1 NMS195.10Judg..sxw JPP IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 195 OF 2010 IN SUIT NO. 117 OF 2010 Vanita Dilip Chawla, C/o. Bhagat Tarachand, 6/A, Shatrugan Tower, Near Mafco Market, Sector 18, Vashi, Navi Mumbai – 400 705. ... Plaintiff. V/s. 1. Fresh Meals India Private Ltd. } having its registered office at } 25-B, Khatau Building, 2nd floor, } Alkash Dinesh Modi Marg, } Fort, Mumbai – 400 001. } 2. Suraj Saraogi, } 25-B, Khatau Building, 2nd floor, } Alkash Dinesh Modi Marg, } Fort, Mumbai – 400 001. } 3. Manoj Hundraj Chawla, } 61/163 Shaikh Memon Street, } Zaveri Bazaar, Mumbai – 400 002. } 4. Prakash Khemchand Chawla, } Mumbadevi Commercial Complex, } 69/71, Shaikh Memon Street, } Zaveri Bazar, Mumbai – 400 002. } 5. Gurumukh Khemchand Chawla, } Mumbadevi Commercial Complex, } 69/71, Shaikh Memon Street, } Zaveri Bazar, Mumbai – 400 002. } 2 NMS195.10Judg..sxw 6. Hundraj Radhomal Chawla, } 61/63 Shaikh Memon Street, } Zaveri Bazar, Mumbai – 400 002. } ... Defendants. Mr. Jimmy Mehta i/b. H.G. Bhambhani for the Plaintiff. Dr. Virendra Tulzapurkar, Senior. Counsel, Vinod Bhagat and Punit Jani i/b. G.S. Hegde & V.A. Bhagat for Defendants 1 to 5. Mr. Virag Tulzapurkar, Senior Counsel i/b. D.R. Karania for Defendant 6. CORAM : R.Y. GANOO, J. DATED : 25th AUGUST 2010. ORAL JUDGMENT :- The Plaintiff has filed the Suit for a declaration that the Plaintiff is the registered proprietor of the trade name Bhagat Tarachand. By prayer clause (b) the Plaintiff has sought an order of injunction against Defendant Nos.1 to 6 restraining them from using the trade name Bhagat Tarachand or any name deceptively similar thereto in Inorbit Mall, near Vashi Railway Station, Vashi, Navi Mumbai or in any of thier restaurant/eating house or hotel business. By prayer clause (c) an order of injunction is sought against Defendant Nos.5 and 6 restraining them from creating any licence for user of trade name Bhagat Tarachand or any name deceptively similar thereto. 3 NMS195.10Judg..sxw 2. The present Notice of Motion is taken out by the Plaintiff keeping in view the reliefs sought in the plaint. By prayer clause (a), the Plaintiff wants an injunction restraining Defendant Nos.1 to 6 from using trade name Bhagat Tarachand or any name deceptively similar thereto in connection with their eating house or hotel businesses. The injunction on similar lines is sought against Defendant Nos.1 to 4 so as to prevent Defendant Nos.1 to 4 from carrying on hotel business at Inorbit Mall at Vashi. By prayer clause (c) injunction is sought restraining Defendant Nos.5 and 6 from creating licence for user of trade name Bhagat Tarachand or any name deceptively similar thereto. 3. Parties have completed the pleading. 4. The Plaintiff claims that her father in law by name Gopaldas Tarachand Chawla started hotel business in the name of Bhagat Tarachand since about 1952 at Zaveri Bazar, Mumbai. According to her, on account of the family arrangement, her husband Dilip Chawla became the owner of the hotel business and on 13th January 2003, the Plaintiff obtained registration of trade mark Bhagat Tarachand for 4 NMS195.10Judg..sxw hotel business in accordance with the provisions of Trade Marks Act, 1999 (hereinafter referred to as the said Act). According to the Plaintiff, she is having a restaurant at Zaveri Bazar and one more restaurant at Navi Mumbai. According to the Plaintiff, the Plaintiff has sole right to carry on business in the name of Bhagat Tarachand. According to the Plaintiff, Defendant No.5 has been carrying on business in the name of Bhagat Tarachand and Defendant No.6 is also carrying on business in the name similar to that of the Plaintiff. According to the Plaintiff, on account of the Plaintiff having registered trade mark, Defendant Nos.5 and 6 cannot carry on business in the name of Bhagat Tarachand or any name similar thereto and that is how the injunction is sought. 5. According to the Plaintiff, the Plaintiff came to know that Defendant No.1, a limited company is carrying on business at Inorbit Mall, Navi Mumbai in the name and style of Bhagat Tarachand and the Plaintiff took this as violation of her trade mark and that is how the present Suit has been filed. 