court examining that aspect should also be satisfied that though not similar, it is deceptively similar to the infringed mark. In such an event, though the court may initially come to a prima facie conclusion that there is a triable issue yet there are chances that ultimately on trial, there could be a possibility of the court coming to the conclusion that it is not deceptively similar based on the detailed consideration of the evidence available. That being so, in such a case, the view that it is a triable issue being-only a prima facie view, the next two aspects with regard to the balance of convenience and irreparable injury require a detailed consideration by the court since the rival claims would have to be balanced out, at that stage, keeping in view the ultimate result which may go one way or the other. Hence, in every individual case, a clear distinction will have to be drawn. For example, if a trade mark or description or name relating to a particular service, let us assume a courier service, is registered and if the infringe?-also starts another courier service or related service with a similar trade mark, description or name or even the case of'Laxman Rekha' and 'Magic Laxman Rekha' which was before the Hon'ble Supreme Court, a mere comparison is enough to grant an injunction since as noted above, in such case, the statute itself has injuncted any other person from using the same trade mark, description or name. On the other hand, if the trade mark registered is of a packed product being sold across the shelf and in such a case, no doubt if the trade marks, names and descriptions are exactly similar, even in such a case, the statutory injunction only requires to be formalised. However, if the product is packed and both the product as well as packing are deceptively similar inasmuch as if the owner of the trade mark contends that it is phonetically and visually similar and if the same is denied by the defendant I alleged infringer, in such an event the statutory right of registration would no doubt come to the aid of registered proprietor of a trade mark for indicating a triable issue and the act of injuncting by the court is not merely limited to formalising the statutory injunction but plaintiff would have to establish the other two aspects as well, namely, balance of convenience and irreparable injury to secure an order of temporary injunction. In such a case, all the three aspects of the matter would require detailed consideration by the court before either granting or refusing an order of injunction. [Para 15]
Misrepresentation takes place when consumers or some of them, believe or are likely to believe that the defendants goods or services are associated or are from the same source as plaintiffs. When a representation is made so as to cause confusion about the source of goods / services, misrepresentation takes place. No one has a right to confuse consumers to make them believe that he is connected or associated with the plaintiff to take advantage of the faith in plaintiffs reputation. Misrepresentation infringes public rights and misleads them. A trader or a service provider should be fair in his dealings and not mislead or tell falsehoods about oneself. [Para 26]
Common law protects freedom of choice and rejects claim of monopoly over use of words and marks. While deciding question of misrepresentation or deception these two rights have to be balanced, depending upon facts of each case. This requires examination of nature and type of goods, services, area of business, location, extent of goodwill, class of consumers etc. There are cases where passing off claim has failed because goods I services are different or because of the nature of consumers possibility of confusion does not exist but in other cases inspite of difference in activities I good plaintiffs have succeeded. [Para 27]
Misrepresentation cannot exist in vacuum and is co-relatable to the extent, value and nature of 'goodiwill of the plaintiff. Greater the goodwill, greater is the need to protect and wider is the cover and the field of protection. Household, well known or popular marks are given greater protection, when they cause to represent quality and have become synonymous with the public to represent a particular source. Some marks are such that the public relates any product carrying the said name I mark would emanate from the said source. Such marks may be few but protective umbrella in such cases is wider and extensive. These are marks where line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular or specific type of goods or services. Mahindra and Mahindra Paper Mills Ltd. v. Mahendra and Mahendra Ltd., AIR 2002 SC 117 : 2002 (24) PTC 12KSC), Ciba Geigy Ltd. v. Surinder Singh, 1998 PTC (18) 545(Del.), Daimler Benz v. Hybo Hindustan, AIR 1994 Delhi 239 : 1994 (14) PTC 287 (Del), Honda Motors co. Ltd. v. Charanjit Singh and Others, 101 (2002) DLT 359 : 2003 (26) PTC 1 etc. are all cases where products / goods were different but the marks involved were household names that have come to embody reputation of pre-eminent excellence and quality and therefore given broader protec¬tion. The mark NFVEA is recognized by all as a product of high quality and one which has international acceptance and recognition. The plaintiff who has developed and nurtured this mark to make it a household name and associate the name with products of high quality, is entitled to protection from third persons who want claim benefit of its reputation. The word NTVEA is a associated with the plaintiff right from the very beginning i.e. from 1905 or at least in India from 1943. [Para 28]
The initial adoption by the defendants is therefore fraudulent and wrongful. The explanation given for the said adoption by the defendants is rejected. It is quite clear that the defendants have deliberately, intentionally and wrongly adopted the mark I word NFVEA which belongs to and is owned by the plaintiff. The defendants have made a misrepresentation by adopting and using the word I mark Nivea International. They have tried to mislead by claiming business connection or asso¬ciation with the plaintiff. [Para 29]
Damage refers to injury and loss caused to the reputation or trade of the plaintiff. Injury is to the goodwill of the plaintiff and can take place by various modes like diversion of sales, misappropriation of business reputation or misappropriation of personality. Injury is suffered by erosion of the distinctiveness of the brand name and debasement of the reputation. Depreciation or gradual damage, erosion or delusion of plaintiffs name causes injury. When a defendant acts with the intention to deceive the public, there is reasonable possibility of injury. In the present case, as already stated above, is one of fraudulent adoption and therefore I accept the argument of the plaintiff that there is injury as the defendants had acted in the manner calculated to deceive. Damage /loss in the present case can be presumed as a natural consequence of misrepresentation. The present case is one of misappropriation of business repu¬tation of the plaintiffs by the defendants by using the mark NIVEA International. The present case is also one of erosion and delusion of exclusiveness, which the plaintiff enjoys in the mark NTVEA, a coined word created by the plaintiff. It is invasion of this right of the defendants which has caused injury to the plaintiff. Thus, the third trinity is also satisfied in the present case. [Para 33]
Copyright Act, 1957
Section 2(qq), 52
Copyright in 'Yakshagana' Ballet dance — Decree of injunction — In passing of decree, court is obliged to consider statutory provisions — It has to be noted as to what is a copyright and in respect of the same can not be claimed or otherwise the same lodged by conditions and subject to statutory limitation — When a fair dealing is made, inter alia, of a literary work for purpose of private use including research and criticism or review, whether of that work or any other work, the right in terms of the said Act cannot be claimed - Some performance or dance is carried out within purview of the said Clause, order of injunction shall not be applicable -Similarly, appellant being an education institution, if the dance is performed within the meaning of Clause (i) of sub-section (1) of Section 52, strictly, order of injunction shall not apply thereto — If such performance is conducted before a non-paying audience by the appellant, which is an institution if it comes within the purview of amateur club or society, the same would not constitute any violation of the said order of injunction.
