Case: M/S.J.K. Sons Vs. M/S.Parksons Games & Sports 41-B & Another

ORAL JUDGMENT: (S.J. VAZIFDAR, J.)1. This is the defendants appeal against the order of the learned single Judge granting interlocutory reliefs in the respondents action for infringement and passing off.The learned judge restrained the appellants from infringing the respondents word mark MERELANE and from passing off their goods viz. playing cards for and as those of the respondents. The appellants have also been restrained from infringing the respondents copyright in the following labels:-1) Trade Mark No.318995 in respect of `555 (Label) ;2) Copyright of Plaintiff in the `555 Label ; and3) Copyright in the `555 MERELANE Premium Label including its outer (dozen) carton ,4) Copyright in the `555 MERELANE Deluxe Label including its outer (dozen) carton ,5) Copyright in the `MEREDIAN 555 Original Label,6) Copyright in the Spade Ace inside face design label.Mr.J.J. Bhatt, the learned Senior Counsel appearing on behalf of the appellants did not press the appeal, as regards the grant of reliefs qua the word mark MERELANE.2. The respondents contended that they are the proprietors inter-alia of the trade mark 555 written in a stylized manner. The mark was registered and the application for renewal thereof is pending. The respondents claim to be the assignees of this mark.3. The plaint contains the necessary averments to establish the respondents goodwill in respect of the said marks including the sales figures of and the expenses incurred towards publicity, promotion and advertising the goods sold under the said marks. M/s.Parksons Printers had applied for and obtained registration of the trade mark 555 label in class 16 of Schedule IV for playing cards. The mark was assigned from time to time. Ultimately by a Deed of Assignment dated 14.9.2004, the registered trade mark label 555 was assigned to the respondents. The respondents predecessor had applied for registration of the carton/label 555 written in a stylized manner as one of its essential features claiming the user thereof since 26.9.1973. The application for renewal of the mark is pending. The respondents have also filed an application for registration of the trade mark 555 (word per-se and logo) also in clause 16 thereof claiming user since 26.9.1973. The respondents have used the trade mark label 555 in conjunction with other marks such as MEREDIAN, MERELANE Delux and MERELANE Premium.4. Mr.Bhatt for the purpose of this appeal proceeded on the basis that the appellants mark 555 is identical to or in any event deceptively similar to the respondents mark 555. He further proceeded on the basis, for the purpose of this appeal, that the respondents had established all the ingredients necessary to maintain an action for passing off. He confined himself in this appeal to two submissions. Firstly, he submitted that the respondents themselves were not the proprietors or owners of the mark and that respondents cartons and/or labels are not original artistic works. This submission was based on the contention that the respondents marks were a slavish, flagrant imitation of the carton of the globally renowned cigarette State Express 555. He submitted that the respondents themselves having infringed the mark of another, were not entitled to any protection in respect thereof including as against the appellants even assuming that they had otherwise made out a case for passing off and/or infringement of trade marks or of copyright.Secondly, he submitted that the respondents were not the owners of the copyright.5. In respect of the first submission, Mr.Bhatt relied upon the judgment of a Full Bench of this Court in Abdul Cadur Allibhoy v. Mahomedally Hyderally (1901) 3 Bombay Law Reporter, 220 .6. Mr.Dhond, the learned counsel appearing on behalf of the respondents on a previous occasion submitted that the judgment only applies to cases of infringement of copyright and does not apply to an action for infringement of a trade mark or passing off. He submitted that a passing off action is to protect goodwill in a business ; passing off is associated with a particular business and business is related to a product sold as part of the business. Thus if the proprietor of the mark, in this case State Express, does not object to the use of the mark, the appellants cannot do so on their behalf.7. We are unable to restrict the ratio of the judgment to cases of infringement of copyrights. The submission misses the basis of the judgment which precludes an infringer of a mark or copyright from founding a cause of action based on deceit. In other words, it denies a person reliefs in respect of a mark or artistic work which are copies of another. There is no question in such a case of a defendant (in this case the appellants) raising the defence/objection on behalf of another (in this case State Express 555).8. In Abdul Cadar Allibhoys case the Full Bench found that the plaintiffs label was designed by combining the labels of four other manufacturers. It was submitted that the plaintiffs labels or trade marks were so tainted in their conception and origin, that it could not form the basis of any reliefs. The question before the Full Bench, whether the plaintiff was entitled on the basis of such a mark to an injunction against the defendant, was answered in the negative. Chief Justice Jenkins held:-"Still confining myself to the original label I will first consider whether if it were the subject of this suit an injunction in respect of it could be granted. The principles on which an injunction can be claimed in a case of this class are thus stated by Lord Westbury in the Leather Cloth Company Ld. v. The American Leather Cloth Company Ld. : 4 De. G.J. & S. P.144."These conclusions seem to follow immediately from the very principle to which a plaintiff seeking