Judgment:
G.A.No.3529 of 2011 G.A.No.4273 of 2001 C.S.No.516 of 2001 IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction In the matter of: EMAMI LIMITED …….Appellant/Petitioner -And- TRIMURTI TEXTILE INDUSTRIES & ORS.….Respondents For the Petitioner : Mr.Goutam Chakraborty, Senior Advocate with Mr.Jishnu Saha, Mr.Atish Ghosh, Advocates For the Respondents : Mr.Ratnanko Banerjee, Advocate with Ms.Lopita Banerjee, Mr.Kuldip Mallick, Advocates Heard on :
13. 06.2012 Judgment :
4. h July, 2012 I.P.MUKERJI, J.
A word mark, a label mark and copyright relating to them are involved in this application.
The word is “Emami”.I will come to the details later.
This suit was filed in the year 2001.
Thereafter an application for injunction was filed by the plaintiff.
An injunction was sought to restrain the defendants from infringing the plaintiff’s label mark “Emami”.This is that injunction application (G.A.4273 Of 2001) being presently heard by me.
It has a long history.
Upon completion of affidavits it was heard at length before Indira Banerjee J.
She delivered a judgment on 29th August, 2005.
The Court came to the prima facie conclusion that the plaintiffs had not been able to establish a prima facie case.
It was observed that the defendants were using the alphabets TTK along with “Emami”.Emami was also written in hindi.
Furthermore, the plaintiff had not been able to make out a prima facie case regarding damage to its goodwill or “tarnishing of its image and repute”.They had made considerable delay in approaching the Court.
Her ladyship also went to the extent of saying that the plaintiff could not establish “any great reputation”.The sales figures “are hardly impressive”.The learned Judge further said and held: “As rightly argued by Mr.Chakraborty registration in itself may not be a defence against passing of, if it can be established that the defendant was trying to pass off its goods as that of the defendant.
However, as observed above, the conditions for an action for passing off must exist.
…………………………………………………………….
Even if a mark is not internationally used, the mark might still be entitled to protection, if the plaintiff could establish even prima facie that the goods of the plaintiff were of such repute that the users would only associate the mark Emami with the goods of the plaintiff and that use of the mark by the defendant even in respect of totally different products would give the defendant an unfair advantage and consequently tarnish the image of the plaintiff.
There is nothing on record to show that the plaintiff has in any manner been prejudiced.
The plaintiff has itself not taken any action to stop the defendant from using the mark.
The plaintiff has knowingly allowed the defendant to use the mark.
Moreover the defendant was registered as proprietor of the mark Emami in respect of clothing before the plaintiff.
It is difficult to understand how both the plaintiff and the defendant could have obtained registration of the same Trade Mark in respect of the same class of goods.
The plaintiff was prima facie not entitled to registration of the mark in respect of clothing until and unless the earlier registration of the Trade Mark in the name of the plaintiff was cancelled.
It is admitted in reply that the predecessor in interest of the plaintiff, Kemco Chemicals issued a notice way back in August, 1991 through its lawyers calling upon the defendant to cease and resist from using the mark Emami in respect of hosiery.
No follow up action appears to have been taken.
The explanation that there was no use of the mark after 1991 and till 2001 when a notice was once again issued and the instant suit filed is difficult to accept.
The defendants have produced bill books, challans and advertisements.
Newspaper advertisements of textiles under the trademark Emami appear to have been issued till 2000.
………………………………………………………………… ….
It is true that delay in itself may not be fatal to an action for passing off.
At the same time, in considering an application for injunction, delay cannot be ignored and not so when the delay may reasonably be construed as laches amounting to acquiescence, as in this case, where no action has been initiated for over ten years after issuance of notice.
Waiver of the notice might be inferred.
In any case, there being no whisper of the fiRs.notice, the petition suffers from suppression of a material fact.
For the reasons stated above, the defendant cannot be injuncted from using e mark ‘Emami’ in respect of hosiery goods at this stage.
It, however, appears that the plaintiff has copy right in the ‘Emami’ label, with the word ‘Emami’ depicted above …….in a stylized and artistic manner with the fiRs.letter written like turned 3 followed by the letters mami in small letters and the dot over ‘I’ resembling a flower with six petals and/or a star.