A dramatic work may also come within the purview of literary work being a part of dramatic literature. The new Encyclopaedia Britannica (Vol-IV) 15th Edition, provides the following information about "Dramatic Literature. "Dramatic Literature: the texts of plays that can be read, as distinct from being seen and heard in performance." We must, however, notice that the provisions the Act make a distinction between the 'literary work' and 'dramatic work'. Keeping in view the statutory provisions, there cannot be any doubt whatsoever that copyright in respect of performance of 'dance' would not come within the purview of the literary work but would come within the purview of the definition of'dramatic work'. We, however, do not mean to suggest that any act of literary work will be outside the purview of the Will dated 18.6.1994 Our exercise in this behalf was only for the purpose of clarifying the provisions of the Act with reference to the findings arrived at by the High Court.
For the aforementioned reasons, we agree with Dr. Dhavan that paragraph 12 of the Will, namely, residuary clause shall apply in the instant case apart from thm areas which are otherwise covered by paragraph 11 of the Will. The residuary clause will apply because it is well settled that no part of the stay lies in limbo. It was also not a case where respondent in any manner whatsoever waived her right.
Decree for injunction is an equitable relief. The courts while passing a decree for permanent injunction would avoid multiplicity of proceedings. The court while passing such a decree, is obligated to consider the statutory provisions governing thm same. For the said purpose, it must be noticed as to what is a copyright and in respect of the matters the same cannot be claimed or otherwise the same is lodged by conditions and subject to statutory limitation.
The High Court, in our opinion, should have clarified that the appellants canl also take the statutory benefit of the provisions contained in clauses (a), (i) and (l) on sub-section (1) of Section 52 of the Act. Section 52 of the Act provides for certain acts] which would not constitute an infringement of copyright. When a fair dealing is made, inter alia, of a literary or dramatic work for the purpose of private use including research and criticism or review, whether of that work or of any other work, the right in terms of the provisions of the said Act cannot be claimed. Thus, if some performance or dance is carried out within the purview of the said clause, the order of injunction shall not be applicable. Similarly, appellant being an educational institution, if the dance is performed within the meaning of provisions of clause (if of sub-section (1) of Section 52 of the Act strictly, the order of injunction shall not apply thereto also. Yet again, if such performance is conducted before a non-paying audience by the appellant, which is an institution if it comes within the purview of amateur club or society, the same would not constitute any violation of the said order of injunction.
Copyright Act, 1957
Sections 13(4) & 60
In the instant case it appears that it has been submitted by RTB before the Delhi High Court that a licence is yet to be issued by the Government and there was no immediate threat for which interim order would be required. Based, inter alia, on this submission of RTB, the Delhi High Court refused to grant an interim order in favour of IPRS. In the order of the Delhi High Court, the pending proceeding before this Court has also been noticed. In our opinion, the action of the defendant in the present suit, i.e., IPRS, instituting the latter suit at Delhi High Court is a clear indication that they have initiated legal action against the appellant herein. [Para 36]
While we are convinced that a quia timet relief can be granted in favour of the appellant, having regard to the facts and circumstances of the instant case as discussed in detail above, we are also of the opinion that the same ought not to be in the nature of a relief which, if granted, would, in effect, allow the present suit itself, at the interlocutory stage. Therefore, although it may not be open to the plaintiff / ap¬pellant to invoke section 60 of the Copyright Act, 1957, and seek quia timet relief as contemplated under that provision of law, consequent to filing of the subsequent suit at Delhi High Court by IPRS, we are nevertheless of the prima facie opinion that in the facts and circumstances of the instant case, as discussed above, the appellant is entitled to a quia timet relief in the nature of an injunction restraining the respondent IPRS from initiating any proceeding against the plaintiff as well as the added defendants, under Chapter XIII of the Copyright Act, 1957, until disposal of the present suit. The impugned judgement and order stands modified accordingly. [Par 40]
Trade Marks Act, 1999
Section 115
HELD Police can act only on the sanction being accorded by the competent authority . Any opinion of the police is subservient to the opinion of the competent authority under the Act.
