Heard both sides.
2.O.A.No.460 of 2008 is filed by the plaintiff, seeking for an ad-interim injunction restraining the respondent from manufacturing, selling, advertising and offering for sale tea using same or similar get up and colour scheme used by the respondent in document No.2 and trade mark Family Tea or any other visually similar mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the applicant's registered trade mark Ispahani Tea as shown in document No.1 or in relation to any tea and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards of any other trade literature or by using any other trade mark which is in any way visually or phonetically similar to the applicant's registered trade mark No.331910 in class 30 or in any manner infringe the applicant's registered trade mark, pending disposal of the suit.
3.The suit in C.S.No.422 of 2008 was filed by the applicant/plaintiff, seeking for the relief of permanent injunction restraining the defendant from manufacturing, selling, advertising and offering for sale tea using same or similar get up and colour scheme used by the defendant shown in document No.2 and trade mark Family Tea or any other visually similar mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the plaintiff's registered trade mark "Ispahani Tea" as shown in document No.1 or in relation to any tea and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the plaintiff's registered trade mark No.331910 in class 30 or in any manner infringe the plaintiff's registered trade mark and also for a direction to defendant to surrender to the plaintiff all the packing material, cartons, advertisement materials and hoardings, letter heads, visiting cards, office stationery and all other materials containing/bearing deceptively similar the colour scheme and get up as shown in document No.2 or other deceptively similar trade mark used in the pouches and packets in respect of tea and also for a further direction to defendant to render an account of profits made by them by the use of the impugned trade mark and get up as shown in document no.2 on the goods referred.
4.The suit was admitted on 17.4.2008. Pending the suit, O.A.No.460 of 2008 was taken out. On 12.6.2008, this court granted an interim injunction since the respondent had failed to appear.
5.The respondent/defendant has come up with A.No.1633 of 2009 for rejecting the plaint under Order 7 Rule 11 CPC and also for vacating the order of injunction granted on 12.6.2008 in O.A.No.460 of 2008 by way of A.No.1634 of 2009. He had also filed an application in A.No.2025 of 2009 for revoking the grant of leave for filing the suit vide A.No.1707 of 2008 dated 3.4.2008.
6.It is the case of the plaintiff that they are a partnership firm carrying on business of manufacturing and marketing Tea sine 1965. The applicant conceived and adopted the trade mark "Ispahani" to be used as a trade mark with respect to its goods. With the unique trade mark Ispahani, the applicant also conceived and adopted a unique colour scheme, get up and lay out for the wrapper. The tea under the trade mark Ispahani Tea with the said colour scheme and get up had become very popular with the trade and public. The public associated the trade mark Ispahani Tea along with its unique wrapper with the applicant alone. The applicant has been using the trade mark continuously and extensively without any interruption since its adoption in 1965.
7.It was further stated that with a view to acquire statutory protection for the trade mark Ispahani Tea and the unique colour scheme and get up, the applicant had applied for registration of the trade mark on 26.12.1977 under No.331910 in Class 30 with respect to Tea. The said trade mark was originally registered in the name of the founder partners of the firm Iqbal Husain and Ali Adil. In the year 1983, the composition of the firm got changed and the firm comprised of the partners Iqbal Husain, Mohd Tayebi, Hussain Tayebi and Salman Tayebi. An application was also filed before the Registrar of Trade Marks to record the said partners as the subsequent proprietors of the trade mark. The said partners were brought on record as subsequent proprietors with effect from 1983 and it was reflected in journal No.1134 at page 71. In the course of the time, the firm underwent an another change of composition in the year 1999. The partners of the firm at that time consisted of M/s.Iqbal Husain, Mohammed Tayebi and Salman Tayebi. Necessary forms were filed before the Trade Mark Registry to record the said partners as the subsequent proprietors and that was also reflected in the Trade Mark journal No.1322, dated 29.11.2004 at page No.1280.
