1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 2461 OF 2009 IN SUIT NO. 1758 OF 2009 Tilaknagar Industries Ltd. ... Plaintiff. V/s. Deejay Distilleries Pvt. Ltd. & Anr. ... Defendants. Mr. V.R. Dhond with Ashutosh Kane, Aditi Kulkarni, Vaibhav Keni i/b. H.W. Kane for the Plaintiff. Mr. Rahul Chitnis with Ms. Trupti Shetty i/b. Dhruve Liladhar & Co. for the Defendant 1. CORAM : S.C. DHARMADHIKARI,J. ORDER RESERVED ON : 14TH AUGUST 2009. ORDER PRONOUNCED ON : 16TH SEPTEMBER 2009. P.C. :- This is a Suit filed by the Plaintiff for permanent injunction against the Respondent restraining them from infringing the Plaintiff’s Trade Mark more particularly described in prayer clause (a) of the plaint. By prayer clause (b) permanent order and injunction against the Defendants from infringing the Plaintiff’s Copyright in the artistic work namely the label shown at Exhibit A-1 is also sought. Prayer clause (c) with regard to passing off. 2. In terms of the above final reliefs, the Plaintiff pray for interlocutory reliefs. I had passed an order on 11th August 2 2009 recording the statement of the Plaintiff that, at this stage, they are not seeking any relief against Defendant No.2. They have withdrawn this Notice of Motion against Defendant No.2 and accordingly, it was dismissed as withdrawn as far as Defendant No.2 is concerned. The prayers survive as far as Defendant No.1. 3. It is stated in the plaint that the Plaintiff is a company incorporated under the Companies Act, 1956. Since 1968, they are carrying on business as manufacturers and/or exporters of and/or dealers in alcoholic beverages more particularly described in paragraph 1 of the plaint. The First Defendant is a Private Limited Company and is carrying on business of manufacturing and/or exporting and/or dealing in the said beverages. 4. It is stated in paragraph 4 of the plaint that in 1999 the Plaintiff engaged the services of commercial artists/designers for the purpose of preparing a trade mark label containing the word mark “Senate”. The said commercial artists/designers prepared the label and after the design was approved by the Plaintiff, the label has been adopted and is used. A specimen of the said label is annexed as Annexure A-1 to the plaint and Annexure A-2 is a photograph of the Plaintiff’s bottle bearing the said trade mark label. Thus, in or about August 1999 the Plaintiff started using the said label for the goods with a view to distinguish its said goods from those of others. 3 5. The Plaintiff has stated in paragraph 5 that they have effected large sales of its said goods bearing the said trade mark label. They have exported goods bearing this label to countries such as Angola, Tanzania, Dubai, Republic of Congo, Caribbean Islands, etc. The Plaintiff has also taken substantial efforts to popularize the said goods. They have spent substantial sums of money on publicity and sales permission. Annexure ‘B’ to the plaint is the statement containing annual export and sales figures for the past 6 years. It is stated that due to superior quality of goods sold under the label mark so also due to extensive user and wide publicity, the label mark has acquired immense reputation and goodwill not only in India but in the above mentioned countries. Copies of invoices/bills in respect of sales of Plaintiff’s goods bearing the label mark are also annexed. Thus, it is stated that the mark is distinctive and has been associated with the Plaintiff exclusively by the traders and members of public. The consumers Identify and/or Demand the goods of the Plaintiff by reference to the word “Senate” and/or said label as a whole. Therefore, on 1st September 1999, the Plaintiff applied for and obtained registration of the aforesaid trade mark label and the certificate of registration came to be granted in their favour. The Trade Mark in respect of the Plaintiff’s goods also came to be registered. They also obtained registration for the word mark “Senate” in respect of non-alcoholic drinks. Copies of these certificates are annexures to the plaint and it is stated that they are valid and subsisting. By virtue of the registration and also on account of reputation and goodwill, it 4 is stated that the Plaintiff’s mark and the goods have become immensely popular and well known. The Plaintiff has acquired statutory as well as common law rights to use the said Trade Mark in respect of the goods, to the exclusion of the other manufacturers and traders. 