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2017 DIGILAW 1853 (RAJ)

Kamdhenu Ispat Limited v. Kamdhenu Dairy

2017-08-17

GOVERDHAN BARDHAR

body2017
JUDGMENT : Goverdhan Bardhar, J. 1.The instant Revision Petition under Section 115 of the Code of Civil Procedure has been filed on behalf of the petitioner/defendant No. 1 being aggrieved with the order dated 11.9.2012 passed by the Addl. District Judge (Fast Track), Court No. 8, Jaipur Metropolitan, Jaipur (hereinafter referred to as 'the learned trial court') in Civil Suit No. 15/2010, whereby the learned court below dismissed the application filed by the petitioner/defendant No. 1 under section 151 CPC for dismissal of the suit. 2. Learned counsel for the petitioner/defendant No. 1 has submitted that the respondent No. 1/plaintiff was guilty of approaching the learned court below with unclean hands. The respondent No. 1/plaintiff was also guilty of causing misrepresentation in the market and trade. It is well settled proposition of law that the party who comes to the Court, must come with clean hands because the respondent No. 1/plaintiff did not dispute the acetum of abandonment of Trademark under No. 646637. Counsel submitted that the suppression made by the respondent No. 1/plaintiff is prima facie apparent and for that no evidence or trial is required. Counsel submitted that once the respondent No. 1/plaintiff has abandoned the right in the impugned trademark kamdhenu", how the same can claim any right/user in the impugned trademark but the respondent No. 1/plaintiff has wrongly claimed prior user in the impugned Trademark "kamdhenu": 3. In support of his case case counsel for the petitioner/defendant No. 1 has placed reliance upon following judgments: 1. Prina Chemical Works & Ors. Vs. Sukhdayal & Ors., (1974) ILR Del. 545; 2. M/s. Seemax Construction (P) Ltd. Vs. State Bank of India & Ant., AIR 1992 Del. 197 ; 3. Satish Khosla Vs. M/s. Eli Lilly Ranbaxy Ltd. & Anr, 1998 IAD (Del) 927; 4. Sagar Beedi Works & Anr. Vs. Bharath Beedi Works & Anr., 1981 PTC 269; 5. Om Prakash Gupta Vs. Parveen Kumar, 2000 PTC 326 ; 4.Thus, the impugned order dated 11.9.2012 passed by the learned court below be quashed and set aside and the application filed by him under section 151 CPC for dismissal of the subject matter of the suit may be allowed. Vs. Bharath Beedi Works & Anr., 1981 PTC 269; 5. Om Prakash Gupta Vs. Parveen Kumar, 2000 PTC 326 ; 4.Thus, the impugned order dated 11.9.2012 passed by the learned court below be quashed and set aside and the application filed by him under section 151 CPC for dismissal of the subject matter of the suit may be allowed. 5.Counsel for the respondent No. 1/plaintiff has submitted that the suit is based on "Passing Off" action and to establish prior user to secure injunction in action for passing off, registration of trademark or similar mark in point is irrelevant. Counsel submitted that any person having an interest in any of the trademark can file number of applications before the registering authority, that such number of the applications for the same trademark is not bar (sic) the Trade Mark Act or any other law. Counsel submitted that such application does not affect to each other and each application has independent procedure for registration. Counsel submitted that the plaintiff/respondent filed two applications for registration of trademark "Kamdhenu" vide Numbers 646637 and 1609501. Counsel submitted that the first application No. 646637 was abandoned by the Registrar of Trademark and second application No. 1609501 is remained pending for registration, the said application was properly advertised in the Trademark Journal. Thereafter, the appellant-defendant filed objection against the said application upon the ground of similarity of trademark. Counsel also submitted that the first application No. 646637 which was "Abandoned" does not affect or bar to the second application of the plaintiff/respondent. 6. Counsel in support of his case has placed reliance upon the Judgment delivered by the Hon'ble Apex Court in the case of Heinz Italia vs. Dabur India Ltd., (2007) 6 SCC 1 . 7. I have heard learned counsel for the respective parties, carefully scanned the entire material made available to me including the record of the case and the judgments cited by both the learned counsel. 8. In the matter in issue, against the order of temporary injunction dated 26.3.2010 passed by the learned trial court, present petitioner/defendant No. 1 filed an appeal which was registered as S.B. Civil Misc. Appeal No. 1005/2010 along-with the stay application. The stay application was registered as S.B. Civil Misc. Stay Application No. 735/2010. 8. In the matter in issue, against the order of temporary injunction dated 26.3.2010 passed by the learned trial court, present petitioner/defendant No. 1 filed an appeal which was registered as S.B. Civil Misc. Appeal No. 1005/2010 along-with the stay application. The stay application was registered as S.B. Civil Misc. Stay Application No. 735/2010. The instant appeal was listed on 5.4.2010 and on the said date, the Coordinate Bench of this Court has passed following order on the stay application: "I have considered the aforesaid submissions and I am of the opinion that with a view to protect the interest of the plaintiff-respondent, since the plaintiff-respondent, has applied for the trade mark in the name of "KAMDHEUNU" in respect of ghee, butter and edible oil alone, the order of temporary injunction passed by the learned trial court shall remain confined to the aforesaid products for which the plaintiff-respondent has applied for registration of trade mark i.e. in respect of ghee, butter and edible oil and so far as the order i.e. in respect of other products apart from three mentioned hereinabove shall remain stayed during the pendency of this appeal." 9. However, the aforesaid civil misc. appeal is pending for final adjudication. 10. In the case in hand, the suit before the learned court below is based on prior user and Passing Off action. In Heinzitalia and Another (supra), the Hon'ble Apex Court has held that to secure prior user to secure injunction in action for passing off, prior registration of trademark or similar trademark in point is irrelevant. In the aforesaid Judgment in para 15 the Hon'ble Apex Court has observed as under: "10. We have also considered the arguments with regard to the prior user of the trademark 'Glucon-D' and the specific packaging. It is the admitted case that the term 'Glucose-D' has been used by the respondent from the year 1989 and that the packaging which is the subject matter of dispute in the present suit has been in use from the year 2000. In the case of Century Traders (supra) it has been held that in an action for passing off, the plaintiff has to establish prior user to secure an injunction and that the registration of the mark or similar mark in Point of time, is Irrelevant. In the case of Century Traders (supra) it has been held that in an action for passing off, the plaintiff has to establish prior user to secure an injunction and that the registration of the mark or similar mark in Point of time, is Irrelevant. This Court in Cadila Health Care case (supra) also laid down the tests in the case of passing off and I observed as under: "In other words in the case of unregistered trade marks, a passing off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of some body. In other words a man is not to sell his goods or services under the pretence that they are those of another person. As per Lord Diplock in Erwin Warnink BV v. J. Townend & Sons 1979 (2) AER 927, the modern tort of passing off has five elements i.e. (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trade (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so" 11. So far as judgments placed reliance by the counsel for the petitioner/defendant No. 1 are concerned, the facts of the case in hand and the judgments relied upon are different and same cannot be made applicable to the facts of the present case. 12. In the result, the instant revision petition filed by the petitioner/defendant No. 1 is bereft of merit and accordingly stands dismissed and the order dated 11.9.2012 passed by the learned Addl. District Judge (Fast Track) No. 8, Jaipur District, Jaipur in Civil Suit No. 15/2010 is maintained. 13. Parties to bear their own costs.