Koxan India Vs. Ramesh Mardia and ors. - Court Judgment

Excerpt:
intellectual property rights - trade marks - infringement of - exclusive ownership of the trademark/label 'mardia cables' - plaintiff relying on an assignment deed made by the defendant transferring the trade mark 'mardia cables' in their name sought an ad interim injunction alleging that defendant, by adopting and using the trade mark/label 'mardia cables' has infringed their registered trade mark - further, alleged that defendants are trying to pass off his goods and business as that of plaintiff and has also allegedly violated plaintiff's copyrights in the said label - per contra defendants alleged that there was a re-assignment and the trade mark reverted back to the defendant - whether the trade mark/ label 'mardia cables' in respect of electrical wires, electrical cables and accessories was re-assigned by plaintiff in favour of defendant - held, neither party has been able to set up a clear prima facie case in its favour - assignment had been recorded in the registers of the trade marks registry and, therefore, as long as that assignment holds, plaintiff would be entitled to use the said trade mark/label - to decide otherwise, there has to be some leading evidence - another facet of the fact is that defendant is also having a registration for the disputed mark in its favour - hence, neither plaintiff nor the defendant was able to establish a case for claiming exclusivity over the use of the trade mark/label 'mardia cables' - neither party is entitled to an ad interim injunction at this stage - applications dismissed - - tla-325 dated 16.04.2007 had been sent to mr kamlesh jain by registered post and the same had been returned by the postal authorities with the remarks 'no such person in such number'.the order dated 14.06.2007 is, therefore, clearly an ex parte order which has been challenged in appeal before the intellectual property appellate board by mr kamlesh jain and the same is pending. the proper remedy would be an appeal under section 91 of the trade marks act, 1999. 14. the aforesaid discussion clearly emphasises the point that the entire case turns on the question of whether the trademark/label 'mardia cables' in respect of electrical wires, electrical cables and accessories was re-assigned by mr kamlesh jain in favour of mr ramesh mardia.badar durrez ahmed, j.1. these applications have been filed under order 39 rules 1 & 2 read with section 151, cpc by the plaintiffs in the said two suits which are in the nature of cross-suits. by an order dated 20.08.2007, the suits were directed to be consolidated. in the said suits, the opposite parties claim exclusive rights in the trademark /label 'mardia cables? in respect of electrical cables, electrical wires and accessories. ia 1941/2006 is by koxan india, who is the plaintiff in cs(os) 328/2006. ia 7308/2006 has been filed by mr ramesh mardia proprietor of mardia cables and who is the plaintiff in cs(os) 1352/2006. it may also be noted that in the suit filed by m/s koxan india, ramesh mardia has been arrayed as defendant no. 1, m/s mardia cables as defendant no. 2 and one shree raj ventech power cab limited as defendant no. 3. in the suit filed by mr ramesh mardia as proprietor of mardia cables, mr kamlesh jain and mrs lalita jain, who are the partners in m/s koxan india, have been arrayed as defendant nos. 1 and 2. m/s koxan india is the defendant no. 3 in that suit. the tussle in both the suits is over the exclusive rights in respect of the trademark/label 'mardia cables'. there is also a dispute with regard to the copyright in the art work involved in the trademark/label 'mardia cables'. however, the main and central point is with regard to the exclusive ownership of the trademark/label 'mardia cables'.2. in these applications in the cross suits, m/s koxan india, on the one hand, seeks an ad interim injunction restraining ramesh mardia, who is the sole proprietor of 'mardia cables' from using the trademark/label 'mardia cables' in relation to electrical cables, electrical wires and accessories. on the other hand, ramesh mardia also seeks an ad interim injunction restraining m/s koxan india and its partners from using the trademark/label 'mardia cables' in respect of electrical cables, electrical wires and accessories. according to m/s koxan india, the trademark/label 'mardia cables' was initially registered in the name of ramesh mardia trading as m/s mardia cables vide registration no. 568306 in class-9 w.e.f. 25.02.1992. there is no dispute with regard to this fact. it is alleged on behalf of koxan india that ramesh mardia duly assigned the trademark 'mardia cables' alongwith its