IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT : THE HONOURABLE MR. JUSTICE K.PADMANABHAN NAIR THURSDAY, THE 17TH JANUARY 2008 / 27TH POUSHA 1929 FAO.No. 367 of 2007() --------------------- ORDER IN IA NO.4726/2007 IN OS.61/2007 of VI ADDL.DISTRICT COURT, ERNAKULAM .................... APPELLANTS/RESPONDENTS 1 TO 3 IN I.A. ------------------------------------------------------ 1. S.SHARAFUDHEEN, T.C.43/940, NAZAR MANZIL, KAMALESHWARAN, THIRUVANANTHAPURAM. 2. BIMBIS SWEETS AND CONFECTIONARY, OPP. LIC PATTOM, THIRUVANANTHAPURAM, THROUGH PROPRIETOR/PARTNER. 3. BIMBIS SWEETS AND CONFECTIONARIES PAZHAVANGADI, FORT, THIRUVANANTHAPURAM. BY ADV. SRI.P.RAMAKRISHNAN SRI.BABU PAUL RESPONDENT: PLAINTIFF. ----------------------- PUTHIYA VEETIL AHAMED ABDUL GAFOOR, PROPRIETOR OF M/S. BIMBI FAST FOOD & SWEETS, D.H.ROAD, COCHIN. BY ADV. SRI.M.RAJAGOPALAN SRI.RAJIT THIS FIRST APPEAL FROM ORDERS HAVING BEEN FINALLY HEARD ON 17/01/2008, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING: K. PADMANABHAN NAIR ,J. ------------------------------------------------- F.A.O.No.367 of 2007 ------------------------------------------------- Dated, this the 17th day of January, 2008 JUDGMENT The defendants in O.S.No.61/2007 on the file of the District Court, Ernakulam are the appellants in this First Appeal from Order. This appeal is filed against an order passed by the District Judge allowing I.A.No.4726/2007 filed under Order XXXIX Rules 1 and 2 of Code of Civil Procedure for an order of temporary injunction restraining the appellants from passing off any goods or food items under the trade mark BIMBIS or any other trade mark identical or deceptively similar to the label BIMBIS and using the above trade mark in any way infringes respondent's right till the disposal of the suit. 2. The respondent filed a suit for a decree of permanent prohibitory injunction restraining the appellants from committing any act which will amount to infringement of the registered trade mark as he is the sole proprietor of M/s.Bimbi Fast Food & Sweets. The respondent is doing business at Durbar Hall Road, Kochi. He filed the suit against the appellants mainly for the following reliefs: (a) Pass decree of permanent injunction thereby restrain the Defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf from manufacturing and/or selling and/or marketing and/or advertising FAO No.367/2007 2 and/or dealing in any manner directly or indirectly of sweets, pastry items, non- vegetarian food products, etc. or any other goods under the impugned mark BIMBIS or any other mark identical or deceptively similar to the plaintiff's trade mark/label BIMBIS amounting to infringement of the plaintiff's trade mark/label BIMBIS registered under No.538723 and (b) pass decree of permanent injunction thereby restrain the defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf from using the name or part of name as BIMBIS or BIMBIS Sweets & Confectionery or any other name or part of name identical or deceptively similar to the plaintiff's said trade mark/label BIMBIS amounting to infringement of the plaintiff's trade mark/label BIMBIS registered under No.538723 and (c) pass decree of permanent injunction thereby restrain the defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf from visual representation and/or publication and/or reproduction or name and/or mark BIMBIS or any other name/mark in design, get up, font, etc. identical/deceptively similar to the plaintiff's trade mark/label BIMBIS on any packaging, printing material, carton, letters pad, sign board, publicity material, etc. amounting to infringement of the plaintiff's copyright in art work of the label BIMBIS. 3. Along with the suit the respondent filed I.A.No.4726/2007 for an order of temporary injunction restraining the appellants from manufacturing, FAO No.367/2007 3 selling, marketing, advertising, dealing in any manner directly or indirectly of sweets, pastry items, non-vegetarian food products, etc. or any other goods under the impugned mark BIMBIS or any other mark identical or deceptively similar to the respondent's trade mark/label BIMBIS amounting to infringement of the respondent's trade mark/label BIMBIS registered under No.538723 and also from using the name or part of name BIMBIS Sweets & Confectionery or any other name or part of name identical or deceptively similar to the respondent's trade mark BIMBIS and for other reliefs. 4. In the affidavit filed in support of the petition it was averred that the respondent is carrying on business of running and managing restaurant, manufacturing and trading of sweets, bakery, confectionery and various other goods since the year 1987. Respondent had adopted the trade mark BIMBIS represented in a special style and in particular manner in the year 1987 itself in respect of the said goods/business and since then have been using it openly, continuously, extensively and uninterruptedly without any hindrance from any corner. It was further averred that he intendes to open a chain of the said business through out the State of Kerala under the name BIMBIS and at present having three out lets. The word BIMBIS is the most imminent features of the trading style of respondent's firm M/s.BIMBIS Fast Food & Sweets and