Case: M/S.J.K. Sons Vs. M/S.Parksons Games &amp; Sports 41-B &amp; Another

renowned, reputed and well known name/mark. The State Express 555 mark, packaging and/or carton is globally well known, renowned and/or has transborder reputation. To dispute the ownership of the State Express 555 intellectual property, is to say the least, dishonest and fallacious. No material in support of theses allegations was produced even in the sur-rejoinder. The matter did not end there. The respondents in their sur sur rejoinder expressly stated that save and except bald words which were allegedly not true to the personal knowledge of the deponent of the sur rejoinder filed on behalf of the appellants, no material whatsoever had been produced to show the goodwill, reputation in India prior to 1976. The appellants were therefore, once again put to notice in this regard. They did not avail of the opportunity of adducing evidence in support of their contention.15. In paragraph 4.1 of the affidavit in reply, it is merely alleged that the respondents are neither the proprietors, nor the owners of the said cartons ; that the respondents cartons are nothing but a slavish flagrant imitation and copy of the carton of the globally renowned cigarette ; that the respondents cartons are not artistic works and do not contain any originality and that therefore, no action can lie at the instance of the respondents. The copies of the relevant cartons/packets of the State Express 555 are annexed to the affidavit.There are no averments, much less is there any evidence, to indicate that the respondents marks/cartons/labels are an imitation of the mark State Express 555. It is significant to note that there is no evidence whatsoever to the effect that the third party has used the mark 555 or created the labels/cartons or marks prior to the creation of and use by the respondents of these marks/labels and cartons which may have persuaded the Court to come to the conclusion that the respondents had infringed the mark. Even assuming that we are entitled to do so, we are reluctant to rely upon our personal knowledge, if any we may have in this regard. The appellants ought to have adduced evidence in respect of their case that the respondents had themselves infringed the mark 555 which belongs to another. We are not inclined therefore to interfere with the conclusions of the learned single Judge in this regard.16. The learned Judge has held that the allegedly well known mark is in relation to cigarettes and not playing cards manufactured by the parties. If it is established that the mark is a well known mark, the mark being used in respect of different goods may make no difference. Also necessary for consideration is whether the principle would not apply, where it is not a well known mark merely because it is used in respect of the different goods. In other words in the event of the appellants establishing that the respondents had infringed the mark, two further questions would require consideration. Firstly, whether the principle would apply even if the mark is not established to be a well known mark. Secondly, whether the principle would apply if such a mark i.e. not a well known mark, infringed by the respondents is applied to different goods. We do not consider it appropriate to express any opinion in respect thereof. Nor do we consider it necessary to invite the counsel to argue the same before us. The learned Judge has considered the fact that the parties have applied the mark to different goods as relevant. Suffice it to say that the question of similarity of goods must be considered in the context of several factors. The goods need not be identical even if a well known mark is not involved. We do not rule out the possibility of a nexus between cigarettes and playing cards sufficient to cause deception by the application of deceptively similar marks on the products. The same however is also a question of fact or a mixed question of law and of fact. The appellants have not produced any evidence, and the pleadings are insufficient, to hold that the goods are such as to cause deception. Thus the appellants must fail on facts.17. This brings us to a consideration of Mr.Bhatts submission that the respondents are not the owners of the copyright. He submitted that the respondents case itself is that one Yusuf Kayum Khumri created the same in the year 1971. The said Yusuf Kayum Khumri was not under a contract of service with the respondents and that therefore, he would retain the ownership of the copyright in the artistic work. The respondents, therefore, have no cause of action based on the same.18. According to the respondents their predecessor-in-title engaged one Yusuf Kayum Khumri, a freelance artist and graphic designer who designed and created the labels for the cartons in which the playing cards under their various marks including 555 were packed. The said Khumri designed the labels and has been paid for the same. The respondents acquired by the assignment the copyrights and the labels.19. The respondents have also relied upon the certificates issued by the said Yusuf Kayum Khumri on 26.11.2009 to the effect that he had created the artistic work for M/s.Parksons Printers and that he had been paid for the same. It is possible to contend that the relationship between them was in respect of a contract for service and not a contract of service. However all the facts and circumstances taken together, indicate that even if it was a contract for service, the said Yusuf Kayum Khumri assigned his rights in the year 1971 itself to M/s.Parksons Printers. This is indicated by the fact that he had never made any claim to the artistic work for now almost 40 years and the fact that he issued the said certificates on 26.11.2009 without contending that he continues to remain the proprietor of the artistic work. We are unable in these circumstances to find any error in the prima-facie view taken by the learned Judge.

