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Skipper Ltd. v/s Akash Bansal & Others

    G.A. 237 of 2016 With T.A. 1 of 2016
    Decided On, 08 February 2016
    At, High Court of Judicature at Calcutta
    For the Petitioner: Ranjan Bachawat, Senior Advocate, Rudraman Bhattacharya, Siddharth Das, Souresh Banerjee, Advocates. For the Respondent: Debnath Ghosh, Advocate.

Judgment Text
Harish Tandon, J.

1. The power to grant relief in the form of an injunction in a suit for infringement of a trade mark or passing off is provided under Section 135(1) of the Trade Marks Act, 1999. Sub Section 2 of the said section further provides an ex-parte injunction or an interlocutory order relating to discovery of documents, preservation of infringing goods, documents or other evidence related to the subject matter of the suit and restraining the defendant from passing off or dealing with his assets in any manner which may diversely affect plaintiffs ability to recover damages, costs or other pecuniary remedies, which may be finally awarded in the suit.

2. Admittedly, an ex-parte ad interim order of injunction restraining the defendants there associates and agents from manufacturing, selling, stocking, making availability or offering to sale pipes of metal and pipes not of metal under the mark "BANSAL" or any other trade mark identical or deceptively similar to the plaintiffs trade mark was passed on 13th January, 2016. The said order is for limited duration till 10th February, 2016 and a direction was made for service upon the defendant. After notice the defendants have appeared and prayed for filing the affidavit-in-opposition to the injunction application.

3. Mr. Bachawat, the learned Senior Advocate, though did not stand in the way of permitting the defendants to file affidavit-in-opposition but presses the application for injunction for further order, more particularly in terms of prayer (d) of notice of motion. The said prayer is reproduced as under-

"(d) A Receiver/Commissioner be appointed for inspecting the premises of the opposite parties situated at G.T. Road, Neamatpur, P.O. - Sitarampur, District: Burdwan, Pin Code - 713359 West Bengal and enter into the said premises for taking into custody all the infringing goods, packaging materials, publicity materials, labels bearing the aforesaid trademarks and he be conferred with all the powers under Order40, Rule1read with Order39, Rule7of the Code of Civil Procedure including power to search the aforesaid premises and seize the aforesaid materials."

It is to be reminded that ordinarily the defendants have threefold remedies against the ex-parte order of injunction.

Firstly, he can answer the show-cause by filing affidavit-in-opposition to the injunction application;

Secondly, he can apply for varying, modifying and/or setting aside the ex-parte injunction under Order39, Rule4of the Code of Civil Procedure; and

Thirdly, he can assail the said ex-parte order of injunction before the Appellate Court under Order43, Rule1(r) of the Code.

Equally, this Court does not find any fetter either in the Code of Civil Procedure or the rules regulating the procedure in the Original Side of the High Court to oppose the prayer of injunction either at the rime of extending the ex-parte ad interim order of injunction or further injunction if asked for by the plaintiff.

4. Mr. Bachawat would contend that although the Court passed an ex-parte order of injunction in terms of prayer (c) of notice of motion but it is a fit case whether the Court should appoint a receiver for inspecting the premises of the opposite parties and entering into the said premises for taking custody of all infringing goods and other materials being the trade mark of the plaintiff. It is submitted on behalf of the plaintiff that being the owner of the registered trade mark no person shall be permitted to use a mark which is identical to or deceptively similar with the trade mark in relation to goods or services in respect of which the trade mark is registered and therefore the defendants cannot use the mark containing the word "BANSAL" by suffixing other words raising a suspicion in the mind of the bona fide user that the said goods is the goods of the plaintiff. It is further submitted that the plaintiffs are the registered owner of the mark "BANSAL" and "SKIPPER BANSAL" and "BANSALS SKIPPER" since 1981 and the certificate in this Court has been granted by the Registrar of Trade Marks and therefore the defendants goods containing the marks "BANSAL ASTER" clearly infringes the trade mark of the plaintiff and they cannot pass off their goods by making some minor changes which is deceptively similar to the trade mark of the plaintiff. According to him, the plaintiff have acquired a great reputation in the market particularly in the field of the metal and non-metal pipes and its allied products which can be deciphered from the statement of accounts annexed to the injunction application. He took serious exception to the application filed by the defendants before the trade marks registry to be an attempt to wriggle out from the stringent provisions of the Trade Marks Act.

