IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.1933 OF 2007 IN SUIT NO.1392 OF 2007 Ms.Supriya Prabhu, an Indian Inhabitant, carrying on business as a Sole Proprietress of Ayurpriya, having her office at 8-B-22, Upendra Building, Sudhindra Nagar, Dahisar (E), Mumbai - 400 068. ...Plaintiff Versus 1.Janus Remedies, an unregistered Partnership Firm, having their principal place of business at Ganji Punshi Industrial Estate, (Next compound to Hindustan Petroleum Pump), Western Express Highway, Kashigaon (Post-Mira), Thane - 401 104 and whose partners are: 2.N.K.Nair (Narayan Kutty Nair), of Mumbai, Indian Inhabitant, the Partner of the Defendant No.1, residing at B-13, Aaram Society, Vakola, Santacruz (East), Mumbai - 400 055. 3.Pramod Nair 4.Vinod Nair, residing at B-13, Aaram Society, Vakola, Santacruz (East), Mumbai - 400 055. ...Defendants ....... Mr.Venkatesh R.Dhond with Ms.Trupti Shetty i/b M/s.Dhruve Liladhar & Co. for Plaintiff. : 2 : Mr.Salil Shah with Mr.Ramesh Gajria & Ms.Deepa Hate i/b M/s.Gajria & Co. for Defendants. CORAM: A.M.KHANWILKAR, J. CORAM: A.M.KHANWILKAR, J. CORAM: A.M.KHANWILKAR, J. JUNE 20, 2007. JUNE 20, 2007. JUNE 20, 2007. P.C. P.C. P.C. 1. This order will dispose of prayer for ad-interim relief prayed by the Plaintiff during the pendency of Notice of Motion. 2. After having considered the rival pleadings and the documents on record including the oral submissions made by the Counsel for the parties across the bar, the position that emerges is as follows: . The COLIVAN-D trade mark in India was registered in the name of Janus Pharma Private Limited in respect of product of pharmaceutical items included in Class 5. The said Company was in business of manufacture and dealer in ayurvedic, medicinal and pharmaceutical preparations. It was marketing several products since prior to 1980, amongst others, medicinal preparations in the name : 3 : of Colivan-D tablets which is Dicyclomine HCL, Paracetamol. The Defendants 2 to 4 were associated with the said Company as Directors. It is also noticed that the husband of the Plaintiff was working as Managing Director of the said Company continuously till 16th July 1996 and was looking after marketing, sales, distribution and field work for and on behalf of the said Company. It is also noticed that there was one sister Company of the said Company in the name of Janus Remedies Private Limited. Both these Companies, however, have gone in liquidation. M/s.Janus Pharma Private Limited has been ordered to be wound up in terms of the decision of the Company Court dated 15th July 2004 in Company Petition No.782 of 1997, whereas, M/s.Janus Remedies Private Limited has been ordered to be wound up in terms of the decision of the Company Court dated 9th August 2005 in Company Petition No.781 of 1997. These are some of the admitted facts as can be culled out from the record. 3. The Plaintiff asserts that the trade mark COLIVON-D was assigned to the Plaintiff under a : 4 : Deed of Assignment dated 27th October 2005 by one Narsinh Prabhu, proprietor of M/s.Field Marc Services. The Plaintiff claims to be the sole proprietress of Ayurpriya and is engaged in carrying on business of manufacture and dealer in pharmaceuticals and medicinal preparations. The Plaintiff asserts that her predecessor commenced the business of manufacture and dealer in pharmaceutical and medicinal preparations in the year 1992 and was dealing in manufacture and sale of product COLIVON-D tablets which is also Dicyclomine HCL, Paracetamol. The Plaintiff asserts that she has acquired exclusive right of user through her predecessor in respect of the registered trade mark COLIVON. The Plaintiff has also relied on the sales figures as well as the annual expenditure for the product, for the period 1996-97 till date, in respect of the trade mark COLIVON. The Plaintiff asserts that the Plaintiff by extensive sales and vigorous promotions of the product in the trade mark COLIVON and the expenditure incurred thereon has built up a large and valuable reputation and goodwill for the goods bearing the registered trade mark COLIVON, which : 5 : came to be exclusively associated with the Plaintiff by the members of the profession/trade and public. The Plaintiff has approached this Court alleging infringement of her trade mark COLIVON and also for passing off action against the Defendants who are marketing their product as the goods of the Plaintiff by using trade mark COLIVAN which is deceptively similar trade mark with respect to pharmaceutical and medicinal preparations and also passing off their goods as the goods of the Plaintiff while using and/or selling in respect of their goods, the label and packing similar to that of the Plaintiff. According to the Plaintiff in or about November 2006, the Plaintiff learnt that the Defendants were committing such mischief of infringement of trade mark and passing off as referred to above by using mark COLIVAN and deceptively similar colour scheme for the packing. On these allegations, present action has been brought by the Plaintiff. 