1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.2975 OF 2009 IN SUIT NO.1884 OF 2009 Dr.Ashok M. Bhat & Anr. .. Plaintiffs Versus Shewakram D. Valeja .. Defendant Mr.Virag Tulzapurkar, Senior Advocate with Vinod Bhagar, Dhiren Karania, Punit Jani i/b. G.S.Hegde and V.A.Bhagar for plaintiffs. Mr.R.V.Bhasin i/b. I.R.Joshi & Co. for defendant. CORAM : S.C.DHARMADHIKARI, J. DATE : 29th August 2009. P.C.: 1] In a suit for permanent injunction to restrain the defendant by himself, his servants, assignees and all those connected with him from in any manner, manufacturing, marketing, selling and/or using in relation to plaintiffs Cosmetic goods including Brilliantine Cream and like goods, the impugned label remark (NEHA) or any trade mark deceptively similar to the plaintiffs trademark NOVA so as to infringe the plaintiffs said trademark, the present notice of motion has been taken out. The request 2 is to grant ad-interim reliefs because the plaint proceeds to state that the plaintiff became aware for the first time in July 2009, on investigation conducted that there are spurious goods bearing identical get-up and Artwork as that of the plaintiffs. When this fact was discovered that the cause of action arose and that is how there is urgency in the matter. 2] Mr.Tulzapurkar, learned Senior Counsel appearing for plaintiffs submitted that the annexures to the plaint would demonstrate that the plaintiffs have been manufactiring NOVA Cream Brilliantine and the certificate issued by the Trademark Registry would demonstrate that the Registration date is of 16th December 1946. First certificate bearing No. 41439 was issued on 24th March 1952 and that is under Class V. The details on the certificate issued and annexed to the plaint would demonstrate that the plaintiffs have been in the business for quite some time and the advertisements, copies of which are annexed to the plaint, would show that the plaintiffs’ products are in the market atleast from 1968. Each of the certificates that have been relied upon are renewed. 3] The submission of Mr.Tulzapurkar is that pecularity of the 3 plaintiffs’ is that the word mark and even their label has been registered. He has invited my attention to the label mark and has contended that even that is registered long time back and is in use for decades together. He also places reliance upon the certificate which has been issued with regard to the advertisement expenses. He submits that the sales turnover has been certified by the Chartered Accountant. Even the invoices would go to show that the plaintiffs’ products are in the market for decades together. The submission of Mr.Tulzapurkar is that several attempts were made in the past to copy plaintiff’s label mark and my attention is invited by Mr.Tulzapurkar to an order made by this Court in favour of plaintiffs and against the defendant in Suit No.3588 of 2006, one Mr.Godfrey D’Silva. He submits that the plaintiffs had also to institute proceedings before the Delhi High Court. The said D’Silva had not abided by ad- interim order passed in favour of plaintiffs and, therefore, a contempt petition has been moved on which a show cause notice is issued and the matter is pending. 4] Mr.Tulzapurkar has clarified that the plaintiffs have no objection in defendants using the registered mark “Apsara Neha” but they have an 4 objection to the defendants using the label mark of plaintiffs as that is causing confusion and is in any event deceptively similar to the mark of the plaintiffs. 5] On the other hand, inviting my attention to the affidavit filed in reply, it is contended by the defendants that the word “Apsara Neha” has been the trademark registered in Class III in respect of Brilliantine. The same was advertised in the Trademark Journal of July 2001. The registration of the mark is still valid and subsisting. The sales figures from 2002 to 2008 relating to the defendants, together with copies of the invoices, would show that the defendants are in business since 1979. It is not correct to say that the get up and label of the plaintiffs is unique to them. That is commonly used, inasmuch as the Brilliantine Cream bears Green colour. Even all packages are of Green colour. The other design on the same is also common to the trade. Mr.Bhasin had invited my attention to the Annexures D-1 to D-3 to the affidavit in reply of defendant and it is contended by him that no single Manufacture can claim exclusive rights of Green colour label and/or carton. The Green label is common to the trade. The entire attempt is to monopolise the 5 trade. The plaintiffs do not desire to have any competition. Therefore, their attempts to scuttle the business of defendants should not be countenanced and this Court must, therefore, reject the prayer for ad- interim/ interim reliefs. 6] Mr.Tulzapurkar submits in rejoinder that all the allegations in the affidavit in reply are denied. As far as Annexures D-1 to D-3 of the affidavit in reply are concerned, Mr.Tulzapurkar urges that with regard to each one of the labels, there is a legal proceeding initiated. With regard to Annexure D-1, it is the label of one M/s.Kem (Tarine Enterprises) is of the same defendant against whom this Court has passed an interim order. As far as Annexures D-2 and 3 are concerned, proceedings are pending before the Trademark Registry for rectification. The third Annexure is nothing but the defendants’ own label. Mr.Tulzapurkar submits that there is nothing on record to indicate that the label mark of the defendants is registered or that the plaintiffs’ label mark is common known to the trade. Therefore, all these submissions are fallacious. Hence, the ad- interim orders as prayed be granted. 6 7] With the assistance of learned Counsel for both sides, I have perused the plaint and annexures thereto. I have also perused the affidavit in reply and its annexures. I have heard oral submissions at some length. The only question that arises for my consideration is whether plaintiffs have made out prima facie case, whether balance of convenience is in their favour or not and whether they will suffer irreparable harm and injury if ad-interim reliefs are not granted. 