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Allahabad High Court · body

2009 DIGILAW 2809 (ALL)

GLAXY BRUSHWARE, BIJNOR v. RAMESH SOOD

2009-08-11

PANKAJ MITHAL

body2009
JUDGMENT Honble Pankaj Mithal, J.—The parties to this appeal are litigating over a trade mark. 2. The plaintiffs are M/s. Ogal Trading Company and one of its partner engaged in the manufacturing and marketing of paint brushes under the trade name “BEKAY”. The defendant No. 1 M/s. Galaxy Brushware is a sole proprietorship firm and is also engaged in the business of paint brushes under the trade name “SUPER BEEKAY” whereas defendant No. 2 is its proprietor. 3. The plaintiff/respondents instituted a suit No. 80/08 against the defendant/appellants for infringement of trade mark which is legally called an action for passing off. The plaintiff-respondents claimed relief of perpetual injunction restraining the defendant/appellants from using the trade name “SUPER BEEKAY” for the paint brushes manufactured by them and for rendering true and complete accounts of the sale and profit made by use of such trade name which was said to be similar and deceptive to the registered trade mark of the plaintiff/respondents. 4. The suit was instituted on the allegation that the plaintiff/respondents are prior user of the trade mark “BEKAY” which is being used by them since 1998. They had applied for its registration as a trade mark on 10.8.1998 and the registration was granted vide registration certificate No. 814043 on 20.1.2005 w.e.f. 10.8.1998. The defendant/appellants as such have no right to use the trade mark “SUPER BEEKAY” for their paint brushes as it is quite similar and deceptive to the registered trade mark of the plaintiff/respondents. The defendant/appellants despite notice dated 14.1.2005 did not stop using the trade mark “SUPER BEEKAY” and in order to circumvent the same they got the aforesaid trade name “SUPER BEEKAY” registered on 5.4.2005. 5. In the suit an application for grant of interim injunction was also moved on the aforesaid facts. 6. The defendant/appellants opposed the interim injunction application by filing objections stating that they are using the trade mark “SUPER BEEKAY” since 1991 and have obtained its registration bearing No. 1348936 which has been granted to them with effect from 10.11.2004. Thus there is no infringement of any trade mark rights on their behalf. The suit is barred by time and as the application of the plaintiff/respondents for the rectification is pending, the suit is not liable to proceed. 7. Thus there is no infringement of any trade mark rights on their behalf. The suit is barred by time and as the application of the plaintiff/respondents for the rectification is pending, the suit is not liable to proceed. 7. The application after consideration was finally allowed by the Court below by the impugned judgment and order dated 30.5.2009 and the defendant/appellant has been restrained from using the trade mark “SUPER BEEKAY” during the pendency of the suit. Aggrieved, the defendant/appellants have preferred this first appeal from order. 8. I have heard Sri Farman Naqvi, learned counsel for the defendant/appellants and Sri Manoj Mishra, learned counsel appearing for the plaintiff/respondents. The parties have already filed their affidavits annexing all the relevant documents which they want to rely upon and were said to be part of the record of the Court below. They have agreed for final disposal of the appeal at the admission stage. Accordingly, I am proceeding to decide the same finally. 9. The first argument of Sri Naqvi on behalf of the defendant/appellants is that the defendant/appellants are the registered owners/users of the trade mark “SUPER BEEKAY” since 1991 and, as such, being the prior user vis-a-vis the plaintiff/respondents they cannot be stopped from using it. 10. The Court below after considering the material on record has returned a specific finding that the plaintiff/respondents are prima facie the prior user of the trade mark “BEKAY” vis-a-vis defendant/appellants. To test the above finding I have carefully examined the documents on record. The plaintiff/appellants have applied for registration of trade name “BEKAY” on 10.8.1998 which registration was granted vide certificate dated 20.1.2005. The certificate categorically states that it is effective from 10.8.1998. The application as well as the certificate aforesaid also reveal that the plaintiff/appellants are using the aforesaid trade name at least from 10.8.1998, if not prior to that. In support various other documents are also on record including those relating to the registration under the Copyright Act. However, the above two documents are sufficient to establish that the plaintiff/respondents are using the trade mark “BEKAY” for their paint brushes since 10.8.1998. The defendant/appellants claim to be using trade name “SUPER BEEKAY” since 1991. However, their application for registration of the aforesaid trade name categorically states that the said trade name is being used by them since 18.11.2004. However, the above two documents are sufficient to establish that the plaintiff/respondents are using the trade mark “BEKAY” for their paint brushes since 10.8.1998. The defendant/appellants claim to be using trade name “SUPER BEEKAY” since 1991. However, their application for registration of the aforesaid trade name categorically states that the said trade name is being used by them since 18.11.2004. It is for this reason alone that the aforesaid trade mark has been registered vide certificate dated 5.4.05 w.e.f. 18.11.2004. Thus from the above it is clear that the defendant/appellants, as per their own showing, are using trade mark “SUPER BEEKAY” from 18.11.2004 whereas the plaintiff/respondents are using the trade mark “BEKAY” w.e.f. 10.8.1998, meaning thereby the plaintiff/respondents are prior users of the trade mark. The registration certificate of the plaintiff/respondents is also of an earlier date. It may not be out of context to mention that it is not the case of the defendant/appellants anywhere that they were not aware of the trade mark ‘Beekay’ being the property of the plaintiff/respondents or that they had no knowledge of its prior use by the plaintiff/respondents. Therefore, the Court below has not committed any mistake in holding that the plaintiff/respondents are the prior user of the trade mark “BEKAY”. 