Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) NO.806/2005
Date of Decision : 24.12.2010
M/S AHMED OOMERBHOY & ANR. ……Plaintiffs
Through: Mr. Pravin Anand,
Advocate.
Versus
SH.GAUTAM TANK & ORS. …… Defendants
Through: Ms.Pratibha M.Singh,
Advocate.
CORAM :
HON’BLE MR. JUSTICE V.K. SHALI
1. Whether Reporters of local papers may be
allowed to see the judgment? YES
2. To be referred to the Reporter or not ? NO
3. Whether the judgment should be reported
in the Digest ? NO
V.K. SHALI, J. (oral)
1. The matter has been listed on the directions of the learned
Division Bench in FAO(OS) No. 141/2008 for further
proceedings.
2. Briefly stated the facts of the case are that the plaintiff
company M/s Ahmed Oomerbhoy filed a suit for permanent
injunction against infringement of trade mark and passing off
and the consequential relief of damages, rendition of
accounts, delivery up, costs etc. against the defendants.
CS(OS) No. 806/2005 Page 1 of 18
The plaintiff no. 2 was stated to be the Court Receiver, duly
appointed by the High Court of Bombay vide its order dated
06.07.2000, in suit no. 4913/2000 in case titled Ajid A.
Oomerbhoy Vs. Rashid S. Oomerbhoy & Ors. who was
directed to take possession of the partnership business assets
and make an inventory of all the partnership assets of M/s
Ahmed Oomerbhoy trading as M/s Ahmed Mills, plaintiff no.1
in respect of which suit for dissolution of the partnership was
pending in the High Court of Bombay. It is alleged in the
plaint that vide order dated 30.07.2001, Court Receiver was
directed to take steps to safeguard the trade mark of the
plaintiff no.1 against any person who was unauthorized user
of the said trade mark of the plaintiff no.1.
3. It may be pertinent here to mention that the plaintiff no. 1/
partnership firm was manufacturing, distributing, selling and
dealing in edible oils for almost more than five decades under
various trade names including „Postman‟ which is a reputed
trade mark . The details of the registration was mentioned in
paragraph 6 of the plaint. Apart from the registration of the
trade mark, the logo was also registered. The plaintiff with a
view to establish the popularity of the trade mark has referred
to the turnover of the partnership from the year 1990-1991 to
1999-2000, which shows the progressive increase in the turn
over.
CS(OS) No. 806/2005 Page 2 of 18
4. It is alleged that the defendants are infringing the trade mark
of the plaintiff by using the trade mark „Super Postman‟ for
groundnut oil, even though the plaintiff no.1 is not
manufacturing edible oil on account of the disputes between
the members of the partnership firm.
5. This Court vide order dated 30.05.2005 passed an ex-parte
ad interim injunction restraining the defendants from selling
any product under the trade name „Super Postman‟. It also
appointed the Local Commissioner for the purpose to conduct
search and seizure of counterfeit goods, books of accounts
etc. from the defendant and its allied companies at different
places. This ex-parte ad interim injunction order was
confirmed on 20.12.2007.
6. The defendant had filed the written statement and contested
the claim of the plaintiff. It had denied that the defendant
had infringed the trade mark of the plaintiff. It was also
alleged that the plaintiff no. 1 is not a registered partnership
firm, and therefore, the suit is barred. It was alleged that the
person signing is not competent to sign, verify and institute
the suit on behalf of the plaintiff. The registration of the
plaintiff as the proprietors of the trade mark „Postman‟ was
also disputed. It was stated that the defendant had adopted
the trade mark „Super Postman‟ in the year 2004 honestly
and in a bonafide manner as they were informed that there
was no such trade mark being used by any other person.
CS(OS) No. 806/2005 Page 3 of 18
The defendants also contended that they have already filed
petition for cancellation/rectification of all the registration
pending or granted before the Intellectual Property Appellate
Board which is still pending. It was also denied that the
plaintiffs have developed any goodwill or reputation or that
the defendants were passing off their goods as that of the
plaintiff.
