Full Judgment Text
nmsl.2231.2014.doc
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 2231 OF 2014
IN
SUIT NO.17 OF 2015
Usha Kiran Jogani ...Applicant
IN THE MATTER BETWEEN
Usha Kiran Jogani & Anr. ...Plaintiffs
vs
Vijay Kumar Jain & Anr. ...Defendants
.....
Mr Venkatesh Dhond, Senior Counsel, Rashmin Khandekar, Mr Mahesh
Mahadgut, Miloni Gala, Ms Mitali Gaikwad i/b Mr Mahesh Mahadgut, Advocate
for the Plaintiff / Applicant.
Mr Salil Shah a/w Mr Vipul Bilve and Mr Agne Caraeiro i/b M/s Mulla & Mulla &
K.B.C. Advocate for Defendant No.1
CORAM : S.C. GUPTE, J.
FEBRUARY 09, 2015
P.C. :
In this Notice of Motion, ad-interim relief was granted by this Court
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to the Plaintiffs on 26 September 2014 after passing a detailed order. By this
ad-interim order, not only was an interim injunction granted against the
defendants in respect of infringement of the Plaintiffs' registered Trade Marks,
and passing off of goods, but a court receiver was appointed to make an
inventory of, and seal, all the offending products found in the defendants'
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premises, infringing the registered Trade Marks. The defendants, thereafter, filed
an affidavit in reply and moved for vacating the ex-parte reliefs granted in favour
of the Plaintiffs. Since the pleadings of the parties were complete by then, I
thought it fit to hear the Notice of Motion itself with consent of counsel of both
sides. The motion is accordingly being disposed of by the present order.
2 The first plaintiff has been doing business in the name and style of
'M/s. KINGSGATE', dealing in various cosmetic products. The first plaintiff has
been carrying on this business since 2008. The first plaintiff has been a
registered proprietor of the Trade Mark 'KINGSGATE', the copyright and the logo
of 'KINGSGATE' and the copyright in art works that appear on the labels and
seals of the cosmetic products dealt in by the plaintiffs. The registered trade mark
and logo used by the first Plaintiff shows a crown at the centre with two elephants
standing on each side and the word 'KINGSGATE' appearing in the centre at the
foot of the standing elephants with crown. The first plaintiff has also been a
proprietor of various other Trade Marks with the words 'LONDON' forming part of
them, such as 'KINGSGATE LONDON' (as a registered proprietor thereof) and X
London, London Oats and London Secret (pending registration). The first Plaintiff
has also got designed, and claims copyright in, an artwork consisting of a picture
of a male and female in kissing pose for the range of her deoderant products. The
first plaintiff and her husband are also directors of plaintiff no.2, who is a licensee
of plaintiff no.1 in relation to the intellectual property belonging to plaintiff no.1
described above. The plaintiffs' products, namely, the range of deodorants sold
by the plaintiffs, are marketed under various names such as White London, Black
London, Red London, etc., with the artwork described above.
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3 The first plaintiff claims to have acquired a significant reputation and
goodwill in the trade in respect of the Trade Mark 'KINGSGATE' together with the
logo, designs, labels and artwork described above. The plaintiffs have produced
in the course of hearing of the Notice of Motion a statement of sales of their
products over a period between 2009 – 10 and 2012- 13, certified by a chartered
accountant. The sales figures indicate substantial sales of the products during
the relevant years, with the sales of the year 2011-2012 crossing over Rs.1.30
crores.
