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2012 DIGILAW 1006 (DEL)

EXECUTIVE ACCESS (INDIA) PVT. LTD. v. ANAND MENON

2012-03-12

MANMOHAN SINGH

body2012
JUDGMENT MANMOHAN SINGH, J. I.A. No.4012/2012 (u/s 151 CPC for exemption) This application has been filed by the plaintiff under Section 151 of CPC, seeking exemption from filing the original and or/fair typed copies of the dim documents at this stage. Heard. For the reasons stated in the application, the same is allowed and eight weeks time is granted to file the same. The application is disposed of. CS(OS) 527/2012 Let the plaint be registered as a suit. Additional affidavit and documents are taken on record. Issue summons to the defendants, on filing of process fee and registered AD cover within one week, returnable on 26.04.2012. I.A. No.4011/2012 (u/O XXXIX, R.1 & 2 CPC) 1. Issue notice for the date fixed. 2. The case of the plaintiff is that it is a company registered under the Companies Act, 1956 incorporated in the year 1995 and since then it has been carrying on its business under the corporate name and trading style “EXECUTIVE ACCESS” and the ren logo to provide head-hunting/executive search/placement services to clients. The plaintiff has secured trademark registration and also has a pending trademark application in respect of the trademark/service mark EXECUTIVE ACCESS and the ren logo. The details regarding the registration and the pending trademark application are given in para 13 of the plaint. It is stated by the plaintiff that the executive search services are used by its client companies to find and hire high level executives who are most suited to a stated job profile. Since June 2004, the plaintiff has been operating its website www.executiveaccess.co.in which gives comprehensive information about the operation management and the service rendered by the plaintiff company. 3. Mr. Neeraj Kishan Kaul, learned Senior counsel for the plaintiff states that the defendant No.1, Mr. Anand Menon, a former employee of the plaintiff company is the Managing Director of defendant No.2, EAL Consulting India Pvt. Ltd. that is carrying on business identical to that of the plaintiff, under the name EAL Search and claims to be an affiliate of Executive Access Limited, Hong Kong i.e. defendant No.3 herein. According to the plaintiff, defendant No.1 and employees of defendant Nos. 2 and 3, during their conversations with prospective customers misrepresent themselves to be the employees of the plaintiff. According to the plaintiff, defendant No.1 and employees of defendant Nos. 2 and 3, during their conversations with prospective customers misrepresent themselves to be the employees of the plaintiff. The defendants, in the course of trade as well as for the purpose of advertising and promoting their services in India, are using the registered trademark “EXECUTIVE ACCESS” owned in India by the plaintiff. Further, the defendants are using the website www.ealsearch.com to divert the India based queries, consumer/customer “web traffic”, to defendant No.3’s Hong Kong based website www.executiveaccess.com misrepresenting itself as Executive Access in India, territorial rights of which, rest solely with the plaintiff. 4. It is stated on behalf of the plaintiff that defendant No.1 is misrepresenting himself to be the head of “Executive Access”, therefore, he is personally liable for infringing the rights of the plaintiff and passing off the services provided by the defendant company as that of the plaintiff herein. The plaintiff has filed printouts from several public online resources wherein the defendant No.1 has misrepresented himself to be the Head/Director of “Executive Access”. 5. Further, Mr. Kaul, learned Senior counsel submitted that Mr. Ranjan Marwah, who had set up the plaintiff company in March, 1995 had also set up Executive Access business in Hong Kong in 1988 and this business was conducted through Access Asia Corporation and its affiliates. In 2003, Mr. Ranjan Marwah effected the sale of Executive Access Holding Ltd. and its subsidiaries to Mr. John Maxwell Lummis-III. The Share Purchase Agreement reveals that the following companies were sold to Mr. John Maxwell : i. Executive Access Holding Limited (EAHL) ii. Executive Access Limited (EAL) iii. Executive Access (S) PTE Limited (EASL) iv. Executive Access KK (EAKK) v. Job Access Limited (JAL) In pursuance of the Share Purchase Agreement, two separate IP Agreements were also entered into on 29.06.2003 : a. The Sale Purchase of trade mark “EXECUTIVE ACCESS” b. License Agreement for the trademark ren logo for a period of 5 (five) years. 6. Mr. Ranjan Marwah vide letter dated 27.06.2003 also gave an option to Mr. John Maxwell Lummis-II to purchase the trademark and ren logo after the initial license period of 5 years. At present, he has no current interests/affiliations with the entities sold under the Share Purchase Agreement. 6. Mr. Ranjan Marwah vide letter dated 27.06.2003 also gave an option to Mr. John Maxwell Lummis-II to purchase the trademark and ren logo after the initial license period of 5 years. At present, he has no current interests/affiliations with the entities sold under the Share Purchase Agreement. In 2007, he sold his shares in the plaintiff company which he held via Field of Gold Holdings Ltd. to HAT PIN Holdings (Cyprus) Ltd. and HAT PIN Plc. The current shareholding of Executive Access (India) Pvt. Ltd. are HAT PIN Holdings (Cyprus) Ltd., Hawk Investments, Mink Consulting and Proplanet. 7. The Share Purchase Agreement between Access Asia Corporation and Mr. John Maxwell Lummis-III defined the terms, trademark and trade name in a manner, so as to, restrict their usage only to the countries where the companies sold were domiciled. This did not include India. The restriction on usage was further incorporated in the Sale-Purchase of Trade Name Agreement and License of Trademark Agreement in Clause 3.1 of both the Agreements ensuring that the only countries where the Trademark and Trademark may be used were the domicile of the Companies i.e. in • British Virgin Islands • Singapore • Japan; and • Hong Kong 8. This restriction on use of Trademark and Trade name was further clarified by Mr. Ranjan Marwah vide email dated 19.01.2012 wherein he stated that while assigning the ren logo to EAL : i. Executive Access Limited acknowledged and understood that for the territory of India, Executive Access (India) Pvt. Ltd. owned the rights in the tradename and trademark. ii. Since Executive Access (India) Pvt. Ltd. is not an affiliate of Access Asia Corporation or EAIL, EAL’s right in the ren logo does not include the ren logo mark in India. 9. Having heard the learned Senior counsel appearing on behalf of the plaintiff and perused the plaint, application and the documents filed along with the plaint, I am of the view that this is a fit case for grant of an ex-parte ad-interim injunction as the plaintiff has been able to show a strong prima facie case in its favour. 9. Having heard the learned Senior counsel appearing on behalf of the plaintiff and perused the plaint, application and the documents filed along with the plaint, I am of the view that this is a fit case for grant of an ex-parte ad-interim injunction as the plaintiff has been able to show a strong prima facie case in its favour. Accordingly, till the next date of hearing the defendants, their directors, promoters, agents, assigns, members, employees, affiliates, subsidiaries and other persons or entities claiming through them are restrained from setting up similar business on commercial scale in India, under the name and mark “EXECUTIVE ACCESS” or the trademark ren logo or any other deceptively trademark similar to the registered trademark “EXECUTIVE ACCESS” or trademark ren logo of the plaintiff which is registered in India. Compliance of Order XXXIX, Rule 3 CPC be made within one week.