6. It is stated that in the year 2007 a deceptively similar Trade Mark label under the name “Sonate” was sought to be used by one M/s. Somrasa Distilleries with a dishonest intention of seeking to pass off its goods as and those of the Plaintiff as also infringing the statutory rights in the Trade Mark. Therefore, a Suit being Suit No.1266 of 2007 was filed in this Court. By an ad-interim order in the said Suit, this Court granted an injunction restraining M/s. Somrasa Distilleries from using its deceptively similar word mark “Sonate”. Further attempt on similar line made by one Ambar Distilleries Limited against whom also a Suit being Suit No. 3326 of 2008 was filed and an interim order dated 18th December 2008 granting injunction against the said Ambar Distilleries was granted in respect of the mark “Senhor”. Reliance is placed upon these orders and it was urged that in third week of June 2009, the Plaintiff learnt that the First Defendant obtained approval from the Commissioner, State Excise, Maharashtra to use a mark label worded as “Sonate” which is deceptively similar to that of the Plaintiff and in relation to the product whiskey. Therefore, the Plaintiff obtained a specimen of the impugned mark and thereafter, learnt that the Second Defendant is importing the First 5 Defendant’s whisky under the impugned trade mark. The same is also reflected on the mark as is affixed on the First Defendant’s bottles. It is alleged that the impugned mark is visually, structurally, phonetically and deceptively similar to the Plaintiff’s trade mark. The goods are same and and/or, similar and/or cognate, allied and complimentary to the goods of the Plaintiff. Therefore, alleging infringement and passing off by the Defendants, instant Suit is filed and the application for interim reliefs is preferred. 7. Mr. Dhond, learned Counsel appearing for the Plaintiff contended that the present case is identical to that of M/s. Somrasa Distilleries and M/s. Ambar Distilleries. They indulged in similar acts and are sued in this Court by the Plaintiff. The Plaintiff has successfully demonstrated that the act of those persons amount to infringement and passing off. Therefore, this Court passed prohibitory orders. On similar lines in this case also the Defendants should be restrained from infringing and passing off the label mark. Mr. Dhond has invited my attention to Annexures A-1 and A-2 to the plaint. He has also invited my attention to Annexure ‘B’ which are the sale figures. He submits that the invoices would demonstrate that the Plaintiff has been selling the products for considerable length of time. Similarly, the annexures would demonstrate that the Plaintiff has obtained the registration in respect of the goods falling in Class 33 as early as on 1st September 1999. Further, the label mark is also registered as is evident by issuance of the certificate (Annexure D-2). Even 6 this is issued as early as on 3rd August 2001 and is in force. The Plaintiff’s products are non-alcoholic as well as alcoholic. In such circumstances and relying upon the very material that is produced in this case, in the other cases, this Court granted interim orders. For these reasons and in the light of Section 56 of the Trade Marks Act, 1999 this Court should pass interim orders in this case. More particularly, because the get up, the design, pattern of the Plaintiff has been copied by the First Defendant as is evident by Annexures F-1 and F-2. For all these reasons, strong prima-facie case has been made out for grant of interim reliefs and therefore, the Motion be made absolute in terms of prayers (a), (b) and (c). 8. Mr. Dhond has relied upon the following orders and Judgments in support of the above contentions :- 1. Order of this Court dated 19th September 2006 pass in Notice of Motion No.2211 of 2004 in Suit No. 2233 of 2004 (M/s. Shalina Laboratories Pvt. Ltd. V/s. M/s. SMS Formulations Pvt. Ltd. & Ors.). 2. Order of this Court dated 16th February 2005 in Appeal No.88 of 2005 in Notice of Motion No. 2638 of 2004 in Suit No.2663 of 2004 (M/s. Maxheal Pharmaceuticals (India) & Anr. V/s. Shalina Laboratories Pvt. Ltd. & Ors.). 3. 1994-PTC-183 Calcutta High Court (Brook Bond India Limited V/s. C. Patel & Co.). 7 4. AIR 1999 Delhi 15 (M/s. Charak Pharmaecuticals V/s. M/s. Deepharma Ltd.) 9. On the other hand, Mr. Chitnis, learned Counsel appearing for Defendant No.1 has contended that the Suit claim is false and frivolous. The entire Suit is devoid of merits and is vexatious. It is filed with a malafide intention. 10. He submits that repeatedly inspection of the original documents relied upon by the Plaintiff was sought but as is pointed out in paragraph 4 of the affidavit in reply, the complete inspection of the documents was not granted. Therefore, limited affidavit in reply has been filed without in any manner giving up the right to seek further opportunities. 