There will be therefore be an order of injunction restraining the defendants from infringing the copy right of the plaintiff in the ‘Emami’ label as registered, with the word ‘Emami’ depicted above motifs in a stylized and artistic manner with the fiRs.letter written like turned ‘3’ followed by the letters mami in small letters and the dot over ‘I’ resembling a flower with six petals similar to a star.”
There was an appeal from that order (APO 3.of 2006).It was heard by the Division Bench consisting of Pinaki Chandra Ghose and Harish Tandon JJ.
Judgment was delivered on 6th May, 2010.
The application was sent on remand to the trial court.
The appeal was disposed of.
It appears that such decision for remand was occasioned by the order of the Joint Registrar of trade mark made on 16th April, 2009 directing removal of the registered mark of the defendants “Emami”.
from the register.
It appears that an application was filed by the appellant plaintiff to introduce the records of that proceeding, in the Appeal Court, by filing an application under Order XLI Rule 27 of the Code of Civil Procedure.
While dealing with the application the Division Bench disposed of the appeal by remanding the application to the trial court, on the following terMs.“In these circumstances this application has been filed for obtaining an order granting leave to the appellant petitioner to produce the same by way of additional evidence in the instant appeal and to use the said order dated 16th April, 2009 annexed to the application so filed by the appellant.
It appears to us that at that point of time when the matter was decided by the Hon’ble FiRs.Court on 29th August, 2005 the order in question was never placed before the Hon’ble Court.
Therefore, the Hon’ble Trial Court did not get any chance to deal with the said decision and to come to the conclusion whether the appellant is entitled to get an injunction in respect of the Trade Mark so claimed by them.
Therefore, in our considered opinion, it would be proper for us only to remand the matter back in respect of the injunction as prayed for by the appellant with regard to the prayer made in the petition being G.A.No.4273 of 2001 so that the Court can deal with the matter in respect of the trade mark and that in our considered opinion would serve justice to the parties herein.
WE find that in the present scenario that order so passed by the Hon’ble FiRs.Court should be affirmed in favour of the appellant with regard to the injunction passed in respect of the copy right as claimed by the appellant.
Since we have allowed the application being GA.
No.3293 of 2009 that matter should be placed before the Court after taking into account the order so passed by the Joint Registrars of Trade Mark and the learned Trial Court will deal with the matter accordingly.
The affidavit which has been filed before this Bench may be treated as affidavit before the Hon’ble Trial Court.
The documents mentioned in the present application being G.A.No.3293 of 2009 should be considered by the Trial Court at the time of hearing of the application only with regard to prayer (a) in respect of the Trade Mark only.
The appeal is disposed of on the above terms.”
EFFECT OF REMAND: Now, it has to be fiRs.seen what is the effect of the judgment and order of the Division Bench to understand the scope of enquiry before this Court.
To appreciate the purport of this order, Rules 23 and 23A of Order XLI of the Code of Civil Procedure relating to remand are most relevant.
They are set out below: “23.
Remand of case by Appellate Court.—Where the Court from whose decree an appeal is preferred has disposed of the suit upon a preliminary point and the decree is reversed in appeal, the Appellate Court may, if it thinks, by order remand the case, and may further direct what issue or issues shall be tried in the case so remanded, and shall send a copy of its judgment and order to the Court from whose decree the appeal is preferred, which directions to re-admit the suit under its original number in the register of civil suits, and proceed to determine the suit; and the evidence (if any) recorded during the original trial shall, subject all just exceptions, be evidence during the trial after remand.
23A.
Remand in other cases.—Where the Court from whose decree an appeal is preferred has disposed of the case otherwise than on a preliminary point, and the decree is reversed in appeal and a re-trail is considered necessary, the Appellate Court shall have the same powers as it has under rule 23.”
Therefore when an Appeal Court sends a matter back to the trial court it might direct the lower court to reconsider all the issues or some of the issues or a specific issue.
It is also to be seen whether the Order of the Court below has been reversed in full or in part.
Justice R.C.Lahoti delivering the judgment of the Supreme Court in the case of Jamshed Hormusji Wadia versus Board of Trustees, Port of Mumbai reported in AIR 200.SC 181.underlined the scope and significance of a limited remand in paragraph 22 of the report: “22.
