1. Two applications have been taken up for analogous hearing as they are in the same suit.
2. In a suit for infringement of copy right and passing off, the plaintiff has sought interim protection by way of their application being old G.A. No. 1326 of 2019, new G.A. No. 1 of 2019. The defendant has applied for prosecuting the plaintiffs for giving false evidence in old G.A. No. 2391 of 2019, new G.A. No. 3 of 2019.
3. Learned Senior Advocate appearing for the plaintiffs has submitted that, the first plaintiff commenced catering business under the name and style of 'Ganpati Enterprises' in 1996. The first plaintiff and the defendants entered into a partnership and carried on business under the name and style of Ganpati Enterprises. Ganpati Enterprises was into Vegetarian Catering business. Ganpati Enterprises developed a goodwill and reputation for itself. The first plaintiff and the defendant formalized their partnership by executing a deed of partnership on April 1, 2000. The partnership obtained a trade mark of 'Ganpati's' and registered it under registration No. 1451164 in Class 42. The defendant retired from the partnership. On February 28, 2013 a deed of retirement was executed by the first plaintiff and the defendant. He has referred to the deed of retirement and submitted that, the defendant gave up all rights in the partnership including the right with regard to the registered trade mark. The first plaintiff thereafter obtained an assignment of the trade mark and registered the same in his favour. The plaintiff is therefore entitled to use the trade mark 'Ganpati's' exclusively. He has submitted that, the first plaintiff is carrying on business through the instrumentality of the second plaintiff which was incorporated previously. The plaintiffs are therefore entitled to the exclusive user of the registered trade mark. The plaintiffs have diversified their business and have registered labels subsisting in their favour.
4. Referring to the conduct of the defendant, learned Senior Advocate appearing for the plaintiffs has submitted that, the defendant applied for registration of label which were rejected and/or abandoned. The defendant is carrying on the same business as that of the plaintiffs', that is, the business of vegetarian catering. He has submitted that, the area of such business being limited to the city of Kolkata and the plaintiffs having developed a goodwill and reputation of such business and being entitled to the exclusive user of the trade mark 'Ganpati's', the defendant is trying to pass off his products as that of the plaintiffs'. The defendant is guilty of infringing the registered trade mark of the plaintiff. He has submitted that, the plaintiffs are entitled to interim protection.
5. In support of the contention that, when there exists a registered trade mark, the plaintiffs are entitled to interim protection in a case of infringement of trade mark and of business, learned Senior Advocate appearing for the plaintiffs has relied upon 2019 Volume 80 Patent and Trade Mark Cases page 124 (Royal Dryfruit Range v. Royal Suvidha), 2010 Volume 3 Calcutta High Court Notes page 912 (R.R. Proteins and Agro Limited v. Hari Shankar Singhania & Anr.) and 2018 Volume 18 Supreme Court Cases page 346 (Wockhardt Limited v. Torrent Pharmaceuticals Limited).
6. Referring to the order refusing to grant ad interim order as prayed for by the plaintiffs, learned Senior Advocate appearing for the plaintiffs has submitted that, the stand of the defendants at the ad interim stage changed in the affidavit in opposition filed by the defendants. Therefore, according to him, there are no impediment for the Court granting interim reliefs as prayed for.
7. Learned Senior Advocate appearing for the defendant has submitted that the defendant, although was in partnership with the first plaintiff for some time, parted ways with the first plaintiff in 2009. Since then, the defendant was using the name of 'Ganpati's Sanjay' with the plaintiff using the name 'Ganpati's Rajesh' to carry on their respective businesses. According to him, 'Ganpati's Rajesh' and 'Ganpati's Sanjay' are two distinct marks and that, they are not similar, let alone, being deceptively similar. According to him, there is no confusion with regard to the two marks used by the first plaintiff and the defendant respectively. He has drawn the attention of the Court to the averments contained in the petition of the plaintiffs and submitted that, the plaintiffs have obtained the registration of 'Ganpati's Rajesh' in 2017. 'Ganpati's' was registered in 2009. He has drawn the attention of the Court to the registration of the word 'Ganpati's'. He has submitted that, the same was obtained on March 24, 2009.