protection for a trade-mark appeals. He desires to restrain the defendant from selling his own goods as the goods of another person : but if by the use of the trade-mark in question the plaintiff himself is representing and selling his goods as the goods of another, or if his trade-mark gives a false description of the article, he is violating the rule on which he seeks relief from the defendant." This is after all but a particular application of the more general rule that a plaintiff must come into a Court of Equity with clean hands, and by parity of reasoning a plaintiff who seeks the relief of an injunction in this Court (and it is with that form of relief alone that we are concerned in this case) must answer the same description...." (emphasis supplied)While dealing with the contention that the mark had become publici juris, the Full Bench (per Russel, J.) cited with approval the judgment in Ford v. Foster L.R. 7 Ch. Ap. Page 628. The Full Bench (per Russel, J.) after rejecting the contention that the mark had become publici juris held as under:-It seems to me that the present case comes within the words of Mellish, J.J. In L.R., 9 Ch. , pp. 630-631:-Then would it be a defence to that action at law that the plaintiff has made false representation to the public that his article was patented when in fact it was not If the false representation was in the trade mark itself, although I cannot find that that point has ever been decided or raised in a Court of Common Law, yet I am disposed to think, and indeed I have a pretty clear opinion, that if that question were raised it would be held that the fact of the trade mark itself containing a false representation to the public would be an answer at law to an action brought for a deceptive use of the trade mark by the defendant. The declaration at law always begins by setting out that the plaintiff had used for a length of time a certain particular trade mark, and that his goods were known by that trade mark, and it substantially sets up that by the user of that mark, and his goods being known in the market by it, he has practically got a right to the use of that mark. It appears to me that it would come within the rule Ex turpi causa non oritur actio ; and if the trade mark contains a false representation calculated to deceive the public, a man cannot by using that, which is in itself a fraud, obtain I do not say an exclusive right but any right at all.I would further refer to Leather Cloth Co. v. Lorsont; -It was there decided that there was a representation of a matter of fact in the trade mark which was calculated to deceive ; that there was evidence that it did deceive certain persons ; that such a trade mark could not be the subject of any right whatever that this Court would recognize, and, to use the expression of Sir Roundel Palmer, that it was outlawed.See also, Fuentes Trade Marks (1891, 2 Ch., 166). (emphasis supplied)The above observations establish that it is a defence even to an action for passing off or infringement of a trade mark that the plaintiffs (in this case the respondents) marks are an imitation of the mark of another to wit that the respondents had themselves infringed the mark of another. The entire judgment in fact deals with such `marks, `trade marks and not copyright.9. The Full Bench had relied only upon the judgment of Lord Westbury in The Leather Cloth Company v. The American Leather Cloth Company (Limited). That judgment was in fact confirmed by the House of Lords in The Leather Cloth Company (Limited) v. The American Leather Cloth Company (Limited) 11 ER 1435 = (1865) XI HLC 521. It is interesting to note that the Lord Chancellor Lord Westbury against whose judgment the appeal had been filed to the House of Lords was also a party to the judgment of the House of Lords.Reading the judgment of Lord Westbury as the Lord Chancellor and the judgment of the House of Lords confirming the same it is clear that the above principles are not restricted to cases of infringement of copyright but also apply to an action for infringement of trade marks and passing off. The Full Bench followed the judgment of the Lord Chancellor, which was appealed against. In that judgment i.e. the judgment appealed against (4 De. G.J. & S. 136) the Lord Chancellor also observed:-The same things are necessary to constitute a title to relief in equity in the case of the infringement of the right to a trade mark, as in the case of the violation of any other right of property. But when the owner of a trade mark applies for an injunction to restrain the Defendant from injuring his property by making false representations to the public, it is essential that the Plaintiff should not in his trade mark, or in the business connected with it, be himself guilty of any false or misleading representation ; for, if, the Plaintiff makes any (143) material false statement in connection with the property he seeks to protect, he loses, and very justly, his right to claim the assistance of a Court of Equity........................................................................................There is a homely phrase, long current in this Court, that a Plaintiff must come into equity with clean hands. There is not the case with the present Plaintiffs, whose case is condemned by the principles to which they appeal, and I must therefore reverse the decree of the Vice-Chancellor and dismiss their bill ; but, as I do not approve the conduct of the Defendants, I dismiss it without costs.It is thus clear that the principle was applied to an action for infringement of trade mark and passing off.10. That the principle is not so restricted is also clear from the following observations in the judgment of the House of Lords which confirmed the judgment of the Lord Chancellor. The observations of Lord Cranworth, Lord Kingsdown and Lord Westbury are relevant in this regard.