Civil Procedure Code, 1908
Order 39 Rules 1 & 2
Registration after following the procedure is in itself an injunction in rem against all persons from infringing or copying the same.
Appellant marketing nappies as 'Cozy Care' . Both 'Tiny Care' as well as 'Cozy Care' . When the trade mark registered is of a packed product being sold across the shelf and in such a case, no doubt if the trade marks, names and descriptions are exactly similar, even in such a case, the statutory injunction only requires to be formalised
As such, considering that there is a public notice and thereafter one becomes the registered proprietor of the trade mark or trade description, in law, the registration after following the procedure is in itself an injunction in rem against all persons from infringing or copying the same. That being so, the infringement or violation of the trade mark itself in its exact form or nearly similar would stand on a different footing. Hence, if a particular trade mark or trade description is violated and if it is clearly visible to the naked eye, when an action against the same is brought before a Civil Court seeking relief in that regard and in such a suit if an order of temporary injunction is sought, on the satisfaction of the court prima facie that the very mark itself or description itself has been infringed on the face of it, nothing more requires to be looked into before granting an order of injunction since it is merely an act of formalising the statutory injunction granted by way of registration and making it an injunction in personam by exercising the discretion available under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. However, insofar as the injunctions being sought for in the case of infringements of a registered trade mark on the contention that the trade mark or description used by the defendant is deceptively similar, an element of common law remedy also creeps into the situation inasmuch as the infringement or violation would not be exactly similar but would be deceptively similar either visually or phonetically which would have to be decided based on evidence. But at the prima facie stage, the court examining that aspect should also be satisfied that though not similar, it is deceptively similar to the infringed mark. In such an event, though the court may initially come to a prima facie conclusion that there is a triable issue yet there are chances that ultimately on trial, there could be a possibility of the court coming to the conclusion that it is not deceptively similar based on the detailed consideration of the evidence available. That being so, in such a case, the view that it is a triable issue being-only a prima facie view, the next two aspects with regard to the balance of convenience and irreparable injury require a detailed consideration by the court since the rival claims would have to be balanced out, at that stage, keeping in view the ultimate result which may go one way or the other. Hence, in every individual case, a clear distinction will have to be drawn. For example, if a trade mark or description or name relating to a particular service, let us assume a courier service, is registered and if the infringe?-also starts another courier service or related service with a similar trade mark, description or name or even the case of'Laxman Rekha' and 'Magic Laxman Rekha' which was before the Hon'ble Supreme Court, a mere comparison is enough to grant an injunction since as noted above, in such case, the statute itself has injuncted any other person from using the same trade mark, description or name. On the other hand, if the trade mark registered is of a packed product being sold across the shelf and in such a case, no doubt if the trade marks, names and descriptions are exactly similar, even in such a case, the statutory injunction only requires to be formalised. However, if the product is packed and both the product as well as packing are deceptively similar inasmuch as if the owner of the trade mark contends that it is phonetically and visually similar and if the same is denied by the defendant I alleged infringer, in such an event the statutory right of registration would no doubt come to the aid of registered proprietor of a trade mark for indicating a triable issue and the act of injuncting by the court is not merely limited to formalising the statutory injunction but plaintiff would have to establish the other two aspects as well, namely, balance of convenience and irreparable injury to secure an order of temporary injunction. In such a case, all the three aspects of the matter would require detailed consideration by the court before either granting or refusing an order of injunction. [Para 15]
Trade Marks Act
Section 124 (5)
Passing off action - Brands IMPERIAL BLUE and ROYAL STAG .
Defendants adopting the trademark IMPERIAL GOLD but concisely using the trade dress, get up, colour combination and label of ROYAL STAG, thus committing acts of infringement of trademark and passing off.
HELD The word 'IMPERIAL" may be generic if used by a member of the royal family, but certainly it will be arbitrary when applied to a whisky and that too, a whisky other than Scotch, and furthermore a whisky in the lower price segment.
Even a seasoned consumer is liable to be misled by the IMPERIAL GOLD label and the overall trade dress of the bottle of the defendants including its shape into believing that the plaintiffs group, which is engaged in the sale of IMPERIAL BLUE whisky for more than a decade, has launched IMPERIAL GOLD with a trade dress similar to the plaintiffs ROYAL STAG whisky Section 124 (5) of Trade Marks Act empowers the Court to grant interim injunction in appropriate cases even if rectification/cancellation proceedings are pending.
Dishonest adoption of the mark and trade dress of the plaintiff's product by the defendants cannot be permitted.
In the larger interest of the consumer of the product, defendants restrained from passing off.
Passing off action - Brands IMPERIAL BLUE and ROYAL STAG .
Defendants adopting the trademark IMPERIAL GOLD but concisely using the trade dress, get up, colour combination and label of ROYAL STAG, thus committing acts of infringement of trademark and passing off.
HELD The word 'IMPERIAL" may be generic if used by a member of the royal family, but certainly it will be arbitrary when applied to a whisky and that too, a whisky other than Scotch, and furthermore a whisky in the lower price segment.
