1. This appeal has arisen from the order dated 2.1.2012 passed by the Chamber Judge, Court No.15, City Civil Court, Ahmedabad below Exh.6/7 - an application for injunction under Order 39, Rule 1 and 2 of the Code of Civil Procedure, 1908 ("the Code"
for short) in Civil Suit No.2430 of 2011 by which the application has been dismissed and the court below has also discharged the notice of motion earlier issued in favour of the appellants.
2. The appellants are the plaintiffs and the respondents are the defendants in the original suit pending in the City Civil Court, Ahmedabad. As per the case of the appellants-plaintiffs, the plaintiff No.1 firm is the sole proprietary concern run by one Rajan Pravinbhai Vakharia, having its office at the address mentioned in the cause title of the appeal. He is carrying on the business of manufacturing and export of ultramarine blue and bicarbonate soda since many years. One Eagle Ultramarine Industries who was predecessor in interest of appellant No.1 was established in the year 1973 and was manufacturing and exporting the above mentioned products. Eagle International i.e. appellant No.1 applied for registration of device of cook in respect of bicarbonate soda on 5.8.2008 in class 01 and the Trademark registry granted registration of the said trademark containing device of cook which is reflected in artistic manner containing the goods named in English and other foreign language. The said registration was from the above mentioned date, however, the registration certificate was issued by the Trademark registry, Ahmedabad on 14.9.2010. It is further their case that the said certificate was issued by the concerned authority on being satisfied on the claim of the use of the predecessor in title of the appellant No.1 since April 1996. The appellant No.1 has executed a deed dated 27.8.2011 in favour of the appellant No.2 i.e. Janus Global Trade Private Limited who also applied for registration of the trademark for recordal of assignment. The predecessor in title i.e. Eagle Ultramarine Industries was the partnership concern consisting of four partners. The firm closed its business on 31.3.2008 and Rajan Pravinbhai Vakharia took over the office premises and started manufacturing activities of the said predecessor in title. It is further their case that the appellant No.2 is a Private Limited Company, having its address at Ahmedabad and also has registered office at Bombay. This company was incorporated on 15.9.2008 and the certificate of incorporation has been issued in its name. The appellant No.2 is carrying on the business of export on commission basis in respect of bicarbonate soda and other food items. The goods are being manufactured by the appellant No.1 and marketed by the appellant No.2 to West African countries for and on behalf of Janus Services B.V., Netherlands who is the ultimate purchaser.
3. It is also the case of the appellants that the defendants have imitated their artistic work of suit label and have imitated the writing and description words printed on the back side of the suit label and this has been done with a view to trade upon the appellants' goodwill and reputation. This act of the respondents is infringing the trademark of the appellants as well as copy right of artistic work of the device of cook and by imitating the trademark, the respondents are intending to pass off their goods and trade upon the appellants' goodwill and reputation. Finally, it has been pleaded that the trademark label / copy right artistic work of device of cook with the addition of words "The Perfect Choice" has been applied for registration under Application No.1924446 in Class-1 and was pending.
4. After the notice, the respondents contested the suit by filing the detailed reply and also filed the application Exh.24 under Order 39, Rule 4 of the Code for setting aside the ex parte order passed in favour of the appellants. It is the case of the respondents that the respondent No.1 is a partnership firm and the respondent No.2 is an agent of respondent No.1. The respondent No.1 is a proprietor of device trademark and has been operating in this device since 1998. They have been using the suit trademark / copy right of bicarbonate soda along with the device of cook since the year 2000 and, therefore, are prior users of the artistic work as they have been using the same for the last about 11 years continuously, extensively, openly and uninterruptedly in respect of the food products included in Class-30 and Class-35. It is further their case that both the trademarks along with the device mark are registered in favour of the defendants and they have been issued the legal certificate for use of the same. As per the respondents, the case of the plaintiff itself is on wrong footing as is apparent from the statement of the appellants in plaint as Eagle Ultramarine Industries has transferred the said device by assignment deed dated 10.4.2006. However, the same concern is generating invoices for the said device even after this date. It is further case that the appellants applied for registration of the device mark of the cook in Class-30, but the said application was objected to and, therefore, the appellants preferred the application for registration in Class-1 goods. It has been further clarified that registration in Class-1 is meant for chemicals purpose, while registration under Class-30 and Class-35 deals with the food products and hence the areas of business are different and contrary to each other. Finally, it has been contended that the respondents are selling their product under their own trade name and have never tried to imitate or pass off their goods and under these circumstances prayed for dismissal of the suit as well as ex parte notice issued in interim application seeking injunction.
5. I have heard Mr.R.R.Shah, learned counsel for the appellants and Ms.Rushvi N.Shah, learned counsel on behalf of the respondents. Both the learned counsel have raised various issues which have already been discussed in the impugned judgment delivered by the court below. So, these arguments will not be repeated in this judgment hereinafter. Both the learned counsel have also referred to various pages of compilation supplied to this court which said to have been relied upon by them in the proceedings before the court below. The same is ordered to be taken on record. This court will be referring to these pages as both the learned counsel are not in dispute regarding availability of these documents before the trial court.