4. The Defendants, on the other hand, asserts that the Defendants’ predecessor M/s.Janus Pharma Pvt. Ltd. were the users of mark COLIVAN-D for : 6 : their pharmaceutical and medicinal preparations from earlier point of time since 1981-82. The Defendants by virtue of Deed of Assignment have acquired the exclusivity to the trade mark COLIVAN-D. The Defendants assert that the registration of mark COLIVON taken in the name of Narsinh Prabhu was fraudulent from its inception. In that, Narsinh Prabhu is the son of Mr.U.R.Prabhu (who is husband of the Plaintiff). The said U.R.Prabhu was working as Managing Director of the predecessor of the Defendants. While in service, he floated two proprietary firms one under the name of M/s.Field Marc Services (proprietor Narsinh Prabhu s/o U.R.Prabhu) and other in the name of Ayurpriya (Proprietress Supriya Prabhu w/o U.R.Prabhu). The Defendants have relied on figures for the relevant period regarding sales and marketing since 1980-81 in respect of their product COLIVAN-D tablets. The said chart refers to sales figure in respect of Janus Pharma Pvt.Ltd. for the said product from 1980-1981 till 1999-2000. For the latter period from 2000-2001 to 2004-2005, the same is shown under the name of Janus Remedies Pvt.Ltd. and for the period from 2004-2005 to : 7 : 2006-2007, it is shown in the name of Defendant No.1 Janus Remedies, which is a partnership firm. The Defendants also assert that in fact the predecessor of the Plaintiff after entering the market to deal in the produce COLIVON-D tablets, introduced the packing in pink colour, whereas, the scheme and colour of the packing adopted by the predecessor of the Defendants in 1996 was entirely different. In fact, the Plaintiff has now adopted and copied the colour scheme of the packing which resembles to that of the packing used by the Defendants for their product in green colour. Besides, the Defendants are relying on several bills issued in the name of Field Marc Services relating back to 1996 which would indicate that the said firm was purchasing tablets COLIVAN-D from the predecessor of the Defendant. The Defendants also assert that it is necessary for the Plaintiff to establish as to how it has become the originator of the word COLIVON to succeed in the present action. In substance, the case of the Defendants is that the registered trade mark taken by the predecessor of the Plaintiff, on which basis the Plaintiff asserts exclusive right of user is founded on : 8 : fraudulent claim. The Defendants’ Counsel, during the oral arguments, relied on the decisions reported in 2002(25) PTC 532 (Bom) Agromore (P) 2002(25) PTC 532 (Bom) Agromore (P) 2002(25) PTC 532 (Bom) Agromore (P) Ltd. & Anr. vs. Chembond Chemicals Ltd. & Anr., Ltd. & Anr. vs. Chembond Chemicals Ltd. & Anr., Ltd. & Anr. vs. Chembond Chemicals Ltd. & Anr., 2002(24) PTC 226 (Bom)(DB) in the case of Bal 2002(24) PTC 226 (Bom)(DB) in the case of Bal 2002(24) PTC 226 (Bom)(DB) in the case of Bal Pharma Ltd. vs. Centaur Laboratories Pvt.Ltd. & Pharma Ltd. vs. Centaur Laboratories Pvt.Ltd. & Pharma Ltd. vs. Centaur Laboratories Pvt.Ltd. & Anr., 2002(6) Bom.C.R. 696 in the case of Ipca Anr., 2002(6) Bom.C.R. 696 in the case of Ipca Anr., 2002(6) Bom.C.R. 696 in the case of Ipca Laboratories Ltd. vs. Savita Pharmaceuticals Laboratories Ltd. vs. Savita Pharmaceuticals Laboratories Ltd. vs. Savita Pharmaceuticals Pvt.Ltd. and lastly on 2003(5) Bom.C.R. 501 in Pvt.Ltd. and lastly on 2003(5) Bom.C.R. 501 in Pvt.Ltd. and lastly on 2003(5) Bom.C.R. 501 in the case of Court Receiver vs. R.R.Ommerbhoy the case of Court Receiver vs. R.R.Ommerbhoy the case of Court Receiver vs. R.R.Ommerbhoy Pvt.Ltd. & Ors. Pvt.Ltd. & Ors. Pvt.Ltd. & Ors. 5. In the first place, the question is: whether the Plaintiff has a valid registered trade mark COLIVON in respect of all kinds of pharmaceutical items included in class 5. That plea will have to be accepted having regard to the registration certificate issued by the Trade Marks Registry, Mumbai originally in favour of Narsinh Prabhu, which has now been assigned to the Plaintiff under the Deed of Assignment dated 27th October 2005. From the sales and marketing figures furnished by the Plaintiff, it is seen that the product in the trade mark of COLIVON is being : 9 : marketed by the Plaintiff and her predecessor since 1996-1997 till date, except, for the period between 2002 to 2005. 