11. Mr. Chitnis submits that no relief has been claimed against Defendant No.2 and that is a distinction from other Suits, which cannot be ignored. The Plaintiffs are seeking reliefs only against the First Defendant. They are not seeking any relief against the Second Defendant in this Notice of Motion. However, if the allegations in the plaint are carefully perused, it is clear that the First Defendant is a Private Limited Company carrying on business of manufacturing and/or exporting and/or dealing in alcoholic beverages, according to the Plaintiff. However, that is wholly incorrect. He submits that the First Defendant is a company in India but it is exporting the whisky under the trade mark “Sonate” to 8 Defendant No.2 who is in Angola since 2007. The Whiskey under the trade mark “Sonate” is not available in India. Even the permission/approval granted by the Commissioner, State Excise, Maharashtra states that the permission/approval is for “export overseas only”. This Defendant is using the label extensively since 2007 and the Plaintiff are aware of the same. From September 2007, till date, the Defendant has manufactured and sold the preparation under the Trade Mark “Sonate” to Defendant No.2 to the tune of over Rs. 75,00,000/-. The mark “Sonate” is distinct and is associated with the whiskey of the Defendants. The mark “Sonate” is exclusively used by Defendant No.2 in respect of the preparation and has come to be identified and associated with Defendant No.2’s whiskey. He submits that no cause of action in terms of the alleged infringement of the Trade Mark, Copyright and Passing Off has arisen within the jurisdiction of this Court and/or in India. Mr. Chitnis has pointed out that Defendant No.2 has registered the Trade Mark “Sonate” and “Senate” as a Trade mark in Angola in respect of Whiskey and/or alcoholic beverages. The Plaintiff have filed a Suit in Angola against Defendant No.2 in or about December 2003 impugning the registration of the Trade Marks by Defendant No.2. The Suit is pending and no reliefs have been granted in favour of the Plaintiff. This clearly goes to show that since about December 2003 the Plaintiff were aware that Defendant No.2 is manufacturing and/or selling whiskey under the impugned Trade Mark in Angola and that the same is being imported from India. He submits that in March 2007, 9 Defendant No.2’s group company made an application for registration of the Trade Mark “Sonate’ in Class 33 in respect of alcoholic beverages. Thereafter, on 28th April 2007, the First Defendant made an application for registration of label of “Sonate” Whiskey with the Maharashtra Excise Department and the same was not objected by the Plaintiff. The said labels were registered in the name of the First Defendant with the State Excise Department as required by law as per certificate dated 23rd May 2007. In these circumstances, First Defendant has honestly and bonafide adopted the label “Sonate” and “Senate”. The approval by the Commissioner of State Excise is after due notice to all concerned and therefore, the Plaintiff cannot object to the same now at this belated stage. 12. That apart, according to Mr. Chitnis, there is no deceptive similarity between two words “Senate” and “Sonate”. The writing on the Plaintiff’s label is in English whereas the written material on the label of the Second Defendant is in Portuguese language. There are several distinguishing features and they are pointed out in paragraph 13 of the affidavit in reply. For all these reasons and on account of inordinate delay, the application for interim reliefs be dismissed. He submits that the orders relied upon do not have any binding force. The materials that were placed before the Court in that cases have not been produced including copies of the plaint. In these circumstances, these orders cannot be relied upon as precedents. Mr. Chitnis has 10 distinguished the other judgments which have been relied upon and instead invited my attention to the Trade Marks Act, 1999. He submits that upon a proper interpretation of the term “use of a mark“ it would be apparent that no interim injunction can be claimed by the Plaintiff. 