1 IN THE HIGH COURT OF JUDICATURE OF BOMBAY IN THE HIGH COURT OF JUDICATURE OF BOMBAY IN THE HIGH COURT OF JUDICATURE OF BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION ORDINARY ORIGINAL CIVIL JURISDICTION ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.1599 OF 2007 IN SUIT NO.1213 OF 2007 The International Association of Lions Clubs ..Plaintiffs. V/s. The Association of Lions India also known as Lions India & ors. ..Defendants. Dr. Virendra Tulzapurkar, Sr.Counsel a/w. T.N.Daruwalla with Ms.Blossom Noronha i/b. J.G.& Bilimoria & Daruwalla for plaintiffs. Mr.Rajesh Ravindran for defendants. CORAM: A.M.KHANWILKAR,J CORAM: A.M.KHANWILKAR,J CORAM: A.M.KHANWILKAR,J DATE : AUGUST 11, 2008. DATE : AUGUST 11, 2008. DATE : AUGUST 11, 2008. P.C. : P.C. : P.C. : 1. The Plaintiffs have filed the present suit for injunction and damages against the Defendants on the ground that the Defendants have infringed the registered trade mark of the Plaintiffs filed with the Registrar of Trade Marks in Mumbai; against acts of passing off, acts likely to pass off and/or acts enabling passing off by using the words LION as part of the name of Defendants and for infringement of copy right by adopting the name, designation, emblem and other insignia of the Plaintiffs’ Association which are deceptively similar to that of the 2 Plaintiffs and for infringement of copy right committed by the Defendants in substantially copying the literary work of the Plaintiffs in their Constitution and By-Laws; against acts of deceiving the public by having articles published in websites depicting the Defendants’ activities and for defamatory reports published in the Newspapers, Circulars, Websites, etc. portraying the Plaintiffs’ organisation with disrepute. 2. Briefly stated, the Plaintiffs have asserted that it is an Association organized and incorporated as a non-profit Organisation in the State of Illinois, having their International Office at 300 W, 22nd Street, Oak Brook, Illinois 60523, U.S.A. and their Area Office at 144, Free Press House, Nariman Point, Mumbai 400 021. The Plaintiffs’ claim that they are known as "THE INTERNATIONAL ASSOCIATION OF LIONS CLUBS" and as "LIONS CLUBS INTERNATIONAL" and are also known as "LIONS CLUBS" or "LIONS CLUB". In paragraphs 2 to 12 of the plaint, the Plaintiffs have given the description of the concerned Defendants. The Plaintiffs assert that the 2nd, 3rd, 7th, 9th, 11th, 13th, 15th, 17th and 21st Defendants are affiliated to the 1st Defendants viz. LIONS INDIA at Jabalpur, Madhya Pradesh. The Plaintiffs further 3 assert that the Defendant Nos.1,2,3,7,9,11,13,15,18 and 21 are bodies organised and/or incorporated or registered or existing under the Societies Registration Act or laws relating to Public Trusts. The Plaintiffs have also asserted that the Defendant Nos.4,5,8,10,12,14, 16,17,19 and 20 who now claim to be associated with the concerned Defendant organisation in the past were members or office bearers of the Plaintiffs’ member Clubs. In respect of some of the Defendants it is stated that they are still members of the Plaintiffs’ member clubs. The Plaintiffs then assert that the present Suit has been filed to claim relief against wrongful adoption and dishonest use by the Defendants of their Association/Club name which includes the trade mark LION/LIONS; and acts of infringement of registered trade marks of the Plaintiffs such as "LION", "LIONS CLUBS", "LIONESS", "LEO" and emblems; and acts of passing off and/or acts enabling passing off; and infringement of copyright, as committed by the Defendants, interalia, by adopting the name, designation, emblem and other insignia of the Plaintiffs Association and even the literary work described in the plaint which are deceptively similar to and a fraudulent imitation of those of the Plaintiffs. The Plaintiffs assert that the Defendant 4 Nos. 2,3,7,9,11,13, 15,18 and 21 are using the word "LION" by reason of their affiliation with Defendant No.1 and have a common interest and hence common questions of facts and law arise in the present suit, for which, the Plaintiffs have filed one suit joining all Defendants together. 3. After giving this background, the Plaintiffs have asserted in paragraph-14 of the plaint that in 1917 a gentleman Mr. Melvin Jones, a Chicago Insurance Agent, in a meeting of several prominent businessmen convinced them to form themselves into an Organisation that would be dedicated to improvement of the community as a whole. It is stated that thereafter, various clubs known as "LIONS CLUBS" came into existence for doing social work at a Convention in Dallas, Texas, U.S.A.Delegates representing several "LIONS CLUBS" agreed to be known as "THE INTERNATIONAL ASSOCIATION OF LIONS CLUBS". It is stated that the Plaintiffs Association was formed in 1917 and has its own Constitution and Bye Laws. The Plaintiffs assert that the Plaintiffs Association was established for the purpose of organising, chartering and supervising service clubs to be known as "LIONS CLUBS" and to co-ordinate the activities