Partly allowed

Mr M.Ravi, v. Mr. Baskar

Madras HC18 Sept 2013CMA/262/2013

Case brief

AI extract

What is this about?

The High Court disposed of civil appeals against an order dismissing interim injunction applications in a trademark infringement suit. The Court set aside the trial court's finding that the trademark was not in force but held that the appellant failed to prove infringement. The trial court was directed to dispose of the merits.

What did the court decide?

Set aside finding that trademark was not in force; appeals disposed; trial court directed to dispose suit on merits after filing pleadings.

Mr M.Ravi, Vs Mr. Baskar — Intellectual Property | Madras HC (2013)

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HIGH COURT OF JUDICATURE AT MADRAS

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DATED : 18.09.2013

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CORAM :

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THE HONOURABLE Mr.JUSTICE G.M. AKBAR ALI

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Civil Miscellaneous Appeal (MD) Nos.262 and 263 of 2013 and M.P.No.1 of 2013 (2 in nos.)

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1.M. Ravi 2.Vasantha Bhavan Hotel India Private Limited rep by its Chairman & Authorised Signatory M. Ravi . Egmore, Chennai-8. .... Appellants in both the appeals/ Plaintiffs vs Baskar .... Respondent in both the appeals/ Defendants

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Civil Miscellaneous Appeals filed to set aside the judgment and decree passed by the learned Principal District Judge, Villupuram in I.A.No.576 and 577 of 2012 in O.S.No.197 of 2012 dated 31.10.2012 and allow the appeal by granting interim injunction pending disposal of the suit.

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For Appellants : Mr.P.S. Raman Sr. Counsel for M/s S. Jauaraj & A.K. Rajaraman For Respondent : Mr.Gladys Daniel

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COMMON JUDGMENT

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The appellant filed a suit in O.S.No.197 of 2012 before the Principal District Court, Villupuram under the Trade Marks Act 1999, seeking permanent injunction restraining the respondent or any one, claiming through him from in any manner infringing

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https://hcservices.ecourts.gov.in/hcservices/

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the plaintiff's registered trade mark “VASANTHA BHAVAN” and also seeking permanent injunction, restraining the defendant for a passing off action.

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Along with the suit, he had filed an application in I.A Nos.576 of 2012 and 577 of 2012 for an ad-interim injunction regarding the same relief, pending suit. A common affidavit was filed to make out a prima-facie case and on notice, the respondent filed his counter in both the applications.

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The learned Principal District Judge, Villupuram considered both the applications separately and ultimately, dismissed both the applications. Aggrieved by which, the plaintiff is before this court.

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Since the issues involved in both the Interlocutory Applications are one and the same, both the appeals are taken up and they are disposed of by a common judgment.

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The brief facts of the case are as follows:

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For convenience sake, the parties are referred as appellants and respondent.

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The first appellant is carrying on hotel business from the year 1974 under the name and style of “VASANTHA BHAVAN” and the 2^nd appellant was incorporated as a Private Limited Company in the year 2003.

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The appellants have adopted a trade mark “VASANTHA BHAVAN” in the year 1974 and have been doing the hotel business and catering services for more than 4 decades. They have registered their trade marks since 29.10.2001 which are as follows:

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Registration No.	Mark Class
1055003	VASANTHA BHAVAN 29
1055004	VASANTHA BHAVAN 30
1055005	Food Waves VASANTHA BHAVAN 16
1055006	Food Waves VASANTHA BHAVAN 29
1055007	Food Waves VASANTHA BHAVAN 30
1055009	“V” Monogram 29

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https://hcservices.ecourts.gov.in/hcservices/

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The registered trade marks are duly renewed from time to time and are still valid and subsisting.

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However, the trade mark law prevailing till 2003 did not allow for registration of “services”. However, after the law enabled “services” also to be registered as trade marks from 15.9.2003, the appellant applied for and got a registration in the name of the second appellant for the Trade mark “Namma Veedu Vasantha Bhavan”.

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The appellants are identified only as “VASANTHA BHAVAN” by virtue of registration. A chain of restaurant services are run by the appellants and the appellants are enjoying the reputation and goodwill on the trade mark “VASANTHA BHAVAN”.

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In September 2012, the respondent has unveiled his hotel VASANTHA BHAVAN at Mailam Road, Tindivanam. It is the contention of the appellant that the adoption of the mark “ VASANTHA BHAVAN” by the respondent is with an ulterior motive to cause deception and confusion in the minds of the public. The respondent's use of the mark “Vasantha Bhavan” in relation to the hotel business will affect the plaintiff's goodwill and reputation.