8. Referring to the averments made in the petition that, the plaintiff became aware of the defendant carrying on business under the name of 'Ganpati's Sanjay' on March 29, 2019, learned Senior Advocate appearing for the defendant has submitted that, the same is false. He has drawn the attention of the Court to the fact that, the defendant was carrying on business since partying of ways in 2008-2009 at a distance of about two minutes walk from the area where the plaintiffs have their office. He has submitted that, vegetarian catering in the city of Kolkata being of limited arena, it is impossible that the plaintiffs were not aware of the defendant carrying on such business with the name of 'Ganpati's Sanjay' and 'Ganpati's Saurav'. He has drawn the attention of the Court to the averments made in the affidavit in opposition as also the annexures thereto. He has submitted that, there are enough materials for the Court to arrive at the conclusion that, the marks 'Ganpati's Sanjay' and 'Ganpati's Saurav' were being used over a considerable period of time by the defendant without any objection by the plaintiffs.
9. Learned Senior Advocate appearing for the defendant has relied upon ILR 2009 Volume VI Delhi page 415 (Goenka Institute of Education & Research v. Anjani Kumar Goenka & Anr.) in support of his contention that, when, there is a prior user of a trade mark, injunction is not called for. He has relied upon 1994 Volume 2 Supreme Court Cases page 448 (M/s. Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd.) and submitted that, since the plaintiffs are guilty of acquiescence they are not entitled to any protection. Relying upon 2016 Volume 6 Maharashtra Law Journal page 249 (Datamatics Global Services Ltd. v. Royal Datamatics Pvt. Ltd.) learned Senior Advocate appearing for the defendant has submitted that, since, the defendant was using 'Ganpati's Sanjay' over a considerable period of time, interim injunction should not be granted. Moreover, he has referred to the order passed by the Court at the ad interim stage and has submitted that, there is no change of position for the Court to grant any interim relief to the plaintiffs.
10. Referring to the application of the defendant seeking prosecution against the plaintiffs for making false statement, learned Senior Advocate appearing for the defendant submitted that, the plaintiffs have relied upon documents which are forged. In support of such contention, he has drawn the attention of the Court to some of the annexures of the petition and submitted that, the brochure was not carried by the publisher. Since the plaintiffs are guilty of making a false statements knowing the same to be false, the plaintiffs should be proceeded against appropriately.
11. The plaintiffs claim exclusive right over the mark 'Ganpati's'. The fact that, the plaintiff No. 1 and the defendant were in partnership and were carrying on vegetarian catering business since 1996 is not disputed. The fact that, the plaintiff No. 1 and the defendant formalized their partnership by executing a deed of partnership on April 1, 2000 is also not disputed. According to the defendant, disputes and differences arose between the first plaintiff and the defendant in or about 2008. On mutual understanding, it was decided that the first plaintiff and the defendant will part ways. According to the defendant, he started carrying on business under the name and style of 'Om Ganpati Caterers' from 2009 and adopted the trade mark 'Ganpati's Sanjay'. The fact that a formal deed of retirement was executed between the first plaintiff and the defendant on February 28, 2013 is accepted. The deed of retirement stipulates that, the defendant relinquished all his right, title and interest in respect of the partnership firm which would necessarily include the trade mark then existing in favour of the partnership firm.
12. At the ad-interim stage the plaintiff has failed to secure an order of injunction. By the order dated July 3, 2019 the defendant was directed to keep and furnish weekly accounts. An appeal was carried from the order refusing to grant injunction. Such appeal was disposed of on July 29, 2019 without interfering with the order dated July 3, 2019 and directing that the trial judge should not be influenced by any of the observation made by the Appeal Court. Directions for completion of affidavits were given and the injunction petition was directed to be heard on affidavits.