registration and goodwill to mr kamlesh jain through a deed of assignment dated 01.03.2002. there is also no dispute with regard to this fact also.3. thereafter, the said mr kamlesh jain and mr ramesh mardia filed a joint application in form tm-23 alongwith the supporting affidavits before the registrar of trademarks to record the said transfer and assignment in favour of mr kamlesh jain. by his order dated 26.02.2004, the registrar of trademarks allowed the said request and registered mr kamlesh jain as the proprietor of the trademark/label 'mardia cables' in respect of the electrical cables, electrical wires and accessories. this fact was also advertised in the trademarks journal of 1316 dated 01.04.2004.4. it is also alleged on the part of koxan india that initially, mr kamlesh jain was carrying on business through his sole proprietorship concern under the name of kevin mardia cab industries. subsequently, a partnership deed dated 14.11.2003 was executed by the said mr kamlesh jain and mr mahaveer jain and the name of the erstwhile sole proprietorship concern kevin mardia cab industries was changed to its present name m/s koxan india. it is alleged that the said partnership between kamlesh jain and mr mahaveer jain was dissolved by virtue of the dissolution deed dated 07.05.2004 w.e.f. 01.04.2004. by virtue of clause 3 of the said dissolution deed, mr kamlesh jain took over the entire business of the partnership concern. on the same date, i.e., on 07.05.2004, a fresh partnership deed was executed between mr kamlesh jain and ms lalita jain. it is submitted that the said constitution of the firm m/s koxan india continues till date.5. on behalf of m/s koxan india, it was submitted that it had filed a request in form tm-24 to record the registered trademark in the name of the present two partners in terms of the said partnership deed dated 07.05.2004. a further request in form tm-23 to record the change in the name and address was also made and that both these requests are pending with the registrar of trademarks.6. it is stated that after the assignment of the trademark /label 'mardia cables' by virtue of the deed of assignment dated 01.03.2002, mr kamlesh jain and his partnership concern m/s koxan india has consistently used the said mark/label in the course of trade and had built up a valuable trade and goodwill thereunder. it is the case of m/s koxan india and its partners (mr kamlesh jain and ms lalita jain) that nobody other than them can be permitted to use or deal with the trademark/label 'mardia cables' in relation to electrical cables, electrical wires and accessories which fall in class-9 for which the trademark registration under registration no. 568306 was granted and which had been assigned to mr kamlesh jain. it is alleged that mr ramesh mardia trading through his sole proprietorship concern mardia cables had, on or about september-october, 2005, started using the trademark/label 'mardia cables' bearing the same artistic/copyright features as that used by m/s koxan india. it is alleged that the said mr ramesh mardia and his sole proprietorship concern mardia cables have, without leave and licence of koxan india and/or its partners (mr kamlesh jain and ms lalita jain), used the said trademark/label in the course of trade in relation to electrical wires, cables and accessories and have, therefore, infringed the rights of koxan india and its partners.7. the contention on behalf of m/s koxan india is that mr ramesh mardia, by adopting and using the trademark/label 'mardia cables' has infringed the registered trademark 'mardia cables' under registration no. 568306 in class-9. mr ramesh mardia has also passed off his goods and business as that of koxan india and has also allegedly violated koxan india's copyrights in the said label.8. on the other hand, it was submitted on behalf of mr ramesh mardia that on 25.02.1992, he had filed an application for registration of the trademark/label 'mardia cables' in respect of electrical wires, cables and accessories and that the application for registration was ultimately accepted on 15.03.2000 when registration under class-9 was granted w.e.f. 25.02.1992. it was further contended that on 24.12.2002 another application was filed by mr ramesh mardia for registration of the trademark 'mardia cables' word per se in class-9 in respect of electrical cables, electrical wires and accessories. the said application was also accepted and advertised in the trademarks journal and no opposition was filed and the same came to be registered on 17.03.2005 w.e.f. 24.12.2002. it was also contended that although the trademark 'mardia cables' was adopted and used by mr ramesh mardia