……………………………………………….This Court made a remand to the Division Bench of the High Court persuaded by the consideration that there were a few aspects of paramount significance which needed the attention of the Division Bench of the High Court.
……………………………………………….Later, while delivering the 2000 judgment, which is impugned herein, the Division Bench certainly assumed a wider field of jurisdiction than the one which had been permitted by this Court and entered into examining the whole controveRs.afresh and as if all the contentions of all the parties were open before it which view of the High Court, in our opinion, cannot be countenanced on a reading as a whole of the order of remand passed by this Court along with the judgment of the Division Bench which was impugned then.”
On my examination of the order of the Appeal Court, fiRs.of all, I find that the appeal has been "disposed of".
In disposing of the appeal the appeal Court has not interfered with any of the findings of the learned trial Judge.
This kind of an Order is strictly not within Rules 23 and 23A of Order XLI as the order under appeal has not been reversed in full or in part.
Yet, this kind of a remand was recognized in the case of M Fati versus Kalimuthu & ORS.reported in AIR 193.Rangoon 168 pg 171.
The Court said: “…………………………….
Although a remand such as we propose to make is not strictly covered by the provisions of O.
41 , R.
23, Civil P.C., yet we consider that we have ample power to make a remand in order that a point, which has not been considered by the learned District Judge, may be considered by him: Ghuznavi v.
Allahabad Bank, LTD.(6)”.
These two cases were cited by Mr.Banerjee, for the defendants.
The Appeal Court has directed the trial court hearing the application on remand to consider a specific issue: the effect of the order of the Joint Registrar of Trade Marks cancelling the registration of the mark of the defendants.
The scope of enquiry was limited to that specific issue only.
Consequently, in my opinion any finding of the learned trial Judge which could be affected by the Order of the Registrar was kept in abeyance.
Therefore this application has to be considered accordingly.
BRIEF FACTS: On 11th July, 1977 the word mark "Emami" was registered in favour of Raj Kumar Goenka and Bajrang Lal Agarwal carrying on business as Kemco Chemicals from 485, Muktaram Babu Street, Calcutta - 7.
This mark was to be used in flasks and tooth brushes.
The copyright office of the Government of India, on 30th August, 1977 registered a label with the name "Emami" in favour of KemCo.The word, as described by Indira Banerjee J in her judgment is written in an artistic and stylized manner.
The special features of this writing are that "E" is written as the number "3", rotated 180o anticlockwise.
The "dot" over "i" resembles “a flower with six petals or a star”.On 14th March, 1985, the above mark was registered in favour of Kemco Chemicals for its use in goods relating to tea, coffee, biscuits, cakes, pastry, confectionery, honey, pepper, sauces and spices.
Thereafter its registration was extended to cover other products.
Subsequently, the business of Kemco Chemicals was taken over by Emami Limited, the plaintiff together with all its rights, liabilities and obligations.
On 17th August, 1990 the word mark was registered in favour of the plaintiff for use in clothing, garments, hosiery, boots, shoes, etc.Now, four days prior to that, i.e.on 13th August 1990 the artistic and stylized version of the mark, of which the plaintiff had copyright and of which the plaintiff was the registered proprietor of the word mark, was registered in favour of the defendants.
On 4th April, 1991, Kemco Chemicals wrote to the defendants complaining of wrongful use by them of their mark in "hosiery products" and asked them to stop using the mark.
It appears that Kemco or the plaintiff took no action in terms of this letter.
The justification given by the plaintiff is that since the defendants stopped using the mark, there was no occasion to take any action under the notice.
Indira Banerjee J disbelieved this.
I am not permitted to go into this question.
RES SUBJUDICE not the question is: what is the effect of the order of the Joint Registrar of Trade Marks dated 16th April, 2009 cancelling the registration of the trade mark in favour the defendants.
It was submitted by Mr.Ratnanko Banerjee, learned Advocate for the defendants that an appeal from the order of the Trade Marks Registrar is pending.
It is marked as TM/321/09.
However, there is no stay granted by the Appellate authority.
Before proceeding further with the matter a contention of the defendants has to be dealt with.
It was submitted on their behalf that the appeal from the Registrar's order was pending.
Since that appeal was pending the order of the Registrar was not final.