6. The next question is : whether the Plaintiff is the prior user of the trade mark COLIVON? From the materials on record, it is seen that M/s.Janus Pharma Pvt.Ltd. had got the mark COLIVAN-D tablets since 1981. However, the said Company has gone in liquidation by virtue of the order passed by the Company Judge on 15th July 2004 in Company Petition No.782 of 1997. It is well established position that the winding up action relates back to the date of institution of the Company Petition which in this case, would be year 1997. The Company meets a civil death consequent to winding up. It is not the case of the Defendants that the said Company has come out of liquidation. The defence of the Defendants is that, the said Company, which is in liquidation, is their predecessor in respect of trade mark COLIVAN-D and being prior user, the Defendants would have exclusive right to the mark COLIVAN-D, for which reason, the Plaintiff cannot succeed in : 10 : the present action. 7. The question, however, is, whether the Defendants’ claim to have legitimately succeeded to the mark COLIVAN-D, which was the registered mark in the name of M/s.Janus Pharma Pvt.Ltd.- in liquidation, is tenable. The Defendants assert that they have succeeded to the trade mark COLIVAN-D on account of some Deed of Assignment. In the first place, the Deed of Assignment is not produced before the Court. The Defendants, however, would rely on the certificate of registration of trade mark issued under Section 23(2), Rule 62(1) by the Trade Marks Registry, Mumbai to contend that the trade mark COLIVAN-D now stands registered in the name of Defendants. As rightly argued by the Plaintiff, the Certificate in Form 0-2 Exhibit 1 to the affidavit dated 11th June 2007, cannot be used in legal proceedings-which is prominently stated on the certificate itself. Significantly, the Defendants have received Food and Drug Administration (FDA) Licence only on 4th November 2004. The Defendants, therefore, could not have engaged in business of pharmaceutical : 11 : products prior to that. To the misfortune of the Defendants, the Company whom the Defendants claim to be their predecessor and having executed an assignment deed in favour of the Defendants, itself was ordered to be wound up in earlier point of time on account of order dated 15th July 2004. In law, that Company (Janus Pharma Pvt.Ltd.), therefore, could not have executed any valid Assignment Deed in favour of the Defendants. The fact that the Defendants have engaged themselves in the pharmaceutical business only after 2004-2005 is admitted in the statement Exhibit 4 appended to the Defendants’ affidavit dated 30th May 2007. The said document indicates that the product COLIVAN-D tablets was marketed by Janus Pharma (Pvt.) Ltd. between 1980 till 2000. For the period 2000 to 2005 the same was marketed by Janus Remedies Pvt.Ltd. Both these Companies, however, have gone in liquidation. From the figures indicated, the Defendants claim to be marketing the said product only since 2004 onwards. Advisedly, this disclosure is made keeping in mind the licence issued by the FDA in favour of Defendants only on 4th November 2004. In that sense, the Defendants : 12 : cannot claim that they are the prior users of the mark COLIVAN-D. Only for that reasons, it is asserted on behalf of the Defendants that they are claiming exclusivity to the said mark COLIVAN-D because of the Deed of Assignment in their favour by M/s.Janus Pharma Pvt.Ltd. As mentioned earlier, the Assignment Deed is not produced on record. Admittedly, it is not the case of the Defendants that the Assignment Deed in their favour was prior to 1997 or for that matter prior to 15th July 2004. The fact that the said Company has gone in liquidation on account of the order of the Company Court dated 15th July 2004 in Company Petition No.781 of 1997 is indisputable. Thus understood, it is incomprehensive as to how the Defendants can claim to have legitimately succeeded to the mark COLIVAN-D from M/s.Janus Pharma Pvt.Ltd. which was an independent entity. 