6. Learned counsel for the appellants Mr.R.R.Shah has laid emphasis on the point that the M/s Eagle Ultramarine Industries is earlier user of the disputed trademark. In order to substantiate this argument, he has referred to page Nos.172 and 174 of the compilation which show that the appellants are the users of the trademark since 6.9.2000. He has further referred to invoices containing at page Nos.88 and 89. According to which, M/s Eagle Ultramarine Industries has issued invoices in favour of M/s International Exporters on 7.8.2000 consisting of 8750 kg of bicarbonate soda costing around Rs.1,62,400/- and invoice dated 17.8.2000 issued in favour of the appellant No.1 - Eagle International for equal sum of money regarding product bicarbonate soda. While relying upon these documents, it has been submitted that the appellants are prior in use of the trademark in question and the respondents were in fact their agents through whom the product was being sold. He has also referred to page No.179 and has submitted that bicarbonate soda manufactured by them was being shifted to various places since the year 2000/2001. Finally, while referring to the document contained at page No.225 regarding excise clearance, it has been submitted that the trial court has not looked into this document and has refused to restrain the respondents from imitating the trademark used by the appellants.
7. On the other-hand, learned counsel for the respondents has argued that the trademark in question has been registered in the name of the respondents since long and they are prior in use of it. The registration is in Class-30 and Class-35 which is used in the food items meant for human consumption. Learned counsel has further argued that there are other three partners of Ultramarine Blue who have not signed the assignment agreement dated 27.3.2006. It has been submitted that this agreement being unregistered itself creates doubt regarding its genuineness. Similarly, she has also raised dispute regarding assignment deed dated 27.8.2011 in favour of appellant No.2 i.e. Janus Global Trade Private Limited. It has been submitted that appellant No.2 applied for registration of the trademark, however, the same has never been transferred in their name. She has referred to page Nos.266 and 267 - receipts having been issued by Suresh S.Mhatre who has designed the logo and was paid the charges for the same. Finally, it has been contended that all the invoices relied upon by the appellants from page Nos.55 to 89 have been issued by Eagle Ultramarine Industries to M/s International Exports i.e. present respondent No.1. None of these invoices have been issued in the name of anybody else including the appellants which go to prove that the respondents are prior in use of the logo in question.
8. I have given my thoughtful consideration to the submissions made by learned counsel for both the sides.
9. It is settled law that prior in use in case of trademark is required to be protected. It is the case of the appellants as well as the respondents that they are exclusive users of the trademark and other main argument of Mr.R.R.Shah is centered around the point that the appellants are prior in use on the basis of assignment deed having been executed in their favour.
10. No-doubt, the sole proprietor of the firm i.e. Rajan Pravinbhai Vakharia has relied upon the agreement dated 27.3.2006. A perusal of this agreement shows that one of the partners of the firm i.e. Pravinbhai G.Vakharia referred as assigner has signed this document in favour of Rajan Pravinbhai Vakharia i.e. sole proprietor of the present appellant No.1. The names of other three partners of the firm M/s Eagle Ultramarine Industries are missing from this agreement nor anyone of this partnership firm has signed the document. The omission of the names of other three partners or not obtaining "no objection" from them raises suspicion regarding genuineness of the document. It is the case of the appellants that the predecessor in interest M/s Eagle Ultramarine Industries has assigned the trademark in favour of appellant No.1 on 10.4.2006. However, there are various invoices which have been issued by M/s Eagle Ultramarine Industries after this date and some of these have been issued in the years 2007 and 2008 which also raise doubt regarding the agreement. Merely showing few invoices pertaining to year 2000 issued by Eagle Ultramarine Industries will not advance case of appellants unless the assignment agreement brought on record is genuine and signed by all the original partners.
11. Another important argument raised by the learned counsel for the respondents also belies the claim of the appellants, viz., the class under which the trademark has been registered. The trademark of the respondents is registered under Class 30 and Class 35 by the registry of the Trademark and the legal certificate has been issued in this regard which is part of the present compilation. It is also not in dispute that the product of the appellants has been registered under Class-1 which deals with chemicals. Though registered trademarks of both the appellants as well as the respondents are the same, however, the trademark of the respondents deals with the food products and registered under Class-30 and Class-35, while that of the appellants though similar to that of the respondents, but deals with the chemicals which may be harmful to the human consumption.
12. Learned counsel for the appellants, time and again, argued regarding prior use of the trademark in question. However, if one goes by the class under which the product has been registered, it is the product and trademark of the respondents which is registered under food articles for cooking purposes and registration is earlier in date than that of the appellants. So, even if the trademark of the appellants is registered, they cannot dispute registration of respondents which is for food articles. During the course of arguments, learned counsel for the appellants also referred to his partner i.e. appellant No.2 which has applied for registration of the trademark. The application of the appellant No.2 has been rejected and has not even been published. Number of other irregularities have been pointed out by the learned counsel for the respondents, however, these may not be necessary here to be discussed in detail keeping in view the stage of the case.
13. For the foregoing discussion, prima facie case and balance of convenience seem to be in favour of the respondents and under the circumstances, I do not find any fault with the order under appeal which is self-explanatory and reasoned one.
14. In view of the above discussion, this appeal fails and is hereby dismissed. Resultantly, the Civil Application does not survive and also dismissed.
15. It is needless to say that any observations made in this order are for the purpose of deciding this appeal and shall not prejudice or affect the merits of the case pending before the City Civil Court, Ahmedabad.
(Mohinder Pal,J) pathan