through his sole proprietorship concern mardia cables in the year 1987, it was, however, used on an extensive scale from 1992 onwards. it is the case of mr ramesh mardia that mr kamlesh jain approached him at chennai through some common friends in the month of february, 2002 with the request that he was willing to manufacture wires and cables for and on behalf of him under the trademark 'mardia'. it is the case of mr ramesh mardia that mr kamlesh jain also assured him that he would manufacture the said products at a reasonable price in loose form. it was submitted that in order to get some benefits from the business, mr kamlesh jain requested mr ramesh mardia to assign the trademark/label 'mardia cables' in his name, which, at that time stood registered in the name of mr ramesh mardia under registration no. 568306. consequently, mr ramesh mardia assigned the said trademark/label by virtue of the said deed of assignment dated 01.03.2002 in favour of mr kamlesh jain. it is the contention of mr ramesh mardia that mr kamlesh jain had agreed to re-assign the trademark in case of a break-up in the arrangement between the parties.9. thereafter, the arrangement continued and mr kamlesh jain was exclusively manufacturing wires and cables on behalf of mr ramesh mardia and his sole proprietorship concern mardia cables. sometime, in april, 2004, the supplies were made by m/s koxan india which was hitherto known as kevin mardia cab industries. this arrangement continued till february, 2005, when, according to mr ramesh mardia, complaints were received from his dealers about the substandard quality of material under the trademark 'mardia cables'. though discussions were held with mr kamlesh jain, the quality of products did not improve and, therefore, according to mr ramesh mardia, the business relations were closed and the assignment deed of 01.03.2002 was superseded by a re-assignment deed dated 13.05.2005 in favour of mr ramesh mardia and mardia cables. it is alleged that the assignment deed dated 13.05.2005 was duly signed by both the parties, i.e., mr kamlesh jain and mr ramesh mardia. it is alleged that all the relevant papers, including certified copies of assignment deed, affidavits, and joint power of attorney, etc. were signed by the parties and were duly submitted in the trademarks registry by filing form tm-23 on 31.05.2005. it is also alleged that after the termination of the arrangement between mr ramesh mardia and mr kamlesh jain, shree raj ventech power cab limited was appointed to manufacture products on behalf of mr ramesh mardia and mardia cables.10. the key point over which the dispute in the suit hinges is the validity of the deed of assignment or re-assignment deed dated 13.05.2005. according to the learned counsel appearing on behalf of koxan india and mr kamlesh jain and ms lalita jain, this document is a fabricated document. it is stated that this document is fabricated because the date has been left blank. the document refers to mr kamlesh jain as the sole proprietor of kevin mardia cab industries, when, in fact, in 2003 itself, the name had been changed from kevin mardia cab industries to koxan india. the purported joint application in form tm-23 also does not contain any date. it merely refers to the month 'may'. it is not signed by the parties. a further point was raised by the learned counsel that if the assignment was of 13.05.2005, then how did mr ramesh mardia apply for registration of the trademark 'mardia cables' (word per se) in december, 2002.11. the learned counsel appearing on behalf of mr ramesh mardia/mardia cables submitted that no injunction ought to be granted in favour of koxan india or mr kamlesh jain inasmuch as they had concealed the factum of the re-assignment deed dated 13.05.2005. he also submitted that the partnership deed dated 07.05.2004 was manipulated and fabricated. the deed of partnership dated 07.05.2004, in the very first recital, refers to the date 06.10.2003 and the dissolution deed dated 07.05.2004 also earlier indicated the date of 07.03.2004. the word 'march' was subsequently corrected to read as 'may'.12. the learned counsel also pointed out that the deed of assignment of 13.05.2005 was signed by mr kamlesh jain. a handwriting expert had also verified the fact that the signature on the said document was that of mr kamlesh jain. he also referred to the order dated 14.06.2007 passed by the deputy registrar of trademarks on the application in form tm-23 filed on 31.05.2005 in respect of the registered trademark no. 568306 in class-9. the said order dated 14.06.2007 records the history of the assignment and re-assignment. the contention before the deputy