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It is contended that if the respondent is allowed to use or continue with the use of the registered trade mark of the appellant “Vasantha Bhavan”, it will cause irreparable loss and damage to the reputation and good will of the appellant. Therefore, the respondent must be injuncted as the balance of convenience lies in favour of the appellant.

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However, in the counter, the respondent would deny the infringement of the trade mark “Vasantha Bhavan”. He would also state that he is not the owner and no way connected with the hotel Vasantha Bhavan in the Mailam road at Tindivanam. According to the respondent, the said hotel had been in existence for more than 10 years and the suit itself is misconceived.

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It is also submitted that from the documents submitted by the appellants, the first appellant is not the proprietor of the trade mark but there are two others who are not the parties. The appellant's right to sue for the trade mark, which was registered in the names of three persons, was also questioned.

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When the matter was taken up for enquiry, no exhibit was marked in IA No.576 of 2012 and the appellants marked 6 exhibits in I.A.No.577 of 2012, though there were 17 documents filed along with plaint.

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The learned Principal District Judge heard the arguments on both the applications together, but passed separate orders. An elaborate order was passed in I.A.No.577 of 2012. The learned District Judge found that the registered owners are three persons and the first appellant alone has filed the present suit. He also found that the period of 10 years have expired and as on date, the registration is not in force.

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The learned Judge considered 12 factors (a to l) and ultimately held as follows:

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“In the instant case since the areas of dispute are not made clear at this stage, the petitioners have not proved the infringement of any trademark right and that can be done only at the end of trial and therefore in the above circumstances, this Court is not inclined to grant any interim relief to the petitioners and accordingly this petition is dismissed”.

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In IA No.576 of 2012, the learned Judge held that an elaborate discussion has been made in IA No.577 of 2012 and in view of the order passed in that application, the present petition is also liable to be dismissed.

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Aggrieved by which, the present appeals are filed. The points for consideration that arise in these appeals are:

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i) whether the appellants are the registered owners of the trade mark “VASANTHA BHAVAN” and the appeal preferred by one of the owners is maintainable?

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ii) whether the respondent has infringed the rights of the appellants by using the similar trade mark or deceptively similar trade mark?

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iii) whether the respondent is passing off his product as that of the appellant?

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iv) whether the appellants have made out a prima facie case for granting of an interim order of injunction by establishing balance of convenience and irreparable loss?

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Mr.P.S. Raman, the learned Senior Counsel would contend that the appellants are the registered owners of the trade mark “VASANTHA BHAVAN” as registered under Sec.23 under

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No.1055003, 1055004, 1055006, 1055007 and 1055009 of the Trade marks Act under clause 16, 29 and 30.

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The learned Senior Counsel pointed out that the registration was made in the year 2001 and subsequently renewed and the learned Principal District Judge is wrong in holding that as on date the trade marks were not registered and not in force.

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The learned Senior Counsel pointed out that when the trade marks are jointly owned by several persons, a suit for infringement by one of the owners is maintainable. The learned Senior Counsel further pointed out that if a register trade mark is infringed, the owner of the trade mark is entitled for injunction by way of an interlocutory order and the registration is the prima facie evidence for the validity of the trade mark.

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The learned Senior Counsel further pointed out that the learned District Judge has not appreciated the evidence in the proper perspective and submitted that the appellant is entitled for an interim injunction.

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He relied on a decision reported in 2004 (3) SCC 90 (Midas Hygiene Industries (P) Ltd vs Sudhir Bhatia and others), wherein, the Apex court has held that where there is an infringement of trade mark, an injunction normally must follow”

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He also relied an order of the learned Single Judge of this court reported in 2005 (31) Patents and Trade mark cases (PTC) 502 (Mad) (Gangotree Sweets and Snacks Pvt Ltd, Chennai vs Shree Gangotree Sweets, Snacks & Savouries, Trichy), wherein it is held that in the case of a registered trade mark “GANGOTRI” the use of “SHREE GANGOTRI” is an infringement of registered trade mark and granted an interim injunction.

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On the other hand, Mr.Gladys Daniel, learned counsel for the respondent pointed out that the appellants have failed to prove that they are the registered owners of the trade mark “VASANTHA BHAVAN”. The learned counsel pointed out that the certificate of registration produced would show that it is registered in the names of three persons, but an action is brought by only one registered owner and nowhere it is stated that whether it is a partnership firm or the second appellant has been assigned of the trade mark.

