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2014 DIGILAW 1402 (DEL)

Md Iftekhar v. Karim Hotels Pvt. Ltd.

2014-05-05

G.ROHINI, RAJIV SAHAI ENDLAW

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Judgment : CM No.7295/2014 (for exemption). 1. Allowed, subject to just exceptions. 2. The CM stands disposed of. FAO(OS) 201/2014, CM No.7294/2014 (for stay) & CM No.7296/2014 (for condonation of 220 days delay in filing the appeal). 3. The appeal impugns, (a) the order dated 2nd July, 2013 of the learned Single Judge in CS(OS) No.2708/2012 filed by the respondent, of allowing the application of the respondent/plaintiff under Order 39 Rule 1&2 CPC by confirming the ex parte ad interim order dated 7th September, 2012 and dismissing the application filed by the appellant/defendant under Order 39 Rule 4 of the CPC; and, (b) the order dated 27th March, 2014 of dismissal of IA No.15660/2013 filed by the appellant/defendant for modification of the order dated 2nd July, 2013. 4. The appeal, in so far as challenges the order dated 2nd July, 2013, is barred by time and is accompanied with an application for condonation of 220 days delay in filing the same. 5. However the counsel for the respondent/plaintiff being on caveat appears and we have without considering whether there are sufficient grounds for condonation of delay or not, heard the counsels on merits. 6. The respondent/plaintiff has filed the suit from which this appeal arises for permanent injunction restraining the appellant/defendant from using in any manner whatsoever the trade mark “KARIM’S” or any other mark identical with or deceptively similar to the plaintiff’s registered trade mark “KARIM” & “KARIM’S” and for ancillary reliefs. The suit was accompanied with an application for interim relief and vide ex parte ad interim order dated 7th September, 2012 the appellant/defendant was restrained from using the name of “KARIM MUGHLAI CUISINE” or any other name identical or deceptively similar to the name KARIM/KARIM’S. The appellant/defendant besides contesting the said application for interim relief, as aforesaid also applied under Order 39 Rule 4 of the CPC for vacation of the ex parte order dated 7th September, 2012. 7. 7. The learned Single Judge has vide impugned order dated 2nd July, 2013 inter alia found/observed/held:- (i) that on 5th February, 2013 an undertaking was given by the appellant/defendant to the Court that they would not run their restaurant in the name of KARIM MUGHLAI CUISINE or in the name of KARIM; (ii) that it was the plea of the appellant/defendant, (a) that the respondent/plaintiff was/is guilty of suppression of material facts; that the respondent/plaintiff is not the owner of the trademark KARIM or KARIM’S despite having obtained registration thereof; the said registration was obtained fraudulently by suppressing the material facts; (b) the appellant/defendant produced before the learned Single Judge copy of the Trust Deed dated 13th June, 1996 which notes that late Mr. Haji Zahiruddin had by a will bequeathed to the Karim’s Moghlai Trust the right to receive royalty for the use of the trade name KARIM as well as the goodwill; (c) the appellant/defendant also relied on a Will dated 20th June 1996 purportedly executed by late Mr. Haji Zahiruddin had by a will bequeathed to the Karim’s Moghlai Trust the right to receive royalty for the use of the trade name KARIM as well as the goodwill; (c) the appellant/defendant also relied on a Will dated 20th June 1996 purportedly executed by late Mr. Haji Zahiruddin in terms of which the right to receive royalty for use of the trade name and goodwill was bequeathed by him as owner of the Trust; under the said Will the right to use the trade name KARIM/KARIM’S was given to all family members for running any similar business or restaurants, subject to their paying a royalty of 1% on the gross sale turn over to the Trust; (d) the appellant/defendant also claimed to be a inheritor of the name and goodwill of KARIM’S; (e) the appellant/defendant also relied on documents to show that the respondent/plaintiff itself had been paying royalty to the Trust from 1994 to 2004 and which was claimed to be a clear admission by the respondent/plaintiff that it was not the owner or proprietor of the trade marks in question; (f) that the Director of the respondent/plaintiff had tricked the appellant/defendant to enter into a Franchise Agreement dated 1st June, 2009 and which Franchise Agreement was valid till 12th March, 2014 and under which Agreement the respondent/plaintiff had given a right to the appellant/defendant to use the name KARIM MUGHLAI CUISINE; (iii) that the respondent/plaintiff had disputed the Will contending it to be a forgery; (iv) it was further the plea of the respondent/plaintiff, (a) that there were mutual inconsistencies in the Will on the one hand and the Trust Deed dated 20th June, 1996 on the other; (b) that the respondent/plaintiff did not have access to the relevant papers and thus the Trust Deed could not be filed along with the plaint; (c) that non-production of the Trust Deed or the Franchise Agreement made no difference to the case of the respondent/plaintiff and rather the same strengthened the case of the respondent/plaintiff; that the Franchise Agreement was a clear acknowledgement by the appellant/defendant of the fact that the respondent/plaintiff was the owner and proprietor of the marks in question; (d) that the payment by the respondent/plaintiff of the royalty to the Trust was in the nature of a voluntary contribution for charity; (v) the learned Single Judge prima facie found, (a) the copy of the Will produced by the appellant/defendant to be unreliable for the reason of the inherent inconsistencies therein; (b) that there were indeed inconsistencies between the Trust Deed and the alleged Will; (c) that the appellant/defendant had challenged the validity of the registration of the marks in favour of the respondent/plaintiff and that challenge was to be examined on merits by the fora concerned; and, (d) that nothing in the Trust Deed contradicted the case of the respondent/plaintiff. 