8. In other words, the Defendants cannot claim to be legitimate assignees of the mark COLIVAN-D from the said Company. No such argument can be countenanced in the face of Section 531 of the Companies Act. As is mentioned earlier, the : 13 : Defendants 2 to 4 are none else but the former Directors of the Company in liquidation. On account of order of winding up passed against the Company, the said Company has ceased to transact through the former Directors. One of the argument of the Plaintiff is that the so called Assignment Deed relied upon by the Defendants of which inspection was given to the Counsel for the Plaintiff, would reveal that there is some interpolation in the Deed and more significantly, the signatories of same persons as assignors as well as assignees. It is debatable that assignor and assignee can be one and the same person. It only means that the Defendants 2 to 4 represented themselves to be the assignors on behalf of the Company in liquidation as well as assignees to give right to the Defendant No.1, their partnership firm. Here, I may record that I am not going into the correctness of this stand of the Plaintiff, nor basing my decision on this count. But, if this is true, the said Assignment Deed will be of no avail to the Defendants. Be that as it may, as mentioned earlier, the Company in liquidation could not have transferred any right or entered into Deed of : 14 : Assignment in respect of the registered mark COLIVAN-D and such Deed of Assignment even if existing would be invalid in view of Section 531 of the Companies Act. 9. Faced with this situation, the Defendants Counsel has placed heavy reliance on the decision of the Single Judge of this Court in Ipca Ipca Ipca Laboratories Ltd. (supra) Laboratories Ltd. (supra) Laboratories Ltd. (supra) particularly Paragraphs 28, 29 and 35 thereof. In Paragraph 28, the learned Judge has referred to Full Bench decision in the case of Abdul v. Mahomedaly reported in 3 Bom.L.R.220. In Paragraph 29 of the said decision, reference is made to the exposition in the case of Prem Singh v. M/s.Ceeam Auto Industries reported in AIR 1990 (Delhi) 233. It will be useful to advert to the said Paragraphs 28, 29 and 35 of that decision, which read thus: "28. Mr. Saraf fairly invited my attention to a judgment of the Full Bench of this Court in the case of (Abdul v. Mahomedaly), reported in 3 Bom.L.R. 220. The Full Bench accepted the evidence of a witness of the plaintiff who deposed thus:- : 15 : "I first collected the bottles of the European makers who had the largest sales. Waterlow and Sons, Lyons and Co., Stephens and Hollidge were four of the principal ones...... The label designed was by combination of all four labels." The evidence of the plaintiff himself differed from that of his witness. The Full Bench accepted the evidence of the plaintiff’s witness and proceeded on that basis. Thus the original label was a deliberate combination of the four labels of the leading ink manufacturers Waterlow & Sons, Lyons & Co., Stephens & Sons and Hollidge. On behalf of the appellant (defendant) it was submitted that the labels or trade marks were so tainted in their conception and origin that it could not form the basis of any relief; and in any case not of an injunction. The Court came to the conclusion that the label was calculated to mislead the public. The question before the Full Bench was whether the use of the mark by the respondent/plaintiff itself being tainted, the respondent/plaintiff was entitled to an injunction against the third party. Chief Justice Jenkins held as under :- "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 Ltd. v. The American Leather Cloth Company Ltd. (1) : "These conclusions seem to follow : 16 : 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....." It was further contended on behalf of the respondent that the four ink companies had not taken any proceedings against the respondent/plaintiff and therefore, that to which they might have objected had become publici juris. The contention was rejected on the ground that what is publici juris for the plaintiff is also such for the defendant. The result, it was held, was that the marks of the plaintiff was not such as to entitle it to the relief of an injunction." "29. Again Mr. Saraf fairly invited my attention to a judgment of the Delhi High Court in the case of (Prem Singh v. M/s. Ceeam Auto Industries) 2, reported in : 17 : A.I.R. 1990 Delhi 233. The