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2010 DIGILAW 480 (DEL)

ANSUL INDUSTRIES v. VINEET KUMAR

2010-03-26

RAJIV SHAKDHER

body2010
judgment RAJIV SHAKDHER, J 1. This is an application filed by the defendants for vacation of interim order dated 11.06.2008 as confirmed by an order dated 16.12.2008. In order to dispose of the application, it would perhaps be necessary to notice the following facts:- 2. The plaintiff claims that it has been in the business of manufacturing and marketing chewing tobacco and other cognate allied goods since 1982 under the trade name „Udta Panchhi? (label). The genesis of the business is traced to a proprietorship concern started by Sh Krishan Bansal, father of Sh Anand Bansal who is the partner in the plaintiff firm. Sh Krishan Bansal had started the said business under the name of Bansal Tobacco Store. In 1994, Sh Anand Bansal changed the name to the present name i.e., M/s Ansul Industries on the death of the father in 1992 without any change in the activities, nature of business, assets and liabilities. 3. It appears that in 2001 a suit was instituted by one M/s Shiva Tobacco Company having its place of business located at Novelty Road, Ambala City, Haryana. M/s Shiva Tobacco Company instituted a suit against the present plaintiff in the District Court at Delhi. The suit was originally numbered as 330/2001. In the said suit, by an order dated 30.07.2005, the learned ADJ, Delhi had injuncted the plaintiff from using the trade mark „Udta Panchhi?. An appeal was evidently preferred against the order dated 30.07.2005. This Court by an order dated 16.07.2007 dismissed the appeal. 4. The plaintiff has admitted the fact that it temporarily discontinued the use of the trade mark „Udta Panchhi? after March, 2007. 5. It is not denied by the plaintiff that in the said suit a consent decree dated 18.05.2009 has been passed pursuant to an application moved under Order 23 Rule 3 read with Section 151 of the Code of Civil Procedure, 1908 (in short the „CPC?). As per the terms of the consent decree, the suit has been decreed in terms of Paragraph 23(i) and (ii) of the plaint filed in CS(OS) No. 147/08/2008 (original suit no. 330/2001). As per the terms of the consent decree, the suit has been decreed in terms of Paragraph 23(i) and (ii) of the plaint filed in CS(OS) No. 147/08/2008 (original suit no. 330/2001). The learned Judge in passing the judgment and decree dated 18.05.2009 recorded the statements of both: Sh Anand Bansal in his capacity as one of the partners of the defendant in that suit and plaintiff herein; and of the partner of M/s Shiva Tobacco Company, the plaintiff in that suit. The operative part of the order reads as follows:- “23(i) for a decree of permanent injunction restraining the defendant, its partners/proprietors as the case may be, its servant, agents, representatives, dealers and all other acting for an on its behalf from manufacturing, selling and offering for sale, directly or indirectly dealing in chewing tobacco under the mark UDTA PANCHHI and/or any other mark as may be identical and/or deceptively similar to the plaintiff?s registered trade mark Nos 297415, 411126, 411127, 452559 and/or 494300 amounting to infringement thereof. (ii) for a decree of permanent injunction restraining the defendant, its partners/proprietors as the case may be, its servant, agents, representatives, dealers and all other acting for and on its behalf from manufacturing, selling and offering for sale, directly or indirectly dealing in chewing tobacco or any other cognate or allied goods under the mark UDTA PANCHHI and/or any other mark which is identical and/or deceptively similar mark to the plaintiff?s trade mark PANCHII CHAAP and/or the mark PANCHHI with any prefix or suffix added thereto and from doing any other things or acts as may amount to passing off of its goods and/or business as and for the goods and/or the business of the plaintiff. The application Ex.C1 shall form part of the decree. Decree sheet be prepared accordingly.” 6. Only to be noted, when the instant suit was filed in this Court on 11.06.2008 the suit filed by M/s Shiva Tobacco Company was still pending adjudication. By an order dated 11.06.2008 the following ad interim ex-parte order was passed against the defendants:- “…….The defendants, in the meanwhile, are restrained from using the label which is deceptively similar to the plaintiff?s label in relation to the Chewing Tobacco and other related goods covered by the copyright registration No. A-74669/2005 in favour of the plaintiff…” 7. The aforesaid order was confirmed by this Court on 16.12.2008. The aforesaid order was confirmed by this Court on 16.12.2008. In the order dated 16.12.2008 the predecessor Judge noticed the fact that litigation between the plaintiff herein and M/s