4 The first defendant is the brother-in-law of the first plaintiff. The first
defendant and the husband of the first plaintiff were both partners in a music
company called Karma Music Company. This music company and the plaintiffs
were operating their respective businesses from common premises all along. It
appears that sometime in 2012, disputes arose between the first defendant and
the first plaintiff's husband in relation to this music company. It is the case of the
plaintiffs that as a result of these disputes, in or about April 2012, the first
defendant forged the first plaintiff's signature and flagrantly got her Trade Marks
transferred to his name by filing various applications with the Registrar of Trade
Marks. It appears that in pursuance of these applications, the first defendant has
even been brought on record, as the subsequent registered proprietor of the
Trade Marks in question. When the plaintiffs discovered the alleged forgery, the
first plaintiff complained to the Varsova police station, who investigated the
matter. A copy of the police complaint is produced with the plaint. It is the case
of the plaintiffs that in the course of the investigations, one of the witnesses
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named in the purported deed of assignment filed an affidavit before the police
stating that he had never signed any such assignment deed. It is the case of the
plaintiffs that in these circumstances, the first defendant proposed to re-assign
and re-transfer all the Trade Marks to the first plaintiff. Accordingly, by four
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deeds of assignment dated 8 July, 2013, the re-assignment and re-transfer were
accomplished, and the original deeds were lodged before the Registrar of Trade
Marks in support of the first plaintiff's application for registration, as a subsequent
proprietor of the Trade Marks (on such re-assignment). It, however, appears that
whilst the first plaintiff's application as a subsequent proprietor was pending
before the Registry, the first defendant addressed a communication to the
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Registry on 27 September, 2013, seeking to cancel one of the applications in
Form TM-16. Finally, in August 2014, the plaintiffs learnt that the first defendant
had filed a criminal complaint against a shopkeeper stocking the plaintiffs' goods
claiming that it was the first defendant who owned the Trade Marks, by virtue of
the original assignment deeds. The plaintiffs later learnt that the first defendant
has been using the artworks, labels, design, get up and overall trade dress of the
plaintiffs' products including the device mark 'KINGS GATE' by deleting the word
'KINGSGATE' and replacing the same with the word 'AAFAL'. In all other
respects, the artworks, labels, designs and trade dress of the products have been
identical. (The word 'AAFAL' has been a reference to one 'AAFAL LONDON'.)
5 In these facts, the plaintiffs have filed the present suit for restraining
the defendants from infringing the plaintiffs' registered Trade Marks, and also
passing off their goods as those of the plaintiffs.
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6 Prima facie, as claimed by the plaintiffs, the first plaintiff is the
proprietor of the subject Trade Marks which have been reassigned to her after
they were purportedly assigned in favour of the first defendant under fabricated
documents. So also, prima facie, as claimed by the plaintiffs, the defendants' use
of their Trade Marks as well as the artworks, labels, designs and trade dress of
their products amounts not only to an infringement of the plaintiffs' registered
Trade Marks, but also passing off of the defendants' goods as the goods of the
plaintiffs. The plaintiffs have relied on evidence of extensive and uninterrupted
use by the first plaintiff of the Trade Marks with the labels, artworks, designs and
trade dress, for the last many years, on the basis of which the first plaintiff claims
to have built up a substantial reputation and goodwill.
7 On the other hand, it is submitted by the defendants that the first
defendant continues to be the registered subsequent proprietor of the subject
Trade Marks. It is submitted by the learned counsel for the defendants that the
first plaintiff's application for registration, as a subsequent proprietor, is not yet
accepted by the Registrar and is in fact challenged by the defendants by
opposing the application. It is submitted that in the premises, the Registrar of
Trade Marks will have to direct the first plaintiff to set up her title to the registered
Trade Marks on the basis of the purported re-assignment before an appropriate
Court. It is submitted that the plaintiffs cannot simply proceed to file an
infringement suit in the facts of the case but must first apply for determination of
their title to the registered Trade Marks by proving the deeds of re-assignment in
their favour. It is submitted that though the purported deeds of re-assignment, re-
assigning the marks in favour of the first plaintiff, were signed by the first
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defendant, there was an agreement between the parties, under which the first
plaintiff had agreed to pay a sum of Rs.50 crores to the first defendant, as a
consideration for the re-assignment. It is submitted that since this consideration
was not paid, the first defendant has cancelled the purported deeds of re-
assignment, and has accordingly objected to the first plaintiff's application for
being brought on record as a subsequent registered proprietor of the Trade
Marks. In short, it is submitted that whilst the first plaintiff is not yet a registered
proprietor of the subject Trade Marks, the first defendant continues to be on the
register, as proprietor of the Trade Marks, and in the premises, the plaintiffs
cannot maintain an action for infringement against the first defendant. This, in a
nutshell, is the defendants' defence to the action. As for the claim of passing off,
as will be presently noticed, the defendants hardly have any defence except to
plead their registration of the subject Trade Marks in defence.