6. The Plaintiff has relied upon the registration certificate bearing No.1165987 dated 13th January 2003 in the name and 5 NMS195.10Judg..sxw style of Bhagat Tarachand and said registration is in class 30 as set out in the said Act. 7. It is common ground that the Plaintiff wanted to have registration under class 42 for her trade mark and therefore, the Plaintiff had applied for registration under class 42 to the appropriate authority. The said application was opposed by Defendant No.5. Similarly, Defendant No.5 applied for registration of the trade name as Bhagat Tarachand under class 42 to the appropriate authority. That application was opposed by the Plaintiff. The proceedings were conducted before the Assistant Registrar of Trade Marks who by his order dated 25th August 2008 granted registration to the Plaintiff under class 42. The application filed by Defendant No.5 was rejected. Defendant No.5 has filed appeal proceedings before Intellectual Property Appellate Board, Madras and said proceedings are pending. 8. The Plaintiff by letter dated 28th October 2009 demanded from Defendant Nos. 5 and 6 the particulars of licences issued in favour of Defendant No.1. Same request was made by the Plaintiff to Defendant Nos.1 to 4 by letter dated 29th 6 NMS195.10Judg..sxw September 2009. 9. Defendant No.1 replied by their letter dated 7th October 2009. According to the Plaintiff, by reply dated 7th November 2009, Defendant No.5 refused to give the particulars of licences. 10. In the course of hearing of the Notice of Motion it is noticed that Defendant No.5 by agreement dated 1st August 2008 created licence in favour of Defendant No.1 permitting Defendant No.1 to carry on hotel business in the name and style of Bhagat Tarachand. Similarly, Defendant No.6 by agreement dated 1st August 2008 granted licence in favour of Defendant No.1 to carry on business in the name of Radhomal Bhagat Tarachand. There has been some dispute about creation of a licence by Defendant No.5 in favour of Defendant No.1 by document dated 1st August 2008 as according to the Plaintiff the said document has been anti dated, forged and in fact the licence was sought to be created by earlier document dated 14th June 2008. According to learned Counsel for the Plaintiff, Defendant Nos. 5 and 6 had no authority to execute a licence in favour of Defendant No.1 for the respective trade 7 NMS195.10Judg..sxw mark as Defendant Nos. 5 and 6 have no right to use trade mark held by the Plaintiff. 11. Learned Counsel for the Plaintiff had submitted that in the wake of the Plaintiff’s registered mark Bhagat Tarachand Defendant Nos.5 and 6 cannot use said mark and said adoption is not bonafide and said user is illegal. He submitted that trade name used by Defendant Nos. 5 and 6 is deceptively similar to that of the Plaintiff’s trade name and that the Plaintiff is entitled to relief in the motion. He had further submitted the user of trade name Bhagat Tarachand by Defendant No.1 is also illegal. He submitted that Defendant Nos.5 and 6 had no authority to execute licence in favour of Defendant No.1 as adoption of trade mark by Defendant Nos.5 and 6 is illegal and hence the Plaintiff is entitled to injunction asked in Motion. 12. Learned Counsel for the Plaintiff in support of his aforesaid submission had relied upon the Judgment in the case of Poddar Tyres Ltd. V/s. Bedrock Sales Corporation Ltd and Another reported in AIR 1993 Bom. 237. The learned Counsel for the Plaintiff had prayed for making the Motion 8 NMS195.10Judg..sxw absolute. The learned Counsel for the Plaintiff had relied upon the Judgment in the case of Shaw Wallace and Company Ltd. and Another V/s. Mohan Rocky Spring Water Breweries Ltd. 2006 (3) Bom. C.R. 252 to contend that grant of injunction is necessary to protect the rights of the Plaintiff holding registered trade mark as well as to protect the interest of consumers. According to the learned Counsel for the Plaintiff, the customers of Plaintiff would be mislead by use of the Plaintiff’s trade mark and it would cause damage to reputation to the Plaintiff’s business. 13. Defendant No.1, Defendant No.5 and Defendant No.6 have filed detailed affidavit in reply respectively so as to object to the grant of Notice of Motion. Defendant No.1 have come out with a stand that they entered into a leave and licence agreement on 21.8.2009 with Inorbit Mall to secure premises to run the hotel business and they are carrying on business in the said premises in the name and style of Bhagat Tarachand pursuant to licence given to them by Defendant No. 5 to run the hotel business in the name of Bhagat Tarachand. Defendant No.1 is a limited Company and Defendant Nos.2,3 and 4 are its Directors and Defendant No. 3 and Defendant 9 NMS195.10Judg..sxw No.4 are related to Defendant Nos. 5 and 6. In the course of hearing, it is noticed that Defendant No.6 has executed a licence in favour of Defendant No.1 by agreement dated 1st August 2010 to run the business in the name and style of Radhomal Bhagat Tarachand. In fact, Defendant No.1 are not running the business at Inorbit Mall or at any other places in the name of Radhomal Bhagat Tarachand. Defendant No.1 have contended that they are carrying on business on the basis of licence. Learned Counsel for Defendant Nos.1 to 5 has submitted that if Defendant No.5 succeeds in the defence put up by him, Defendant No.1 would also succeed because Defendant No.1 is claiming under the licnece which is granted by Defendant No.5 in favour of Defendant No.1. In view of this statement, it is necessary to test the case of Defendant No.5. 