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The learned counsel pointed out that the exhibits marked are not for using in legal proceedings and subsequent renewal is not proved by documentary evidence.

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The learned counsel further submitted that the respondent has already stated that he is not the owner of any of

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the hotel under the name and style of “HOTEL VASANTHA BHAVAN” and the appellants have not even bothered to produce documentary proof that the respondent has been using the registered trade mark as that of his trade mark.

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It is argued that when the infringement itself is not proved, the appellants are not entitled for any relief. The learned counsel further pointed out that the suit itself is misconceived and the learned Principal Judge has given as many as 12 reasons for not granting an interim order of injunction.

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Heard and perused the materials available on record.

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The suit is filed for an infringement of a registered trade mark and also for passing off action. Sec.134 of the Trade marks Act reads as follows:

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Suit for infringement, etc., to be instituted before District Court:

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(1) No suit-

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(a) for the infringement of a registered trade mark; or (b)relating to any right in a registered trade mark; or © for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.

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(2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.

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Sec.135 provides Relief in suits for infringement or for passing off which includes injunction or an ex-parte injunction or any interlocutory order.

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Sec.23 of the Act deals with Registration of the Trade Mark. Sec.25 deals with duration, renewal, removal and restoration of registration. Under this section, the duration of the trade mark from the initial registration will be 10 years. Thereafter, a renewal has to be made within a prescribed period and if the renewal is not made within six months from the date of expiry, the trade mark shall be removed and it can be restored on application within one year.

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Sec.28 deals with Rights conferred under the registration and sec.29 deals with Infringement of registered trade marks.

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It is well settled that, in any infringement of trade mark, when once the trade mark is registered, the rights acquired by the proprietor would be absolute and no one has any right of use of such trade mark. If there is any attempt to infringe such trade mark right, that would entitle the registered owner to seek for an injunction against that person.

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This has been so held by the judgment reported in 2005 (31) Patents and Trade mark cases (PTC) 502 (Mad) (Gangotree Sweets and Snacks Pvt Ltd, Chennai vs Shree Gangotree Sweets, Snacks & Savouries, Trichy), cited supra.

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It is also well settled that, in an action for infringement of registered trade mark, the registered owner has to initially prove that the said trade mark is registered and periodically renewed and such right continue to be in force.

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Then the test which follow is whether the defendant had infringed such trade mark by using a deceptively similar trade mark and thereby subjected himself for infringement action and whether the defendant is passing off his products as that of the registered owners to (mis)lead the consumers to believe that they are the products of the registered owner of the trade mark.

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Keeping the above settled principles in mind, the facts of the case have to be looked into. The contention of the respondent is many fold.

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that the respondent is not the owner of the hotel alleged to be involved in the infringement or passing off;

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The person, who has sued, is not the registered owner of the trade mark;

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The appellant has not produced any document to show that the respondent has been using a deceptively similar trade mark and passing off the products as that of the appellant.

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The duration of the registration is already over and there is no renewal as on the date of filing of the suit.

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However, the above contentions raised by the respondent were addressed by the learned Senior Counsel who appeared for the appellant. The registered trade marks are as illustrated above.

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All these trade marks were registered in the year 2001. Therefore, the duration of the trademark under Sec.25 of the Act is 10 years i.e, between 29.10.2001 and 28.10.2011. The trade marks are registered in the names of one Muthu Krishnan, M. Ravi and Mrs.R. Swarnalatha trading as “VASANTHA BHAVAN”. The classes are for selling of food items and service. The trade mark action is initiated by the first appellant M. Ravi and the second appellant Vasantha Bhavan Hotel India Private Limited, represented by the first appellant.

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The first appellant is stated to be carrying on business under the name and style of “VASANTHA BHAVAN” from 1994 and the second appellant was a Private Limited Company incorporated in the year 2003. The other registered owners are not parties.

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The suit was filed on September 2012. However, a renewal application was filed under Form TM 12 on 29.10.2011 which was received by the Registrar of trade Mark, Chennai on 31.10.2011.

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It is alleged by the appellant that they became aware in September 2012 that the respondent has newly floated a Hotel in Mailam Road, Tindivanam, within the jurisdiction of the District Court, Villupuram, using the name “VASANTHA BHAVAN”, which is the trade mark of the appellant. Therefore, the cause of action is said to have arisen on September 2012 when the respondent has commenced the hotel and started passing off the food items and would contend that it will affect the rights of the appellant.