8 A very peculiar feature of this case, it must be noted at the very
outset, is that the purported assignment by the first plaintiff in favour of the first
defendant, by which the first defendant claims to have become a proprietor of the
subject Trade Marks, and obtained a registration in his name, in the first place, is
surrounded by mysterious circumstances. In the first place, contrary to the claim
made in the reply of the first defendant, the grant of registration as a subsequent
proprietor in favour of the first defendant, is based on a deed of assignment dated
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1 December, 2012. This deed of assignment appears to have been signed by a
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witness, Sangeeta Jain, on 1 December, 2012. Whilst it is not clear as to when
it was signed by the first plaintiff herself, the second witness has signed this deed
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on 9 December, 2012, whereas the Notary, who himself appears to have
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purchased the stamp paper on which the document has been written, has signed
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on 24 December, 2012. This deed is purportedly filed in support of the first
defendant's application for registration, as a subsequent proprietor, in Form TM-
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24, which is dated 20 December, 2012. It is beyond any explanation as to how
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a deed, which is purportedly dated 1 December, 2012, and which is enclosed
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with a form dated 20 December, 2012, is signed by the Notary, before whom it is
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purportedly executed, on 24 December, 2012. Apart from this purported deed of
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assignment on 1 December, 2012, we have some other assignments on record
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in respect of the subject Trade Mark of 5 September, 2012 and 4 April, 2012.
Even these purported deeds of assignments are surrounded with strange
circumstances undermining the genuineness of the alleged execution of the
deeds. All this of course, is not to suggest that therefore the first defendant was
not a proprietor of the subject Trade Marks during an intervening period. For the
first defendant's registration, as a subsequent proprietor, is not a subject matter
of challenge either before the Registrar or this Court. But these facts give us the
background, in which the subsequent re-assignment has been executed by the
first defendant in favour of the first plaintiff. These facts also explain the
circumstance that the consideration mentioned in the deed of re-assignment is a
mere Rs.5000/-.
1
9 In Parksons Cartamundi Pvt. Ltd. Vs Suresh Kumar , a Division
Bench of this Court considered the question, as to whether a plaintiff, who is an
assignee of a registered Trade Mark, but whose name is not brought on record as
a subsequent proprietor on the Register of Trade Marks, can maintain an
1 2012 Vol. 114(4) Bom. L.R. 1991
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infringement action in respect of the registered Trade Mark against an infringer.
In that case, our Court considered various decisions on the subject and held as
follows:
Having considered all the decisions discussed above, in our view, it must
“
now be taken as the settled law that the provisions of Trade Marks Act, 1999 do
not preclude a Court from granting interlocutory reliefs in favour of a person who
becomes entitled by assignment or transmission to a registered trade mark,
pending application under Section 45(1) to register his title to the trade mark.”
10 The question now is whether the law laid down by our Court as
above may be applied also in a case where interlocutory reliefs are claimed
against the assignor himself, who is also contesting the plaintiff's application for
registration as a subsequent proprietor under Section 45 of the Trade Marks Act,
1999. In principle, it appears clear that there should be no objection to such an
application even against the assignor of the Trade Mark. After all, the basis of
allowing such application is the validity of the assignment, though the assignee is
not yet placed on the register and his application in that behalf is pending before
the Registry. If the assignment is valid, there is no reason why it cannot be urged
even against the assignor himself. Delhi High Court in the case of Cinni
2
Foundation V/s. Raj Kumar Sah and Sons & Anr. , actually considered this
subject in the context of an assignment in favour of the plaintiff by the defendant
himself. After considering the case law on the point and a detailed scrutiny and
analysis of the provisions of law, Delhi High Court laid down the law as follows:
2 LS/Del/2009/2559.
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“ A bare reading of Section 45 shows that effect and purport of Section 45 of the
Act is that the title of the assignor to the trademark accrues prima facie on the
execution of the deed of assignment and on his furnishing proof of his title to the
Registrar, the Registrar shall register him as the proprietor thereof. To put it
differently, acquisition of the title to the trademark is not dependent upon the
assignment being registered, as the purpose of the registration is only to place on
record the fact that title has been created and registration by itself does not create
title which already stands created on the execution of the assignment deed.”