13. One of the defences of the defendant is that the plaintiffs acquiesced in the defendant in using of the word 'Ganpati's Sanjay'. M/s. Power Control Appliances & Ors. (supra) has considered the issue of acquiescence. It has held that, acquiescence is one of the defences available under Section 30(1)(b) of the Trade and Merchandise Marks Act, 1958. It has observed that, acquiescence is sitting by, when another is invading the rights of the trademark holder by spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights of the trade mark, trade name etc. It implies positive acts. Mere silence or inaction or latches do not constitute acquiescence. There is a distinction between mere negligence and acquiescence. A plaintiff is guilty of acquiescence when, it stood by knowingly and let the defendant built up an important trade until it become necessary to crush it. In such a scenario the plaintiff will be held guilty of acquiescence and not entitled to relief. Each case has to be assessed so as to find out whether, the acquiescence in the infringement amounts to consent or that the acquiescence is such so as to lead to the inference of a licence sufficient to create a new right in the defendant. In the facts of that case, the Supreme Court found that, the plaintiff got a trade mark 'Sumeet' registered in 1964. It was using such trade mark. A Managing Director of the plaintiff incorporated the defendant company and adopted the name 'Sumeet'. The Supreme Court found the plaintiff to have given written consent to the authority constituted under the Companies Act, 1956 to the incorporation of the defendant and user of the name 'Sumeet' by the defendant. The Supreme Court found that, the defendant was engaged in the distribution of its products through a common distributor as that of the plaintiff and that, the accounts of the plaintiff and the defendant were audited by the same auditor. So far as manufacturing the equipments were concerned, the Supreme Court did not find that, the defendant was actually manufacturing the equipments before September 1991. The Supreme Court did not find anything to establish that the defendant was manufacturing earlier than the alleged violation of the trade mark. The Supreme Court therefore granted an order of injunction pending the decision in the suit.
14. In the facts of the present case, assuming that the plaintiffs acquiesced in the defendant using the trade mark 'Ganpati's Sanjay' for the period from 2009, then, by the act of the defendant giving up his right to use the word 'Ganpati's' when the defendant executed the deed of retirement on February 28, 2013, the defendant became no longer entitled to use the word 'Ganpati's Sanjay' or 'Om Ganpati Caterers' or words deceptively similar to the word 'Ganpati's'. There is nothing on record to establish, at least at the prima facie level that, the plaintiffs acquiesced in the defendant using the word 'Ganpati's Sanjay' or 'Om Ganpati Caterers' since 2008 or subsequently from the date of execution of the deed of partnership. Mere user of the word by the defendant will not be sufficient. The defendant has to establish acquiescence when it is setting up such a defence. On the materials made available to Court at this interim stage, it is not possible to arrive at such finding in favour of the defendant.
15. One of the other defences of the defendant is that, the word 'Ganpati's' is generic and descriptive in nature. It cannot be said to contain any distinction. In any event, the defendant was using the mark 'Ganpati's' with the word 'Sanjay' so as to distinguish between 'Ganpati Caterers' of the branch continued by the plaintiffs and the branch that is being continued with the defendant.
16. This defence of the defendant has to be considered in the context that the first plaintiff and the defendant were carrying on business in partnership and using the trademark 'Ganpati's'. The defendant gave up the right to use such mark on his retirement. The moment the defendant claims that, he is using a suffix or a prefix to the original mark 'Ganpati's' so as to distinguish the two branches, the defendant acknowledges that there is an element of distinction in the parent mark. He acknowledges that something has to be added to the original mark as a suffix or a prefix so as to distinguish the new entity. In the facts of the present case, the suffix used by the defendant cannot be said to be sufficient to create a distinction in comparison to the original mark. The suffix is added to the original mark 'Ganpati's' which is registered with the plaintiff. Attempts by the defendant to obtain registration of the label 'Ganpati's Sanjay' failed. At this stage therefore, it can be safely said that, the mark 'Ganpati's Sanjay' is deceptively similar to the mark 'Ganpati's' for the defendant to use it without the permission of the plaintiffs.