(A) The following are the observations of Lord Cranworth:-The ground on which his Lordship proceeded was that the trade mark used by the Appellants is so constructed and worded as to contain more than one false assertion calculated to mislead those who rely upon it ; that it represents the articles stamped with it as being the goods of the Crockett International Leather Cloth Company ; that these goods had been manufactured by J.R. And C. P. Crockett ; and that they were tanned leather cloth. The Lord Chancellor was of opinion that to give protection to such a trade mark, when affixed to goods not of the International Leather Cloth Company, not manufactured by J. R. and C. P. Crockett, and not consisting of tanned leather cloth, would be to make the Court of Chancery ancillary to the protection of fraud ; and that it would or might enable manufacturers and sellers of goods to secure custom to themselves ; by falsely leading purchasers to believe that they were buying something different from that which the trader was in fact selling.Of the justice of this principle no one can doubt. It is founded in honesty and good sense, and rests on authority as well as on principle. Vice Chancellor Shadwell refused to protect a trade mark whereby the Plaintiffs falsely represented the tea they were selling as being something different from what it in fact was ; and there are other cases in the books resting on the same principle.The case put by the Lord Chancellor, of the sale of a manufactory of fine cloth by A. B. and Co. in Wiltshire, to C. D. and Co., manufacturers in Yorkshire, who should after (533) wards carry on the manufactory there, would be another illustration of the same principle. If the purchasers were in such a case to stamp their goods with the trade mark, A.B. And Co., makers, Wilts, they would be, under the name of a trade mark, really attempting to deceive buyers, and would be entitled to no protection, even though that had been the trade mark used by the vendors of the business.So in the case of bottles or casks of wine stamped as being the growth of a celebrated vineyard, of cheese marked as the produce of a famous diary, or of hops stamped as coming from a well-known ho garden in Kent or Surrey, no protection would be given to the sellers of such goods if they were not really the produce of the places from which they purported to come. (emphasis supplied)(B) The following are the observations of Lord Kingsdown:-If a trade mark represents an article protected by a patent, when in fact it is not so protected, it seems to me that such a statement prima facie amounts to a misrepresentation of an important fact, which would disentitle the owner of the trade mark to relief in a court of equity against anyone who pirated it.(C) The following are the observations of Lord Westbury whose judgment was under appeal:-I have added these few observations for the purpose of showing, not only that the ground which I took in the Court below was a ground sufficient for my decision, but also that the grounds which have been now superadded by me noble and learned friends, and which I regret that I did not more fully consider and adopt as the basis of my former judgment, would warrant the same conclusion ; and would, perhaps, have tended still more in favour of the Defendants.11. Nor do we find well founded the respondents contention that this argument cannot hold good in view of the fact that the proprietor of the mark State Express 555 had not initiated any action. The answer to this is also found in the judgment of the Full Bench, which rejected a similar argument in these terms:-But it is urged that though the objections, which I have set forth, might have been of weight at one time, that is no longer so, because Stephens and Sons have taken no further steps nor have Waterlow and Sons or Lyons or Hollidge ever taken proceedings ; therefore, it is urged, that to which they might have objected has become publici juris. But even if this argument were well founded, it contains its own reputation, for what is publici juris for the plaintiff, is also such for the defendant. The result is that in my opinion the marks of the plaintiff are not such as to entitle them to the relief of an injunction. I would, therefore, reverse the decree under appeal and dismiss this suit with costs throughout.12. Thus the ratio would apply irrespective of the fact that the third party whose mark has been infringed by the plaintiffs has not taken any action against the plaintiffs. Even on principle this must be so. The basis of the ratio is to deny an infringer a right based on the mark or work which infringes the mark or work of another. That being so, it matters not in an action against another whether or not the proprietor has taken any action against the plaintiff.13. It is obvious, however that nothing prevents the proprietor of the mark from initiating successfully an action for infringement or passing off against the parties to this action.14. The learned single Judge has however not held anything to the contrary. He has, with respect, rightly come to the conclusion that the appellants had not established the case on facts in this regard. It was necessary for the appellants to establish that the third party was in fact the proprietor of the mark 555 and that the respondents had infringed the same.The respondents in their affidavit in rejoinder denied the allegations that they had infringed the mark of State Express 555. This denial therefore required the appellants to produce some evidence in support of this contention. However, in the affidavit in sur rejonder, the appellants merely alleged:- firstly, it is undisputed and/or a matter of common public knowledge that State Express 555, is a globally renowned, reputed and well known name/mark. The