5. By relying upon a letter dated 26th May, 2015 issued by the defendants attorney, he submits that there is a clear admission on the part of the defendants on the right of the plaintiff over the said trade mark and therefore, the receiver should be appointed to take custody of the infringing goods so as to avoid further sale of the infringing goods in the market. He placed reliance upon a judgment of the Bombay High Court in the case ofKirloskar Diesel Recon Pvt. Ltd. & Anr. v. Kirloskar Proprietary Ltd. & Ors. reported in AIR 1996 Bombay 149for the proposition that if the trade mark bearing the name has achieved wide recognition, the user of the identical and similar trade name is not permissible as it would be sufficient if it causes an actual confusion amongst the customers and public at large that it is a goods of the plaintiff.

6. On the other hand, the defendant would submit that Section 35 of the Act which is a saving provision takes out any bona fide user of his own name or his place of business or the name or the place of business of his predecessor from the purview of the registered trade mark and relied upon a judgment of the Supreme Court in case ofPrecious Jewels & Anr. v. Varun Gems reported in 2014(60)PTC 465. It is further submitted that there is a clear distinction between the marks use by the plaintiff and the defendant and therefore, it cannot be brought within the purview of the infringement of trademark or passing off. A point of demurrer is also taken that a composite suit both for infringement and trademark and passing off is not maintainable when admittedly the defendants are neither carrying on the business nor selling the goods within the jurisdiction of this Court. It is, thus, submitted that in absence of any leave under Clause 14, the suit is incompetent and the Court, therefore, should not either extend the ex-parte order of injunction or to pass an order appointing receiver.

7. The facts emanate from the application in nutshell are that the plaintiff is a leading manufacturer of the metal pipes under the mark "BANSAL" since 1981 and also by suffixing "SKIPPER" after "BANSAL" continuously uninterruptedly and acquire a goodwill and reputation in the market. An application was made for registration of the mark "BANSAL" and "BANSAL SKIPPER" and the trademark registration certificates annexed to the injunction application would corroborate the same. It is alleged that in and around May, 2015 the plaintiffs came to know that the defendants are offering to sale outside the jurisdiction of this Court his goods with identical and deceptively similar name copying the word "BANSAL" by suffixing "ASTER". Subsequently, it transpired that they applied for a trademark registration for the same mark showing the user since 2014 and 2012. The two applications for registration of the trademark contain different dates of its user by the defendants and there are definitely anomalies therein. It would further be seen that the certificate of registration of the trademark was issued to the plaintiff between the period from March 2008 to October 2015. Apparently, both the defendants and plaintiffs are dealing the same products and selling their respective goods with such marks. At the time of moving the injunction application the Court found that there is a prima facie case made out by the plaintiff for infringement of his trademark by the defendant and passed an order of injunction in terms of prayer (c) of the notice of motion to operate till 10th February, 2016 or until further order, whichever is earlier. The Court also found that the application for registration of the trademark had been made on 8th January, 2015 claiming user of the mark "BANSAL ASTER" from 1st April, 2012, although in an earlier application the user is shown since 2014. Both on account of infringement of the trademark and passing off the Court prima facie recorded its satisfaction.

8. While extending the ex-parte order of injunction after notice to the defendants the Court should also record the reasons after hearing the defendant. The defendants have taken shelter under Section 35 of the Act which permits a person to carry on the business in his own name or in the name of his predecessor or in the name of place of business as the same shall not tantamount to infringement of a registered trademark. Apparently, the cause of action is not simply based on infringement of trademark but also on passing off. An objection to the maintainability of the composite suit is also taken by the defendant and therefore it can be said that the defendant is absolutely defenceless.

9. Equally, this Court cannot brush aside the case made out by the plaintiff for infringement of a trademark and therefore this Court does not find any reasons in not extending the ex-parte ad interim order of injunction passed earlier. The Court can appoint the receiver when it appears to be just and convenient to remove any person from possession and custody of the property and also when there is a strong prima facie case made out by the plaintiff and the case calls for taking urgent measures. The order appointing receiver have inevitable result of divesting defendants of the custody of the property

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and depriving to enjoy and receive benefit therefrom. The principles for appointing the receivers are well settled as the Court exercises the discretion when the plaintiff has shown an excellent chance of success demanding immediate action. The consequence of appointing a receiver without permitting the defendant to disclose his defence should normally be avoided for its far reaching consequences. The plaintiffs have been protected in the form of an injunction and this Court, therefore, does not find that it is a fit case where the receiver should be immediately appointed before permitting the defendant to file objection to the injunction application. 10. The defendants are permitted to file affidavit-in-opposition to injunction application within 4 (four) weeks from date, reply if any shall be filed within 2 (two) weeks there from. The application for injunction shall appear under the heading "adjourned motion" 6 (six) weeks hence in the supplementary list. 11. The interim order granted earlier shall continue till 8 (eight) weeks from date or until further order, whichever is earlier.