7. On 01.12.2008 the Court framed the following issues in the
matter:-
“(1) Whether the plaintiff no.1 is proprietor of the
trade mark POSTMAN? OPP
(2) Whether the plaintiff no.1 is proprietor of
artistic work in the label/packaging with the mark
POSTMAN? OPP
(3) Whether the defendants are guilty of passing
off their goods as those of the plaintiff? OPP
(4) Whether the defendants have infringed the
plaintiff‟s trade mark POSTMAN and/or the
artistic work in the packaging/label? OPP
(5) Whether the plaintiff‟s claim/suit is barred by
acquiescence and delay and effect thereof? OPD
(6) Whether the plaintiff is entitled to damages? If
so, to what amount? OPP
(7) Whether the plaintiff is entitled to decree for
rendition of accounts and/or damages, if so, what
amount? OPP
(8) Whether the plaintiff is entitled to decree of
permanent injunction(s) as prayed for? OPP
(9) Relief.”
CS(OS) No. 806/2005 Page 4 of 18
8. The parties were directed to file their list of witnesses within
six weeks and the plaintiff was directed to file evidence by
way of affidavits within ten weeks. Since the evidence was
not filed despite the repeated opportunities the evidence of
the plaintiff was closed on 16.12.2010 by the learned Joint
Registrar and the matter has been adjourned to 28.03.2011
for recording of the evidence of the defendant.
9. It may be pertinent here to mention that the defendants
herein had preferred an appeal bearing FAO(OS) No.
141/2008 which was listed before the learned Division Bench
on 20.12.2010. On the said date, it was pointed out to the
learned Division Bench that the evidence of the plaintiff has
already been closed as they have failed to produce any
evidence and consequently so far as the defendants in the
suit are concerned, who were appellants in the appeal, there
is no question of defendants producing any evidence. It was
on this basis that the learned Division Bench adjourned the
matter to 15.02.2011 with the observations that as the matter
is still pending before the learned Single Bench therefore the
matter be listed on 23.12.2010.
10. The learned counsel for the plaintiff Mr. Pravin Anand has
vehemently contended that so far as the closure of the
evidence of the plaintiff by the learned Joint Registrar vide
order dated 16.12.2010 is concerned, that is an order which
cannot be sustained and he has already filed yesterday a
CS(OS) No. 806/2005 Page 5 of 18
Chamber appeal against the said order, but the same was
returned on account of the fact that the affidavit which was
filed along with the said appeal was not the original affidavit
of the Official Liquidator or his duly authorized person, but
only a scanned copy of the fax message which was received by
him. It was contended by him that since the Chamber appeal
has already been filed against the closure of evidence the
Court may adjourn the matter so as to enable the plaintiff to
place the said appeal on record for the correct appreciation of
facts. It was also suggested that the learned Joint Registrar
has failed to appreciate the facts and has wrongfully denied
an opportunity to the plaintiff to adduce evidence. In this
regard, the learned counsel drew the attention of the Court to
the orders passed by the Hon‟ble Court from time to time to
observe that the plaintiff has been diligently prosecuting his
matters although there was some delay in filing the affidavit
by way of evidence of one Mr. B.Prasad. It is stated that the
delay stood condoned as the plaintiff was put to terms firstly
by directing him to pay a cost of Rs.30,000/- permitting the
plaintiff to file affidavit within two weeks and then another
cost of Rs.5,000/- for bringing that affidavit on record. It
has been contended that the cost has already been paid and
after payment of the cost only one opportunity was granted to
the plaintiff to adduce evidence which unfortunately could not
be availed by the plaintiff as there was a communication gap
CS(OS) No. 806/2005 Page 6 of 18
between the plaintiff and his client namely the Official
Liquidator because of which the plaintiff‟s evidence was
closed on 16.12.2010. The learned counsel for the plaintiff
Mr. Anand took the Court through the various orders of the
Court passed from time to time in this regard.