They cited the case of S.P.A.Annamalay Chetty versus B.A.Thornhill reported in AIR 193.PC 26.to submit that an appeal was a continuation of the proceeding before the trial court and hence there was no finality of the order appealed against.
They also referred me to the case of Sheodan Singh versus Dharyao Kunwar reported in AIR 196.SC 133.to submit that pendency of the appeal was equivalent to a matter being ressubjudice.
Mr.Chakraborty, learned Senior Advocate for the plaintiff, urged, with reference to Section 124 (5) of the Trade Marks Act, 1999 that even stay of a suit would not prevent the Court from passing an interim order.
In my opinion the cases of S.P.A.Annamalay Chetty versus B.A.Thornhill reported in AIR 193.PC 26.and Sheodan Singh versus Dharyao Kunwar reported in AIR 196.SC 133.enunciate principles which have to be understood in the correct perspective.
No one can doubt the proposition that the appeal is the continuation of the suit.
Therefore, an appeal from the order of the Registrar of Trade Marks, which is a proceeding other than a suit will also follow the same principles.
The appeal would be a continuation of the proceedings before the Trade Marks Registry.
Therefore, finality of the adjudication would be achieved at the time of disposal of the appeal.
That is why it was said in the case of Sheodan Singh versus Dharyao Kunwar reported in AIR 196.SC 133.that during pendency of the appeal a matter did not become res-judicata but was res-subjudice.
The above decisions of the Privy Council and of the Supreme Court that pendency of an appeal did not constitute res-judicata were followed by the Supreme Court in the case of Muthuswami Gounder vs.N.Palaniappa Gounder reported in 1998 (7) SC 32.also cited by Mr.Banerjee.
Now, finality of a proceeding and finality of a decree or an order are quite different from its validity and enforcement.
It is trite that a decree appealed against is not stayed by preferment of an appeal.
A specific order of stay has to be granted by the Appellate Court (See Order XLI Rule 5 of the Code of Civil Procedure Code).Now, if a decree is not stayed the decree becomes executable.
If the appellant succeeds in the appeal there is restitution (Section 144 of the Code of Civil Procedure).In other words, the order of the trial court is carried out, if there is no stay subject to the result of the appeal.
The order of the Joint Registrar of Trade Mark is also to be taken similarly.
Since the Appellate authority has not granted stay, the order of the Joint Registrar takes effect.
The effect of that order is that the word mark of the defendants in the register remains struck off.
I do not think that the delay in instituting the suit and applying for injunction will have any effect now.
At the time of institution of the suit and consideration of the application for injunction by Indira Banerjee J.both the plaintiff and the defendants were registered users of the mark "Emami".
The defendants were registered a few days before the plaintiff for clothing and hosiery.
The action was passing off.
The fact was that the plaintiff and the defendants started using the mark.
That was the prima facie case at the time of consideration of the interlocutory application by her ladyship.
On top of that the Court was able to hold that the plaintiffs did not have any substantial reputation on sale.
Therefore, the Court was considering the claims of two registered proprietors of the mark "Emami", as to whether the defendants were passing off their goods as those of the plaintiffs.
The Court came to the conclusion that no such case of passing off was made out and refused to pass an interim order.
Now, there is the intervention of the Registrar’s order dated 16th April, 2009.
The defendants’ mark "Emami" has been struck off the register.
There is no stay of that order.
Therefore, the position is that the plaintiff’s mark is registered from the year 1977 and the defendants’ mark is not registered.
It is not a registered mark against an unregistered mark.
This is a new circumstance, in my opinion.
Whatever may be the strength of the defendants’ case one has to proceed on the basis that there does not exist any mark of the defendants in the trade marks register.
The mark of the plaintiff exists.
And this mark of the defendants has been held to be identical to the plaintiff’s mark by Indira Banerjee J.“It is difficult to understand how both the plaintiff and the defendant could have obtained registration of the same Trade mark in respect of the same class of goods.
The plaintiff was prima facie not entitled to registration of the mark in respect of clothing until and unless the earlier registration of the Trade Mark in the name of the plaintiff was cancelled.”
Therefore, the remedy of the plaintiff is infringement and statutory as pronounced by the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma (In both the appeals) versus Navaratna Pharmaceutical Laboratories (In both the appeals) reported in AIR 196.SC 980.
I will not read certain passages from this judgment.