trade name BIMBIS shall always associate with the respondent's concern only. It was further averred that he is the first adopter, originator, inventor, true owner and lawful proprietor of FAO No.367/2007 4 the trade mark and trade name/label BIMBIS in respect of said goods/business and as such has exclusive right under the common law to use it for his said goods/business and has got a right to restrain others if they use any identical/deceptively similar mark in respect of any goods/business. It was also averred that apart from the proprietary rights on account of prior user respondent is also having statutory right to exclusive use of the said trade mark BIMBIS by virtue of registration of trade mark/label BIMBIS bearing No.538723 dated 22.10.1990 in class 30 in respect of food preparations made from cereals for human consumption included in class 30 for various items. That registration is valid and subsisting. It was further averred that the respondent's trade mark/label BIMBIS is represented in distinguishable colour scheme, font, design, placement of words, get up, etc. which is an original art work and as such copyright in art work of said trade mark/label is exclusively vested in him. He is having registration of the art work of trade mark/label BIMBIS bearing No.A-32346/93 under the Copyrights Act, 1957 also. It was averred that on account of the superior quality of the goods/business under the trade name/label BIMBIS for long period of times, respondent's trade name and trade mark have acquired a high degree of recognition, reputation and goodwill among the customers. The said trade mark and trade name/label BIMBIS have become exclusively associated with the respondent and synonymous with the respondent. It was also averred that respondent have given wide publicity through various medias. During the last FAO No.367/2007 5 week of June, 2007 the respondent came to know that the appellants are using the name of BIMBIS Sweets & Confectionery for their shops, restaurants and selling sweets, pastry items and non-vegetarian food products, etc. under the trade mark/name BIMBIS and reproducing/printing the mark BIMBIS on packaging, carton, etc. It was averred that the appellants have started a new restaurant in Pattom at Thiruvananthapuram. A perusal of the invitation issued by the appellants shows that the reference was made to the outlets operated by respondent's concern to make it appear that the new outlet opened by the appellants is a part of the restaurant operated by the respondent. Many customers of the respondent made enquiries regarding the opening of the new outlet. Hence on 30.6.2007 a notice was issued to the appellants to desist from using the trade mark/label BIMBIS. But the appellants had not complied with it. It was further averred that the appellants are still using the trade mark and trade name BIMBIS which is identical/deceptively similar to the respondent's trade mark and trade name/label BIMBIS with fraudulent and malafide intention to trade upon the goodwill and reputation of the respondent. The appellants have used the trade mark BIMBIS and reproduced/represented the mark BIMBIS in design, get up, font, etc. similar to the respondent's label BIMBIS and thereby committed guilty of infringement of respondent's trade mark/label BIMBIS. They are also guilty of infringement of copyright in art work of label BIMBIS and passing off goods as that of respondent. It was averred that common unwary customers are likely to be FAO No.367/2007 6 confused due to the similarity of the trade mark of the appellants with that of the respondent. It was further stated that said act of the appellants are causing heavy loss and injury to the respondent. The respondent is not manufacturing or selling any non-vegetarian food items under the name BIMBIS but the appellants are trading in non-vegetarian food items under the label BIMBIS and the same had caused loss of various vegetarian customers. It was averred that the appellants have no right or justification whatsoever for the adoption and use of the impugned trade mark BIMBIS and/or trade name BIMBIS Sweets & Confectionery. It was further averred that on account of the unlawful act of the appellants the respondent has suffered heavy loss. Hence the petition for injunction to restrain the appellants. 5. The appellants entered appearance and filed a counter affidavit in the following manner: The third appellant is the sole proprietor for appellants 1 and 2. It was contended that respondent obtained an exparte order of injunction by suppressing material facts. It was contended that on 12.5.2004 third appellant started a bakery store at Pazhavangadi, Thiruvananthapuram which is dealing mainly with bakery products such as bread, cake and other food items. The said shop was inaugurated in the presence of the respondent who is a close relative of third appellant. The inauguration photographs are available with the respondent which will show that the said business was started with the blessings of the respondent himself. It was contended that in view of the flourishing nature of the FAO No.367/2007 7 business the appellants opened another shop room at Pattom, Thiruvananthapuram which was inaugurated by the Hon'ble Minister