Even a seasoned consumer is liable to be misled by the IMPERIAL GOLD label and the overall trade dress of the bottle of the defendants including its shape into believing that the plaintiffs group, which is engaged in the sale of IMPERIAL BLUE whisky for more than a decade, has launched IMPERIAL GOLD with a trade dress similar to the plaintiffs ROYAL STAG whisky Section 124 (5) of Trade Marks Act empowers the Court to grant interim injunction in appropriate cases even if rectification/cancellation proceedings are pending.
Dishonest adoption of the mark and trade dress of the plaintiff's product by the defendants cannot be permitted.
In the larger interest of the consumer of the product, defendants restrained from passing off.
Trade Marks Act, 1999 Section 134
Civil Procedure Code, 1908
Order 7 Rule 11
Jurisdiction to entertain the suit — Plaintiffs product available for sale and distribution in Delhi — Defendant's products also available for sale in Delhi — Allegation in plaint that defendants violated the plaintiffs trade mark or copyright at Delhi — The cause of action having arose at Delhi, rejection of plaint is not called for.
If the Plaint discloses that the Defendant has violated the Plaintiffs Trademark or Copyright in a particular place, the cause of action would arise therein. [Paras 9 & 10]
Order 7 Rule 11
Jurisdiction to entertain the suit — Plaintiffs product available for sale and distribution in Delhi — Defendant's products also available for sale in Delhi — Allegation in plaint that defendants violated the plaintiffs trade mark or copyright at Delhi — The cause of action having arose at Delhi, rejection of plaint is not called for.
If the Plaint discloses that the Defendant has violated the Plaintiffs Trademark or Copyright in a particular place, the cause of action would arise therein. [Paras 9 & 10]
Trade Mark Act, 1999 Section 45
Infringement of trade mark THEOBID
I also find that under Section 2(l)(w) a registered trade mark is a trade mark which is on the Register and is in force. Registered trade mark is thus different from registered proprietor. Assignment under Section 2(b) is an assignment in writing by act of parties concerned. Assignment does not require registration. The Register of Trade Mark under Section 6 is to contain trade marks with the name etc of proprietor. Section 37 empowers the person entered in the Register as proprietor of trade make to assign the same. Section 38 makes the trade mark a tradeableproperty I commodity subject to restrictions in Sections 40 to 44. Thus registered trade mark is different from proprietor thereof. Thereafter, Section 45(1) provides "where a person becomes entitled by assignment ..to a registered trade mark, he shall apply in the prescribed manner to the Registrar to Register his title..." meaning thereby that assignment of title in registered trade mark is complete on assignment within the meaning of Section 2(b), i.e., on writing between the assignor and the assignee. For assignment to be complete, the Registrar is not involved. It is further borne out from language supra of Section 45(1) that the assignee acquires title to registered trade mark on assignment and not by registration. Registration is of title acquired by assignment. The inquiry which a Registrar is to make before such registration of title acquired by assignment is of satisfaction of proof of title and as to disputes if any as to assignment. This inquiry is limited to this extent only in contradistinction to inquiry which the Registrar is to make before registering a trade mark. A dispute as to assignment can be raised by the assignor or by some person claiming prior assign¬ment and not by strangers or by persons claiming adversely to the assignor. [Para 11]
Secondly and more importantly, though Section 45(2) couched in peremptory language, is however subject to a direction to the otherwise of the court. The ultimate decision, therefore, is of the court, whether to admit into evidence or place reliance on any document of assignment or transmission of trade mark, inspite of the same being not entered in the Register. The legislature has thus after laying down the general rule of an unregistered document of assignment being not admissible in evidence, still left the discretion in the court, to be of course exercised in accordance with law and depending on facts and circumstances of each case. Section 45(2) appears to have been inserted more for the reason of ensuring the enforcement of Section 45(1). In the absence of Section 45(2), assignees of registered trade mark would not have bothered to apply for registration with the Registrar and which would have led to disputes as to who is the registered proprietor. It is in the nature of Section 35 of the Stamp Act prohibiting the courts from admitting into evidence documents not duly stamped. However, the intent there also is not to extinguish the rights under the documents but only to ensure collection of stamp duty. This provision is unlike that of Registration Act, whereunder there can be no conveyance of title without a registered document. For the same reason, the latter part of Section 45(2), after providing for the prohibition provides "unless., the court otherwise directs." Seen in this light, the contention of the counsel for the plaintiff that there can be no hiatus and the title as registered proprietor cannot remain in abeyance is well founded. [Para 15]
I thus find that the plaintiff notwithstanding being not registered is entitled to exercise rights as a registered proprietor of trade mark THEOBID. [Para 16]
I also find that under Section 2(l)(w) a registered trade mark is a trade mark which is on the Register and is in force. Registered trade mark is thus different from registered proprietor. Assignment under Section 2(b) is an assignment in writing by act of parties concerned. Assignment does not require registration. The Register of Trade Mark under Section 6 is to contain trade marks with the name etc of proprietor. Section 37 empowers the person entered in the Register as proprietor of trade make to assign the same. Section 38 makes the trade mark a tradeableproperty I commodity subject to restrictions in Sections 40 to 44. Thus registered trade mark is different from proprietor thereof. Thereafter, Section 45(1) provides "where a person becomes entitled by assignment ..to a registered trade mark, he shall apply in the prescribed manner to the Registrar to Register his title..." meaning thereby that assignment of title in registered trade mark is complete on assignment within the meaning of Section 2(b), i.e., on writing between the assignor and the assignee. For assignment to be complete, the Registrar is not involved. It is further borne out from language supra of Section 45(1) that the assignee acquires title to registered trade mark on assignment and not by registration. Registration is of title acquired by assignment. The inquiry which a Registrar is to make before such registration of title acquired by assignment is of satisfaction of proof of title and as to disputes if any as to assignment. This inquiry is limited to this extent only in contradistinction to inquiry which the Registrar is to make before registering a trade mark. A dispute as to assignment can be raised by the assignor or by some person claiming prior assign¬ment and not by strangers or by persons claiming adversely to the assignor. [Para 11]