13. In rejoinder, Mr. Dhond has contended that the reply is filed by the First Defendant but it deals with all allegations against the Second Defendant. The facts which are to the personal knowledge of the Second Defendant cannot be affirmed or stated by the First Defendant. Further, the approval granted by the Excise or similar statutory authorities does not have any bearing on the question of the rights of parties under Trade Marks Act, 1999 and the Copy Right Act, 1957. He submits that Trade mark being a territorial right, the alleged Foreign Registrations are irrelevant and do not have any bearing on the present Suit. He submits that from the materials produced, it is apparent that the rival marks are visually, structurally, phonetically and deceptively similar. He submits that there is no question of any acquiescence because the Plaintiffs were not aware of any certificate issued by the Commissioner, State Excise, until July 2009. Further, he submits that the impugned acts of the First Defendant took place in this country and within the jurisdiction of this Court. The manufacturing activities are going on within the jurisdiction of this Court. Therefore, the Plaintiffs have made out a case for interim reliefs and the Motion be made absolute accordingly. 11 14. For properly appreciating these contentions, it would be necessary to firstly refer to some material allegations in the plaint. The Plaintiffs have sued the First Defendant in its capacity as a manufacturer and exporter so also dealer in alcoholic beverages. The First Defendant has its Office at Mumbai and also in Thane District. It is a Indian Company. It is a Private Limited Company. The Second Defendant is based in Angola and it imports the First Defendant’s goods. 15. After inviting the Court’s attention to the label marks (Annexures A-1 and A-2) so also the sales figures, what is urged is that the permission/approval from the Commissioner, State Excise may have been obtained for export but the issue is whether the manufacturing activities being carried on in India can it be said that the mark of the Plaintiff has been infringed by the First Defendant or not. It is true that the Second Defendant was not a party in the other matters which were instituted by the Plaintiff. It is also true that the Second Defendant claims to be a registered proprietor in Angola. It is also not alleged that the First Defendant have sold the goods in India. The entire basis of the application are the averments in paragraph 11 and 12 of the plaint. The First Defendant claims to have manufactured and sold the preparation under the Trade Mark “Sonate” to Defendant No.2 outside India and therefore, no cause of action has arisen within the jurisdiction of this Court and/or in India. The Certificate dated 23rd May 2007 issued by the Commissioner, State Excise is on the basis 12 that the application of the First Defendant seeks permission to affix the label on the bottles “Sonate” whiskey. The permission does not state that it is for overseas export only. The permission clearly states that the First Defendant can affix the label on the bottle/package subject to the terms and conditions set out in the letter dated 23rd May 2007 and the label can have this affixation, as prayed. The First Defendant has not annexed copy of the application dated 20th May 2007 pursuant to which the approval has been granted by the Commissioner, State Excise. All that is stated is that on 20th April 2007, the application for registration of labels of “Sonate” whiskey with Maharashtra Excise Department was made and the same is not objected by the Plaintiff. 16. It is true that the argument of the First Defendant is that the whiskey under the Trade Mark “Sonate” is not available in India. It is true that the Defendants have contended that they are using the said label for export and reliance is placed upon this certificate of the Excise Department. Further, the First Defendant is not selling its product “Sonate” in India but only exporting the same to Angola. The question is, is this enough for the purposes of resisting the action of the Plaintiff. Reliance is placed by Mr. Dhond on Section 56 of the Trade Marks Act, 1999 and the order passed in the Plaintiff’s case by this Court. According to Mr. Dhond, very act of affixing the impugned Trade Mark in India upon goods to be exported from India amounts to use of the impugned Trade Mark in India. 13 17. On the other hand, it is the argument of the First Defendant that the label mark “Sonate” and “Senate” is registered as a Trade Mark in Angola. The Plaintiffs have filed the Suit in Angola against Defendant No.2 impugning the registration of the Trade Marks “Senate” and “Sonate” by Defendant No.2. The said Suit is pending and no reliefs have been granted in favour of the Plaintiff. Mr. Chitnis is, therefore, contending that the orders passed by this Court in the Plaintiff’s other cases are distinguishable and have no application to the present case. In any event, in those cases, Defendant No.2 was not impleaded as a party. Therefore, these orders are of no assistance. 