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2010 DIGILAW 802 (DEL)

ANSUL INDUSTRIES v. VINEET KUMAR

2010-07-20

A.K.SIKRI, REVA KHETRAPAL

body2010
JUDGMENT A.K. Sikri, J.- The plaintiff/appellant in the suit filed by M/s. Shiva Tobacco Co., Ambala, suffered a compromise decree whereby the plaintiff has 'been restrained from directly, or indirectly dealing in chewing tobacco under the trademark 'Udta Panchhi' and/or any other mark as may be identical and/or deceptively similar to the trade mark of the Shiva Tobacco Company, Ambala, namely 'Panchhi'. Under the decree, however, the Shiva Tobacco Company accepted and recognized the trade mark 'Udta of the appellant herein. The appellant, before the said compromise decree was passed, had filed a suit i.e. CS(OS) No. 1166/2008 against the present defendant/respondent. In this suit, the appellant had also moved an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure seeking injunction against the respondent restraining it from using the trade mark 'Udta Panchhi' in relation to the product-tobacco. An interim injunction was granted which was confirmed by the learned Single Judge after hearing both the parties. However, it is thereafter, that the aforesaid compromise decree was passed in the suit filed by Shiva Tobacco Company, Ambala. 2. In view of the aforesaid circumstances, the respondent herein moved an application under Order 39 Rule 4 of the Code of Civil Procedure for vacation of the injunction order. This application has been allowed by the learned Single Judge by the impugned order dated 26th March, 2010. Apart from the other reasons stated in the order, the application was allowed on the following reasoning: "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 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. 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 chainperty". 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 he disabled from instituting action against either defendant or any other person using the mark 'Udta Panchhi' [See Union of India v. Sri Sarada Mills Ltd., (1972) 2 SCC 877 and Agra Development Autlzority v. State of U.P. & Ors., 2004 (3) AWC 2195 ]." 3. Learned Counsel, for the appellant could not dispute that in the suit filed by the Shiva Tobacco Company, Ambala, the plaintiff-appellant has been restrained from using the trade mark 'Udta Pahchhi'. In these circumstances, needless to state that it is not open to the plaintiff to seek injunction against any third party restraining him to use the same trade mark 'Udta Panchhi' for which the plaintiff-appellant itself is restrained. In view of this, we do not find any infirmity in the order passed by the learned Single Judge and this appeal is dismissed. 4. Mr. Bansal, however, has referred to the compromise application which was signed between the appellant and Shiva. Tobacco Company, Ambala, as per which certain rights of the appellant have been recognized including the right to use the trade mark 'Udta' in relation to the aforesaid product-tobacco. 4. Mr. Bansal, however, has referred to the compromise application which was signed between the appellant and Shiva. Tobacco Company, Ambala, as per which certain rights of the appellant have been recognized including the right to use the trade mark 'Udta' in relation to the aforesaid product-tobacco. He has also drawn our attention to the order dated 161h December, 2008 passed earlier by the learned Single Judge confirming the injunction granted in the application filed by the appellant under Order 39 Rules 1 and 2 of ths Code of Civil Procedure wherein prima facie view was taken to the effect that the appellant had adopted the trade mark and label in 1980s and had substantial turnover and had spent substantial amounts on advertisements over the years. It was observed that in such circumstances, he was not a pirator who was manufacturing and marketing counterfeit products and that the appellant has an impeccable right to use the trade mark 'Udta' in relation to the said product namely tobacco and therefore he has the right to restrain any person from using the word 'Udta' for his product. However, that is not the issue raised at present by the appellant. 5. We are informed that the appellant has moved an application under Order 6 Rule 17 of the Code of Civil Procedure for amendment of the suit. It would be for the appellant to press that application which shall be decided in accordance with law. It is upto the appellant to either seek amendment in the suit or file a fresh suit, thereby limiting its claim in respect of the trade mark and copyright and seeking injunction based thereupon. 6. Insofar as the present appeal is concerned, as pointed out above, there is no infirmity in the orders passed by the learned Single Judge. 7. We accordingly dismiss the same. The application for stay bearing CM No.11341/2010 stands disposed of accordingly. Appeal dismissed.