8.It was further stated that the partners of the firm are now registered proprietors of the trade mark Ispahani Tea along with its present colour scheme, get up and lay out. The partners also filed application for another registration of the trade mark. That was also published in the trade mark journal. The applicant filed an application and got registration of the copyright. Therefore, the applicant is the registered proprietor of the copy right of the colour scheme, get up and layout. In the year 1977, the plaintiff was granted an exclusive licence in favour of Ispahani company and they are marketing the goods through Ispahani Co. The plaintiff has been spending an huge money to promote the product. The turnover of the applicant along with the advertisement and promotional expenditure for the years 2001-2002 to 2006-2007 has been set out in paragraph 11 of the affidavit in support of the application.
9.Likewise the gross turnover of the applicant under the trade mark Ispahani Tea for the above said years, figures were also given in the plaint. The applicant had engaged the service of the respondent in the year 1980 during the course of their business. The respondent after being employed in the services of the applicant for about 18 years, left the service. During the year 1998, he started a trading company by name Minar Tea Co. From October, 1998, the respondent had commenced manufacturing and marketing Tea under the trade mark Family Tea with deceptively similar colour scheme, get up and layout. The applicant filed a complaint to the Police Task Force on 26.07.2001 and a case in Crime No.35 of 2001 was registered. The infringing materials were seized from the respondent. The respondent was also arrested and later released on bail. The matter was taken up for trial before the II Metropolitan Magistrate Court, Hyderabad and the respondent was convicted. An appeal was filed before the Sessions Judge in Criminal appeal No.246 of 2003 and it was disposed of on 4.11.2004 in favour of the respondent with an acquittal. The applicant had filed a Criminal Revision case before the Andhra Pradesh High Court in Crl.R.C.No.2110 of 2005 and the same is pending. After the order of acquittal, the respondent had filed a suit in O.S.No.273 of 2005 claiming damages of Rs.10,000/- for malicious prosecution. He had also filed a case No.6 of 2001 on the file of Copyright Board challenging the validity of the applicant's copyright registrations, but that case was dismissed. After the order of acquittal, the respondent had adopted the identical colour scheme, get up and lay out with respect to the trade mark Family Tea.
10.It was further stated that on 26.02.2008, the respondent issued a legal notice to the applicant alleging that the applicant is engaged in infringing the respondent's copyright and trade mark. Since the respondents claims to be the proprietors of the trade mark, including the colour scheme, get up and layout, the applicant conducted a thorough search at the Trade Mark Registry and found that no registration was standing in the name of the respondent. The defendant thus had made a false claim in the legal notice as a registered proprietor of the trade mark with colour scheme, get up and lay out. The applicant issued a reply on 14.3.2008 and also sent a notice on 19.3.2008 calling the respondent to produce the certificate of registration. But no reply was forthcoming. The respondent is engaged deliberately in infringing the applicant's trade mark. The applicant had no objection for the use of the word mark Family Tea. His only objection is to the colour scheme, get up and lay out used by the respondent, which is slavish imitation of the applicant's trade mark. If one was not careful enough to note the peculiar features of the wrapper on the applicant's goods, he will mistake the respondent's wrapper for the applicant's if shown to him. Hence the infringement of trade mark is total.
11.It was further stated that similarity of two marks between the applicant and the respondent is such that the second mark is consciously copied and no further evidence is required for the grant of an injunction. The applicant has been using the said trade mark in the business since 1965. The respondent was a recent entrant into this field. As a prior user and a registered trade mark owner, the applicant has exclusive right to the distinctive colour scheme and get up. The respondent was well aware of the goodwill and reputation of the plaintiff's trade mark enjoyed and they have knowledge and scope of the applicant's business and its manufacturing activities. The respondent had no valid reasons to use the mark, which is visually identical to that of the applicant. The respondent's acts are dishonest and motivated purely by mala fide intentions to poach upon the reputation and goodwill enjoyed by the applicant. The conduct of the respondent will amount to falsification of trade mark, which is the offence punishable under the Trade Marks Act, 1999. The cause of action has arisen since the respondent is making continuous sale of the impugned goods. This court has got jurisdiction to try the suit on account of infringement of registered trade mark, as the applicant's mark is registered with the Trade Mark Registry at Chennai and the appropriate office of the Trade mark Registry is situated within the jurisdiction of this Court.