11. The next submission of the learned counsel for the defendant/appellants is that the trade mark “SUPER BEEKAY” is quite distinct from the registered trade mark of the plaintiff/respondents “BEKAY” and, as such, is not deceptive. 12. In this connection it has to be kept in mind that primarily the word ‘Bekay’ is the focal point of identification with which the product has come to be associated and the word “super” prefixed to the same is of little consequence. It is merely an adjective prefixed to the trade mark ‘Bekay’ inasmuch as the product is associated with the main brand name. In the case of Geepee Coval Proteins and Investment Pvt. Ltd. v. Saroj Oil Industry, 2003 (27) PTC 190 (Del.), the High Court of Delhi while dealing with the trade mark in respect of the edible oils which were being marketed under the trade mark ‘Chambal’ and “Chambal Deep” held that use of trade mark “Chambal Deep” is similar and deceptive to the already registered trade mark ‘Chambal’ within the meaning of Section 2(h) of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The Allahabad High Court in the case of M/s. Poonam Detergent Industries v. Kanpur Trading Co. Ltd., 2004 ALJ 2545 held that use of the trade mark ‘Ghari’ and the subsequent use of the trade mark “Pooja No. 1 Ghari” are similar and deceptive as the main focal point of attraction and identification of the product happens to be ‘Ghari’ and any other word prefixed or suffixed to the same is to confuse and deceive the customer. Thus, applying the same reasoning and keeping in mind the nature of the product and the status of the persons normally buying the same, i.e. painters who on account of socio economic condition and education are unable to make such fine distinction, I am of the view that the Court below has not committed any error in prima facie holding that the two trade marks are identical, similar and deceptive within the meaning of Section 2(h) of the Act. Accordingly, when there is probability of any confusion, the grant of interim injunction is not illegal though the defendant/appellants may have adopted or used the same innocently. Therefore, there is no force even in the second submission so advanced on behalf of the defendant/appellants. 13. Many authorities of other High Courts were cited by the learned counsel for the defendant/appellants in support of the submission that the trade mark “SUPER BEEKAY” is not identical and similar to the registered trade mark of the plaintiff/respondents but I find that none of those authorities clinches the issue and, as such, are not material to be discussed elaborately. 14. It may be borne in mind that in an action for passing-off it is not unusual but rather essential to seek injunction, temporary and permanent. The principles for the grant of such injunctions are the same as in the case of any other action brought for any other injury. The plaintiff, therefore, must prove a prima facie case, availability of balance of convenience in his favour and his suffering and irreparable loss or injury in the event of refusal of such injunction. This has been clearly laid down by the Apex Court in the case of Laxmikant V. Patel v. Chetanbhai Saah and another, (2002) 3 SCC 65 . 15. This has been clearly laid down by the Apex Court in the case of Laxmikant V. Patel v. Chetanbhai Saah and another, (2002) 3 SCC 65 . 15. In the instant case, the Court below on the material on record has found that the plaintiff/respondents have established a prima facie case, the balance of convenience is also in their favour and that they would suffer irreparable injury if the interim injunction is refused. Once a discretion has been exercised by the Court below in favour of the plaintiff/appellants and such discretion has not been shown to be palpably wrong, this Court would not ordinarily interfere with the exercise of such discretion so as to substitute its own discretion. Thus, as defendant/appellants are prima facie found to have imitated or adopted the plaintiff/appellants distinctive trade mark the Court below appears to be justified in granting absolute injunction that they should not use or carry on business under the trade mark “SUPER BEEKAY”. 16. The main legal argument advanced by Sri Naqvi is to the effect that the Court below exceeded its jurisdiction in allowing interim injunction of the nature granted as its power to grant interim injunction in matters relating to trade marks is limited as specified under Section 135 or 124(5) of the Act. The argument has been opposed by Sri Manoj Mishra, learned counsel for the plaintiff/respondents who submitted that such an argument is based on complete misreading of the provisions and the Court has ample authority under law to grant interim protection of any nature and not only of the nature described under the aforesaid provisions. 17. Section 135 of the Act provides for the reliefs which can be granted by the Court in suits relating to infringement of trade marks. It provides that apart from other reliefs, the Court has power to grant injunction and the order of injunction so granted may include an ex-parte injunction or an interlocutory order for any of the following matters, namely: (a) for discovery of documents; (b) preserving or infringing goods, documents or other evidence which are related to the subject matter of the suit; and (c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff. 18. 