Secondly and more importantly, though Section 45(2) couched in peremptory language, is however subject to a direction to the otherwise of the court. The ultimate decision, therefore, is of the court, whether to admit into evidence or place reliance on any document of assignment or transmission of trade mark, inspite of the same being not entered in the Register. The legislature has thus after laying down the general rule of an unregistered document of assignment being not admissible in evidence, still left the discretion in the court, to be of course exercised in accordance with law and depending on facts and circumstances of each case. Section 45(2) appears to have been inserted more for the reason of ensuring the enforcement of Section 45(1). In the absence of Section 45(2), assignees of registered trade mark would not have bothered to apply for registration with the Registrar and which would have led to disputes as to who is the registered proprietor. It is in the nature of Section 35 of the Stamp Act prohibiting the courts from admitting into evidence documents not duly stamped. However, the intent there also is not to extinguish the rights under the documents but only to ensure collection of stamp duty. This provision is unlike that of Registration Act, whereunder there can be no conveyance of title without a registered document. For the same reason, the latter part of Section 45(2), after providing for the prohibition provides "unless., the court otherwise directs." Seen in this light, the contention of the counsel for the plaintiff that there can be no hiatus and the title as registered proprietor cannot remain in abeyance is well founded. [Para 15]
I thus find that the plaintiff notwithstanding being not registered is entitled to exercise rights as a registered proprietor of trade mark THEOBID. [Para 16]
Territorial jurisdiction & Cause of action what constitutes?
Doctrine of substantial justice .
Trademark 'PRICOL' . No whisper either in the Memorandum of appeal or during the course of argument regarding any prejudice caused to the appellants on account of the trial of the suit by the Madras High Court . Since substantial justice has been done, on this score the appellate Court should not interfere with the order of the trial Court . Appeals dismissed
Trademark 'PRICOL' . No whisper either in the Memorandum of appeal or during the course of argument regarding any prejudice caused to the appellants on account of the trial of the suit by the Madras High Court . Since substantial justice has been done, on this score the appellate Court should not interfere with the order of the trial Court . Appeals dismissed
Patents Act, 1970
Sections 13(4) & 45
Patent in Synthetic Rope Gabion used for the preservation of riverbanks, seashores, seacoasts etc., particularly to prevent erosion caused by natural processes . Examination and investigation leading to grant of patent shall not be deemed in any way to warrant the validity of any patent — plaintiffs have at different places in different pleadings stated that their invention is for an improvement over the prior art and not for a new product — Looking to the state of prior art, publicly known, in existence and use, the technological advance claimed was obvious to the persons skilled in the art — Refusal to grant injunction
Patent in Synthetic Rope Gabion used for the preservation of riverbanks, seashores, seacoasts etc., particularly to prevent erosion caused by natural processes . Examination and investigation leading to grant of patent shall not be deemed in any way to warrant the validity of any patent — plaintiffs have at different places in different pleadings stated that their invention is for an improvement over the prior art and not for a new product — Looking to the state of prior art, publicly known, in existence and use, the technological advance claimed was obvious to the persons skilled in the art — Refusal to grant injunction
Contempt of Courts Act, 1971
Section 19
Plaintiff manufactures bell pins and bell clips — Appeal against an order dismissing the Contempt petition. Appeal against such order is not maintainable.
Plaintiff manufactures bell pins and bell clips — Appeal against an order dismissing the Contempt petition. Appeal against such order is not maintainable.
Court Fees Act, 1870
Section 7 (iv)
Court Fees Act, 1870
Section 7 (iv) — Suits Valuation Act — Section 9 — Rule 4
Delhi High Court Original Side Rules 1967 were framed by the Delhi High Court in exercise of its powers conferred by Sections 122 and 129 of the Code of Civil Procedure, 1908 and Section 7 of the Delhi High Court Act, 1966 and all other powers enabling it to make the rules. These rules govern the practice and procedure for the exercise of its ordinary original civil jurisdiction. After the enforcement of these rules, the Courts functioning on its original civil jurisdiction had to follow the practice and procedure as laid down in these rules. Chapter 3 speaks of valuation of suits. Chapter 3 Part (C) lays down rules regulating the manner of determining the value of suits for purposes specified in Section 9 of the Act, 1887. These rules were made by the High Court under the powers conferred under Section 9 of the Act and all other powers in that behalf, for determining for the purposes specified therein, the value of the subject matter of certain classes of suits which do not admit of being satisfactorily valued and for the treatment of such classes of suits as if their subject matter were of the value in the manner stated in the rules so framed. Rules 3 & 4 are relevant to ascertain whether the plaintiff can value the suit for rendition of accounts separately for court fees and for jurisdiction. Rules 3 & 4 read:-
"3. Suits in which the plaintiff in the plaint asks for accounts only not being: (i) Suits to recover the amount which may be found due to the plaintiff on
taking unsettled accounts between him and the defendant, (ii) Suits of either of the kinds described in Order XX, Rule 13 of the Code
of Civil Procedure.