They are as follows: “28.
…………………………….
While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of “the exclusive right to the use of the trade mark in relation to those goods”.
(Vide S.21 of the Act).The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua not in the case of an action for infringement…………………… 29.
When once the use by the defendant of the mark which is claimed to infringe the plaintiff’s mark is shown to be “in the couRs.of trade”., the question whether there has been an infringement is to be decided by the comparison of the two marks.
Where the two marks are identical no further questions arise; for then the infringement is made out.
When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S.21).…………………………………..”
The Supreme Court has also said in that judgment that when there is infringement of a registered trade mark the Court has the power to grant an injunction (See paragraphs 8, 17 and 33).In a later decision in the case of Midas Hygiene Industries (P) LTD.And Another versus Sudhir Bhatia And Others reported in 2004 (3) SCC 9.the Supreme Court said that when infringement is established an injunction is a matter of course.
This decision was followed by our Court in the case of R.R.Proteins and Agro LTD.versus Hari Shankar Singhania & Anr.
reported in 2010 (3) CHN (CAL) 912.
Sanjib Banerjee J remarked in paragraph 18: “18.
The next judgment cited by the plaintiff, reported at 2004 (3) SCC 90.[Midas Hygiene Industries (P) LTD.versus Sudhir Bhatia]., is for the proposition that if the adoption of the defendant’s mark is found to be dishonest, an interlocutory injunction would follow.
The plaintiff in that case complained of passing-off and infringement of copyright.
The original mark in that case was “Laxman Rekha”.
and the offending mark was “Magic Laxman Rekha.”
After briefly noticing the facts, the Court held that in cases of infringement, either of trade mark or of copyright, normally an injunction must follow and the mere delay in bringing the action would not be sufficient to decline the injunction.
The Court also noticed that it was the admitted position that the defendants used to work with the plaintiff and held that the grant of injunction would be necessary if it prima facie appeared that the adoption of the mark was itself dishonest.”
His Lordship embellished the principles of Kaviraj Pandit Durga Dutt Sharma (In both the appeals) versus Navaratna Pharmaceutical Laboratories (In both the appeals) reported in AIR 196.SC 98.(Supra) , when he said : “30.
Since protection against infringement is a statutory right, however it may be understood in other jurisdictions, it is the statutory connotation of infringement that is of relevance.
Section 29 of the present Trade Marks Act, in its general description of infringement, records that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the couRs.of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
The identity or similarity of the registered mark with the mark complained against and the identity or similarity of the goods or services covered by the two marks are the essential keys to ascertain whether there is infringement.
Where the marks are identical there is scarcely and difficulty in entering judgment for the plaintiff if the identity or similarity of the goods or services is established.
If the two marks are not identical but the mark complained of is deceptively similar to the registered mark and the identity or similarity of the goods or services is established, there is infringement.
A mark is deceptively similar to another, according to the statutory definition in section 2(h) of the Act, if the mark so resembles the other as to be likely to deceive or cause confusion.”
All these cases were cited by Mr.Chakraborty.
Therefore, delay is normally not a factor at all.
Moreover, a fresh cause of action has arisen after the said order of the Joint Registrar of the Trade Marks.
For all these reasons this application G.A.No.4273 of 2001 has to be allowed.
I allow this application by passing orders in terms of (a) and (b) of the Notice of Motion.
The other application for appointment of a Receiver (GA.
3529 of 2011) is also allowed by passing an order in terms of prayer (a) of the Notice of Motion, with the modification that the Receiver will take symbolic possession of the goods, giving an opportunity to the defendants to comply with this order, within a period of three months, from date.
The Receiver will file a report every month in this Court with copies to the parties.
If violation of this order takes place, the plaintiff will be at liberty to take out a further application for a direction upon the Receiver to take physical possession of the goods.
Mr.Ashutosh Laha, Advocate of Bar Library Club is appointed Receiver at a monthly remuneration of 600 GMs.to be paid by the plaintiff.
Urgent certified photocopy of this judgment/ order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(I.P.MUKERJI, J.) Later: Learned advocate for the defendants prays for stay of operation of this judgment and order.
The prayer for stay is considered and refused.
All parties concerned are to act on a signed photocopy of this order on the usual undertakings.
(I.P.MUKERJI, J.)