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1989 DIGILAW 3 (BOM)

OPTREX LTD. v. OPTREX INDIA LTD.

1989-01-10

M.L.PENDSE

body1989
ORDER Pendse, J. (Oral) - The plaintiff No.1 Company is incorporated under the English Companies Act of the United Kingdom and carries on business as manufacturers, producers and distributors of medicinal and pharmaceutical preparations. The plaintiff No.1 has obtained registration of the trade mark 'OPTREX' under No.16866 in respect of pharmaceutical preparations falling under Clause 5 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959 on May 31, 1943. The plaintiff No.1 has also obtained registration of two trade marks of which the word 'OPTREX' is an essential feature in respect of soaps, perfumes etc. The plaintiff No.1 has used the trade mark 'OPTREX' all over the world including India and the world 'OPTREX' is associated by the public and the trade exclusively with plaintiff No.1. The defendants are a Company incorporated under the Companies Act, 1956 and was promoted by late Mr. Vitthal Mallya who was a majority shareholder. Prior to the incorporation of the defendant Company, an agreement dated June 10, 1976 was executed between plaintiff No.1 and Mallya and under the agreement, plaintiff No.1 gave consent to incorporation of defendant Company with the name 'OPTREX' as part of its corporate name. The defendant Company was incorporated in the year 1977. Under the agreement between the defendants and plaintiff No.1, the defendant Company was permitted to use the registered trade mark 'OPTREX' as a part of the corporate name as it was expected that the defendant Company would be granted a licence to use the trade mark 'OPTREX' in relation to the goods to be manufactured by the defendants. On December 22, 1977, a Registered User Agreement was executed between plaintiff No.1 and the defendants under which the defendant was permitted to use the mark 'OPTREX' in respect of an eye lotion to be manufactured by the defendants in India. 2. The terms of the agreement, inter-alia, provided that on the termination of the agreement, the defendants shall cease to manufacture the products or use any labels bearing the name and the trade mark of the Proprietor or any trade mark labels only different in colour therefrom. The agreement specifically provided for termination by either party giving to the other party six months' notice in writing to that effect. The agreement specifically provided for termination by either party giving to the other party six months' notice in writing to that effect. The plaintiff No.1, accordingly, gave notice of termination on May 30, 1986 intimating that the agreement would come to an end with effect from December 25, 1986. The defendants were called upon to desist from manufacturing, selling or offering for sale any goods with the mark 'OPTREX'. The plaintiff No.1 thereafter granted permission to plaintiff No.2 to use the mark 'OPTREX' in India in respect of goods manufactured by plaintiff No.2. 3. The defendants by their Attorney's letter dated December 31, 1986 intimated to plaintiff No.1 that they have stopped using the trade mark 'OPTREX' in respect of any of their products. The defendants claim that plaintiff No.1 had given consent to the defendants for using the trade mark 'OPTREX' as a part of their corporate name and this consent or permission is irrevocable. The plaintiffs denied the claim by their Attorney's letter. It is the grievance of the plaintiffs that notwithstanding the express undertaking given by the defendants, the user of the trade mark 'OPTREX' has not ceased. The plaintiffs complain that the defendants are infringing their trade mark. The plaintiffs also claimed that the defendants are required to be restrained by an injunction from in any manner using the word 'OPTREX' as part of the corporate name/trade name/trading style so as to pass-off the goods and/or business as and for that of plaintiff No.1. 4. The Notice of Motion was taken out on September 3, 1987 for three interim reliefs: (a) injunction restraining the defendants from using in any manner the mark 'OPTREX' in relation to any pharmaceutical or medicinal preparations and particularly eye lotion, (b) injunction restraining the defendants from in any manner using trade mark 'OPTREX' so as to pass-off the defendants' goods as and for those of the plaintiffs, and (c) injunction restraining the defendants from in any manner using the word "OPTREX" as part of the trading name or trading style or corporate name so as to pass-off their goods as and for that of plaintiff No.1. Ad-interim relief in terms of prayers (a) and (b) was granted on September 3, 1987. Ad-interim relief in terms of prayers (a) and (b) was granted on September 3, 1987. At the hearing of the motion, there is no dispute as regards the grant of relief in terms of prayers (a) and (b) and the only question required to be determined is whether the plaintiffs are entitled also to relief in terms of prayer (c). Shri Tulzapurkar, learned counsel appearing in support of the motion, relied on Clause 11 of the agreement and submitted that on termination of the agreement, the defendants have agreed to cease the user bearing the name and trade mark of the Proprietor and, therefore, it is not permissible for the defendants to continue to carry on business in the corporate name having the word 'OPTREX'. The defendants were carrying on business in corporate name "Optrex India Limited" and Shri Tulzapurkar submits that it is necessary for the defendant to change their trading name and/or corporate name by deletion of word 'OPTREX'. Shri Tulzapurkar submitted that not only the defendants are trying to pass-off the goods by use of the corporate name including the word 'OPTREX' but in affidavit filed in answer to the Motion, the Director of the defendants claims that the defendants are entitled to contend that they are Proprietors of the trade mark 'OPTREX'. Shri Tulzapurkar submits that the defendant Company was registered after the agreement between the parties and the plaintiffs did not object to inclusion of the word 'OPTREX' in the corporate name of the defendants only in view of the agreement between the parties. 5. Shri Shah, learned counsel appearing on behalf of the defendants, relied upon letter dated November 17, 1976, a copy of which is annexed as Ex. 3 to the affidavit in reply, in support of the submission that the consent has been given by the plaintiffs for the use of the word 'OPTREX' in the name of the Company to be registered in the State of Jammu and Kashmir and from this consent it should be inferred that plaintiff No.1 has given an irrevocable permission to the defendants to use the word 'OPTREX' in the name of the Company. The perusal of the letter makes it clear that the claim of the defendants is totally unsustainable. The consent was given by plaintiff No.1 for use of the word 'OPTREX' in the name of the Company only in view of the agreement. The perusal of the letter makes it clear that the claim of the defendants is totally unsustainable. The consent was given by plaintiff No.1 for use of the word 'OPTREX' in the name of the Company only in view of the agreement. Once that agreement comes to an end, then it is not permissible for the defendants to trade in the name which includes the word 'OPTREX'. The agreement between the parties clearly prohibits the defendants from using the word 'OPTREX'. Shri Shah then submitted that the claim made by the defendants that they are the Proprietors of the trade mark 'OPTREX' was not correct and the submission of the plaintiffs that it shows the mala fide intention of the defendants should not be seriously examined. I am unable to accede to the submission of Shri Shah. The specific claim made in the affidavit clearly shows the mind of the defendants and the claim is not obviously correct. Shri Shah then submitted with reference to Ex. 5 to the Affidavit in reply that the defendants are selling their products in the name of the Company including the word 'OPTREX' for the period from year 1980 onwards and the turn-over is of considerable value. It was urged that grant of injunction in terms of prayer (c) would seriously affect the business of the defendants. The submission has no merit. The defendants have not been prohibited from carrying on their business but what is objected to is carrying on business in the trade name or corporate name including the word 'OPTREX'. In my judgment, the defendants have no answer to the relief sought in the motion. 6. Accordingly, Notice of Motion is made absolute in terms of prayers (a), (b) and (c). The relief in terms of prayers (a) and (b) would be operative forthwith but injunction in terms of prayer (c) would come into operation from June 1, 1989 onwards. The injunction is deferred to enable the defendant Company to change their Corporate name by deletion of word 'OPTREX'. The defendants shall pay the costs of the motion.