Decision (1 = appeal accepted, 0 = rejected): 0

Explanation:
0[ds]8. In Abdul Cadar Allibhoys case the Full Bench found that the plaintiffs label was designed by combining the labels of four other manufacturers. It was submitted that the plaintiffs labels or trade marks were so tainted in their conception and origin, that it could not form the basis of any reliefs. The question before the Full Bench, whether the plaintiff was entitled on the basis of such a mark to an injunction against the defendant, was answered in the negative.The Full Bench had relied only upon the judgment of Lord Westbury in The Leather Cloth Company v. The American Leather Cloth Company (Limited). That judgment was in fact confirmed by the House of Lords in The Leather Cloth Company (Limited) v. The American Leather Cloth Company (Limited) 11 ER 1435 = (1865) XI HLC 521. It is interesting to note that the Lord Chancellor Lord Westbury against whose judgment the appeal had been filed to the House of Lords was also a party to the judgment of the House of Lords.Reading the judgment of Lord Westbury as the Lord Chancellor and the judgment of the House of Lords confirming the same it is clear that the above principles are not restricted to cases of infringement of copyright but also apply to an action for infringement of trade marks and passing off. The Full Bench followed the judgment of the Lord Chancellor, which was appealedis thus clear that the principle was applied to an action for infringement of trade mark and passing off.Thus the ratio would apply irrespective of the fact that the third party whose mark has been infringed by the plaintiffs has not taken any action against the plaintiffs. Even on principle this must be so. The basis of the ratio is to deny an infringer a right based on the mark or work which infringes the mark or work of another. That being so, it matters not in an action against another whether or not the proprietor has taken any action against the plaintiff.13. It is obvious, however that nothing prevents the proprietor of the mark from initiating successfully an action for infringement or passing off against the parties to this action.14. The learned single Judge has however not held anything to the contrary. He has, with respect, rightly come to the conclusion that the appellants had not established the case on facts in this regard. It was necessary for the appellants to establish that the third party was in fact the proprietor of the mark 555 and that the respondents had infringed the same.The respondents in theirsur sur rejoinder expressly stated that save and except bald words which were allegedly not true to the personal knowledge of the deponent of the sur rejoinder filed on behalf of the appellants, no material whatsoever had been produced to show the goodwill, reputation in India prior to 1976. The appellants were therefore, once again put to notice in this regard. They did not avail of the opportunity of adducing evidence in support of theiris significant to note that there is no evidence whatsoever to the effect that the third party has used the mark 555 or created the labels/cartons or marks prior to the creation of and use by the respondents of these marks/labels and cartons which may have persuaded the Court to come to the conclusion that the respondents had infringed the mark. Even assuming that we are entitled to do so, we are reluctant to rely upon our personal knowledge, if any we may have in this regard. The appellants ought to have adduced evidence in respect of their case that the respondents had themselves infringed the mark 555 which belongs to another. We are not inclined therefore to interfere with the conclusions of the learned single Judge in thislearned Judge has considered the fact that the parties have applied the mark to different goods as relevant. Suffice it to say that the question of similarity of goods must be considered in the context of several factors. The goods need not be identical even if a well known mark is not involved. We do not rule out the possibility of a nexus between cigarettes and playing cards sufficient to cause deception by the application of deceptively similar marks on the products. The same however is also a question of fact or a mixed question of law and of fact. The appellants have not produced any evidence, and the pleadings are insufficient, to hold that the goods are such as to cause deception. Thus the appellants must fail on facts.The respondents have also relied upon the certificates issued by the said Yusuf Kayum Khumri on 26.11.2009 to the effect that he had created the artistic work for M/s.Parksons Printers and that he had been paid for the same. It is possible to contend that the relationship between them was in respect of a contract for service and not a contract of service. However all the facts and circumstances taken together, indicate that even if it was a contract for service, the said Yusuf Kayum Khumri assigned his rights in the year 1971 itself to M/s.Parksons Printers. This is indicated by the fact that he had never made any claim to the artistic work for now almost 40 years and the fact that he issued the said certificates on 26.11.2009 without contending that he continues to remain the proprietor of the artistic work. We are unable in these circumstances to find any error in theview taken by the learned Judge.