IN THE HIGH COURT OF JUDICATURE AT BOMBAY IN THE HIGH COURT OF JUDICATURE AT BOMBAY IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION ORDINARY ORIGINAL CIVIL JURISDICTION ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 640 OF 2007 NOTICE OF MOTION NO. 640 OF 2007 NOTICE OF MOTION NO. 640 OF 2007 IN IN IN SUIT NO. 449 OF 2007 SUIT NO. 449 OF 2007 SUIT NO. 449 OF 2007 Inorbit Malls (India) Private Limited ...Plaintiff V/s. Abode Builders & Developers (P) Ltd. & Ors. ...Defendants Mr.Virendra V. Tulzapurkar, Senior Counsel with H.W. Kane, A.H. Kane, Mr.Vaibhav Keni, Rahul M. Kadam, Smt.Hemlata Jain for the Plaintiff. Mr.Y.V. Divekar with Mrs.Pallavi Divekar for Defendant Nos.1 to 3. CORAM : V.M. KANADE, J. CORAM : V.M. KANADE, J. CORAM : V.M. KANADE, J. DATED : JULY 11, 2008 DATED : JULY 11, 2008 DATED : JULY 11, 2008 P.C. :- P.C. :- P.C. :- 1. Heard the learned Senior Counsel appearing on behalf of the plaintiff and the learned Counsel appearing on behalf of the defendants. 2. The plaintiff has filed the suit seeking the following reliefs :- a) that the Defendants by themselves, their directors, proprietors, partners, servants, agents, dealers and distributors be restrained - 2 - by a permanent order and injunction of this Hon’ble Court from using the impugned trade mark ORBIT or any other trade mark deceptively similar to the Plaintiff’s registered trade mark INORBIT in respect of the Defendants’ said goods and services which are same as or similar to the goods for which the Plaintiff has secured registration of its trade mark INORBIT or in any other manner whatsoever from infringing the Plaintiff’s registered trade mark INORBIT bearing Nos.884557 (Class 17), 884558 (Class 18), 1134970 (Class 03), 1134971 (Class 07), 1134973 (Class 11) and/or 1134976 (Class 26); b) that the Defendants by themselves, their directors, proprietors, partners, servants, and agents, be restrained by a permanent order and injunction of this Hon’ble Court from passing off their aforesaid goods, services and/or business as and for the wellknown goods services and/or business of the Plaintiff by the use of the impugned trade mark or trade name or style - 3 - ORBIT and/or any other trade mark or name deceptively similar to the Plaintiff’s trade mark or name INORBIT; c) that the Defendants be ordered and decreed to pay to the Plaintiffs a sum of Rs.50,00,000,00/- (Rs.50 crores only) or such other sum as this Hon’ble Court may deed fit and proper as and by way of damages suffered by the Plaintiff for the abovementioned acts of passing off and infringement committed by the Defendants or in the alternative the Defendants be ordered and decreed to render true and faithful account of the profits made by them by using the trade mark or name ORBIT in connection with their goods, services and/or business and to pay the Plaintiff the sum found due on the taking of such accounts; d) that the Defendants be ordered and directed to deliver up to the Plaintiff for destruction the goods, boards, name plates, signage, labels, - 4 - cartons, strips, advertising material, packing material, letter-heads, stationery, dies, labels, literature and all things bearing its impugned trade mark or name ORBIT; e) that pending the hearing and final disposal of the suit, the Defendants by themselves, their directors, proprietors, partners, servants, agents, dealers and distributors be restrained by a temporary order and injunction of this Hon’ble Court from using the impugned trade mark ORBIT or any other trade mark deceptively similar to the Plaintiff’s registered trade mark INORBIT in respect of the Defendants’ said goods and services which are same as or similar to the goods for the Plaintiff has secured registration of its trade mark INORBIT or in any other manner whatsoever from infringing the Plaintiff’s registered trade mark INORBIT bearing Nos.884557 (Class 17), 884558 (Class 18), 1134970 (Class 03), 1134971 (Class 07), 1134973 (Class 11) and/or 1134976 (Class 26); - 5 - f) that pending the hearing and final disposal of the suit, the Defendants by themselves, their directors, proprietors, partners, servants, agents dealers and distributors be restrained by a temporary order and injunction of this Hon’ble Court from passing off their aforesaid goods, services and/or business as and for the wellknown goods services and/or business of the Plaintiff by the use of the impugned trade mark or trade name or style ORBIT and/or any other trade mark or name deceptively similar to the Plaintiff’s trade mark or name INORBIT; g) for interim and ad-interim reliefs in terms of prayers (e) and (f) above; h) for costs of the suit; i) such further and other reliefs which the Hon’ble Court thinks fit and proper in the circumstances of the case be allowed." - 6 - 3. It is the case of the plaintiff that on 1.1.1999, the plaintiff was incorporated as K. Raheja Malls Limited. Sometime in November, 1999, the plaintiff conceived of an idea of using Trade Mark "ORBIT" in respect of retailing and entertainment services which it proposed to offer in its "Inorbit Mall". The plaintiff applied for registration of the trade mark and it was granted on 1st November, 1999 vide Nos.884557 and 884558 in respect of Classes 17 and 18 respectively and also vide application nos.884556, 884559, 884560 and 884561 in respect of Classes 16, 20, 21 and 28 respectively. Accordingly, the name of the plaintiff was changed to Inorbit Malls (India) Limited. Thereafter, on 19th September, 2002, the plaintiff applied for and secured registration of trade mark "Inorbit" vide 1134970, 1134971, 1134973 and 1134976 in classes 3, 7, 11 and 26 respectively. Thereafter, on the same date, the plaintiff applied for registration of trade mark in respect of Classes 9, 14 and 24 respectively. On 13th March, 2003, the name of the plaintiff was changed from Inorbit Malls (India) Limited - 7 - to Inorbit Malls (India) Pvt.Ltd. 4. Sometime in October 2005, the plaintiff came to know the shop mall by name ORBIT MALL had come up in Jaipur and it was using the trade mark ORBIT in respect of shopping mall and the goods sold thereunder. It is the case of the plaintiff that the defendants were passing off their goods and services for the plaintiff’s well known services and goods. The plaintiff gave a notice dated 6th October, 2005 calling upon the defendants to desist the use of the impugned trade mark. The reply was given by the defendants dated 31st October, 2005 in which it was stated that the second defendant was carrying on business in the name of ORBIT HYPER MARKET and there was no similarity between INORBIT and ORBIT and that the word "INORBIT" had no meaning whereas the word "ORBIT" had a definite meaning. The plaintiff thereafter had filed suit when the defendants refused to desist use of the impugned trade mark. 5. Dr.Tulzapurkar, learned Senior Counsel appearing for the plaintiff has invited my attention to the - 8 - registered trade marks which are annexed at Exhibit B, C-1, C-2, C-4, C-5, C-6 and also the applications which are made in respect of other classes of goods which are Exhibit C-7, C-8, C-9, C-10 and C-11. It is submitted that the plaintiff had acquired a huge reputation and the plaintiff’s INORBIT mall was selected as the retail destination of the year by India retail summit (Reid and Taylor). In para 5 of the plaint it is stated that the monthly turnover of the various occupants/vendors in the said mall is to the tune of Rs.40 Crore per month. It is also stated that huge amount of money has been spent by the plaintiff for the advertisement and as a result, the plaintiff has acquired tremendous reputation and goodwill not only in Bombay but throughout India. It is submitted that INORBIT Mall was bollywoods’ popular location for shooting their films. 6. It is submitted that the defendants are using the name ORBIT HYPER MARKET and wide variety of goods were sold in the said mall under the trade mark ORBIT. The plaintiff has annexed copies of the receipts showing sale of the said goods and also photographs of some of - 9 - the products sold under the trade mark ORBIT. It is submitted that there is a clear infringement of trade mark and the provisions of Section 29(2) and (4). 7. Shri Tulzapurkar, learned Senior Counsel submitted that at this stage, he did not press interim relief in terms of prayer clause (b) so far as defendant no.2 is concerned. He, further submitted that by virtue of provisions of Section 134 of the Act, this Court has jurisdiction to decide cases of infringement of trade mark as the plaintiff is carrying on business within the jurisdiction of this Court. He submitted that however, so far as prayer clause (b) is concerned, he is pressing for interim relief in respect of defendant nos.1 and 3 only since they are residing in the jurisdiction in Mumbai Court and therefore, this Court has jurisdiction to decide the case of passing off defendants no.1 and 3 since they are residing in Mumbai and it was not necessary to obtain leave clause 14. 8. In support of the said submission, he relied on the judgment of the Apex Court in the case of Amritdhara Amritdhara Amritdhara - 10 - Pharmacy, Appellant v. Satya Deo Gupta, Respondent, Pharmacy, Appellant v. Satya Deo Gupta, Respondent, Pharmacy, Appellant v. Satya Deo Gupta, Respondent, reported in AIR 1963 Supreme Court 449, reported in AIR 1963 Supreme Court 449, reported in AIR 1963 Supreme Court 449, Division Bench judgment of this Court in the case of M/s.Hiralal M/s.Hiralal M/s.Hiralal Parbhudas, Appellant v. M/s.Ganesh Trading Company and Parbhudas, Appellant v. M/s.Ganesh Trading Company and Parbhudas, Appellant v. M/s.Ganesh Trading Company and others, Respondents, reported in AIR 1984 BOMBAY 218 others, Respondents, reported in AIR 1984 BOMBAY 218 others, Respondents, reported in AIR 1984 BOMBAY 218, judgment of the Apex Court in the case of Midas Hygiene Midas Hygiene Midas Hygiene Industries P.Ltd. & Anr. v. Sudhir Bhatia & Ors. Industries P.Ltd. & Anr. v. Sudhir Bhatia & Ors. Industries P.Ltd. & Anr. v. Sudhir Bhatia & Ors. reported in 2004 (28) PTC 121 (SC) reported in 2004 (28) PTC 121 (SC) reported