ORDER
SHEET GA No.3120 of 2015 GA No.3120 of 2014 CS No.358 of 2014 IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction ORIGINAL SIDE PANGHAT SAREES PVT.LTD.Versus “PANGHAT” & ORS.BEFORE: The Hon'ble JUSTICE SOUMEN SEN Date : 14th October, 2015.
Appearance: Mr.Ranjan Bachwat,Sr.Adv.Mr.D.Ghosh, Adv.Mr.G.Kr.
Ray, Adv.Mr.T.K.Jana, Adv..for the petitioneRs.Mr.Jishnu Saha, Sr.Adv.Mr.Rudraman Bhattacharyya, Adv.Ms.Sulayna Mukherjee, Adv.Mr.Rohit Chowdhury, Adv..for the defendants.
The Court :- The application for vacating of the interim order dated 26th September, 2014 being GA No.3120 of 2015 is taken up along with the main interlocutory applications being GA No.3120 of 2014.
The petitioner is claiming to be the sole proprietor of ‘Panghat’.
It is stated that the petitioner is the owner of the trademark Panghat Sarees and has been continuing the same since 1999.
It was initially in the name of Nirmal Saraf and thereafter the private limited company was formed in 2003.
It is stated that the petitioner is the assginee of the trademark Panghat from Nirmal Saraf, who is the promoter-director of the company.
On 30th January, 2014, on an application filed by the petitioner, the trademark ‘Panghat Sarees’ have been registered in the name of the petitioner in Class-24 under the Trademarks Act, 1999.
The petitioner has also filed an application on 19th August, 2014 for registration of the word mark “Panghat Sarees” in Class-24 under the Trademarks Act, 1999 to protect its exclusive proprietary right over the word mark.
In July, 2014, the petitioner came to know that the respondents are trying to sell sarees under an identical and deceptively similar mark “panghat” from 127A, Park Street, Kolkata-700017.
Immediately, a case and desist notice was issued on 20th August, 2014.
Following such notice an email was forwarded to the Advocate of the petitioner stating that the Partnership firm was established on 1st April, 2010.
A deed of partnership, executed by the partneRs.dated 1st April, 2010 was also forwarded to the Advocate-on-record of the petitioner.
Although the word mark has not been registered, but the fact remains that the label mark namely, “Panghat Sarees” have been registered on 30th January, 2004 and the said registration is still valid and subsisting.
In spite of service of the application the defendants did not appear and oppose the application on 26th September, 2014.
On the basis of the aforesaid facts and after taking into consideration that the volume of sale of the sarees of the petitioner has considerably from 2004-05 that the defendant would not obliged to explain adoption of the word mark “Panghat” I pass an order in terms of prayer[b].of the petition which reads as follows:“[b].An order of injunction restraining the respondent by themselves, their men, servants, agents, assigns and all other persons acting on their behalf from infringing the petitioner’s registered trademark “PANGHAT SAREES” by using the impugned trade name “PANGHAT” or any other trade name and/or trading style containing the word “PANGHAT’ in any manner whatsoever”.
The defendants subsequently have appeared and filed affidavit-in-opposition.
The plaintiffs objected to the authenticity and veracity of a document, relied upon by the defendants in relation to the sale of sarees by the defendants.
Subsequently, an application was filed by the defendants disclosing advertisement published in the newspaper “The Telegraph,” Kolkata Edition on 18th April, 1996.
I disposed of the said application by directing the National Library to submit a copy or authenticated copy of the Kolkata Edition of “The Telegraph” published on 18th April, 1996, in which such advertisement was published since the plaintiffs raised dispute with regard to the authenticity of the advertisement published in the said newspaper.
The National Library has since submitted a report certifying that the said advertisement was, in fact, published in the newspaper “The Telegraph,” Calcutta Edition on 18th April, 1996.
On the basis of such report an application has been filed by the defendants being GA No.3120 of 2015 for vacating of the interim order dated 26th September, 2014.
The basis of the said application appears to be that the documents disclosed in the said petition would establish that the defendant firm was incorporated in the year 1996 and had been carrying on business of selling sarees under the word mark “Panghat”.
The applicants have disclosed documents to show that the names of the shop was displayed as “Panghat” inasmuch as the partnership deed dated 22nd February, 1996, certificate issued by the Vijaya Bank dated 3rd June, 2015, the trade licensee, the Insurance coverage issued by the United India assurance of the telephone bills all would establish that the defendants had been carrying on its business of trading sarees under the name and style of “Panghat” since then.
It is stated that the certificate of registration under the West Bengal Shop and Establishment Rules would show that the applicants have been carrying its business under the name and style of “Panghat” since 18th April, 1996.
The applicants, however, admitted that the documents forming annexure-“C” to the affidavit-in-opposition showing sale of sarees were not authenticated document and tried to shift the responsibility upon its employees.
Mr.Jishnu Saha, learned Senior Advocate appearing with Mr.Rudraman Bhattacharyya submits that on the basis of the document disclosed in the application there cannot be any doubt that the applicants are prior user of the word mark “Panghat” in relation to sarees.
It is submitted that a prior user even without a single transaction can resist an application by any one alleging infringement of the said word mark who is a subsequent user of the same and/ or similar mark.
It is argued that any subsequent registration of the said mark would not give an indefeasible right to such a registered holder of a trade mark to seek an order of injunction against prior user of the mark.
Mr.Saha submits that the petitioner is prior adopter of the word mark “Panghat” and has been using the said mark honestly and continuing prior to use and adoption of the said mark “Panghat”.
It is submitted that the defendant has been able to show an establish a prima facie case that it was a prior user of its mark and the balance of convenience would be to vacate the interim order in this regard.
