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2009 DIGILAW 885 (CAL)

Sunil Kumar Roy v. Subrata Roy

2009-12-07

PRANAB KUMAR DEB

body2009
Judgment :- P.K. DEB, J. (1.) This revisional application has been filed, challenging the order of temporary injunction passed by the learned Additional District Judge- in-Charge, 1st Court, Siliguri, Darjeeling in Misc. Appeal No. 7 (S of 2008). (2.) The father of the respondent set up a partnership firm in the year 1954 under the name and style of RAI and CO. The aforesaid company was engaged in retail and wholesale business of selling Made Tea and Packet Tea. In order to expand the business, his two brothers were inducted and consequently, a partnership firm came into being. In April, 1970 one of the partners namely Sukanta Kr. Roy retired from the firm. The remaining two partners continued their partnership firm even after the retirement of one of the erstwhile partners. On 11th October, 1971 the partnership firm was dissolved by virtue of registered deed of dissolution of partnership and as per terms of the said Deed, Sri Sukumar Roy became the absolute owner of the firm "RAI and Co". along with its all assets, liabilities and good will and the said Sri Sunil Kumar Roy relinquished all rights of using the trade name or goodwill of "RAI and CO" by the said Registered Deed of dissolution of Partnership dated 11.10.1971. After the death of the erstwhile owner, plaintiff and his sister-in-law effected a family settlement whereby the plaintiff acquired the exclusive ownership of the said business styled as RAI and CO. along with its assets, liabilities and goodwill. (3.) Alleging that the defendants without having any authority had been using the trade mark of RAI and CO. as well as their goodwill in a camouflage way by passing of their product under the name of style of Rai and Company, the plaintiff filed a suit for declaration and injunction. A separate application for temporary injunction was also moved on behalf of the plaintiff. On going through the documents and hearing the submission, the learned trial court was pleased to reject the prayer for ad-interim injunction. Challenging the order of rejection, the plaintiff/respondent filed a misc. appeal before the appellate court. In allowing the appeal, the learned appellate court passed an order of temporary injunction, restraining the petitioners and their men using the trade mark of RAI and CO. and from publishing any advertisement in the name of RAI and CO. Challenging the order of rejection, the plaintiff/respondent filed a misc. appeal before the appellate court. In allowing the appeal, the learned appellate court passed an order of temporary injunction, restraining the petitioners and their men using the trade mark of RAI and CO. and from publishing any advertisement in the name of RAI and CO. as well as carrying any business in the name and style of RAI and CO. Challenging the impugned order, Mr. Pratap Chatterjee, learned senior advocate, has submitted that since suit was filed in a court having no jurisdiction to entertain the aforesaid suit, the learned appellate court should not have passed any order of injunction in connection with the aforesaid suit for declaration and injunction. (4.) Referring to provision of Section 134 (1) of Trade Marks Act, 1999, Mr. Chatterjee has submitted that no suit relating to the infringement of a registered trade mark or by passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered, can be instituted in any court inferior to a District Court having jurisdiction to try the suit. It is argued that the suit having been filed before the learned Civil Judge (Jr. Division), no order of injunction ought to have passed in connection with that aforesaid suit. (5.) Drawing to the attention to the averments made in Paragraph 13 of the plaint, Mr. Chatterjee has submitted that the plaintiff himself has averred that the defendants have been deliberately trying to encash on the goodwill and reputation of Rai and Company and they are also passing off their goods as the product of RAI and CO. In view of such specific averment made in the plaint, the court of the District Judge is only competent to try the suit in terms of the provision of Section 134 (1) of the Trade Marks Act of 1999. Mr. Chatterjee has also relied on the case of Manash Ranjan Chakravarty Vs. Tropical Accumulators Ltd. Reported in 60 C.W.N. 591, to vindicate his stand that as the suit is one for relating to right in a trade mark, the subordinate Judge would have no jurisdiction to try the suit in view of Section 134 (1) of the Trade Marks Act. (6.) Appearing on behalf of the opposite party, Mr. Tropical Accumulators Ltd. Reported in 60 C.W.N. 591, to vindicate his stand that as the suit is one for relating to right in a trade mark, the subordinate Judge would have no jurisdiction to try the suit in view of Section 134 (1) of the Trade Marks Act. (6.) Appearing on behalf of the opposite party, Mr. Jiban Ratan Chatterjee, learned senior counsel, has submitted that since it is a suit for declaration of right and title as well as for injunction, the embargo as provided in 134 (1) of the Trade Marks of 1999 would not be applicable. It is submitted that what the plaintiff has sought for is enforcement of the agreement whereby the business of the firm called RAI and CO. devolved solely upon the father of the plaintiff. In view of their persistent efforts to pass off their goods as that of RAI and CO., the plaintiff sought for enforcement of the agreement as executed between the defendants and the father of the plaintiff. As provided in Section 34 of the Specific Relief Act :-"Any person entitle3d to any legal character, or to any right as to any property, may institute a suit against any person denying, or interested to deny, his title to such character or right, and the Court may in its discretion make therein a declaration that he is so entitled, and the plaintiff need not in such suit ask for any further relief." Under Section 34 of the Act, a person claiming legal character or his right to a property is entitled to institute a suit against a person denying his title to such character or right. In view of the alleged efforts on the part of the defendants to pass off their product as that of RAI and CO., the plaintiff has sought for a declaration that the plaintiff alone has got right, title and interest in using the trade mark of RAI and CO. The suit for declaration, as such, is maintainable in the court of Civil Judge (Junior Division). (7.) The plaintiff has also prayed for a decree for permanent injunction, restraining the defendants from running any business under the name and style of RAI and CO. The suit for declaration, as such, is maintainable in the court of Civil Judge (Junior Division). (7.) The plaintiff has also prayed for a decree for permanent injunction, restraining the defendants from running any business under the name and style of RAI and CO. It has been averred that in terms of the agreement between his father and the defendants, the defendants ceased to have right and title over the business operated under the name and style of RAI and CO. The entire property having devolved on the plaintiff, the defendants were sought to be restrained by an order of injunction from passing off their product as that of RAI and CO. (8.) As provided in Section 42 of the Specific Relief Act :-Where a contract comprises an affirmative agreement to do a certain act, coupled with a negative agreement, express or implied not to do a certain act, the circumstance that the Court is unable to compel specific performance of the affirmative agreement shall not preclude it from granting an injunction to perform the negative agreement. (9.) There being an implied covenant not to carry on business in the name of RAI and CO. the defendants have been sought to be restrained by and order of injunction from doing such Act. They are prima facie shown to have deceptively used similar name and brand. The suit having been filed for enforcement of the negative covenant, the aforesaid suit for declaration and injunction has been rightly filed in the court of Civil Judge (Junior Division). All these aspects have been properly considered by the court below in granting injunction. The well judgment based on appreciation of fact does not call for any interference in revision. (10.) In the result, the revisional application is dismissed. However, there will be no order as to costs. Urgent xerox certified copies are to be supplied, if applied for.