and to standardize the administration of "LIONS CLUBS". It 5 is stated that the members of "LIONS CLUBS" are duly organised and chartered under the provisions of the Constitution and the Bye-laws. It is stated that "LIONS CLUBS" are organised and chartered in any Municipalities, or their equivalent Government Sub-Divisions. It is further stated that in any Municipality or its equivalent Governmental Sub-Division, having more than one Club, each Club has to add a distinguishing designation to such name. It is further stated that the membership to Plaintiffs Clubs is by invitation only and when inducted as a member, each Club is handed over a kit by the Plaintiffs, which kit includes the Constitution and Bye-laws of the Plaintiffs, Certificate of Membership by the Plaintiffs, the Welcome Magazine which includes Lions Clubs Objects and Lions Code of Ethics. The Plaintiffs have even highlighted 3rd, 6th and 8th paragraphs of the said Code of Ethics. The Plaintiffs then assert that the Constitution provides that an application for a "LIONS CLUB" Charter can be made to the Plaintiffs by any group, Club or Assembly which has been duly organised and has elected officers with a charter fee. That upon approval of application by the said International Board of Directors of the Plaintiffs, a Charter signed by the President and the Secretary of 6 the Plaintiffs’ Association would be issued to such Club. It is further stated that a "LIONS CLUB" shall be considered Chartered, when its Charter becomes official issue. The acceptance of Charter by a "LIONS CLUB" is considered to be a ratification of and agreement on its part to be bound by the Constitution and Bye-laws of the Plaintiffs’ Association and submission by the said "LIONS CLUB" to have its relationship with the Plaintiffs Association interpreted and governed by the Constitution and Bye-laws according to the law in effect, from time to time, in the State of Incorporation of the International Association of Lions Clubs. According to the Plaintiffs, the Constitution and Bye-laws of the Plaintiffs’ Association constitutes a contract between the members of the Chartered Clubs and the Plaintiffs. Besides, it is stated that any Chartered Club is entitled to resign from the Association and the said resignation is to be effective upon acceptance thereof by the International Board of Directors. Further the International Board of Directors is entitled to withhold acceptance, however, until all indebtedness have been paid, all club funds and property have been properly disposed of and the club charter has been returned and all rights to the use 7 of the name "LIONS", the emblem and other insignia of the Association has been surrendered. It is stated that the Plaintiffs’ Constitution provides that no person shall simultaneously hold membership, other than Honorary or Associate, in more than one "LIONS CLUB"; and no person shall simultaneously hold membership, other than Honorary, in a "LIONS CLUB" and any other service club of like character. According to the Plaintiffs, as at present, there are more than 45,300 "LIONS CLUBS" all over the world, including the "LIONS CLUBS" in India. The Plaintiffs Organisation has over 1,55,000 members in over 4,900 Chartered Clubs situated in 59 Districts in India. 4. In paragraph-15 the Plaintiffs have asserted that the Plaintiffs Area Office in Mumbai provides administrative support to Lions Clubs leaders and members in India, Sri Lanka, Nepal, Bangladesh, Thailand, Malayasia, Brunie, Singapore, Hong Kong and Macau. It is stated that dues consisting of annual subscriptions, entrance fees, LEO CLUB/LIONESS CLUB charges etc. from the LIONS CLUBS in India are all paid to the Mumbai Office. Every month the Mumbai office sends out statements of account to each LIONS CLUBS in India. It is further stated that the Mumbai office supervises the printing of the "THE LION" 8 magazine which is mailed to each member in the countries mentioned above except for Hong Kong and Macau who have their own edition in Chinese. In addition, the Mumbai office also supervises the printing and mailing of "THE LION" magazine to Indonesia and Philippines. It is further stated that the Mumbai office provides support and assistance to District Governors and Vice-District Governors and "LIONS CLUBS". The Mumbai Office also prints and causes to be manufactured material for use by each individual President, Secretary and Treasurer of each "LIONS CLUBS" for all the countries mentioned above. The Mumbai Office supervises the functioning of the various licensees in India and ensures that they pay royalties every quarter. It is stated that the Association has a Foundation titled the "LIONS CLUBS INTERNATIONAL FOUNDATION" from which grants to various projects in India are given for construction of homes, hospitals and schools in areas affected by Kutch earthquake. Construction of hospitals, Schools, vocational training centres are all financed by the Foundation. The biggest and important activity is reversing curable blindness. Grant is