State Express 555 mark, packaging and/or carton is globally well known, renowned and/or has transborder reputation. To dispute the ownership of the State Express 555 intellectual property, is to say the least, dishonest and fallacious. No material in support of theses allegations was produced even in the sur-rejoinder. The matter did not end there. The respondents in their sur sur rejoinder expressly stated that save and except bald words which were allegedly not true to the personal knowledge of the deponent of the sur rejoinder filed on behalf of the appellants, no material whatsoever had been produced to show the goodwill, reputation in India prior to 1976. The appellants were therefore, once again put to notice in this regard. They did not avail of the opportunity of adducing evidence in support of their contention.15. In paragraph 4.1 of the affidavit in reply, it is merely alleged that the respondents are neither the proprietors, nor the owners of the said cartons ; that the respondents cartons are nothing but a slavish flagrant imitation and copy of the carton of the globally renowned cigarette ; that the respondents cartons are not artistic works and do not contain any originality and that therefore, no action can lie at the instance of the respondents. The copies of the relevant cartons/packets of the State Express 555 are annexed to the affidavit.There are no averments, much less is there any evidence, to indicate that the respondents marks/cartons/labels are an imitation of the mark State Express 555. It is significant to note that there is no evidence whatsoever to the effect that the third party has used the mark 555 or created the labels/cartons or marks prior to the creation of and use by the respondents of these marks/labels and cartons which may have persuaded the Court to come to the conclusion that the respondents had infringed the mark. Even assuming that we are entitled to do so, we are reluctant to rely upon our personal knowledge, if any we may have in this regard. The appellants ought to have adduced evidence in respect of their case that the respondents had themselves infringed the mark 555 which belongs to another. We are not inclined therefore to interfere with the conclusions of the learned single Judge in this regard.16. The learned Judge has held that the allegedly well known mark is in relation to cigarettes and not playing cards manufactured by the parties. If it is established that the mark is a well known mark, the mark being used in respect of different goods may make no difference. Also necessary for consideration is whether the principle would not apply, where it is not a well known mark merely because it is used in respect of the different goods. In other words in the event of the appellants establishing that the respondents had infringed the mark, two further questions would require consideration. Firstly, whether the principle would apply even if the mark is not established to be a well known mark. Secondly, whether the principle would apply if such a mark i.e. not a well known mark, infringed by the respondents is applied to different goods. We do not consider it appropriate to express any opinion in respect thereof. Nor do we consider it necessary to invite the counsel to argue the same before us. The learned Judge has considered the fact that the parties have applied the mark to different goods as relevant. Suffice it to say that the question of similarity of goods must be considered in the context of several factors. The goods need not be identical even if a well known mark is not involved. We do not rule out the possibility of a nexus between cigarettes and playing cards sufficient to cause deception by the application of deceptively similar marks on the products. The same however is also a question of fact or a mixed question of law and of fact. The appellants have not produced any evidence, and the pleadings are insufficient, to hold that the goods are such as to cause deception. Thus the appellants must fail on facts.17. This brings us to a consideration of Mr.Bhatts submission that the respondents are not the owners of the copyright. He submitted that the respondents case itself is that one Yusuf Kayum Khumri created the same in the year 1971. The said Yusuf Kayum Khumri was not under a contract of service with the respondents and that therefore, he would retain the ownership of the copyright in the artistic work. The respondents, therefore, have no cause of action based on the same.18. According to the respondents their predecessor-in-title engaged one Yusuf Kayum Khumri, a freelance artist and graphic designer who designed and created the labels for the cartons in which the playing cards under their various marks including 555 were packed. The said Khumri designed the labels and has been paid for the same. The respondents acquired by the assignment the copyrights and the labels.19. The respondents have also relied upon the certificates issued by the said Yusuf Kayum Khumri on 26.11.2009 to the effect that he had created the artistic work for M/s.Parksons Printers and that he had been paid for the same. It is possible to contend that the relationship between them was in respect of a contract for service and not a contract of service. However all the facts and circumstances taken together, indicate that even if it was a contract for service, the said Yusuf Kayum Khumri assigned his rights in the year 1971 itself to M/s.Parksons Printers. This is indicated by the fact that he had never made any claim to the artistic work for now almost 40 years and the fact that he issued the said certificates on 26.11.2009 without contending that he continues to remain the proprietor of the artistic work. We are unable in these circumstances to find any error in the prima-facie view taken by the learned Judge.