11. The second submission which was made by the learned
counsel for the plaintiff was that admittedly the defendant in
the written statement has taken the plea that she has already
filed an application for rectification of the trade mark of the
plaintiff which is pending adjudication, and therefore, in
pursuance to Section 124 of the Trade Mark and Merchandise
Act, 1958, the proceedings of the present suit be stayed till
the tribunal passes an appropriate order on the said
rectification application.
12. The third point which was taken by Mr. Anand, the learned
counsel for the plaintiff is to the effect that by giving one
opportunity to the plaintiff no serious prejudice is likely to be
caused to the defendant as the plaintiff is not manufacturing
the edible oil under the brand name „postman‟ as on date.
The plaintiff be given one opportunity to adduce evidence on
which date he will examine one witness from the Official
Liquidator‟s Office to prove his case where after the defendant
can enter the witness box. It is urged that the entire process
would roughly take about a couple of months by which date
the entire evidence will be recorded and the case could be
CS(OS) No. 806/2005 Page 7 of 18
decided on merits. Lastly, it is urged that even if for the sake
of arguments it is admitted that the plaintiff is not to be
permitted to adduce evidence even then there are documents
on record which clearly establish that the defendants are
indulging in act of infringing the trade mark of the plaintiff.
In this regard, it has been contended by the learned counsel
for the plaintiff that he has already placed on record the
documents by way of exhibit P-1 to P-5 which clearly prove
the case of the plaintiff.
13. Ms. Pratibha M. Singh, the learned counsel for the defendants
has refuted all the submissions of the plaintiff. So far as the
Chamber Appeal is concerned, it has been contended by the
learned counsel for the defendants that as on date there is no
Chamber Appeal pending before the Court. Even the registry
has returned the said Chamber appeal. Time cannot be
granted to the plaintiff to file the Chamber appeal so as to
avoid the Court passing an order under Order 17 Rule 3 CPC.
It may be pertinent here to mention that Order 17 Rule 3 CPC
reads as under:-
“ 3. Court may proceed notwithstanding
either party fails to produce evidence, etc.
– Where any party to a suit to whom time has
been granted fails to produce his evidence, or
to cause the attendance of his witnesses, or
to perform any other act necessary to the
further progress of the suit, for which time
has been allowed, (the Court may
notwithstanding such default,--
(a) If the parties are present, proceed to decide
the suit forthwith, or
CS(OS) No. 806/2005 Page 8 of 18
(b) If the parties are, or any of them is, absent,
proceed under Rule 2)”
14. With regard to the stay of the present proceedings in view of
the rectification application having been filed before the
registration of the trade mark, it was contended that no doubt
such a provision exists but the said provision is to be availed
of at the first available instance and not by way of an escape
route to avoid the precepetative order being passed on
account of non production of evidence by the plaintiff. With
regard to the production of evidence, it was contended that
the plaintiff had been given sufficient number of opportunities
but he has been negligent in prosecuting the case and did not
produce any evidence. The plea that grant of another
opportunity would not cause any prejudice to the defendant,
is stated to be without any merit. It is stated that there is
already a serious prejudice caused to the defendant on
account of the stay order which has been operating against
them for the last nearly five years and yet the plaintiff is
indulging in dilatory tactics. With regard to the last
submission that the existing record itself including the exhibit
P-1 to P-5 proves the case of the plaintiff, it was submitted
that the plaintiff is not able to prove that the defendant is
infringing the trade mark of the plaintiff. It was contended
that the plaintiff has failed miserably to discharge the onus of
even proving that it is the owner of the trade mark much less
CS(OS) No. 806/2005 Page 9 of 18
to prove that the defendant is indulging in infringement, even
passing off for warranting directions by the Court.
15. I have considered the respective submission and perused the
record.