14. Defendant No.5 has come out with a contention that he has been carrying on business in the name and style of Bhagat Tarachand since 1978 at Zaveri Bazar. According to Defendant No.5, since he has been carrying on business in the name of Bhagat Tarachand since 1978, he is protected in accordance with the provisions of Section 34 of the said Act 10 NMS195.10Judg..sxw and on that account the Plaintiff cannot succeed. Defendant No.5 has relied upon various documents to show that Defendant No.5 has been carrying on business in the name of Bhagat Tarachand at Bombay since 1978 and that is how the defence of prior user of the name Bhagat Tarachand Chawla is put up. On behalf of Defendant No.5 it is submitted that Bhagat Tarachand Chawla had four sons i.e. Radhomal, Khemchand, Kishan and Gopaldas. It is also stated that Khemchand had three sonce (1) Defendant No.5, (2) Deffendant No.4 and (3) Ramesh. It is noted that Dilip is the son of Gopaldas and present Plaintiff is his wife. According to Defendant No.5, the Plaintiff knew that Defendant No.5 has been carrying on business in the name of Bhagat Tarachand since prior to the Plaintiff coming in the business and in any case institution of the present Suit. Learned Counsel for Defendant No.5 submitted that there is a delay in filing this Suit and hence, the injunction cannot be granted. 15. Defendant No.5 has relied upon number of documents in support of his stand that he has been carrying on business since 1978 and he is a user of the trade name Bhagat 11 NMS195.10Judg..sxw Tarachand prior to the user of the trade mark by the Plaintiff. It was submitted that he is protected under Section 34 of the said Act. Learned Counsel for the Plaintiff relied upon following Judgments in support of this argument :- (i) Indo Pharma Pharmaceutical Works Pvt. Ltd. V/s. Pharmaceutical Company of India. (1977) BLR 73. (ii) Geoffrey Manners & Co. Ltd. V/s. Mega Pharma Laboratories (1976) IPLR 9. 16. Learned Counsel for Defendant No.5 submitted that the Plaintiff is carrying on activity under class 30 in accordance with the registration held in the name of Bhagat Tarachand whereas the activity carried out by Defendant No.5 since about 1978 falls in class 42 and on this ground itself the Plaintiff cannot get injunction against Defendant No.5 as the plaintiff can obtain an injunction against a person who is carrying on activity vide class 30. It was sought to be argued by the learned Counsel for Defendant No.5 that there can be a a comparison between same class and a person running activity in one class cannot obtain an injunction against another person running an activity in a different class. In 12 NMS195.10Judg..sxw support of this contention, learned Counsel for Defendant No.5 had relied upon the Judgment in the case of Balkrishna Hatcheries V/s. Nandos International Ltd. and Anr. 2007 (35) PTC 295 (Bom). 17. Defendant No.5 has also contended that the trade name Bhagat Tarachand used and enjoyed by Defendant No.5 has acquired a distinctive reputation in the class 42 and there is a different identity with the name Bhagat Tarachand qua Defendant No.5. It was also contended by Defendant No.5 that if one reads the affidavit in rejoinder filed by the Plaintiff dated 26th February 2010, the Plaintiff had no objection for Defendant No.5 carrying on activity in the name and style of Bhagat Tarachand and it appears that it is only when Defendant No.5 executed a licence in favour of Defendant No. 1, the Plaintiff thought of instituting the present Suit. The relevant portion of the affidavit in rejoinder is as follows :- “I say that the reasons why I never took exception or objected to the activities of the Defendants is that the Plaintiffs have been given to understand that the 13 NMS195.10Judg..sxw restaurants opened by Defendant Nos. 5 and 6 were for their personal livelihood. It is now apparent that Defendants have their heart set on commercializing the business of Bhagat Tarachand and giving out franchises to that end and for that purpose and in fact in the Bombay Shops and Establishment Licence of Defendant No.1, Defendant No.1 has mentioned against the column : “Name of the employer : M/s. Fresh Meals India Private Limited, Mr. Suraj Saraogi, Mr. Manoj Chawla and Mr. Prakash Chawla. Nature of business : Business of Restaurant and Franchising Business.” 