12.On behalf of the respondent/defendant, three applications were taken out. A common affidavit was filed in support of the three applications and they were (i) for vacating the injunction, (ii) for rejecting the plaint and (iii) for revoking the leave granted. It was stated that the suit was liable to be dismissed on account of lack of jurisdiction and for other legal and factual reasons. Under Section 62 of the Copy Right Act, the suit for infringement of copyright can be instituted in a place where the person instituting the suit resides. Admittedly, the respondent/plaintiff resides at Hyderabad. No cause of action arose within the territorial jurisdiction of this court. If at all the plaintiff is affected by the act of the defendant, they ought to have filed the suit only in the actual place of business. That was the object behind conferring jurisdiction on District Courts where the plaintiff ordinarily and voluntarily resides or carries on business. The plaintiff had instituted the suit at Chennai is a clear abuse of the process of the court. It was stated that leave for filing the suit was obtained in A.No.1707 of 2008 on 3.4.2008 by misrepresenting and misleading the court. The issue herein is governed by
Section 134 of the Trade Marks Act, 1999. The suit based upon the pleadings ought to have been filed only at Hyderabad, where the plaintiff is having its registered office and carrying on business and also where the defendant is residing and carrying on his business. The claim of passing off as alleged by the respondent/plaintiff is governed by
Section 134(1)(c) of the Trade Marks Act. The suit will have to be instituted in a place where the cause of actin of passing off arose and where the party against whom the allegations are made is carrying on the trade.
13.It was further stated that the suit was instituted only on the sole ground of Trade Mark Registry was located at Chennai. But that cannot create a cause of action. Further, the Trade mark certificate to the plaintiff was issued by the Trade Mark Registry at Mumbai and not at Chennai. Since leave had been obtained without reference to this issue, leave should be revoked. Further, it was stated that the Trade mark registry is not a party to the suit and no relief is claimed against them. It was further stated that both parties are residing at Hyderabad and are carrying on business at Hyderabad. There were no trading activities at Chennai. The licence to trade was given with a specific condition to trade within Hyderabad area only. The plaintiff has no branch at Chennai.
14.It was further stated that the plaintiff's complaint against the defendant was rejected by the Sessions Judge, Hyderabad as early as on 04.11.2004. The defendant/applicant had filed a suit for damages in the court at Hyderabad. It is only as a counter blast to the said suit, the present suit was filed. It was also stated that the defendant had applied for registration of trade mark Family Tea as early as 10.12.1998 in A.No.831530 with colour scheme and pattern of work. The Registrar of Trade Mark had issued a certificate under
Section 45(1) of Copyright Act, 1957 on 19.08.2003 for the label and colour scheme, which was given after due verification of the register about any similar mark or work and that registration was not challenged till date. The defendant was doing the trade since 1995 until the injunction was granted by this court. He registered the copyright on 9.10.2000 and the certificate was given on 16.11.2000. The copy of the registration of trade mark under
Section 23(2) rule 62(1) for the plaintiff's mark was given only on 24.08.2008 incorporating the pictorial display colour scheme and the pattern of letters in the wrapper. The plaintiff had admitted in the plaint that they had no objection for the use of the work mark Family Tea. Therefore, there is no trade name violation. It was further stated that the name, "Tea" is not a specific trade mark and the defendant had applied for registration of his mark with appropriate authority on 10.12.1998 and had been using it since 1.4.1995. The copyright was also issued on 19.08.2003. Therefore, the defendant has complete right over his mark on prior usage and subsequent registration was also not challenged.