Shiva Tobacco Company who claim to be the owners and proprietor of the mark „Panchhi? was pending and that an injunction order was operating against the plaintiff herein qua the trade mark „Udta Panchhi?. In Paragraph 6 of order dated 16.12.2008 the Court also noticed the fact that the defendants herein since the passing of the order dated 11.06.2008 had changed their label but continued to use the mark „Udta Panchhi? for selling chewing tobacco. It was also noticed by the Court that the defendants had conceded the fact that the plaintiff were prior users of the word mark „Udta Panchhi? in connection with their goods chewing tobacco. In Paragraphs 9 and 10 the Court confirmed its order dated 11.06.2008 while giving liberty to the defendants to move for modification of the order, in the event the suit pending adjudication between M/s Shiva Tobacco Company and plaintiff herein was finally decided. This is quite evident on reading the observations of the Court in Paragraphs 8, 9 and 10 of the order dated 16.12.2008. 8. It is in this background that the defendants have moved the captioned application. The learned counsel for the defendants/applicants has submitted that in view of the fact that the plaintiff himself has indulged in piracy by adopting similar trade mark of M/s Shiva Tobacco Company, it cannot in law, seek an injunction against the defendants/applicants. It was further submitted that the plaintiff having suffered a decree that he shall not use the mark „Udta Panchhi? or mark which is identical or deceptively similar to the plaintiff?s trade mark „Panchhi Chaap? or, any other mark which uses „Panchhi? alongwith a prefix or suffix or, is deceptively similar to the registered trade mark of M/s Shiva Tobacco Company; cannot seek to injunct the defendants. 9. As against this, Mr S K Bansal submitted that till the plaintiff was injuncted it had developed a goodwill for the mark „Udta Panchhi?. The defendants/applicants could not take advantage of the compromise arrived at between the plaintiff herein and M/s Shiva Tobacco Company. 9. As against this, Mr S K Bansal submitted that till the plaintiff was injuncted it had developed a goodwill for the mark „Udta Panchhi?. The defendants/applicants could not take advantage of the compromise arrived at between the plaintiff herein and M/s Shiva Tobacco Company. Mr Bansal vehemently submitted that in terms of Clause 1(viii) of the terms of compromise, the plaintiff had been conferred the right to institute legal action against any other person (other than M/s Shiva Tobacco Company) who may adopt or use the mark „Udta Panchhi? in respect of chewing tobacco or any other cognate or allied goods in order to protect its trade mark „Udta?. Mr Bansal says that he would have no objection to the defendants using the mark „Panchhi?. The fact that the defendants/applicants have been using the mark „Udta Panchhi? without being interdicted by M/s Shiva Tobacco Company, suggests clearly that there is a collusion between the defendants/applicants and M/s Shiva Tobacco Company. Therefore, Mr Bansal says that the compromise on which reliance is placed by the defendants/applicants should be read in its entirety. 10. I have heard the learned counsel for the parties. I am of the view that the injunction order against the defendants ought to be vacated. My reasons for arriving at this conclusion are as follows: 11. Against the order dated 16.12.2008 which confirmed the ex-parte ad interim order dated 11.06.2008, an appeal was preferred to the Division Bench. The Division Bench by an order dated 03.07.2009 permitted the appellant/defendant to withdraw the appeal and move the Single Judge for variation of the order dated 16.12.2008, amongst other grounds, on the ground that plaintiff/respondent had abandoned the mark and label „Udta Panchhi? and had entered into a compromise with the owners of the mark „Panchhi? whereby, it had been agreed that the respondent/defendant would not use the mark „Udta Panchhi?. It is because of the said liberty sought that the present application has been filed. 12. It is also not disputed by Mr Bansal that the defendants/applicants have changed its label completely. The only dispute is whether the defendants/applicants during the pendency of the suit should be restrained from using the mark „Udta Panchhi?. Admittedly, in terms of compromise arrived at with M/s Shiva Tobacco Company the plaintiff has conceded that it has no rights in the mark „Udta Panchhi?. The only dispute is whether the defendants/applicants during the pendency of the suit should be restrained from using the mark „Udta Panchhi?. Admittedly, in terms of compromise arrived at with M/s Shiva Tobacco Company the plaintiff has conceded that it has no rights in the mark „Udta Panchhi?. The plaintiff also conceded that it would not