Sony Kabushiki Kaisha (Also) Trading as Sony Corporation Vs. Aashish Electronic and ors. - Court Judgment

Excerpt:
- section 34: [d.k. deshmukh, s.j. vazifdar & j.p. devadhar, jj] court fee on petition under section 34 of the act bombay court fees act (36 of 1959), schedule i, article 3, schedule ii, article 1(f)(iii) held, according to article 3 of schedule i, on any plaint, application or petition or memorandum of appeal for setting aside or modifying an award, same court fee is payable as is payable on a plaint or memorandum of appeal under article 1. thus, when an award is challenged by a plaint, application, petition or memorandum of appeal, court fee is payable on ad valorem basis. but from this requirement of payment of court fee on ad valorem basis, article 3 excludes an application or petition or memorandum of appeal filed in civil or revenue court challenging any award made under the arbitration act, 1940.thus, the provisions of article 3 of schedule 1 do not apply when an application is filed or appeal is filed challenging an award made under the arbitration act, 1940. thus the provisions of article 3 of schedule i do not apply when an application is filed challenging an award made under the arbitration act, 1940. the question, therefore, that arises for consideration is whether reference to the provisions of 1940 act found in article 3 of schedule i of the bombay court fees act can be said to include reference to the 1996 act. perusal of the provisions of section 8 of general clauses act shows that where by a central enactment any provision of a former enactment is repealed and re-enacted with or without modification then reference in any other enactment to the provisions so repealed shall, unless a different intention appears, be construed as references to the provisions so re-enacted. in the present case, it is common ground that the former enactment is the 1940 act, the new enactment is the 1996 act and any other enactment is the bombay court fees act, the only provision of the 1940 act referred to in article 3 of schedule 1 of the bombay court fees act is the provisions of section 33 of the 1940act and bare comparison of that provision with the provisions of sub-section (1) of section 34 of the 1996 act shows that the provision of section 33 of 1940 act is repealed and re-enacted in sub-section (1) of section 34 of the 1996 act with slight modification. therefore, reference to the provisions of section 33 of the 1940 act in article 3 of schedule-i of the bombay court fees act has to be construed, in view of the provisions of section 8 of the general clauses act, as reference to the provisions of section 34 of the 1996 act. so far as an appeal filed under section 37 of the 1996 act is concerned, perusal of section 37 shows that an appeal is provided to the appellate court against an order setting aside an arbitral award or refusing to set aside an arbitral award under section 34. thus, as the provisions of article 3 of schedule-i do not apply to an application or petition filed under section 34 of the 1996 act, they will also not apply to the memorandum of appeal filed to set aside or modify an award made by the arbitrator under the 1996 act. in other words nothing contained in article 3 of schedule-i of the bombay court fees act applies to an application, petition or memorandum of appeal to set aside or modify any award made under the 1996 act as it does not apply to an application or petition or memorandum of appeal to set aside or modify an award made under the arbitration act, 1940. perusal of the provisions of section 8 of the general clauses act shows that references in any other enactment to a provision in a former enactment is to be construed as reference to re-enacted provision in the new enactment unless a different intention appears. the different intention may appear either in the new enactment or in the other enactment. nothing was pointed out either in the 1996 act or in the bombay court fees act which can be construed as a different intention or which will show that it was not the intention of the maharashtra legislature to exclude an application or petition or memorandum of appeal filed in court to set aside or modify an award made under the 1996 act, from the provisions of article 3 of schedule-i of the bombay court fees act. it appears that the intention behind excluding an application made, challenging the award made under the 1940 act, from requirement of payment of ad valorem court fee which is required to be paid if the same litigant filed a suit on the same subject matter, was to encourage a litigant to go for arbitration instead of filing a suit. nothing has been pointed out to show that ther4e is any change in that legislative policy. on the contrary, from the preamble of the 1996 act it is clear that the policy of the legislature is to encourage people to adopt the mode of arbitration for resolving disputes. article 3 of schedule-i of the bombay court fees act does not apply to a petition, application or memorandum of appeal filed for challenging an award made under the 1996 act, and court fee on a petition filed under section 34 of the 1996 act challenging an award in high court is payable