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On his very first appearance, the respondent would state that he is not the owner of Hotel VASANTHA BHAVAN at Mailam Road, Tindivanam and his name is also not properly mentioned and the alleged Hotel Vasantha Bhavan is in existence for more than 10 years. A detailed counter has also been filed by the respondent opposing the action of the appellant in all the grounds as stated above.

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Neither the appellant has issued notice calling for the disclosure of ownership of the hotel VASANTHA BHANVAN at Mailam Road, Tindivanam nor the respondent has disclosed any particulars about the said hotel VASANTHA BHAVAN. But it is pertinent to point out that the respondent contests the suit as if the suit is filed against him.

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As far as the ownership of the registered trade mark is concerned, the learned Senior Counsel invited the attention of this court to Sec.24 of the Act which deals with joint ownership of the trade mark. It is well settled that in a joint ownership of a property, either moveable or immoveable, any one of the coowners can institute a suit to protect the property. Therefore, the first appellant is competent to initiate an action alone, on behalf of himself and other registered owners.

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As far as the duration of the trade mark is concerned, the learned Senior Counsel for the appellant relied on sub clause (3) of Sec.25 of the Act. The learned Senior Counsel pointed out that at a prescribed time before expiration of the duration of the trade mark, it is the duty of the Registrar to send notice calling upon the registered proprietor to pay the prescribed fee for renewal. The learned Senior Counsel further pointed out that failing such renewal or payment of fee, the Registrar may remove the trade mark from the Register.

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According to the learned Senior Counsel, the proviso to clause (3) of Sec.25 would indicate that the Registrar shall not remove the trade mark if an application is made in the prescribed format along with the prescribed fee and surcharge within six months from the expiration of the registration.

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The learned Senior Counsel also pointed out that though 10 years period expired on 28.10.2011, an application has been made on 29.10.2011 which has been received by the Registrar on 31.10.2011. Therefore, the trade mark is renewed and is in force. Since the suit was filed only in September 2012, the trade mark is in force at the point of time.

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On the contrary, the learned counsel for the respondent would submit that under Rule 63 of Trade Marks Rule 2002 an application for the renewal of registration should be made in form TM 12 at any time not more than six months before the expiration of the initial duration. The learned counsel pointed out that under sub clause (2) of Sec.25 also, an application has to be six months prior to the expiration under Form TM II. For application after the expiration which falls under either clause 3 or clause 4 of Sec.25 the prescribed form is TM 13 and therefore, there is no proper renewal.

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Sub clause (2) of Sec.25 read with Rule 63 of Trade Mark Rules will be applicable only when there is renewal before expiration. Sub clause 3 will come into force only when the Registrar issues a notice calling upon the registered owner to pay the renewal fee within a specified time and the failure of which result in removal of trade mark from the register.

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But the proviso to clause (3) of Sec.25 would enable the registered owner to renew within six months after the expiration. Therefore, in the case of non implementation of clause (3) i.e., if notice is not served by the Registrar and if the trade mark is not removed, under the said proviso, the registered owner can renew within six months after the actual expiration. In that event, the prescribed form will be TN 12 under Rule 63. Therefore, the appellants have forwarded the application within six months of the expiry and before removal and it should be presumed that a fresh renewal for another ten years has been made.

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Under Sec.31 of the Act the registration itself is prima-facie evidence of validity and an attempt was made on the side of the respondent stating that the registration certificate issued bears an endorsement that the said certificate is not for use in legal proceedings.

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Rule 62 deals with Certificate of Registration which reads as follows:

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“Certificate of Registration: - (1) The certificate of registration of a trade mark to be issued by the Registrar under subsection (2) of section 23 shall be in Form O-2 with such modification as the circumstances of any case may required and the Registrar shall annex a copy of the trade mark to the certificate.

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The certificate of registration referred to in sub-rule (1) shall not be used in legal proceedings or for obtaining registration abroad.

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(3) The Registrar may issue a duplicate or further copies of the certificate of registration on request by the registered proprietor in Form TM-59 accompanied by the prescribed fee. An unmounted representation of the mark exactly as shown in the form of application for registration thereof at the

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time of registration shall accompany such request.

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(Provided that if the Registrar is satisfied with the claim of the registered proprietor supported by evidence that the certificate of registration issued under sub-rule (1) has not been received by the registered proprietor, he may issue duplicate or copy of the certificate of registration without any further payment of fee.

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Provided further that, no such duplicate or copy of certification of registration shall be issued where such request is received after the expiry of the time limit for renewal of registration and restoration of the registered trade mark).