Decision:
0[ds]8. In Abdul Cadar Allibhoys case the Full Bench found that the plaintiffs label was designed by combining the labels of four other manufacturers. It was submitted that the plaintiffs labels or trade marks were so tainted in their conception and origin, that it could not form the basis of any reliefs. The question before the Full Bench, whether the plaintiff was entitled on the basis of such a mark to an injunction against the defendant, was answered in the negative.The Full Bench had relied only upon the judgment of Lord Westbury in The Leather Cloth Company v. The American Leather Cloth Company (Limited). That judgment was in fact confirmed by the House of Lords in The Leather Cloth Company (Limited) v. The American Leather Cloth Company (Limited) 11 ER 1435 = (1865) XI HLC 521. It is interesting to note that the Lord Chancellor Lord Westbury against whose judgment the appeal had been filed to the House of Lords was also a party to the judgment of the House of Lords.Reading the judgment of Lord Westbury as the Lord Chancellor and the judgment of the House of Lords confirming the same it is clear that the above principles are not restricted to cases of infringement of copyright but also apply to an action for infringement of trade marks and passing off. The Full Bench followed the judgment of the Lord Chancellor, which was appealedis thus clear that the principle was applied to an action for infringement of trade mark and passing off.Thus the ratio would apply irrespective of the fact that the third party whose mark has been infringed by the plaintiffs has not taken any action against the plaintiffs. Even on principle this must be so. The basis of the ratio is to deny an infringer a right based on the mark or work which infringes the mark or work of another. That being so, it matters not in an action against another whether or not the proprietor has taken any action against the plaintiff.13. It is obvious, however that nothing prevents the proprietor of the mark from initiating successfully an action for infringement or passing off against the parties to this action.14. The learned single Judge has however not held anything to the contrary. He has, with respect, rightly come to the conclusion that the appellants had not established the case on facts in this regard. It was necessary for the appellants to establish that the third party was in fact the proprietor of the mark 555 and that the respondents had infringed the same.The respondents in theirsur sur rejoinder expressly stated that save and except bald words which were allegedly not true to the personal knowledge of the deponent of the sur rejoinder filed on behalf of the appellants, no material whatsoever had been produced to show the goodwill, reputation in India prior to 1976. The appellants were therefore, once again put to notice in this regard. They did not avail of the opportunity of adducing evidence in support of theiris significant to note that there is no evidence whatsoever to the effect that the third party has used the mark 555 or created the labels/cartons or marks prior to the creation of and use by the respondents of these marks/labels and cartons which may have persuaded the Court to come to the conclusion that the respondents had infringed the mark. Even assuming that we are entitled to do so, we are reluctant to rely upon our personal knowledge, if any we may have in this regard. The appellants ought to have adduced evidence in respect of their case that the respondents had themselves infringed the mark 555 which belongs to another. We are not inclined therefore to interfere with the conclusions of the learned single Judge in thislearned Judge has considered the fact that the parties have applied the mark to different goods as relevant. Suffice it to say that the question of similarity of goods must be considered in the context of several factors. The goods need not be identical even if a well known mark is not involved. We do not rule out the possibility of a nexus between cigarettes and playing cards sufficient to cause deception by the application of deceptively similar marks on the products. The same however is also a question of fact or a mixed question of law and of fact. The appellants have not produced any evidence, and the pleadings are insufficient, to hold that the goods are such as to cause deception. Thus the appellants must fail on facts.The respondents have also relied upon the certificates issued by the said Yusuf Kayum Khumri on 26.11.2009 to the effect that he had created the artistic work for M/s.Parksons Printers and that he had been paid for the same. It is possible to contend that the relationship between them was in respect of a contract for service and not a contract of service. However all the facts and circumstances taken together, indicate that even if it was a contract for service, the said Yusuf Kayum Khumri assigned his rights in the year 1971 itself to M/s.Parksons Printers. This is indicated by the fact that he had never made any claim to the artistic work for now almost 40 years and the fact that he issued the said certificates on 26.11.2009 without contending that he continues to remain the proprietor of the artistic work. We are unable in these circumstances to find any error in theview taken by the learned Judge.