15.It was further stated that the defendant's wrapper is khaki wrapper with black ink letters and artistic work, but the plaintiff is having a total different wrapper colour and get up. The defendant's certificate is under clause 30 with colour combination and design. The plaintiff was also given registration certificate only subsequent to the defendant's application. If at all there is any passing off, it is only on the part of the plaintiff and not by the defendant. It was further stated that similar wrapper design and colour combination were used by at least six other persons. Hence the question of passing off of the product of the plaintiff does not arise. Since the defendant is the holder of the mark with copyright, the suit as framed is not maintainable and it is an abuse of the process of the law. The defendant had also stated that the suit instituted only in the year 2008 is time barred as the defendant was using the mark since 1995. In the light of the above, the defendant prayed for allowing the three applications filed by him for rejecting the plaint, revoking the leave already granged and also for vacating the interim injunction.
16.The plaintiff has also filed a reply affidavit, dated 20.4.2009. It was stated that an order of injunction was granted on 12.6.2008. The defendant had not given any particulars regarding the balance of convenience. The trade mark registry, in which the plaintiff had registered its mark is at Chennai. Under law of Trade Mark, the date of application is the date of registration in securing registration. In the instant case, the unwary purchasers of the average intelligence with the imperfect recollection will undoubtedly mistake one for the other mark. The suit can be filed in a place where the defendant is residing or carrying on business or where the cause of action arose. Since the cause of action arose within the jurisdiction of this court, the suit is maintainable.
17.In the light of the rival contentions, it has to be seen whether an injunction should be continued or the case of the defendant should be accepted by revoking the leave, rejecting the plaint and vacating the interim injunction?
18.Mrs.Gladys Daniel, learned counsel appearing for the plaintiff placed reliance upon the judgment of this Court in S.B.S.Jayam & Co., Vs. Krishnamoorthy, Proprietor, Gopi Chemical Industries reported in 1977 (1) MLJ 286 for the purpose of showing that even though the product with the alleged offending mark has not come to the Madras market, there can be little doubt that the alleged infringement is not only at the place where the defendant markets his goods but also where the plaintiff's property itself is situated.
19.The learned counsel also placed reliance upon the judgment of this Court in Harold Charles Pinto Vs. Hilda Menezes reported in 1977 TLNJ 214 and contended that in a suit for infringement of Trade Marks, the plaintiff has to establish a cause of action by showing that he has a proprietary right in a trade mark and that the same has been infringed by the other party. He can establish it only by showing that his trade was registered with the Registrar of Trade Marks. Therefore, the cause of action in such case can be taken to arise partly at Madras where the Trade Marks has been registered.
20.The learned counsel also placed reliance upon the decision of this Court in Amrutanjan Ltd. Vs. Mehta Unani Pharmacy in Application No.4924 of 1979 in C.S.No.658 of 1979 for contending that a cause of action set to arise partly where the trade marks have been registered.
21.Reliance was also placed upon the judgment of this court in Amrutanjan Ltd. Vs. Ashwin Fine Chemicals & Pharmaceuticals in C.S.No.74 of 1982 for the purpose of contending that considering the very object and purview of the Act, when once the Trade Mark of a product has been registered at a place specified by the Act and in pursuance of the same, the product in accordance with the registered Trade Mark has been produced and is being marketed throughout India, then for any wrong done to the said Trade Mark, part of the cause of action will arise in the place where the trade mark was registered and the products are being produced and marketed.
22.The learned counsel also placed reliance upon the judgment of the Supreme Court in Parle Products P. Ltd. Vs. J.P. & Co., Mysore reported in AIR 1972 SC 1359, wherein it was held that two marks, when placed side by side, may exhibit many and various difference, yet the main idea left on the mind by both may be the same. A person acquainted with one mark and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore that with which he was acquainted.
23.The learned counsel also placed reliance upon the decision of the Supreme Court in Midas Hygiene Industries P. Ltd. and another Vs. Suddin Bhatia and others reported in 2004 (1) CTMR 86, wherein the Supreme Court had held that in cases of infringement either of trade mark or of copyright normally, an injunction must follow. Mere delay in bringing action is not sufficient to defeat the grant of injunction in such cases. The grant of injunction will become necessary if it prima facie appears that the adoption of the mark was itself dishonest.