11 It is thus clear that in a matter, where the question before the Court
is whether an infringement action can be maintained successfully by a plaintiff,
who claims to be an assignee of a registered trade mark, against an infringer
pending the Plaintiff's application for registration as a subsequent proprietor
based on the assignment, even if such infringer be the assignor of the plaintiff's
Trade Mark, the Court is bound to take a prima facie view of the validity of the
assignment and accordingly, proceed to grant an interim injunction. When we
come to the prima facie merits of the present assignment (i.e. the re-assignment
by the first defendant in favour of the first plaintiff), what we find is that the
execution of the deed, per se, is not contested by the first defendant. The
signature of the first defendant on the deed is admitted by him. But what the
defendant pleads is a contemporaneous oral agreement, by which, despite the
deed itself mentioning the consideration to be Rs.5000/-, a consideration of Rs.50
crores was agreed to be paid as between the first plaintiff and the first defendant.
Under the provisions of Section 92 of the Evidence Act, a contemporaneous oral
agreement, the terms of which are at variance with the terms of a written deed, cannot
be led in evidence or relied upon by a party. The entire case of the first defendant is
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based upon such contemporary oral agreement and which cannot prima facie be
accepted.
12 Having regard to the attending circumstances at the time of
execution of the deed of assignment by the first plaintiff in favour of the first
defendant and the circumstances in which the deed of re-assignment is executed
by the first defendant in favour of the first plaintiff, the first plaintiff has clearly
made out a prima facie case of being a valid assignee of the registered Trade
Marks. The fact that the plaintiff's application for registration as a subsequent
proprietor is still pending before the Trade Marks Registry does not dis-entitle the
plaintiff from applying for an injunctive relief in respect of any infringement, be it
against the assignor himself.
13 In that view of the matter, there is a clear prima facie case of
infringement against the defendants.
14 As regards the plaintiffs' case of passing off, the defendants have
even greater difficulties in their way. The Trade Marks together with the logo,
design, label and art work and the whole trade dress on the defendants' products
clearly entail a possibility of the defendants' goods being mistaken for the goods
of the plaintiffs. There is a clear likelihood of deception amongst buyers of the
goods. It is trite to say that an action for passing off can be maintained even
against a registered proprietor of a Trade Mark. In our case, a mere cursory
comparison of the two products, namely, the products of the plaintiffs and the
products of the defendants, makes it very clear that there is a palpable likelihood
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of deception and confusion and, therefore, a case of passing off of the
defendants' goods as the goods of the plaintiffs. In that case, an injunction must
follow.
15 In that view of the matter, the Notice of Motion is made absolute in
terms of prayer clauses (a), (b), (c) and (d).
16 In pursuance of the ad-interim orders granted earlier in terms of
prayer clause (d), the Receiver has already seized the offending products in the
defendants' premises. The products seized by the Court Receiver and brought to
the Receiver's Office were the only products lying in the defendants' premises
during the visit of the Court Receiver. Thus, as far as prayer clause (d) is
concerned, the order appears to have already been acted upon and the Receiver
may very well be discharged.
17 The Court Receiver may hand over the seized goods to the plaintiffs
for appropriate disposal of the goods.
18 After this Court dictated the order, it is pointed out by the learned
counsel appearing for defendant no.1 that a stock of about 800 cartons
containing the defendants' goods are lying with the defendants. The learned
counsel submits that the defendants may be permitted to dispose of these goods.
This certainly cannot be allowed.
19 The Court Receiver is directed to immediately proceed to the
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address of the first defendant and take charge of these 800 cartons. If the 800
cartons containing the offending goods are not found at the site, the first
defendant shall forthwith communicate to the Court Receiver the location of the
goods. Upon being shown the location, the Court Receiver shall forthwith
proceed to take charge of the offending goods, namely, 800 cartons referred to
by the first defendants' counsel and seal the same and take them into custody.
The Court Receiver shall thereafter present a report to this Court. After
considering the report, further orders, including orders for disposal of goods and
discharge of the Receiver, will be passed by this Court.
20 Notice of Motion is, accordingly, disposed of.
( S.C.GUPTE J. )
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CERTIFICATE
Certified to be true and correct copy of the original signed
Judgment/ Order.
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