given for eye camps, training programs for members, doctors, paramedics, hospitals managers, construction of small hospitals managers, construction of small 9 hospitals and additions to existing hospitals for sight related problems. It is further stated that the Foundation also provides medical equipment. All these grants are monitored through the Mumbai Office. The accounts of all the grants are sent to the Financial Consultant in the Mumbai Office who checks the audited accounts before processing and sending them to the headquarters. The Plaintiffs grant non-exclusive right and license to manufacture, produce, products/goods bearing the marks and the names "LIONS", "LIONESS", "LEO, "LIONS CLUBS", "LIONS INTERNATIONAL" and "LIONS CLUBS INTERNATIONAL" on general club supplies merchandise as it appears in the 2003 edition of the Lions Clubs International Supply Catalogue with exception whenever necessary. 5. In paragraph-16, it is stated that the Plaintiffs have filed the present suit to claim reliefs against the Defendants which are mainly: a) against acts of infringement committed by the Defendants of registered trade marks of the Plaintiffs filed with the Registrar of Trade Marks in Mumbai. b) against acts of passing off, acts likely to pass off and/or acts enabling passing off by using the word lion as part of the name of Defendants Nos.1,2,3,5,7,9,13,15,18 and 21; c) against infringement of copyright, committed by the Defendants by adopting the 10 name, designation, emblem and other insignia of the Association which are deceptively similar to that of the Plaintiffs. d) against infringement of copyright, committed by the Defendants in substantially copying the literary work the Plaintiffs have in their Constitution and By-Laws entitled "Purposes". e) against acts of deceiving the public by having articles published in websites depicting the Defendants’ activities. f) against defamatory reports published in the Newspapers, circulars, Websites, etc. portraying the Plaintiffs’ organization with disrepute. 6. The Plaintiffs have asserted in paragraph-17 that the Plaintiffs and the Club members carry on various activities all over the world including in most of the metropolitan cities and most backward areas and villages in India. Plaintiffs are engaged in various social work activities such as (a) conducting Eye Camps in preventing and elimination of curable blindness; (b) performing cataract operations free of charge for the poor and the needy; (c) building hospitals and running the same for the poor and the needy; (d) building schools, colleges and playgrounds for the under-privileged; (e) establishing Vocational Training Centres; (f) establishing and running Cancer Hospitals and detection Centers, blood banks, Polio Surgery and 11 Correction activities, Map immunization of Hepatitis B and address leprosy and all the allied dreaded misnomers attached to the disease; (g) feeding the poor and the under nourished regularly on a very large scale and adopting entire villages. In times of natural disasters, the Plaintiffs have rebuilt entire townships, in Koyna, Latur, Morbi and Kakinada in East Godavari District in Andhara Pradesh. The Plaintiffs have also built nearly 100 houses for the earthquake affected people of Gujarat e.g. in Bhuj, Kuch and Ahmedabad and also built a hospital in Bhuj and 20 schools. 7. In paragraph 18 the Plaintiffs have stated that the Plaintiffs also sell and/or distribute various articles bearing the "LIONS’ emblem, LEO emblem and all of which are registered trade marks in various classification of goods. The Plaintiffs’ Association has adopted various trade marks and obtained registrations of various trade marks, collective membership marks, service marks in relation to their various services, programs, articles and merchandise all over the World including India. The marks and names "LIONS", "LEO", "LIONESS", LIONS CLUB", "LIONS INTERNATIONAL", "LIONS CLUB INTERNATIONAL" are used in general Club 12 International Supply Catalogue. 8. In paragraph 19, the Plaintiffs have asserted that because of the excellent track record of the Plaintiffs in rendering social service, the Plaintiffs receive vast amounts of donation from members of the public, Body Corporates, etc. As a result thereof Plaintiffs continue to endeavour and perform their social obligation to the Society and the nation with no profit intention. It is further stated that for the purpose of enabling the plaintiffs and Chartered Clubs to render effective work in achieving their objectives grants of money are released since 1968 onwards till today. As and when such grants are released the necessary entries are made in the records maintained by the Plaintiffs. 