according to article 1(f)(iii) of schedule ii. section 37: [d.k. deshmukh, s.j. vazifdar & j.p. devadhar, jj] court fee on appeal under section 37 of the arbitration & conciliation act, 1996 - held, court fee is payable according to article 13 of schedule ii of the bombay court fees act. schedule i, article 3 & schedule ii, article 1(f)(iii): [d.k. deshmukh, s.j. vazifdar & j.p. devadhar, jj] court fee on petition under section 34 of the arbitration & conciliation act, 1996 - held, when a petition under section 34 is to be filed before a principal civil court of original jurisdiction which is not a high court, the question arises which article of either first schedule or second schedule would apply. in so far as the challenge to an award made under the 1940 act is concerned, an application under section 33 of that act could be made to a civil court and therefore, payment of court fee was governed by article 1(a) of schedule ii. this was so because the application was to be presented to the court of civil judge which was not a principal civil court of original jurisdiction. but now because of change of definition of term court in the 1996 act, a petition has to be presented, challenging an award made under the 1996 act in terms of the provisions of section 34 thereof, before the principal civil court of original jurisdiction. no entry either in the first schedule or in the second schedule was pointed out which applies to an application or petition to be made before the principal civil court of original jurisdiction, and therefore, when a litigant wants to file petition before a principal civil court having original jurisdiction which is not high court, challenging an award made under the 1996 act, no court fee under bombay court fees act is payable because of absence of a general or specific provision. therefore, it can be said that no court fee under the bombay court fees act is payable when a petition under section 34 challenging an award is filed before any principal civil court of original jurisdiction which is not high court. schedule ii, article 13: [d.k. deshmukh, s.j. vazifdar & j.p. devadhar, jj] court fee on appeal under section 37 of the arbitration & conciliation act, 1996 - held, court fee is payable according to article 13 of schedule ii of the bombay court fees act. - the cause of action, as per the plaintiffs, arose in january, 2001, when they first learnt about the defendants activities of using 'sonny' on their electric good like ac adapter and offering the same for the sale in the market. in spite of due notice, as defendants failed to desist themselves from using the said word, the present suit has been filed on 29th september, 2003. a notice of motion has been taken out by plaintiffs for urgent ad-interim relief. in the book 'famous and well known marks' published in 1997, it has been mentioned that although there is no precise definition for famous and well known marks, the trade mark 'sony' would probably qualify as such in india. such goods in the market, therefore, damage the reputation, as well as, injure the business. (e) that the use complained of is prior and hence protected; (f) that the use complained of is protected as bona fide; (h) the use complained of is protected by section 35; (i) that the exclusive rights claimed by the plaintiff have ceased to exist on account of circumstances contemplated in section 30. (j) defence regarding damages under section 135(3); even otherwise, it is a matter of detail deliberation during the trial. the selling of goods by the defendants in the name of 'sonny' will create confusion and shall cause irreparable loss and injury to the well-known and extensive market of all the products of the plaintiffs.anoop v. mohta, j. 1. heard the learned counsel appearing for the parties. the suit dated 20th august, 2003, is basically for injunction and for an appropriate order of restrain meant against the defendants from using the trademark 'sony' by naming and spelling it 'sonny' or any word deceptively similar thereto in connection with its business as it would tantamount to infringement and/or passing off. the cause of action, as per the plaintiffs, arose in january, 2001, when they first learnt about the defendants activities of using 'sonny' on their electric good like ac adapter and offering the same for the sale in the market. in spite of due notice, as defendants failed to desist themselves from using the said word, the present suit has been filed on 29th september, 2003. a notice of motion has been taken out by plaintiffs for urgent ad-interim relief.2. there is undisputed position of facts that plaintiffs have been selling this product under the trademark 'sony' in india since the year 1983 to 1993, even though at that time, the main company of the plaintiffs was at japan. the registration of the mark in 193 countries of the world and plaintiffs' world wide sales figures of sony branded goods in the last few years are also reflected in paragraph 4 which is for the period 1975 upto 2001.3. the plaintiffs have a wholly owned indian subsidiary by the name of sony india limited which is using the trade mark sony on all its products and is doing substantial business. the sales effected by sony india limited for the years 1995 to 2001 of goods bearing the trade mark sony has been reflected in the plaint.4. it was also averred that they have entered into the entertainment industry viz. 