18. According to learned Counsel for Defendant No.5 this aforesaid relevant portion in the rejoinder clearly indicates that the Plaintiff had no objection for carrying on business by Defendant No.5 in the name of Bhagat Tarachand. 19. Learned Counsel for Defendant No.5 had taken me through the text of the plaint as well as counter statement filed by the Plaintiff in the proceedings before the appropriate authority under the said Act where the Plaintiff has admitted that she has been carrying on business in the name and style 14 NMS195.10Judg..sxw of Bhagat Tarachand in her own right since 1999 and has secured registration in the name of Bhagat Tarachand from 2003. 20. My attention was also drawn to the evidence in support of application under Section 51 filed by the Plaintiff before the appropriate authority under the trade Act where the Plaintiff has on affidavit admitted that she started business in the name of Bhagat Tarachand in the year 2000 with the same consent and knowledge of her husband, who is the original proprietor of the business Bhagat Tarachnd. According to the learned Counsel for Defendant No.5, these admissions on the part of the Plaintiff clearly indicate that she started business in the name of Bhagat Tarachand in her own name since 1999 and the claim of the Plaintiff that she has taken over the business from her husband, who had taken over the business from his father cannot be accepted. Learned Counsel for Defendant No.5 had reiterated that if stand of Defendant No.5 is accepted by the Court , Defendant No.1, who is carrying on business under licence dated 1st August 2008 requires protection and no order of injunction should be passed. The learned Counsel for Defendant No.5 had, therefore, prayed for 15 NMS195.10Judg..sxw dismissal of the Notice of Motion. 21. The learned Counsel appearing for Defendant No.6 had submitted that Defendant No.6 has entered into a licence agreement with Defendant No.1 and has allowed Defendant No.1 to run the business in the name and style of Radhomal Bhagat Tarachand. Learned Counsel for Defendant No.6 had also submitted that there are no specific allegations against Defendant No.6 and as such, if the plaint is read independent of other papers, it is clear that no cause of action is pleaded against Defendant No.6 and as such, no injunction should be granted against Defendant No.6. 22. It was contended that Defendant No.6 happens to be the son of Radhomal Bhagat Tarachand and Radhomal Bhagat Tarachand was the son of main man Bhagat Tarachand Chawla and heirs of Bhagat Tarachand have been using name Bhagat Tarachand with appropriate combination and that Defendant No.6 has been running business in the name of Radhomal Bhagat Tarachand Bhojanalaya since 1962 and Defendant No. 6 had relied upon various documents to show that the hotel business is carried out in the name and style of Radhomal 16 NMS195.10Judg..sxw Bhagat Tarachand/Radhomal Bhagat Tarachand Bhojanalaya. It was also contended by the learned Counsel for Defendant No.6 that the Plaintiff have acquiescenced the activity of Defendant No.6 and that Defendant No.6 is entitled to the benefit of provision of Section 33 of the said Act on the principle of acquiescence. It was also contended by Defendant No.6 that Defendant No.6 has succeeded to the hotel business through his grand father and Defendant No.6 has been carrying on business by using the principles of own name or his predecessor and on that count also Defendant No. 6 activity is protected. Judgment in the case of Sohanlal & Ors. V/s. Amirchand & Sons & Anr. AIR 1973 SC 2572 was relied upon. It was also contended by the learned Counsel for Defendant No.6 that registration of the Plaintiff is vide class 30 whereas activity carried out by Defendant No.6 would fall under class 42 and therefore, Defendant No.6 cannot be injuncted from carrying on business in the name and style of Radhomal Bhagat Tarachand/Radhomal Bhagat Tarachand Bhojanalaya. Learned Counsel on behalf of Defendant Nos.5 and 6 had therefore contended that the Plaintiff has failed to make out a prima-facie case for grant of 17 NMS195.10Judg..sxw injunction against Defendant No.6 and as such the Notice of Motion should be dismissed. 