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The Rule does not say which type of certificate is to be obtained for the use in legal proceedings. Form 12 in Schedule III is the only certificate provided under the Rules. In the absence of any other certificate for the proof of registration, this court is of the view that the endorsement is contrary to sec. 31 of the Act. The Rules also does not provide any other prescribed registration certificate.

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Under such circumstances, the certificate issued under Form 12 is a prima-facie evidence under Sec.31 of the Act.

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The above discussion would show that the first appellant can maintain a suit for an action of infringement of registered trade mark or passing off and the plaintiff is also the registered owner of the trade mark “VASANTHA BHAVAN”. Now the question is whether the respondent has infringed the trade mark right by using a similar or deceptively similar trade mark for his trade viz., the hotel business.

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Admittedly, the allegation in the plaint and the affidavit is that the appellant came to know that in September 2012 the respondent has displayed their name board using the name “VASANTHA BHAVAN” for their hotel in Mailam Road, Tindivanam.

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Six Exhibits were marked by the appellant, showing only the appellants trade mark. An attempt has been made only in this appeal by filing a photo of a board, showing HOTEL VASANTHA BHAVAN. Obviously, this photograph was not produced before the trial court. But interestingly, the respondent who denied that he is the owner of the alleged Hotel Vasantha Bhavan at Mailam Road at Tindivanam would state that the said Hotel VASANTHA BHAVAN in Mailam Road is in existence for ten years.

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61.A counter has been filed stating that the respondent is not the lawful owner of the establishment of the HOTEL VASANTHA BHAVAN at Mailam Road, Tindivanam, but at the same time it is also contended that such hotel bearing the name is in existence for more than ten years and contested the matter. The appellant should have either amended the plaint or should have produced more documents to prove that the respondent or any other person has infringed his right of the trade mark VASANTHA BHAVAN in a similar form or deceptively similar form and there is also a passing off.

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In 2004 3 SCC 90 (Midas Hygiene Industries (P) Ltd and another vs Sudhir Bhatia and Others), the Apex Court held as follows:

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“5. The law on the subject is well settled. In case of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest”.

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In 2005 (31) Patents and Trade mark cases (PTC) 502 (Mad) (Gangotree Sweets and Snacks Pvt Ltd, Chennai vs Shree Gangotree Sweets, Snacks & Savouries, Trichy), this Court has held as follows:

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“22. A cumulative effect of the above referred to provisions makes it clear that once a trade mark is registered with the Registrar, any infringement of such registered trade mark by any person would entitle the holder of the registered trade mark a statutory right to protect itself from such infringement from such persons. Once such a statutory right is created in favour of such a trade mark holder, the question is as to how far the Court can extend its helping hand to protect such rights in favour of the holder of the trade mark as against such persons who are alleged to have infringed such rights a well as who are stated to be indulging in the act of passing off”.

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If the respondent or any other person is using the trade mark VASANTHA BHAVAN for his hotel at Tindivanam, the name which is similar to the registered trade mark, then the appellant is entitled for an injunction. But the petitioner has not produced any material.

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However an attempt is made in the appeal stage to produce a document to show that the trade mark is infringed.

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The factors raised in paragraph 8 of the impugned order do not indicate the right perception in dealing with an relief of injunction in a case of registered trade mark. The trial court in paragraph 9 would state the reason for dismissal as “since the area of dispute are not made clear, the petitioners have not proved the infringement of any trademark right”. . It has also observed that area of dispute can be cleared only at the time of trial and therefore, the injunction was not granted. The suits are won or lost at the stage of obtaining an interim order. It is more relevant in a case of an action for infringement of registered trade mark and action of passing off. The fact remains that the respondent, who stated that he has nothing to do with the hotel, would also agree that there is a Hotel Vasantha Bhavan at Mailam Road and he had seriously contested the matter. In any event the burden is upon the registered Trade Mark holder to prove that there is an infringement of his right. As rightly pointed out, the petitioner has not established that part. The observation that the Trade Mark is not registered or not renewed may not be correct for the reasons stated above. But infringement part has to be established. For that this court has all the power to remand the matter for fresh disposal giving an opportunity for the petitioner to establish his case. But this court is of the view that no purpose will be served.

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Instead, this court set aside the finding that the Registered Trade Mark is not in force and direct the parties to contest the suit. The parties are at liberty to amend the pleadings, add necessary parties or delete the unnecessary parties. On completion of filing of pleadings, the trial court is directed to dispose the suit as expeditiously as possible.

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