Delhi High Court followed the judgment in the case of Abdul v. Mahomedaly, reported in 3 Bom.L.R. 220. On behalf of the defendant, it was submitted that Waxpol Industries and not the plaintiff was the original owner of the impugned design and therefore the plaintiff was not entitled to an injunction against the defendant. he Counsel for the plaintiff, however submitted that this had no bearing insofar as the disputes between the parties to the suit inter se were concerned. In paragraphs 19, 21 and 23 it was held as under:- "19. The principle to guide in such cases where both contending parties before the Court are shown to be pirators of a third person’s property in trade mark or copyright has been very succinctly, but pointedly outlined in Kerly’s Law of Trade Marks and Trade Names, 12th Edn. at page 314 by laying down that the Court may refuse to interfere to protect the use of a deceptive trade mark, on the basis of the maxim; ex turpi causa non oritur actio, i.e. an action does not arise from a base case. According to him, it can be a defence to an action for an infringement, that the mark sued upon is invalid, and that one of the grounds of invalidity is that the mark is "disentitled to protection in a Court of justice......" 21. The instance of cases of concurrent right which are given at pages 418, 419 inter alia are that both the parties are equally unmeritorious, in : 18 : the sense that the impugned mark or design is neither distinctive of the plaintiff nor of the defendant i.e not distinctive of either party or that the goodwill which the plaintiff seeks to protect is vested in neither of them. 23. When therefore in a given case it becomes apparent, that plaintiff’s own conduct is tainted and he himself is prima facie an imitator of another person’s design; then the Court would not normally at the pre-trial stage, afford him protection, on the ere assertion or averments in the plaint, which the defendant has succeeded in showing to be prima facie unfounded or even false." In the case before me of course the defendant says it is manufacturing the products under a License from JUSTEEN and that it is not a pirator. Added to that in the fact that the plaintiff’s agreement with JUSTEEN permits such an agreement between JUSTEEN and others." "35. Firstly the judgment in Omega Ag Seeds is per incuriam. It has not considered the decision of the Full Bench in 3 Bom.L.R. 220. Secondly the decision in 3 Bom.L.R. 220 is biding on this Court. The aforesaid judgments of the Delhi High Court and another judgment of the Delhi High Court in Jai Prakash Gupta v. Vishal Aluminium Mfg. Co., 1996(16) P.T.C. 575 being contrary to the Full Bench decision of this Court, are of no assistance to the plaintiff. Lastly a judgment sub-silentio cannot be relied upon as a precedent. : 19 : I may however mention that subsequently in (Baldev Singh v. Godran Rubber Plastic Industries), 1999(79) Delhi Law Times 517, a learned Single Judge of the Delhi High Court held that a pirator is not entitled to protection of a trade mark or design." 10. True it is that the principle of ex turpi causa non oritur actio, which means "an action does not arise from a base case" should be kept in mind. In the present case, assuming that both the parties have been found to be the pirators of a third person’s (M/s.Janus Pharma Pvt.Ltd.) propriety right in trade mark COLIVAN-D; even so, the Defendants are pirators of the highest order. Inasmuch as, the Defendants 2 to 4 were fully aware of the order of winding up passed against the Company, in which, they were Directors at the relevant time. They cannot be permitted to walk away with the illegality as the Deed of Assignment on which they would seek to rely in law will have to be treated as non-est being a fraudulent preference. The Defendants, therefore, cannot claim to be prior users of the registered mark COLIVAN-D in their own rights as such. : 20 : 11. To get over this position, reliance is placed on the decision in the case of Court Court Court Receiver vs. R.R.Ommerbhoy (supra) Receiver vs. R.R.Ommerbhoy (supra) Receiver vs. R.R.Ommerbhoy (supra), particularly Paragraph 29 thereof, in which, the learned Single Judge of this Court has adverted to the decision of our High Court reported in LXXVI Bom.L.R. 146 in the case of Hindustan Embroidery Mills Pvt.Ltd.vs. K.Ravindra and Company. The extract from the said decision reproduced in Paragraph 29 reads thus: "It is not the practice to consider the validity of the