18. The scheme of the Act provides that where an application for rectification i.e. for removal of any registered trade mark is pending, the proceedings of the suit for infringement of a trade mark are liable to remain stayed. However, Section 124(5) permits that such stay of suit shall not preclude the Court from making any interlocutory order, including any order granting any injunction directing account to be kept, appointing a receiver or attaching any property, during the period of the stay of the suit. 19. For the sake of convenience, the relevant provisions of Sections 135 and 124 of the Act are quoted below : “135. Relief in suits for infringement or for passing off.—(1) The relief which a Court may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to such terms, if any, as the Court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure. (2) The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely : (a) for discovery of documents; (b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit; (c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff. (3) .........................” “124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.—(1).............. (2) .............. (3) .............. (4) ............. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the Court from making any interlocutory order (including any order granting any injunction directing account to be kept, appointing a receiver or attaching any property), during the period the stay of the suit.” 20. On consideration of the aforesaid provisions there is no doubt that the Court below dealing with the suit for the infringement of a trade mark is competent to grant injunctions subject to such terms as it may think fit which also includes the power of granting interim or even ex parte injunction. On consideration of the aforesaid provisions there is no doubt that the Court below dealing with the suit for the infringement of a trade mark is competent to grant injunctions subject to such terms as it may think fit which also includes the power of granting interim or even ex parte injunction. The nature of the interim orders which have been specified both under Section 135 as well as under Section 124(5) are inclusive and not exhaustive in nature; meaning thereby that the power to grant injunction or interim injunction is much wider and takes within its fold all kind of injunctions including those of the nature specified under the aforesaid provisions. The nature of the injunction orders specified under Section 135 or 124(5) of the Act does not limits the powers of the Court to grant injunction only in respect to the matters specified therein. To put in simply, the power of the Court to grant injunction or interim injunction in such matter does not get restricted and confined to the nature of the orders specified therein as those orders are said to be included in the over all orders of injunctions which the Court can grant. 21. This is also the view taken by me in the case of Mohit Kumar Varshney and another v. Girraj Food Products, Hathras, 2009(5) ADJ 455 while dealing exclusively with the provisions of Section 135 of the Act and there is no plausible reason for me to deviate from the earlier view. 22. Thus the above submission also has no merit and fails. 23. In the last, Sri Naqvi has made a feeble attempt to contend that the suit is barred by time. It is said that the plaintiff/respondents acquired knowledge of the alleged infringement of the trade mark in January, 2005 but the suit was filed only on 22.8.2008. He has placed the provisions of Section 21 of the Act and has contended that the suit ought to have been filed within three months from the knowledge of the infringement. 24. The argument is ex facie misplaced. The provision of Section 21 is for opposing the registration of a trade mark and in such matters a period of three months has been provided under the Act for filing objection. The said limitation cannot be applied to a suit instituted for the infringement of a trade mark. 24. The argument is ex facie misplaced. The provision of Section 21 is for opposing the registration of a trade mark and in such matters a period of three months has been provided under the Act for filing objection. The said limitation cannot be applied to a suit instituted for the infringement of a trade mark. Moreover, the question of limitation is to be considered by the Court below as and when any issue in this regard is framed. It is not a matter which can be dealt with in this appeal in a summary manner wherein the validity of grant of interim injunction alone is being adjudicated upon, until and unless it is shown that the suit is patently barred by limitation wherein no interim order could have been granted. I am afraid this is not the situation in the present appeal. 25. In view of aforesaid facts and circumstances and the discussion, I am of the view that no case for interference with the interim injunction granted by the Court below has been made out. However, it would be appropriate to observe that as the application for rectification is said to be pending before the Intellectual Property Appellate Tribunal, Chennai the Court below should have granted the interim injunction only till the disposal of such application in view of Section 124(5) of the Act. Therefore, the injunction order so granted by the Court below is restricted to the above period only. At the same time, the parties are given liberty to approach the competent authority, before whom such an application is said to be pending, for expediting its hearing. It is further provided that as the defendant/appellants have been restrained from doing business with the trade mark “SUPER BEEKAY”, in the event they ultimately succeed in the suit, they would be liable to seek compensation for the loss of business suffered by them for not using the above trade mark for the period the interim injunction remains operative i.e. for the period starting from the date of grant of injunction till its expiry. 26. With the aforesaid observations the appeal is dismissed. 27. The parties to bear their own costs. ————