Value — (a) For the purposes of the Rs. Court-fees Act, 1887. ...200
(b) For the purposes of the Suits Valuation Act, 1887, and the Punjab
Courts Act, 1918.....1,000
4. (i) Suits in which plaintiff in the plaint seeks to recover the amount which
may be found due to the plaintiff in taking unsettled accounts between
him and the defendant, (ii) Suits of either of the kinds described in Order XX, Rule 13 of the Code
of Civil Procedure:
(a) Value for the purpose (a) As determined of Court-fee by the _________________________________Court-fees Act, 1870._______________
(a) Value for the purpose (b) For the of jurisdiction purpose of the
Suits Valuation Act, 1887, and the Punjab Courts Act, 1918, as valued by the plaintiff in the plaint, subject to determination by the Court at any stage of the trial.[Para 13]
Since the High Court of Delhi has framed rules under Section 9 of the Act empowering the plaintiff to value its suit for the purposes of court fees as determined by the Court Fees Act and to value for purposes of jurisdiction as valued by the plaintiff in the plaint separately. Valuation for purposes of jurisdiction so fixed by the plaintiff in the plaint is subject to determination by the Court at any stage of the trial. [Para 15]
I am in full agreement with the view expressed by Vijender Jain, J. on the aforesaid issue. In my considered view, that truly reflects position as laid down by the Apex Court in Abdul Hamid Shamsi v. Abdul Majid case (supra) and M/s Commercial Aviation and Travel v. Vimla Pannalal case (supra). There can be no doubt about the proposition that insofar as the valuation for purposes of Court fees is concerned in a case for rendition of accounts under Section 7(iv) of the Court Fees Act, it has been left to the plaintiff to affix valuation. At the same stage, it has been held that this valuation cannot be arbitrarily. In the present case, the plaintiffhimself has valued the turn over into thousands of crores and claims damages for infringement of the trademark of the plaintiff and passing of. These damages havt not been quantified but accounts have been claimed from the defendants for allegedly using the trade marks improperly and making profits to the detriment of the plaintiff. With such reputation world-wide and the grievance of the plaintiff, it can hardly be stated that the amount which would be found due on rendition of accounts can be said a meager amount as alleged ofRs. 5,00,050 for purposes of Court Fees. The most material fact is that for purposes of suit valuation, the plaintiff in para 42 himself has stated that it is expected that at the time of rendition of accounts the plaintiff shall be entitled to an amount in excess ofRs. 50,00,000. This is not only a hope but is based on the turnover of the plaintiff running into thousands of crores. Thusfinding in para 24 of the judgment in M/s Commercial Aviation and Travel v. Vimla Pannalal case (supra) would of little assistance to the plaintiff. [Para 46 (12)]
We fully endorse and adopt the view taken by the two learned Single Judges and with respect find ourselves unable to accept the reasoning of the Division Bench in Wockhardt v. M/s Raj Medicos (supra-14) and Fenner India Ltd. v. Salbros Enterprises Pvt. Ltd. (supra-10), which was followed in P.M. Diesels Ltd. v. Patel Field Marshal Industries (supra-12), as these three judgments had failed
to notice the law laid down by the Hon'ble Supreme Court in the cases of Commercial Aviation (supra-6) and Abdul Hamid Shamsi (supra-5). In the normal course, if a Division Bench does not agree with another Division Bench the matter ought to be referred to a Larger Bench. However, since we have found the Division Bench in Fenner India (supra-10) case not to have noticed the binding judgments of the Hon'ble Supreme Court in Commercial Aviation (supra-6) and Abdul Hamid Shamsi (supra-5), we have laid down the law by following the above judgments of the Hon'ble Supreme Court, as summed up below:-
(a) Section 7 clause (iv) of the Court Fees Act is an exception to all the clauses of Section 7 of the Act, as in all other clauses, the court fees has to be paid ad-valorem on the value of the relief sought. This departure from normal rule has been made deliberately for the simple reason that in case of suits under clause (iv) of Section 7 of the Act it is not possible to give an exact money valuation. It is therefore undeniable that under the terms of this Section the plaintiff is to state the amount at which he values the relief sought by him when his case is within the ambit of the said clause. The reason behind this provision seems to be that in cases in which the plaintiff is given option to value his claim, it is really difficult for the Court to value the claim with any precision or definiteness. In a suit for accounts, the correct amount which may be payable by one party to the other can be ascertained only when the accounts are examined and it is not possible to give an accurate valuation of the claim at the inception of the suit. Therefore, the plaintiff has been allowed to assess his own valuation.
(b) Section 8 of the Act makes it clear that in a suit filed under Section 7(iv) of the Court Fees Act, the value as determinable for the computation of the court fees and the value for the purposes of jurisdiction shall be the same.
(c) Section 9 of the Act empowers the High Court to make rules with the previous sanction of the State Government directing that suits of a particular class shall for the purpose of the Court Fees Act and any other enactment for the time being in force to be treated, as if their subject matter were of such value as the High Court thinks fit to specify in this behalf.