for Law during June, 2007. The business of the appellants is growing fast which created a professional jealousy in the mind of the respondent and on account of such jealousy the suit was filed. It was contended that respondent is running a shop under the name and style 'Bimbie Fast Food & Sweets' whereas the appellants' shop name is 'Bimbis Sweets and Confectionery'. It was also contended that Bimbis is the name of the shop wherein all the bakery products are available. It was contended that the shop of the respondent is situated at Ernakulam whereas the shop of the appellants is situated at Thiruvananthapuram and there is no deceptive similarity with the respondent's shop at Ernakulam. In paragraph 14 of the counter affidavit it was specifically contended that the appellants have not committed any offence of infringement as alleged in the plaint. The logo of the appellants is not similar to that of the respondent. It is also contended that appellants have registered their business with the Sales Tax Authorities at Thiruvananthapuram on 2.11.2004 and with the Assistant District Industries Officer, Thiruvananthapuram on 12.5.2004. It was contended that the respondent obtained an exparte order of injunction suppressing the material facts. The appellants have applied for registration before the Trade Mark Registration Authorities at Chennai. A comparison of the two logos will show that there is no similarity or infringement of the trade mark. It was contended that the respondent had no authority to file a suit before a court at FAO No.367/2007 8 Ernakulam and the court at Ernakulam will have jurisdiction only if the appellants have committed any infringement of trade mark. It was contended that that is a matter which requires proof and the respondent is not entitled to get any injunction as the court below was not having any jurisdiction. It was also contended that the appellants started the business during 2004 at Thiruvananthapuram but the suit was filed on 19.10.2007. Since the suit is filed after three years after that date, the suit is barred by limitation. It was further contended that the appellants have started the business very recently and it is very negligible as compared to the business of the respondent. So they prayed for the dismissal of the injunction application. 6. The court below after considering the pleadings and evidence found that the respondent had established a prima facie case and passed an order of temporary injunction. Aggrieved by the order of temporary injunction the defendants have filed this F.A.O. 7. The learned counsel for the appellants has argued that there is absolutely no material to pass an order of temporary injunction in this case. It is argued that the court below did not compare the trade mark and logo of the respondent with the trade mark and logo of the appellants. It is also argued that the courts at Ernakulam have no jurisdiction to entertain a suit of this nature. It is argued that the suit is barred by limitation. According to the appellants the court below has not considered the effect of the changes made by the new Trade Marks FAO No.367/2007 9 Act, 1999 and the court below proceeded as if the suit is filed under the Trade Marks Act, 1958. 8. The main contention raised is that the court below has no territorial jurisdiction to entertain the suit. It is argued that the suit filed by the respondent/plaintiff is for a passing off and such a suit can be filed only before the court within whose jurisdiction the appellants/defendants are residing. Section 134 of the Trade Marks Act is relied on by the counsel for the appellants. It reads as follows: “134.Suit for infringement, etc., to be instituted before District Court.-(1) No suit - (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. (2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.” FAO No.367/2007 10 A reading of the Section makes it very clear that if the suit is for the infringement of a registered trade mark or relating to any right in a registered trade mark notwithstanding the provisions contained in Section 20 of Code of Civil Procedure the plaintiff can file the suit before the District Court within whose jurisdiction he is doing business. But a suit for passing off is to be filed in accordance with the provisions contained in Section 20 of Civil Procedure Code. A reading of Section 134(2) shows that in case falling under Section 134(1)(a) and (b) an option is to be given to the plaintiff. He may either file the suit before the District Court where the defendants are residing or before the District Court within the local limits of whose jurisdiction the plaintiff actually and voluntarily resides or carries on business. The provisions contained in Sub-section (2) of Section 134 can have no application to a suit for passing off alone. In such a case a suit can be filed only in accordance with the provisions contained in Section 20 of CPC, that is to say, the District Court within whose local limits the defendant resides or carries on business. 