in 2004 (28) PTC 121 (SC). He also relied on the judgment of the Apex Court in the case of Laxmikant Laxmikant Laxmikant V. Patel v. Chetanbhai Shah and Another, reported in V. Patel v. Chetanbhai Shah and Another, reported in V. Patel v. Chetanbhai Shah and Another, reported in (2002) 3 SCC 65. (2002) 3 SCC 65. (2002) 3 SCC 65. He further submitted that the plaintiff had filed a suit against one Chug Housing & Developers & Ors. who were using the name (ORBIT) in relation to a mall at Indore and in the said suit, the Notice of Motion taken out by the plaintiff against the said ORBIT mall at Indore was allowed by the learned Single Judge of this Court by judgment and order dated 11th January, 2008 in Notice of Motion No.4243 of 2007 in Suit No.3085 of 2007. 9. Shri Divekar, learned Counsel appearing on behalf of the defendants, on the other hand, submitted - 11 - that there was no similarity in the said two marks. He further submitted that the building in which the said ORBIT HYPER MARKET was situated was constructed in 1995 and the departmental store in the name and style of ORBIT HYPER MARKET was started sometime in 2005. He submitted that there was delay in filing the suit and therefore, on that ground, they are not entitled to get any relief. Secondly, he submitted that the defendant was selling the products manufactured and sold by other shop owners and he was not in any way concerned with the said products which were sold by these vendors. He submitted that therefore, the plaintiff was not entitled to seek an order of injunction on the ground of infringement of trade mark. It is submitted that in the plaint, the plaintiff had not stated that they intended to start their mall at Jaipur and there was no likelihood of damage being caused to the plaintiff. He submitted that therefore, even otherwise, the trade mark is dissimilar and viewed from any angle, it could not be said that the defendants had infringed the trade mark or was passing off their goods which were sold in the market. - 12 - 10. Perusal of Section 29 Sub-sections 2 and 4 clearly discloses that if a trade mark is registered for any category of goods, a proprietor of the trade mark is entitled to seek an order of injunction restraining any other person who is using the said trade mark or a trade mark which is deceptively similar to the trade mark which is registered by the proprietor. 11. In the present case, the learned Single Judge of this Court in Notice of Motion No.4243 of 2007 in Suit No.3085 of 2007 has already held that the word "ORBIT" is deceptively similar to the word "INORBIT" and in the said suit, the defendants have been restrained by order of injunction from using the said word "ORBIT". Perusal of the registered trade mark and the mark which is used by defendants, in my view, clearly gives the impression that the said mark which is used by the defendants is deceptively similar to the mark used by the plaintiff. 12. It is well settled position in law that once it is established that the mark which is used by the - 13 - defendant is deceptively similar to the registered trade mark, then in that case, proprietor is entitled to get an order of injunction restraining the defendant from using the said mark and also restraining them from passing off their goods as the goods of the plaintiff. 13. In my view, the submission made by the learned Senior Counsel for the plaintiff will have to be accepted. Prima facie case, in my view, is made out by the plaintiff for grant of interim relief. Though the defendant started his departmental store in the name and style of ORBIT HYPER MARKET, similarly the plaintiff had sent a legal notice informing him that he should desist from using the said mark. In respect of that, defendants continued to use it. Thereafter, several notices were written by the plaintiff to the defendants. It cannot be said that there was delay in filing the suit. Defendants were put on guard by the plaintiff immediately after they started their departmental store. 14. There is no substance in the submission of Shri Divekar that this Court has no jurisdiction to decide - 14 - this suit. Perusal of Section 134 of the said Act clearly discloses that a suit for infringement of Copyright can be filed by the plaintiff at the place where he is carrying on business. So far as the relief of passing off is concerned, plaintiff has restricted relief in terms of prayer clause (b) only to defendant Nos.1 and 3 since they are, admittedly, carrying on business at Mumbai and therefore, it is not necessary to obtain leave under Clause 12. 15. The plaintiff, therefore, in my view, is entitled for order of injunction in terms of prayer clause (a) and interim relief in terms of prayer clause (b) as against defendant nos.1 and 3 only. 16. Notice of Motion, accordingly, is made absolute in terms of prayer clause (a) and in terms of prayer clause (b) only against defendant nos.1 and 3. 17. The defendants, however, are given six months time to change the said name. - 15 - (V.M. KANADE, J.) (V.M. KANADE, J.) (V.M. KANADE, J.)