(d) High Court can frame rules under Section 9 of the Act when it is of the opinion that the valuation as fixed under Section 7 of the Court Fees Act is such that it does not admit of being satisfactorily valued. This Section acts like a proviso to Section 8 of the Act.
(e) Section 7 of the Delhi High Court Act extended rules and orders framed by the Punjab High Court as applicable to Delhi. Delhi High Court framed its own rules under Section 9 of the Act which are incorporated in Chapter III, Part C, Delhi High Court Rules, Practice and Procedure. Rule 4 as framed therein is applicable in suits for accounts of the nature before us. According to these rules, value for the purposes of court fees is as determined by the Court Fees Act, 1870 and value for the purposes of jurisdiction for the purposes of Suits Valuation Act, 1887 and the Punjab High Court Act, 1918, as valued by the plaintiff in the plaint
subject to the determination by the Court at any stage of the trial.
(f) In view of the Rule 4 as framed by the High Court of Delhi, the plaintiff is at liberty and is allowed to give his own tentative valuation for the purposes of court fees and jurisdiction. Generally, the Court cannot examine the correctness of the valuation as placed by the plaintiff, but the Court is empowered at any stage of the case to reject under Order 7 Rule 11 (b) the valuation as fixed by the plaintiff, if it is of the view that plaintiff has valued the suit arbitrarily capriciously and has chosen to give a ridiculous figure which is not borne out from the record tantamounting to not exercising his discretion reasonably in this regard. The plaintiff has not been given absolute right or option to place any valuation whatever on such relief and where he manifestly and deliberately undervalues and underestimates the same the Court is not silent and impotent spectator thereof and has clear jurisdiction to interfere. Any stage of the trial would certainly include even the time when the suit is first taken up for consideration by the court.
(g) Before rejecting the valuation as fixed by the plaintiff the Court has to see if there is positive material or objective standard on the record to indicate that he has undervalued the suit but if there is no positive material or objective standard, the Court has to accept the plaintiffs valuation. [Para 48]
Court Fees Act, 1870
Section 7 (iv) — Suits Valuation Act — Section 9 — Rule 4
Delhi High Court Original Side Rules 1967 were framed by the Delhi High Court in exercise of its powers conferred by Sections 122 and 129 of the Code of Civil Procedure, 1908 and Section 7 of the Delhi High Court Act, 1966 and all other powers enabling it to make the rules. These rules govern the practice and procedure for the exercise of its ordinary original civil jurisdiction. After the enforcement of these rules, the Courts functioning on its original civil jurisdiction had to follow the practice and procedure as laid down in these rules. Chapter 3 speaks of valuation of suits. Chapter 3 Part (C) lays down rules regulating the manner of determining the value of suits for purposes specified in Section 9 of the Act, 1887. These rules were made by the High Court under the powers conferred under Section 9 of the Act and all other powers in that behalf, for determining for the purposes specified therein, the value of the subject matter of certain classes of suits which do not admit of being satisfactorily valued and for the treatment of such classes of suits as if their subject matter were of the value in the manner stated in the rules so framed. Rules 3 & 4 are relevant to ascertain whether the plaintiff can value the suit for rendition of accounts separately for court fees and for jurisdiction. Rules 3 & 4 read:-
"3. Suits in which the plaintiff in the plaint asks for accounts only not being: (i) Suits to recover the amount which may be found due to the plaintiff on
taking unsettled accounts between him and the defendant, (ii) Suits of either of the kinds described in Order XX, Rule 13 of the Code
of Civil Procedure.
Value — (a) For the purposes of the Rs. Court-fees Act, 1887. ...200
(b) For the purposes of the Suits Valuation Act, 1887, and the Punjab
Courts Act, 1918.....1,000
4. (i) Suits in which plaintiff in the plaint seeks to recover the amount which
may be found due to the plaintiff in taking unsettled accounts between
him and the defendant, (ii) Suits of either of the kinds described in Order XX, Rule 13 of the Code
of Civil Procedure:
(a) Value for the purpose (a) As determined of Court-fee by the _________________________________Court-fees Act, 1870._______________
(a) Value for the purpose (b) For the of jurisdiction purpose of the
Suits Valuation Act, 1887, and the Punjab Courts Act, 1918, as valued by the plaintiff in the plaint, subject to determination by the Court at any stage of the trial.[Para 13]
Since the High Court of Delhi has framed rules under Section 9 of the Act empowering the plaintiff to value its suit for the purposes of court fees as determined by the Court Fees Act and to value for purposes of jurisdiction as valued by the plaintiff in the plaint separately. Valuation for purposes of jurisdiction so fixed by the plaintiff in the plaint is subject to determination by the Court at any stage of the trial. [Para 15]