registrar of trademarks was that mr kamlesh jain had alleged that he had not signed the assignment deed of may, 2005 for assigning the mark in question to mr ramesh mardia. an affidavit dated 02.06.2007 was filed by mr ramesh mardia stating that the documents had been handed over to a handwriting expert for verification of signature of mr kamlesh jain and the report submitted by him was dated 30.09.2006. it appears that mr kamlesh jain had not presented himself before the deputy registrar of trademarks and, therefore, his point of view was not considered. however, the order dated 14.06.2007 does record that reasonable opportunity had been given to mr kamlesh jain to appear on the date of hearing and the hearing notice bearing no. tla-325 dated 16.04.2007 had been sent to mr kamlesh jain by registered post and the same had been returned by the postal authorities with the remarks 'no such person in such number'. the order dated 14.06.2007 is, therefore, clearly an ex parte order which has been challenged in appeal before the intellectual property appellate board by mr kamlesh jain and the same is pending. however, by virtue of the order dated 14.06.2007, the said form tm-23 dated 31.05.2005 filed by mr ramesh mardia was allowed and he was brought on record as the subsequent proprietor in respect of the trademark registration no. 568306 in class-9 in the name of mardia cables, chennai.13. in this background, it was contended by the learned counsel appearing on behalf of mr ramesh mardia/mardia cables that now the registration stands in favour of mr ramesh mardia and unless and until it is set aside by the appropriate authority, all the rights flowing from the registration accrue to mr ramesh mardia. the proper remedy would be an appeal under section 91 of the trade marks act, 1999.14. the aforesaid discussion clearly emphasises the point that the entire case turns on the question of whether the trademark/label 'mardia cables' in respect of electrical wires, electrical cables and accessories was re-assigned by mr kamlesh jain in favour of mr ramesh mardia. doubts have been raised on behalf of m/s koxan india and mr kamlesh jain with regard to the authenticity and genuineness of this document. on the other hand, the learned counsel appearing on behalf of mr ramesh mardia has contended that the said document is genuine inasmuch as the same had been signed by mr kamlesh jain himself and the same stands verified by the handwriting expert. the learned counsel also submitted that, in fact, it is mr kamlesh jain and his partner ms lalita jain, who are guilty of fabricating the partnership deed and dissolution deed.15. on examining the pleas raised on both sides, i find that neither party has been able to set up a clear prima facie case in its favour. the nature of the disputes raised indicate that the same can only be resolved after evidence is led in the course of trial. for the moment, all that can be said is that the trademark/label 'mardia cables' had initially been assigned in favour of mr kamlesh jain. the assignment had been recorded in the registers of the trademarks registry and, therefore, as long as that assignment holds, mr kamlesh jain would be entitled to use the said trademark/label. to decide as to whether the registration stands in favour of mr kamlesh jain even after the re-assignment deed of may, 2005 would require the leading of evidence, in particular because mr kamlesh jain has denied that the said document bears his signature. of course, mr ramesh mardia has obtained the opinion of a handwriting expert, but, at this stage, that opinion cannot be relied upon without such expert having been subjected to cross-examination. it may also be noted that the order dated 14.06.2007 passed by the deputy registrar of trademarks is an ex parte order and is also the subject matter of an appeal. at the same time, one has also to notice the fact that mr ramesh mardia does have another registration in his name in respect of the word mark 'mardia cables? under registration no. 1161248 in class-9 in respect of electrical cables, electrical wires and accessories w.e.f. 24.12.2002. the registration certificate in respect thereof was granted on 17.03.2005.16. in view of the above, it is clear that at this prima facie stage, neither mr kamlesh jain nor his partnership concern koxan india on the one hand nor mr ramesh mardia on the other have been able to establish a case for claiming exclusivity over the use of the trademark/label 'mardia cables'. in these circumstances, i feel that neither party is entitled to an ad interim injunction. consequently, both the applications are dismissed. there shall be no order as to costs.