8] From the annexures to the plaint contents of which are not in dispute, it is apparent that the plaintiffs have substantiated the averments in the plaint. The plaintiffs have categorically stated in para 4 of the plaint that the trade mark NOVA was conceived and adopted in the year 1935 by their predecessor in title. Thereafter, plaintiff No.2 which was originally a proprietary concern, underwent a change and present plaintiff No.2 along with his mother and sister, as a Association of persons, are carrying on the same business of manufacturing and marketing cosmetic products including Brilliantine Cream and Jelly etc. The details in para 4 are substantiated by a copy of the original NOVA label. Thereafter in para 5 it is stated that the NOVA word in respect of pharmaceutical 7 preparations including Class V was registered as a trademark. Thereafter, the said mark is also registered in relation to the goods falling in Class III. Both certificates are valid and subsisting and are renewed from time to time. Thereafter, in respect of NEHA Brilliantine which is impugned product the label in respect of the same has been also registered. Thus, the label mark has been registered on 16th December 1996 and which registration is still in force. The deed of assignment, a copy of which is at Annexure C, would demonstrate that the rights have been assigned between the plaintiffs inter se. The plaintiffs have also pointed out in para 7 that the label is an original work of Art and even in respect of carton as also the bottle, the plaintiffs have obtained copyright and the copyright registration is referred to with all details. Thus, the plaintiffs have claimed valuable statutory and common law rights. They are in the market and that their goods have been are sold for decades together is also prima facie substantiated by producing certificate from the chartered accountant and copies of the invoices and details of advertisement expenses. 9] As far as defendants are concerned, a specific allegation is made in 8 para 11 of the plaint with regard to the plaintiffs’ label mark being copied and attempt to create confusion on the part of the defendants. 10] Such attempts have also been made by another party and that is substantiated by producing the order passed by this Court with regard to identical controversy (Exh.I page 178) on the basis of the materials produced by the plaintiffs and restraining the defendants from in any manner infringing plaintiffs’ trademark, the interim order is passed by this Court. 11] Each of these allegations are uncontroverted and all that the affidavit in reply points out is that the plaintiffs and defendants are manufacturing the same product Brilliantine. As has been clarified that defendants can carry on production and manufacturing of this product but only the objection is with regard to the label mark. The grievance of the plaintiffs is that such label mark which is unique and exclusively associated with plaintiffs’ products NOVA Brilliantine should not be used by the defendants in any manner. It is true that defendants can carry on their business on the basis of the trademark “Apsara Neha”. However, 9 the affidavit in reply proceeds on the basis that the attempt on the part of the plaintiffs is to prevent the defendants from manufacturing and selling their product Brilliantine. The defendants have not denied any of the allegations with regard to the label mark save and except stating that the said label is common to the trade and is used by several manufacturers/ traders. However, the said traders include the defendants themselves. Apart from them, the two other instances which are brought to my notice are of persons against whom legal proceedings have been initiated. In such circumstances, the defendants have prima facie failed to substantiate their pleas that the plaintiff’s Green label is common to the trade and is used by several manufacturers/ traders. The rest of the affidavit, therefore, only deals with the alleged attempts on the part of the plaintiffs to prevent manufacturing and sale of the product. As has been clarified above that has not been the foundation or basis of the interim application made before me. 12] The interim application and the relevant prayers are restricted to the infringement of label mark. As far as this aspect is concerned, beyond citing the instances Exh.D-1 to D-3 and setting out some pleas in para 19 10 of the affidavit in reply nothing has been pointed out even at this stage, which would demonstrate that the defendants have been conferred with any rights in respect of the label mark. Attempt on the part of the defendants to point out that the packaging/ carton is common inasmuch as, the squares on the label of the plaintiffs is not something exclusive to them, is also not prima facie substantiated because identical labels have been used by the defendants in the suit filed by the plaintiffs in this Court and they have been restrained by this Court by an interim order, copy of which is annexed at Pg.178 of plaint paperbook. 13] In the above circumstances, I am of the view that the plaintiffs have made out a prima facie case. There is no question of delay vitiating the grant of interlocutory relief inasmuch as it is well settled that in such actions, delay is not something which would disentitle the plaintiffs from claiming interim reliefs straightway. In this case, the delay is not at all such as would disentitle the plaintiffs from claiming equitable and discretionary reliefs. Once they have pointed out that their label is unique and exclusive to them and the same being infringed, they have made out a prima facie case. The balance of convenience is also in their favour, 11 inasmuch as from the documents annexed to the plaint, it is apparent that the plaintiffs have been in the market for decades together and their preparations have been fairly established. In such circumstances, now permitting the defendants to carry on the business by using the same label mark would cause further confusion in the market. Plaintiffs have pointed out that the attempts are being made repeatedly to copy their label mark and, therefore, they have substantiated both requirements of balance of convenience and irreparable loss, harm and injury. 14] In the above circumstances and for reasons similar to that led this Court to pass interim order in the other suit, the request for ad-interim relief is granted. There will be an ad-interim order in terms of prayer clauses (a) to (c) of the motion. However, this does not prevent the defendants from manufacturing, marketing, selling and/ or using in relation to their product Brilliantine the mark “Apsara Neha” but the ad- interim relief/ injunction is restricted to the Green label mark and use thereof. All observations are tentative and prima facie and shall not in any manner influence the court while deciding the proceedings finally. 12 15] At this stage Mr.Bhasin applies for stay of this order for a period of four weeks to enable the defendants to challenge this order. Request of stay is opposed by learned Counsel for plaintiffs. 16] In my view, considering the pleas raised by the defendants in their affidavit in reply, interest of justice would be sub-sered if this order is stayed for a period of two weeks from today to enable the defendants to challenge this order. (S.C.DHARMADHIKARI, J)