9. If the reliefs sought for include a relief under clause (a) or (b) of Sub-section (1) of Section 134 and also passing off the suit can be filed in the District Court where the plaintiff resides or carries on business. Learned counsel for the appellants has argued that this is a suit for passing off alone. The learned counsel for the respondent/plaintiff has pointed out that in the cause title of the FAO No.367/2007 11 plaint itself it was specifically stated that it is a suit for permanent injunction restraining infringement of registered trade mark, copy right, rendition of accounts, etc. It is argued that in paragraph 15 of the injunction application it is very specifically stated that appellants/defendants are guilty of infringement of respondent/defendant's trade mark/label BIMBIS, infringement of copyright in artwork of label BIMBIS and passing off its goods as that of the respondent/plaintiff in furtherance of its evil design and motives. It is argued that such a contention is reiterated in other paragraphs also. 10. Appellants had specifically contended that they have not infringed the trade mark of the respondent. It is contended that even a casual appearance there are lot of differences between the trade marks of appellants from that of the respondent. In the objection it was contended that whether there is actual infringement or not can be decided only after taking evidence. In paragraph 21 of the counter affidavit it was specifically contended that the respondent was not entitled to file a suit before a court at Ernakulam. It is argued that the the court at Ernakulam will have jurisdiction only if the appellants have committed any infringement of trade mark. It is also argued that whether there is infringement or not is a matter which requires proof. In case the respondent fails to adduce evidence he may not get any relief. It is not possible to accept the argument of the appellants that only on proof of infringement the respondent/plaintiff can FAO No.367/2007 12 maintain a suit before a court at Ernakulam. In the plaint as well as in the injunction application there were averments to the effect that the appellant infringed the trade mark of respondent. Those averments were denied by the appellants. So there is prima facie materials to show that the case at hand is one filed under Clause (a) of Sub-section (1) of Section 134 of the Act also. It is trite law that for the purpose of considering an application for injunction the court need only examine whether there is a prima facie case. I am of the view that it is not possible to hold that courts at Ernakulam are not having jurisdiction to entertain this suit. Whether there is infringement or not is a matter which requires proof. So the proper course open to me is to leave that issue to be considered by the trial court at appropriate stage. It is made clear that the findings of the court below or by this Court in this judgment will not be a bar for the court below to consider that issue. If such a contention is raised in the written statement the same shall be considered in accordance with law, untrammeled by any observations contained in this judgment. 11. The second contention raised is that the suit is barred by limitation. According to the appellants they started the business in the year 2004. The suit is filed in the year 2007, i.e., after three years after the date on which the appellants opened their shop. According to the appellants the respondent/plaintiff was present at the time of inauguration and it was with his blessings he started the FAO No.367/2007 13 business. In the counter affidavit filed by the appellants to I.A.No.5234/2007 it was stated that the first shop was inaugurated in the presence of the respondent/plaintiff who is a close relation of appellants/defendants' family by then PWD Minister Dr.Muneer. It is also argued that the inauguration photographs are available with the respondent. No such photographs are produced before the court below. According to the respondent he was unaware of the starting of the business by the appellants in Thiruvananthapuram and he came to know about the same in the year 2007 when the appellants started the second shop at Pattom, Thiruvananthapuram. The appellants are preparing and serving vegetarian and non-vegetarian food items whereas the respondent is preparing and serving only vegetarian food items. According to the respondent he came to know about the opening of the shop by the appellants only few days prior to the date of filing of the suit. Going by the materials available on record, at this stage it is not possible to hold that the respondent was aware of the business of the appellants from the year 2004 onwards. Further the delay alone is not a ground to dismiss the suit. 12. It is also argued that the court below has not considered the effect of the amendments brought by various provisions of the Trade Marks Act, 1999. At this stage, I am only concerned with a temporary injunction. What is the effect of repealing of Trade Marks Act, 1958 is a matter to be considered by the trial FAO No.367/2007 14 court at the time of trial. So without prejudice to the right of the appellants to raise all contentions and adduce evidence to prove those contentions at the time of trial of the suit, the appeal is only to be dismissed. In the result, F.A.O. is dismissed. I.A.No.4814/2007 IN F.A.O.No.367/2007 will stand dismissed. K. PADMANABHAN NAIR, JUDGE. cks