I am in full agreement with the view expressed by Vijender Jain, J. on the aforesaid issue. In my considered view, that truly reflects position as laid down by the Apex Court in Abdul Hamid Shamsi v. Abdul Majid case (supra) and M/s Commercial Aviation and Travel v. Vimla Pannalal case (supra). There can be no doubt about the proposition that insofar as the valuation for purposes of Court fees is concerned in a case for rendition of accounts under Section 7(iv) of the Court Fees Act, it has been left to the plaintiff to affix valuation. At the same stage, it has been held that this valuation cannot be arbitrarily. In the present case, the plaintiffhimself has valued the turn over into thousands of crores and claims damages for infringement of the trademark of the plaintiff and passing of. These damages havt not been quantified but accounts have been claimed from the defendants for allegedly using the trade marks improperly and making profits to the detriment of the plaintiff. With such reputation world-wide and the grievance of the plaintiff, it can hardly be stated that the amount which would be found due on rendition of accounts can be said a meager amount as alleged ofRs. 5,00,050 for purposes of Court Fees. The most material fact is that for purposes of suit valuation, the plaintiff in para 42 himself has stated that it is expected that at the time of rendition of accounts the plaintiff shall be entitled to an amount in excess ofRs. 50,00,000. This is not only a hope but is based on the turnover of the plaintiff running into thousands of crores. Thusfinding in para 24 of the judgment in M/s Commercial Aviation and Travel v. Vimla Pannalal case (supra) would of little assistance to the plaintiff. [Para 46 (12)]
We fully endorse and adopt the view taken by the two learned Single Judges and with respect find ourselves unable to accept the reasoning of the Division Bench in Wockhardt v. M/s Raj Medicos (supra-14) and Fenner India Ltd. v. Salbros Enterprises Pvt. Ltd. (supra-10), which was followed in P.M. Diesels Ltd. v. Patel Field Marshal Industries (supra-12), as these three judgments had failed
to notice the law laid down by the Hon'ble Supreme Court in the cases of Commercial Aviation (supra-6) and Abdul Hamid Shamsi (supra-5). In the normal course, if a Division Bench does not agree with another Division Bench the matter ought to be referred to a Larger Bench. However, since we have found the Division Bench in Fenner India (supra-10) case not to have noticed the binding judgments of the Hon'ble Supreme Court in Commercial Aviation (supra-6) and Abdul Hamid Shamsi (supra-5), we have laid down the law by following the above judgments of the Hon'ble Supreme Court, as summed up below:-
(a) Section 7 clause (iv) of the Court Fees Act is an exception to all the clauses of Section 7 of the Act, as in all other clauses, the court fees has to be paid ad-valorem on the value of the relief sought. This departure from normal rule has been made deliberately for the simple reason that in case of suits under clause (iv) of Section 7 of the Act it is not possible to give an exact money valuation. It is therefore undeniable that under the terms of this Section the plaintiff is to state the amount at which he values the relief sought by him when his case is within the ambit of the said clause. The reason behind this provision seems to be that in cases in which the plaintiff is given option to value his claim, it is really difficult for the Court to value the claim with any precision or definiteness. In a suit for accounts, the correct amount which may be payable by one party to the other can be ascertained only when the accounts are examined and it is not possible to give an accurate valuation of the claim at the inception of the suit. Therefore, the plaintiff has been allowed to assess his own valuation.
(b) Section 8 of the Act makes it clear that in a suit filed under Section 7(iv) of the Court Fees Act, the value as determinable for the computation of the court fees and the value for the purposes of jurisdiction shall be the same.
(c) Section 9 of the Act empowers the High Court to make rules with the previous sanction of the State Government directing that suits of a particular class shall for the purpose of the Court Fees Act and any other enactment for the time being in force to be treated, as if their subject matter were of such value as the High Court thinks fit to specify in this behalf.
(d) High Court can frame rules under Section 9 of the Act when it is of the opinion that the valuation as fixed under Section 7 of the Court Fees Act is such that it does not admit of being satisfactorily valued. This Section acts like a proviso to Section 8 of the Act.
(e) Section 7 of the Delhi High Court Act extended rules and orders framed by the Punjab High Court as applicable to Delhi. Delhi High Court framed its own rules under Section 9 of the Act which are incorporated in Chapter III, Part C, Delhi High Court Rules, Practice and Procedure. Rule 4 as framed therein is applicable in suits for accounts of the nature before us. According to these rules, value for the purposes of court fees is as determined by the Court Fees Act, 1870 and value for the purposes of jurisdiction for the purposes of Suits Valuation Act, 1887 and the Punjab High Court Act, 1918, as valued by the plaintiff in the plaint
subject to the determination by the Court at any stage of the trial.
(f) In view of the Rule 4 as framed by the High Court of Delhi, the plaintiff is at liberty and is allowed to give his own tentative valuation for the purposes of court fees and jurisdiction. Generally, the Court cannot examine the correctness of the valuation as placed by the plaintiff, but the Court is empowered at any stage of the case to reject under Order 7 Rule 11 (b) the valuation as fixed by the plaintiff, if it is of the view that plaintiff has valued the suit arbitrarily capriciously and has chosen to give a ridiculous figure which is not borne out from the record tantamounting to not exercising his discretion reasonably in this regard. The plaintiff has not been given absolute right or option to place any valuation whatever on such relief and where he manifestly and deliberately undervalues and underestimates the same the Court is not silent and impotent spectator thereof and has clear jurisdiction to interfere. Any stage of the trial would certainly include even the time when the suit is first taken up for consideration by the court.
(g) Before rejecting the valuation as fixed by the plaintiff the Court has to see if there is positive material or objective standard on the record to indicate that he has undervalued the suit but if there is no positive material or objective standard, the Court has to accept the plaintiffs valuation. [Para 48]
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