24.She also placed reliance upon the decision of the Division Bench of this court in Ramchander Laximnarayanan Karva Vs. Jagannath Khubchand Karva and another in O.S.A.No.196 of 1988, wherein the Division Bench had held that a mere reading of Clause 12 of the Letters Patent of this Court is enough to exclude any effect of the residence of the defendants when the issue before the court for granting leave to sue. Leave is required only in cases in which a cause of action had arisen in part within the local limits of the ordinary original jurisdiction. The residence of the defendant being within the local limits of the ordinary original jurisdiction of the court is an another aspect. One should not get carried away by the assertion of the defendant in this behalf.
25.The learned counsel also placed reliance uon the another Division Bench judgment of this Court in Ramu Hosieries rep. by M.Murugeshan Vs. Ramu Hosieries rep. By Pandela Ramu and another reported in 1999 PTC (19) 183 (DB) wherein it was held that normally, the jurisdiction of the Civil Court in relation to movable property has to be determined with reference to cause of action. The right of interest in a trade mark can only be a movable property having regard to the definition in the General Clauses Act. Admittedly, the Trade Mark has been put to use and exploited and registered at Madras. Therefore, the cause of action in such suit can be taken to arise where the property is situated or where it was marked or exploited. Registration assumes all significance, because in a suit for infringement of a Trade mark, the plaintiff has to establish the cause of action by showing that he has a proprietary right in a trade mark and the same has been infringed by the other party. Where the infringement had taken place partly in one jurisdiction by way of advertisement and reset in another jurisdiction by marketing the product, then the registered owner of the trade mark can maintain the suit either at the place where the cause of action arose partly or wholly which includes the place of registration, advertisement or marketing.
26.The learned counsel also placed reliance upon the decision of this Court in Officine Lovata S.P.A. Vs. Ajay Kumar Aggarwal & another reported in 2005 (30) PTC 465 (Mad), wherein it was held that the situs of the Trade Mark (stated to be infringed), being situated in the appropriated office of the Trade Mark Registry at Chennai, would give a cause of action for the plaintiff to come before this Court.
27.The learned counsel also placed reliance upon the judgment of the Delhi Court in Prakash Roadline Ltd. Vs. Prakash Parcel Services (P) Ltd. reported in 1992 IPLR (17) 251, wherein it was held that the plaintiff feels danger from defendant in view of the fact that the defendant's promoters are the ex-Directors/employees of the plaintiff who are fully in the know of the business secrets of the plaintiff. Therefore, the mere fact that the plaintiff has not chosen to take any action against such other parties cannot disentitle the plaintiff from taking the present action.
28.The learned counsel also placed reliance upon the decision of this Court in Duroflex Pvt. Ltd. Vs. R.P.Home Private Limited reported in 2008 (1) CTC 601 for the purpose of contending that that neither the plaintiff nor defendant are carrying on business in Chennai and subject goods not sold in Chennai. Leave to sue was sought only on situs of registry of Trade Mark in Chennai and the defendant contended that the mark was registered in Mumbai and Trade mark has a branch office in Chennai and leave cannot be granted. Judicial precedents are to the effect that situs is sufficient to give jurisdiction but leave refused on ground of forum convenience.
29.The learned counsel also placed reliance upon the Division Bench judgment of this Court in Wipro Limited Vs. Oushadha Chandrika Ayurvedic India (P) Ltd. reported in 2008 (3) CTC 724 wherein it has been held that by virtue of Section 120 of the CPC., the provisions of
Section 20 are not applicable as far as High Court is concerned. Therefore, the scope of this section cannot be curtailed by reference to
Section 20 of the CPC or Clause 12 of the Letters Patent. Therefore, in a case of infringement of trade mark or copyright covered by
Section 134(2) of the Trade Marks Act or
Section 62(2) of the Copyright Act, the question of plaintiff taking prior leave under Clause 12 of the Letters Patent does not arise. The plaintiff need not take leave of the Court under Clause 12 of the Letters Patent even if a part of the cause of action or no part of the cause of action arose within the jurisdiction of this Court, if the plaintiff ordinarily resides or carries on business within the jurisdiction of the Court.
