1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.4457 OF 2006 IN SUIT NO.3379 OF 2006 1.A-Ngun Luechputipom & anr. ...Plaintiffs vs. 1.Selection Centre & others. ...Defendants --- Mr.Manish Saurashtri i/b. Shantilal & Co., for Plaintiffs. None for Defendants. CORAM: R.Y.GANOO, J. DATED: 8th December,2008. P.C.:- 1. This suit is filed by the plaintiffs to seek an order of injunction restraining the defendants from selling the product “BERINA” in relation to cosmetics, hair care products, hair colour products 2 in violation of the trade mark held by plaintiff no.1. Prayer clause (b) is for injunction on the principles of passing of action. Prayer clause (c) is for damages. Other prayers are sought keeping in view the aforesaid prayers. This Notice of Motion is taken out for interim reliefs in line with prayers in the suit. 2. According to the plaintiffs, the plaintiff no.1 holds the trade mark of the suit product “BERINA” (hereinafter referred to as the suit product) and the plaintiff no.2 is the licensee of the suit product. According to the plaintiffs, the defendants are selling hair dye and hair colour product with the name “BERINA” and that Defendants are committing breach of the trade mark held by plaintiff no.1. According to the plaintiffs, the goods are also being passed off by the defendants in the name of “BERINA” and thereby right of the plaintiffs is infringed on the count of passing of. 3. Though the notice of motion has been served on the defendants, they have not filed any 3 affidavit in reply and have chosen to remain absent. I have heard the learned Counsel Mr. Manish Saurashtri for the plaintiffs. 4. My attention was drawn to the certificate of registration of the trade mark in regard to the product “hair dye cream and hair colour cream in the name of “BERINA”. In view of this certificate the plaintiff no.1 have made out a prima facie case to grant an order of injunction in terms of prayer clause (a) of the notice of motion except the bracketed portion. 5. The learned Counsel for plaintiffs has submitted that the court can grant order of injunction on account of breach of trade mark as well as passing off. It is submitted that so far as this case is concerned and considering the conduct of the Defendants, the case of passing off is made out. The learned Counsel drew my attention to the provisions of Section 135 of the Trade Mark Act 1999 (for short said Act) and has submitted that the Court has every power to grant an injunction in a suit for breach of 4 a trade mark as well as for passing of. 6. I have considered the submission as well as the provisions of Section 135 of the said Act. The provisions of Section 135 of the said Act clearly indicate that the Court may grant in any suit for infringement or passing off of reliefs. This clearly goes to show that an injunction can be granted for infringement of trade mark or for passing off. I am not inclined to substitute the word “and” in place of “or” as suggested by the Counsel for Plaintiffs. 7. Plaintiff no.2 has failed to produce appropriate documents to show that Plaintiff no.2 was permitted to use the Trade mark “Berina”. The learned Counsel for plaintiffs submitted that in the plaint plaintiffs have craved to rely upon the agreement. However, that agreement is not before the Court. If the plaintiffs have not produced said agreement, the Court cannot grant relief merely looking to the the contents of the plaint. It was for the plaintiffs to produce the agreement between the plaintiff no.1 and plaintiff no.2 at least at the 5 time of arguments. In the absence of such an agreement, the case of the plaintiffs that the plaintiff no.1 had permitted Plaintiff no.2 to use the Trade mark “Berina” cannot be accepted. 8. In view of the aforesaid discussion, the plaintiffs would not be able to secure relief on the ground of passing off. Hence, relief in terms of prayer clause (b) cannot be granted. 9. I am told that the Receiver, High Court, Bombay has been appointed and he has seized certain number of articles/packages from the shops of defendant nos. 3, 4 and 5 and that action has been duly completed. The said articles/packages are in custody of plaintiffs and the indemnity bond has been given. Hence, notice of motion is required to be made absolute in terms of prayer clause (c) excluding bracketed portion. For the reasons mentioned aforesaid, I pass the following order:- 6 O R D E R (i) Notice of motion is made absolute in terms of prayer clause (a) except bracketed portion. (ii) Notice of motion is dismissed in so far as prayer clause (b) is concerned. (iii) Notice of motion is made absolute in terms of prayer clause (c) except the bracketed portion. In view of this there shall be no orders on prayer clause (d). (iv) There shall be no order as to costs. (R.Y.GANOO, J.)