use the mark „Panchhi? owned by M/s Shiva Tobacco Company in combination with any suffix or prefix. The issue then arises: as to whether the plaintiff can prevent the defendants/applicants from using the word mark „Udta Panchhi?, when it itself has no right in the said mark. Mr Bansal?s submission that such a right has been conferred by the very compromise on which the defendants rely, in my view, is a submission which is untenable, for the reason that the clause in the agreement stops short of permitting the plaintiff to use the mark “Udta Panchhi? in combination with the word “Panchhi?. Since there is no right vested in the plaintiff of user, permissive or otherwise: merely confirming the right to institute an action cannot be recognized by Court as it “savours of maintenance of champerty”. Section 6(e) of the Transfer of Property Act, 1882 bars transfer of a mere right to sue. Mr Bansal?s submission, if accepted, will result in a rather queer situation which is that M/s Shiva Tobacco Company would be disabled from instituting action against the either defendant or any other person using the mark „Udta Panchhi?. [See Union of India vs Sri Sarada Mills Ltd (1972) 2 SCC 877 and Agra Development Authority vs State of U.P. & Ors. 2004 (3) AWC 2195 ]. 13. Apart from what is observed by me hereinabove, there is another aspect to the matter. The plaintiff has not used the mark „Udta Panchhi? since March, 2007. The compromise bars the plaintiff from using the mark. The concession given by the plaintiff to a great extent dilutes the plaintiff?s chance of success at the final stage of adjudication. In these circumstances, to continue the interim protection would act to the detriment of the defendants; given the fact that the label has been changed by the defendants. 14. In any event, the Court will not come to the aid of a litigant who himself has infringed a mark of another person/entity. The principle of pari delicto will apply. In these circumstances, to continue the interim protection would act to the detriment of the defendants; given the fact that the label has been changed by the defendants. 14. In any event, the Court will not come to the aid of a litigant who himself has infringed a mark of another person/entity. The principle of pari delicto will apply. Such a plaintiff would not get any assistance from the Court in enforcing its rights, if any, at least at the interlocutory stage. While confirming the order of 11.06.2008, the Court was conscious of this situation. The protection was granted only for a reason as the suit instituted by M/s Shiva Tobacco Company had not attained finality at that stage. This was precisely why liberty had been granted to the defendants/applicants to move for modification in the event the suit filed by M/s Shiva Tobacco Company was finally concluded. 15. Mr Bansal cited following judgments in support of his contention: B.K. Engineering Company vs U.B.H.I. Enterprises (Regd.) AIR 1985 Delhi 210 and R.R. Oomerbhoy Pvt. Ltd vs Court Receiver, High Court, Bombay and Anr. 2003 (27) PTC 580 (DB) (Bom). According to me both judgments are distinguishable. In B.K. Engineering (supra) the plaintiff was refused injunction in respect of his mark „B.K.? against a rival in the same line of business using the mark „B.K.-81?. The Division Bench after discussing the law and facts found that the use of the mark by the defendant was dishonest and hence, allowed the appeal and issued an injunction against the defendants. The defence raised that the mark „B.K.-81? was an abbreviation of the name of a family member of the partner of the defendant firm was rejected and in the facts of that particular case the court found that it led to deception. Similarly, in the case of R.R. Oomerbhoy (supra) the rival marks were „Mastman? & „Mastaan? and „Postman? & „Postiano?. On the facts obtaining in the said case the court found that the defendant was using the mark „Mastaan? and „Postiano? dishonestly with the view to trade in the goodwill and reputation of the plaintiff. In both cases the facts are again distinguishable, as observed above. In both cases, there were an assertion of right on the part of the plaintiff in the mark in respect of which protection was sought. Such is not the case in the instant case. 16. dishonestly with the view to trade in the goodwill and reputation of the plaintiff. In both cases the facts are again distinguishable, as observed above. In both cases, there were an assertion of right on the part of the plaintiff in the mark in respect of which protection was sought. Such is not the case in the instant case. 16. Therefore, for the reasons given hereinabove, I deem it fit to vacate the interim order dated 11.06.2008 as confirmed by order dated 16.12.2008. Accordingly IA No. 9182/2009 (under O.39 R.4 of CPC) is allowed.