'sony entertainment' channel which is available in india and being is watched by millions of viewers in this country. therefore, sony is the corporate name of plaintiffs and both the names sony and the trade mark sony are associated in the minds of the people in india with high quality goods of the plaintiffs. the advertisement of sony goods in india and abroad in magazines and other media had extensive circulation in this country.5. as averred, in a latest survey in the economic times dated 23rd december, 1997, 'brand value - an economic times - imrb survey of indian brands', sony has been categorised as the third topmost brand by the general consumer in india. in the book 'famous and well known marks' published in 1997, it has been mentioned that although there is no precise definition for famous and well known marks, the trade mark 'sony' would probably qualify as such in india.6. in this background, the use of the said mark 'sonny' by the defendants in relation to their business of selling ac adapters and battery chargers definitely creates a confusion. it is a clear case or infringement of their trademark. this definitely creates confusion in the mind of the people at large as if it is the product of the plaintiff. such goods in the market, therefore, damage the reputation, as well as, injure the business.7. considering the above background, by an order dated 14th october, 2003, after hearing the parties, ad-interim relief in terms of prayer clauses (a) and (b) has rightly been granted, after hearing the defendants 1 to 3. the prayer clauses (a) and (b) are as follows :(a) that pending the hearing and final disposal of this suit the court receiver, high court, bombay or such other fit and proper person as this hon'ble court thinks fit, be appointed receiver with all powers under order xl, rule 1 and order xxxix, rule 7 of the code of civil procedure, 1908 of products bearing the impugned mark 'sony' and of all blocks, moulds, goods, labels, cartons, strips, advertising material, and other literature, material bearing the impugned trade mark, product catalogue, printing and packaging material pertaining thereto, including all other things which are or may be intended to be used in the manufacture, advertisement of and in connection with the products hereto with all powers under order 40, rule 1 of the civil procedure code, 1908 including power to take physical possession thereof and with police help if necessary.(b) that pending the hearing and final disposal of the suit the defendant, by himself, his servants, dealers and agents be restrained by a temporary order and injunction of this hon'ble court from using the trade mark sony or any other word/name containing the word sony or any word deceptively similar to the trade mark sony or from using the word sony or any word deceptively similar thereto in connection with their business as would tantamount to passing off.8. the learned counsel appearing for defendants made a statement that this order has been fully complied with. the said order dated 14th october, 2003, has not been carried in appeal and no applications have been moved for vacation of this order. there is no additional affidavit filed on the record by the defendants. there are no defences as such raised in the matter as crystallized in the book 'trade mark, passing off and franchising' [first edition 2004], which are as follows :(a) that the plaintiff has no title to the registered mark;(b) that of registration of the mark is not valid;(c) the use of the mark by the defendant is not infringement;(d) right to use the mark due to concurrent registration and also honest concurrent use by the defendant;(e) that the use complained of is prior and hence protected;(f) that the use complained of is protected as bona fide;(g) that the plaintiff is not entitled to the relief sought by reason of estoppel such as acquiescence, abandonment etc;(h) the use complained of is protected by section 35;(i) that the exclusive rights claimed by the plaintiff have ceased to exist on account of circumstances contemplated in section 30.(j) defence regarding damages under section 135(3);even otherwise, it is a matter of detail deliberation during the trial.9. considering the fact that a prima facie case has been made out by plaintiffs and as all the ingredients of grant of injunction have been made out by the plaintiffs. the balance of convenience is in favour of plaintiffs. the selling of goods by the defendants in the name of 'sonny' will create confusion and shall cause irreparable loss and injury to the well-known and extensive market of all the products of the plaintiffs.10. taking all this into account, even though there is a written statement filed by defendants, still at this stage, i am convinced that this is a case where the ad-interim relief which has been granted needs confirmation. i am inclined to confirm the ad-interim order in terms of prayer clauses (a) and (b). the notice of motion is accordingly disposed of.