23. In reply to the arguments advanced by the learned Counsel for Defendant Nos.5 and 6, the learned Counsel for the Plaintiff had submitted that the user of the trade name Bhagat Tarachand or its similar names by Defendant Nos. 5 and 6 respectively is not bonafide and therefore, the Court should not apply the principles of delay and latches in considering the matter. The learned Counsel for the Plaintiff had in support of this proposition relied upon the Judgment in the case of Midas Hygiene Industries (P) Ltd. & Anr. V/s. Sudhir Bhatia & Anr. (2004) 3 S.C. Cases 90. It was also contended by the learned Counsel for the Plaintiff that it is a well settled principle of law relating to the trade mark that there could be only one mark, one source and one proprietor and it cannot have two origins. In support of this, he had relied upon the Judgment in the case of M/s. Power Control Appliances & Ors. V/s. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448. It was also argued by the learned Counsel for the Plaintiff that the stand of Defendant No.6 that Defendant No.6 is protected under the principles of own 18 NMS195.10Judg..sxw name business is not correct and in support of that he had relied upon the Judgment in the case of Bajaj Electricals Ltd., Bombay V/s. Metals & Allied Products, Bombay and Anr. AIR (1988) Bom. 167. 24. It was also contended by the learned Counsel for the Plaintiff that the registration of trade mark is prima-facie evidence of its validity and as the Defendants have not challenged the validity of the same injunction must follow in favour of the Plaintiff. In support of this proposition, learned Counsel for the Plaintiff had relied upon the Judgment in the case of Metro Playing Card Co. V/s. Wazir Chand Kapoor AIR 1972 Delhi 248. 25. The learned Counsel for the Plaintiff had taken me through the proceedings which were conducted before the Assistant Registrar appointed under the said Act where the Plaintiff as well as Defendant no.5 had applied for registration of trade mark in the name and style of Bhagat Tarachand vide class 42. He had also taken me through the order passed by the appropriate authority dated 25th August 2008 by which the request made by Defendant No.5 for registration in class 42 19 NMS195.10Judg..sxw was rejected and request for registration vide class 42 made by the Plaintiff was accepted. The learned Counsel for the Plaintiff had taken me through the letters dated 20th December 2007 and 14th January 2008 addressed to the Registrar of Trade Marks, Trade Marks Registry, Mumbai concerning the matter regarding registration in class 42 made by the Plaintiff as well as Defendant No.5 and had submitted that Defendant No.5 had in turn informed the Registry of Trade Marks that at the stage of the proceedings before the Registrar, Defendant No.5 would not lead and place before the said Registrar evidence of prior user of trade mark Bhagat Tarachand. According to the learned Counsel for the Plaintiff, if this was the stand of Defendant No.5 before the Registrar of Trade Mark, it is not open for Defendant No.5 to contend that user of trade mark by Defendant No.5 in the name and style of Bhagat Tarachand is protected under Section 34 of the said Act. The learned Counsel for the Plaintiff had therefore submitted that the Court should discard the defence raised by Defendant No.5 and therefore, the case of the Plaintiff that the Plaintiff’s registered trade mark Bhagat Tarachand would stand at a higher pedestal as compared to user of the trade 20 NMS195.10Judg..sxw mark by Bhagat Tarachand and that the Court should grant an order of injunction. 26. The learned Counsel for the Plaintiff had submitted that being aggrieved by the order dated 25th August 2008, Defendant No.5 has filed the appeal proceedings before the appropriate tribunal established under the said Act and as the proceedings are pending before the said tribunal, it is not open for Defendant No.5 to raise the stand as regards prior user as trade name Bhagat Tarachand. He had also drawn my attention to Section 34 of the said Act and had submitted that on account of the language of Section 34 and in particular “and the registrar shall not refuse (on such use being proved) to register the second mention trade mark by reason only of the registration of the first mention trade mark” clearly imposed a bar on this Court in entertaining the defence put up by the Plaintiff under Section 34 of the said Act. Learned Counsel for the Plaintiff took me through the provisions of Section 91 of the said Act as well as Section 93 of the said Act. According to him since appeal proceedings are pending before the Appellate Board, it is not open for this Court to entertain the defence taken by Defendant No.5 as the said defence is 21 NMS195.10Judg..sxw raised in the Appeal proceedings. It was also sought to be contended that in the year 2003 class 42 was absent and class 42 was inserted for the first time on 15th September 2003. The learned Counsel for the Plaintiff had by taking me through the relevant Sections contended that the stand of Defendant No.5 that prior use constitutes a good defence should be rejected.