The learned senior Counsel has relied upon the following decision:• AIR1965Bom 35,1964 (66) BOMLR612(Consolidated Foods Corporation versus Brandon & Company PVT.Ltd.).• (2005) 3 Supreme Court Cases (Dhariwal Industries LTD.& Anr.
versus M.S.S.Food Products; • 2004(12) SCC624Baker Hughes LTD.& Anr.
versus Hiroo Khushlani & Anr.
Mr.Saha, learned Senior Counsel further submitted that there is also distinguishing features between two marks.
Level mark over which the plaintiffs are claiming proprietor interests are distinctly different from the mark used by the defendants.
In short it is submitted that since the plaintiff is not the prior user of the mark ‘Panghat’ and there was no proof or evidence to show that the plaintiffs had adopted the mark and use the said mark before the plaintiffs started using the said mark, the order of injunction passed on 26th September, 2014 is required to be vacated.
Mr.Ranjan Bachawat, learned Senior Counsel appearing on behalf of the plaintiff, submits that the defendants not only would be required to establish prior user of the mark ‘Panghat’ in relation to Sarees but also extensive and continuous use of the said mark in relation to its products.
Mr.Bachawat submits that the defendants initially had relied upon the deed of partnership dated 17th December, 2012 in support of their claim to use the mark ‘Panghat’ in relation to the Saree.
However, in the application the defendants have relied upon an alleged deed of partnership dated 22nd February, 1996.
The defendants have failed to explain as to whether there has been a reconstitution of the said partnership with the present partneRs.In 2012 partnership deed it is not stated if the present defendants have acquired goodwill of the original partnership firm.
It is further argued that having regard to the fact that the present applicants are disowning the documents forming part of the affidavit in opposition to establish the sale of sarees by the said firm under the word mark Panghat, as on date, there is nothing on record to establish a single sale by the defendants which can persuade this Court to vacate the interim order.
It is argued that in an action for infringement and passing off when a party is using prior user as a shield, it is necessary for that party to prove that they have been continuously using the trademark in respect of goods manufactured or marketed by them.
Mr.Bachawat has relied upon the observation of the Division Bench of the Madras High court in Amaravathi Enterprises versus Karaikudi Chettinadu reported at 2008 (36) PTC688(Mad.) paragraph 21 where their Lordships have held that when a defence of prior user is taken, burden lies on such trader/manufacturer to prove the continuous use of the said trade name and in that regard the volumn of sales also assumes significance.
The learned Senior Counsel has also relied upon a Division Bench judgment of the Delhi High Court in Pioneer Nuts and Bolts PVT.LTD.versus Goodwill Enterprises reported at 2009 (41) PTC362(Del.) and argued that mere offers for sale and orders resulting from such offers do not constitute the use of a trade mark.
It would be necessary that the proprietor of the trade mark by the time an offer for sale is published, should “take positive steps to acquire goods marked with the trademark” for then he would have done enough for his combined actions to constitute use on, or in relation to goods.
Mere issuance of advertisement would not constitute a user of the mark.
The said submission is made on the basis of the only advertisement disclosed in this proceeding by the applicants in the newspaper ‘The Telegraph’ (Kolkata Edition) on 18th April, 1996.
At the interlocutory stage the matter is required to be decided on affidavit evidence.
There cannot be any doubt that on the basis of the document disclosed by the applicants there is an advertisement published in ‘The Telegraph’ Kolkata Edition on 18th April, 1996 much prior to a claim being made by the plaintiffs of prior adoption and user of the mark ‘Panghat’ in relation to its products.
However, the fact remains that the invoices and other documents annexed to the affidavit in opposition were admittedly fabricated and are not the authenticated copies of such invoices.
The respondents may be in an attempt to ward off perjury has in this application for vacating the interim order admitted such documents were hurriedly prepared by the employees of the respondents.
However, one would expect at the interlocutory stage that the respondents disclose some evidence to establish that the said respondents after adoption of the mark ‘Panghat’ has been continuously and extensively using the said mark in relation to its products.
In spite of giving opportunities to the respondents to disclose documents, unfortunately, there is nothing on record to show that apart from a single advertisement published in the newspaper there has been any use far less continuous or extensive of the mark ‘Panghat’ in relation to Sarees.
In all the decisions cited by Mr.Saha there were proof of continuous and extensive sale of such products and on that basis the Court have directed the parties to maintain separate account.
In my view, a mere advertisement made in 1996 cannot act as a shield in an action brought for infringement and passing of when the fact remains that the plaintiff has adopted the mark in the year 1999 and has disclosed documents to show that the said mark was extensively used by the plaintiff in relation to its products.
If parties have after adoption of a mark remained idle and did not use it for its business, any subsequent honest adopter of the said word mark thereafter if used the said mark may be in relation to the same products and thereafter have the said mark registered in its favour would certainly have a better right over the person who was sleeping over such right.
By reason of the adoption of the mark ‘Panghat’ in the year 1999 by the plaintiff and continuous and extensive use of the said mark in relation to the said products coupled with wide advertisements have certainly given an edge to the plaintiffs over the defendants who have miserably failed to disclose any document at this stage to establish that since 1996 the defendants are using the said mark continuously and extensively.
In absence of any such document I am unable to vary the interim order passed on 26th September, 2014.
The interim order passed on 26th September 2014 stands confirmed.
It is needless to mention that the observations made in this order cannot have any bearing at the trial of the suit.
GA No.3120 of 2015 stands dismissed.
GA No.3120 of 2014 stands disposed of.
However, there shall be no order as to costs.
Urgent certified website copies of this order, if applied for, be urgently supplied to the parties subject to compliance with all requisite formalities.
(SOUMEN SEN, J.) nm/sp/b.pal.