9. In paragraph 20 the Plaintiffs have asserted that as a result of such varied social work/activities carried out by the Plaintiffs through their Chartered Clubs in India the members of the general public throughout India identify the word LIONS or LIONS CLUB or LIONS INTERNATIONAL CLUB and/or the device/emblem of LIONS and LEOS and LIONESS and other trade marks with the goods of and services rendered by the Plaintiffs exclusively and 13 with none else. The International Association of Lions Clubs assist the various Lions Clubs to provide its services to the community. The very word LION, LIONS, LEO, LIONESS the emblem with the device of LIONS and even the word LIONISM have become a part and parcel of selfless service towards the community in general and especially in India. The said trade name and trade mark of the Plaintiffs have become very popular with the urban public and with the people at large. It is further stated in paragraph-21 that the essential and dominant features of each of the said trade mark are the words LION and/or LIONS and/or LIONESS and/or LEO and/or LIONS CLUB and/or LIONS INTERNATIONAL and/or LIONS CLUBS INTERNATIONAL and/or the device of a Lion and/or the letter "L" and/or their emblem to reflect the image of the Lions Clubs in the community, in India and the world over. These trade marks are registered in the Trade Marks Registry at Bombay. 10. It is further asserted in paragraph- 22 that such registration of the trade marks and service marks entitle and enable the Plaintiffs’ organisation to the exclusive use of such marks and identification of goods bearing the said marks and services carried on under the said marks as and that of the Plaintiffs 14 and no one else. Plaintiffs’ Association maintains strict control and ensures that no manufacturer uses the emblem or related Lion insignia or the word mark LIONS which is the prominent and dominant part of the emblem or insignia except under express permission granted by the Plaintiffs. This promotes goodwill towards "Lionism" both by its members and the general public. In order to enable the Plaintiffs to exclusively use the trade marks and render services under the said marks, the Plaintiffs have obtained registration certificates and renewed these marks from time to time. These certificates are issued by the Registrar of Trade Marks. All the said registered trade marks are valid and subsisting. The Plaintiffs have obtained registration of various trade marks, collective membership marks, service marks in relation to their various services, programs, articles and merchandise all over the World including India. It is further stated in paragraph-24 that with the advance of technology and tremendous growth in the field of computers when it became possible for enterprises, individuals, corporations and associations like the Plaintiffs to have their own websites, the Plaintiffs also registered their website on the Internet/Net work solutions in the year 1996. The Plaintiffs URL is 15 www.lions.org. The Plaintiffs website can be accessed/logged on by any member of the public having the facility of the internet connection on a computer. 11. In paragraph 25, the Plaintiffs have asserted that from the website of the Plaintiffs, members of the general public can gain access to the following: a) Seeking information about the various activities of the Plaintiffs; b) To those groups, clubs, association interested in becoming a charter club of the Plaintiffs even application forms with the necessary data is available; c) Information in general as to the various activities carried on, proposed to be carried on, projects etc. d) Conveniences in communicating with the different charter LIONS Clubs in India and abroad by displaying information about the proposed activities, meetings, help if needed, etc. to be conveyed to all the charter clubs. 12. It is further stated in paragraph-26 that since the year October, 1996 the Plaintiffs have the active Website namely www.lions.org. Almost everyday their website is being accessed by the Plaintiffs staff to provide information and use. The Plaintiffs also almost on a daily basis used to carry out search 16 on the Yahoo. Search engine as well other Search Engines such as Google, using the word/search string "LIONS" to find out whether the trade and service marks of the Plaintiffs have been infringed by any third party. It is further stated in parargraph-27 that the Plaintiffs also have an active Website on the Internet namely "www.lionnet.com" which aims to promote/help the use of the Internet by members of "LIONS CLUBS INTERNATIONAL" as well as a guide to creating Lions webpages. The above said guide provides a directory of those LIONS CLUBS, districts, multi-districts and programs all over the world including Asia. The sad webpage has a disclaimer- "You are reminded that all Lions logos are registered trade marks of LIONS CLUBS INTERNATIONAL and may only be used by LIONS CLUBS for nonprofit purposes". It is further stated that the LIONS CLUBS in India affiliated to the Plaintiffs are also described as "INDIA LIONS CLUBS". 13. In paragraph-28, the Plaintiffs have stated that the emblem of the Plaintiffs which is also the registered trade mark of the Plaintiffs has been continuously used by the Plaintiffs’ Association since decades to date. The said emblem was designed by one Maurie Blink of Santa Barbara, California. 