18. I am afraid that the contentions of Mr. Chitnis are wholly misconceived. The Plaintiffs are suing the First Defendant not on the basis of the Registration of the mark “Senate” and “Sonate” by Defendant No.2 in Angola. They are not alleging that registration of the said mark by the Second Defendant alone constitutes as infringement of Plaintiff’s Trade Mark and Copyright so also Passing Off their goods as that of the Defendants. The Plaintiffs have sued the First Defendant on the basis that they are using the impugned Trade Marks in India and therefore, irrespective of the registration in favour of the Second Defendant, which is impugned separately by the Plaintiffs, they can file this Suit against the First Defendant. The act of usage by manufacturing and exporting the subject products have taken place in India. The First Defendant had secured permission/approval from the Commissioner, State 14 Excise, Maharashtra to use the impugned label mark. In such circumstances, it is not open for the First Defendant to urge that the present Suit is not maintainable against them in this Court. This was the defence in the case of M/s. Somrasa Distilleries also. That has been rejected by this Court by relying upon Section 56 of the Trade Marks Act. Similarly, there is an order in the case of Ambar Distilleries Limited also. 19. Section 56 of the Act is clear. Prior to that Section being reproduced, it would be advantageous to refer to some definitions. The term “mark” is defined in Section 2(m). Section 2(h) defines the word “deceptively similar”. The term “goods” is defined in Section 2(j). The term “registered user” is defined in Section 2(x) and word “trade mark” is defined in Section 2(zb). The definition in Section 2(ii)(b) and (c) are also relevant as that defines the concept of use of a mark. Chapter II of the Act deals with the Register and Conditions for Registration. Chapter III provides for the procedure and duration of Registration. Chapter IV is titled as “Effect of Registration”. Section 28 confers, subject to the other provisions of the Act, on the registered proprietor of the trademark, the exclusive right to the use of the Trade Mark in relation to the goods and services in respect of which the Trade Mark is registered and to obtain relief in respect of infringement of the Trade Mark in the manner provided by the Act. Further, it confers the exclusive right to the use of a Trade Mark but it is subject to any conditions and limitations to which the registration itself is granted. Section 29 deals 15 with infringement of registered Trade Marks. The Trade Mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the Trade Mark in relation to the goods and services in respect of which it is registered and in such manner as to render the use of the mark likely to be taken as being used as a Trade Mark. For the purpose of Section 29 it is relevant that usage is enough. Section 29(6) is relevant and reads thus :- “29(6). For the purposes of this section, a person uses a registered mark, if, in particular, he -- (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising.” 20. In these circumstances, and when it is not disputed that use of a mark in relation to goods which are manufactured and exported would also amount to using of the mark, then, it is not possible to hold that the First Defendant is not liable to 16 be proceeded with by the Plaintiff in this Court. Even if the goods of the Defendants under the impugned trade mark are not sold or available in India, yet, the usage in the course of a trade is something which can be said to be infringement provided other requirements of Section 29 are satisfied. It is clear from a reading of Section 29(6) that all aspects of usage are covered so that the protection available to a registered Trade Mark is not frustrated and defeated. Similarly, the rights which go alongwith registration have also to be made meaningful and complete. If the effect of registration is that the person holding the registration/registered proprietor, has exclusive rights, then, to enable him to proceed in cases of infringement that Section 29 is worded in widest terms. The Plaintiffs have pointed out that they have obtained the registration of the Trade Mark label in respect of the goods falling under Class 33. They have also obtained registration of the word mark. Thus, both label marks and word mark are registered. They are in respect of both alcoholic and non- alcoholic