8. The learned Single Judge having given cogent reasoning in the impugned order on the application for interim relief and it being a settled principle of law that such discretionary orders would not be interfered in appeal unless the reasoning given is perverse and merely for the reason that the Appellate Court on an independent assessment may have arrived at a different finding, (see Glaxo Smith Kline Pharmaceuticals Ltd. Vs. Union of India 185 (2011) DLT 540 (Para 8)) we have at the outset enquired from the counsel for the appellant/defendant as to what is the ground of challenge. 9. The counsel for the appellant/defendant has raised only one argument. It is contended that it having been abundantly borne out that the respondent/plaintiff did not approach the Court with clean hands, making a clean breast of all the concerned documents and the respondent/plaintiff having been found to be in suppression of the Trust Deed and the Franchise Agreement, was not entitled to any interim relief and the learned Single Judge has not considered the said aspect of the matter. Reliance is placed on para 53 of Amar singh Vs. Union of India (2011) 7 SCC 69 laying down that the Courts frown upon litigants who, with the intent to deceive and mislead the Courts initiate proceedings without full disclosure of facts and that such litigants are not entitled to be heard on the merits of their case. 10. We have enquired from the counsel for the appellant/defendant whether not the registration of the trademarks, to restrain infringement of which the suit from which this appeal arises has been filed, stands in the name of the respondent/plaintiff. 11. The counsel for the appellant/defendant agrees. 12. We have further enquired from the counsel for the appellant/defendant whether not the misrepresentation if any was before the Registrar of Trademarks in obtaining registration in the name of the respondent/plaintiff rather than in the name of the Trust. 13. The counsel for the appellant/defendant again replies in the affirmative. 14. We have then enquired from the counsel for the appellant/defendant as to how the respondent/plaintiff could be denied interim relief for the reason of having practiced a concealment at the time of registration of the trade mark and not before this Court and whether not the remedy for such concealment is in the proceedings for revocation of the registration in favour of the respondent/plaintiff. 15. 15. Though the counsel for the appellant/defendant agrees but further contends that the respondent/plaintiff misrepresented in the plaint that it was the owner of the said trade mark since the year 1913. It is argued that while stating so, it was incumbent upon the respondent/plaintiff to disclose about the Trust and which has not been done. 16. To appreciate the aforesaid contention we have combed the plaint. 17. The respondent/ plaintiff, in the plaint, has claimed “association” since the year 1913 and has disclosed that the founder of the respondent/plaintiff namely Haji Karim Zahiruddin had used the initial letters of his name to start the brand name KARIM’S and the respondent/plaintiff was the owner of the trade mark. 18. We are of the view that the respondent/plaintiff having obtained the registration of the trade mark in its name, the case of the respondent/plaintiff in the suit/plaint was on the basis of the said registration. Further, the respondent/plaintiff did not claim to be the “owner/proprietor” of the trade mark from the year 1913 and rather claimed “association” with trade mark. Owing to the supervening circumstance of the respondent/plaintiff being the registered proprietor of the trade mark, we are of the view that the suppression if any practiced by the respondent/plaintiff in obtaining such registration was/is of no relevance and cannot be said to be a factor which the respondent/plaintiff was bound to disclose to this Court, at least at the stage of Order 39 Rules 1&2 CPC. 19. We are further of the view that in the face of the registration of the trade marks in the name of the respondent/plaintiff, the manner of such registration pales into insignificance. 20. Besides the factum of the appellant/defendant having obtained license/rights from the respondent/plaintiff to use the said trade mark and the factum of the appellant/defendant having paid royalty/charges to the respondent/plaintiff for such user of the trade mark was/is a relevant factor and which rightly prevailed with the learned Single Judge in granting the interim relief. 21. We do not find any perversity in the order. 22. The counsel for the appellant/defendant has then invited attention to the application filed by the appellant/defendant for modification of the order dated 2nd July, 2013 on the ground that others were also using the name KARIM in relation to foods business. 23. 21. We do not find any perversity in the order. 22. The counsel for the appellant/defendant has then invited attention to the application filed by the appellant/defendant for modification of the order dated 2nd July, 2013 on the ground that others were also using the name KARIM in relation to foods business. 23. The learned Single Judge has vide order dated 27th March, 2014 held that it was the stand of the respondent/plaintiff in response thereto that the Trust was not receiving any royalty from any individual/stores/business entity/traders and that the Trust was not allowing the trade name KARIM/KARIM’S/KAREEM or any other variants thereof upon payment of any royalty or otherwise and accordingly dismissed the application. 24. No error is found in the said part of the order also. 25. We may notice that it was/is the plea of the respondent/plaintiff that the restaurants/eating places with the trade name KARIM/KARIM’S were being run with the permission of the respondent/plaintiff and by paying royalty to the respondent/plaintiff . In view of the said statement which we have no reason to doubt, the said ground is also not available. 26. There is thus no merit in the appeal. Dismissed.