30.Per contra, Ms.S.Kala, learned counsel for the defendant placed reliance upon the judgment of this Court in Parle Products Pvt. Ltd. Vs. Surya Food & Agro Ltd. reported in 2007 (35) PTC 542 (Mad) for the purpose of showing that even if the forum convenience test is adopted, the plaintiff cannot have jurisdiction in this court. He referred to paragraph 16 of the said judgment, which reads as follows:
"16.If there is nothing to show that sales have taken place within the jurisdiction of this Court, then leave cannot be granted. There is no other circumstance, which justifies the filing of the suit, within the jurisdiction of this Court because both the respondent and the applicant carry on business elsewhere. Therefore, not only on the ground of forum convenience, but also because the applicant prima facie has failed to establish to the satisfaction of this Court that sales had in fact taken place within the jurisdiction of this Court, leave must be revoked."
Hence the learned counsel for defendant prayed that on that ground leave should be revoked.
31.She further placed reliance upon the judgment of this court in Austin Reed Limited Vs. Suntex Graments & Others reported in 2007 (35) PTC 774 (Mad) for the purpose of showing that if there is any claim for sale within the jurisdiction of this court and there was no proof forthcoming, then there is no cause of action had arisen within the jurisdiction of this court. In paragraphs 13 and 14 of the said judgment, it has been observed as follows:
"13.The plaint does not reveal that any part of the cause of action arose at Chennai. To merely say that an application is made to the Registrar of Trademarks at Calcutta, in which no geographical limitation is given, cannot give-rise to a cause of action in Chennai. The rectification application also has been made only in Calcutta by the respondents on the ground of non-use of trademark by the applicant.
14.Next we come to 'Forum of convenience' and the "Natural Forum". The applicant is in England and would any way have to come to India to fight his case. The defendants are in Calcutta. It is very unnatural for the applicant to choose Chennai as the 'Forum of convenience'. It is nothing but a ploy to harass the respondents, since the pre-suit talks have failed. The "Natural Forum" as also the "Forum of Convenience" would be 'Calcutta'. Not even one of the letters, which have been referred to in the plaint and which were exchanged between the parties prior to the suit emanated from Chennai. The proceeding under the Trademark Act are also at Calcutta. The Registration of Trademark is not in Chennai. There is no proof of sale in Chennai. The defendants will unnecessarily be forced to bring all the records which are in Calcutta and bring their witnesses, who are also in Calcutta, to Chennai to defend the case. On the other hand, if the suit is laid in Calcutta the plaintiff, who would anyway have to come to India to prosecute the case, will go to Calcutta instead of Chennai. It makes no difference to the applicant."
32.There is no quarrel with the legal propositions advanced by the learned counsel for the plaintiff, but they have no application to the facts of the present case.
33.In the light of the above, it is seen that the plaintiff had not made out a case to entertain the suit. No part of the cause of action had arisen within the jurisdiction of this court. Therefore, the question of granting leave under Clause 12 of the Letters Patent never arose. Since this court is of the opinion that leave has been granted on a wrong premise, the application for revoking the leave in A.No.2025 of 2009 must be allowed.
34.Therefore, it is for the plaintiff to take the return of the plaint and institute it before the appropriate forum. Since leave has been revoked, this court is not inclined to go into the application filed under Order 7 Rule 11 CPC for rejecting the plaint. If that was done, then the plaintiff will have no place to sue against the defendant. Therefore, the application in A.No.1633 of 2009 seeking for rejecting the plaint is closed.
35.In view of the revocation of leave, the injunction already granted cannot be continued. Hence, the application in A.No.1634 of 2009 for vacating the interim injunction stands allowed. The injunction application in O.A.No.460 of 2008 stands dismissed. No costs.
36.The Registry is directed to return the plaint to the plaintiff so as to present it before the appropriate forum.
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