17. In Royal Dryfruit Range (supra), the Bombay High Court in the facts of that case has found the defendant to be using deceptively similar word as that of the registered mark and granted an order of injunction. In R.R. Proteins and Agro Limited (supra) the Court has held that, in a rolled up action for infringement and passing off, the Court has to test the offending mark on the pedestal of the perspective of a consumer. It has to assess whether a projection, as to whether the mark complained of, is likely to deceive or cause confusion. It has to be assessed through the eyes and ears of the prospective user of the goods or services. The Judge has to place himself in the position of a prospective customer and assess whether he would then be likely to be deceived or confused. If, in addition, there is dishonest intent on the part of the owner of the mark complained of, it makes it easier for the claimant in the action to get his protection. It is not necessary that must be established to obtain a protection by the plaintiff.
18. Applying such test, since both the parties claim to be in the same vegetarian catering business, and since the manner in which both the parties used the word 'Ganpati's' with the additional word 'Ganpati's Rajesh' and 'Ganpati's Sanjay', a prospective customer is likely to be confused as to whether, 'Ganpati's Sanjay' belongs to the same group as that of 'Ganpati's' or 'Ganpati's Rajesh' or not. Since the word 'Ganpati's Sanjay' has the ability to create a confusion in the impression of a prospective customer in the manner as noted above, in my view, the plaintiffs have made out a case for grant of injunction pending the disposal of the suit. The Supreme Court in Wockhardt Limited (supra) has held that, although a passing off action in essence is based on deceit, fraud is not a necessary element of a right of action, and that the defendant's state of mind is wholly irrelevant to the existence of a cause of action for passing off, if otherwise the defendant has imitated or adopted the plaintiff's mark.
19. Goenka Institute of Education & Research (supra) is a case of prior user. The Court in the facts of that case having found the defendant to be a prior user did not grant injunction as prayed for by the plaintiff. In the facts of the present case, the defendant has not been able to establish that it is prior user than the plaintiffs. At best, the first plaintiff and th
Please Login To View The Full Judgment!
e defendant were in partnership when, the trade mark 'Ganpati's' was registered. The defendant however gave up his right in respect of such trade mark when he executed the deed of retirement on February 28, 2013. Subsequent to the date of the execution of the deed of retirement dated February 28, 2013, the defendant cannot claim any valid right in respect of such trade mark. In the facts of the present case, the defendant cannot be held to be a prior or a concurrent bona fide user. 20. In Datamatics Global Services Ltd. (supra), the Court has found that there were other users of the word 'Datamatics' and therefore did not grant injunction at the interim stage in favour of the plaintiff. In the facts of the present case, the defendant has not established that there are other users of the word 'Ganpati's Rajesh' or 'Ganpati's' in the vegetarian catering business in the city of Kolkata. 21. In view of the discussions above, there will be an order in terms of prayers (b) to (e) of old G.A. No. 1326 of 2019, new G.A. No. 1 of 2019, C.S. No. 101 of 2019 without any order as to costs. 22. An application for perjury is ideally disposed of and decided at the conclusion of the suit. In the present case, the defendant alleges that, the plaintiffs relied upon documents which are false and false to the knowledge of the plaintiffs. It would be appropriate to postpone the decision on the issue of perjury as raised in the application for perjury till all the issues of the suit, as settled, finally decided upon. Let old G.A. No. 2391 of 2019 be heard along with the suit. 23. Old G.A. No. 1326 of 2019, New G.A. No. 1 of 2019 is disposed of accordingly without any order as to costs. Later:- Learned advocate appearing for the defendant seeks stay. Such prayer is considered and rejected.