17 Each part of the emblem has certain significance. The emblem is recognized throughout the world and is associated exclusively with the Plaintiffs. The motto of the Plaintiffs Organisation is "WE SERVE" and the slogan is "LIBERTY, INTELLIGENCE, OUR NATIONS SAFETY" for which the acronym is "LIONS". The word "LIONS" or the emblem or the device of a lion is associated exclusively with the Plaintiffs. The Plaintiffs state that to reward members performing outstanding service in LIONS CLUBS, the Clubs present them with shields, awards, momentos, lapels, pins and other regalia bearing the said emblem, as appreciation of their splendid work, so as to motivate them to do more for the less fortunate members of the community. The Plaintiffs’ trade marks including the said emblem have been used on various items made available by them. The said trade marks, name and emblem have come to be associated exclusively with the Plaintiffs by general public in India and abroad. 14. In paragraph-29, it is stated that in the recent past some members and office bearers of Plaintiffs LIONS CLUBS in India became disgruntled for reasons best known to them, and left the INTERNATIONAL ASSOCIATION OF LIONS CLUBS of 18 Plaintiffs and purported to form Clubs such as NATIONAL ASSOCIATION OF INDIAN LIONS, INDIAN LIONS, LIONS OF INDIA and/or BHARATIYA LIONS and/or combination of words before or after the word LION and/or LIONS and/or LIONESS and/or LEO and/or LIONS CLUB. One such Club was registered in Ajmer under the Rajasthan Co-operative Societies Act under the Society name The National Society of Indian Lions, Ajmer having Society Region No.99/Ajmer/1999-2000 dated 18.2.2000. The Plaintiffs assert that there were other persons describing themselves as B.Lion(Bharatiya Lion) before their names claiming as member of "Bharatiya Lions" under the Association name of NAIL. The same was clear on a perusal of the visiting card of the 5th Defendant bearing the logo displayed on the webpage of The National Association of Indian Lions another organization affiliated to and/or associated with the Defendants. It is stated that on the webpage of NAIL the logo with the words "Bharatiya Lions" Bharatiya Lions" Bharatiya Lions" similar to the 5th Defendants’ is displayed. Besides, the logo the following words appear:- "The National Association of Indian Lions is exercising primarily to unite the Indian lions Movement and the NAIL invites all Individual and Organisation to come with us in nation’s interest. The Nail is in the action for walking with other 19 Indian lions Societies that are scattered in all over India under the One banner as well as opening the new one. Indian Lions Movement is in progress and following Indian lions Societies have come into being, viz; Rajastan-3, Jabalpur(M.P.)-3, Indore(M.P.)-2, Pune(M.S.)-1, Mumbai(M.S.)-1. That the index is growing. The Plaintiffs assert that there is a nexus between the 5th Defendant and the Defendants No.1 in Suit No.1423 of 2000. In as much as, their members were once members of the Plaintiffs’ Association. 15. The Plaintiffs assert that as the aforesaid members were guilty for acts of infringement of trademarks, acts of passing off, infringement of Copyright and wrongful adoption and use of domain name namely "www.indianlions.org" the Plaintiffs filed a suit bearing Suit No.1423 of 2000 in the Hon’ble Bombay High Court against those Defendants, their Prime President Chief Secretary and Treasurer. In that suit a Notice of Motion No.1175 of 2000 was taken out by the Plaintiffs. The Court granted interim injunction in terms of prayers (a) to (e) of the Notice of Motion and also ordered the Defendants therein to pay costs. The said decision is reported in 2006(33) Bom. 79. 2006(33) Bom. 79. 2006(33) Bom. 79. 20 16. The Plaintiffs state that in the said suit No.1423 of 2000, on a Notice of Motion challenging the territorial jurisdiction of the Bombay High Court to entertain the suit, this Court vide Order dated 25.01.2006 (which is reported in 2006(33) PTC Bom 2006(33) PTC Bom 2006(33) PTC Bom 93 93 93), held that the Bombay High Court has jurisdiction to entertain and try the suit for infringement of trademarks and copyright and passing off as well. This Court therefore, granted leave to the Plaintiffs for joinder of causes of action and the Petition for Leave under Clause XIV of the Letters Patent was made absolute. 17. According to the Plaintiffs, the visiting card of the 5th Defendant T.J.Gala(sic T.G.Gala) who described himself as "B.Lion" which means Bharatiya Lion and who resided at 8D Miniland Tank Road, Bhandup, Mumbai which has the same address as of the 4th Defendant, Bachubhai Gala, and whose visiting card with the words "Bharatiya Lions" with the device of the lion was produced in cross-examination to the Defendants’ witness during the trial as the preliminary issue of jurisdiction under section 9A of C.P.Code in the abovesaid suit. Significantly, the said 5th Defendant, T.J.Gala, was the Past Region 21 Chairman, Past Cabinet Dy.