16. So far as the first plea regarding the filing of Chamber Appeal
by the plaintiff against the order dated 16.12.2010 by the
learned Joint Registrar closing his evidence is concerned, it
may be pointed out that the plaintiff has already collected the
appeal from the Registry on which objections have been
raised that it was not supported by an affidavit of the
signatory to the appeal in original. The appeal paper book
was produced before the Court and it was accompanied by a
copy of the scanned copy of the affidavit which could not be
accepted to be as a proper affidavit so as to enable the Court
to entertain the appeal, therefore, as on date there is no
appeal which is pending before this Court against the order
dated 16.12.2010 passed by the learned Joint Registrar
closing the evidence of the plaintiff.
17. Without considering as to whether any appeal is pending or
not against the order of closure of evidence of the plaintiff if
one goes from the previous order sheets, it becomes clear that
there is nothing illegal or irregular in the order which has
been passed by the learned Joint Registrar who has been
literally forced to close the evidence of the plaintiff as he has
CS(OS) No. 806/2005 Page 10 of 18
failed to produce the witness despite the sufficient number of
opportunities having been given to him. It may be mentioned
here that the issues in the instant case were framed almost
two years back on 01.12.2008 and the onus of proof of main
issues that the plaintiff is the proprietor of the trade mark
„Postman‟ and the artistic work „Postman‟ apart from proving
the action of the defendant amounting to infringement or
passing off was on the plaintiff. Similarly, the onus to prove
damages to which the plaintiff was entitled was also on the
plaintiff as would be reflected from the issues which have
been reproduced hereinabove. The plaintiff was given 10
weeks time to file evidence by way of affidavit which was not
done and the matter was adjourned to 16.03.2009 before the
learned Joint Registrar for fixing up dates of cross
examination. On 16.03.2009, neither the list of witnesses
nor the affidavit by way of evidence of the parties were filed
and two weeks‟ time was further sought whereupon the
learned Joint Registrar adjourned the matter to 06.05.2009.
On 06.05.2009 again an adjournment was sought on behalf
of the plaintiff for the purpose of filing evidence as it was
stated that instructions are still awaited from the plaintiff.
This request was repeated even after expiry of two months on
06.07.2009. The matter was adjourned to 13.07.2009. On
13.7.2009, last and final opportunity was granted to the
plaintiff to file the affidavit and the matter was adjourned to
CS(OS) No. 806/2005 Page 11 of 18
28.10.2009. On 28.10.2009, the learned Joint Registrar
again noticed that no affidavit by way of evidence has been
filed despite last opportunity having been given. This clearly
shows that despite sufficient number of opportunities having
been given to the plaintiff, he was negligent in prosecuting the
matter and was shying away from producing the evidence,
perhaps on account of the fact that he was enjoying the
restraint order against the defendants.
18. On 14.01.2010, the factum of negligence of the plaintiff in
prosecuting the matter was noted and one more opportunity
was granted to the plaintiff to file affidavit by way of evidence
subject to payment of cost of Rs.30,000/- and in default of
filing of the affidavit the evidence of the plaintiff was
peremptorily directed to be treated as closed. The matter
was adjourned to 22.02.2010. On 22.02.2010 it was noted
by the learned Joint Registrar that the affidavit had been
returned back as it was not filed within the stipulated period
and the matter was directed to be placed before the Court.
On 09.04.2010, the affidavit was re-filed by the plaintiff
though belatedly and on an application having been filed the
plaintiff„s affidavit was permitted to be taken on record
subject to payment of additional cost of Rs.5,000/-. The
matter was directed to be relisted before the learned Joint
Registrar on 05.05.2009 for the purpose of cross examination.
The witness did not appear before the Court on 21.09.2010
CS(OS) No. 806/2005 Page 12 of 18
for the purpose of cross examination. On the contrary, a
fresh application was filed on behalf of the plaintiff under
Order XVIII Rule 4 CPC for production of one official from the
office of Official Liquidator for the purpose of proving the
plaint. It was stated that he will be examined orally. An
impression was sought to be created as if oral examination of
this witness was in lieu of the other witness whose affidavit
was already filed. The application was allowed and the
plaintiff was permitted to examine the said witness orally.
The matter was directed to be listed before the learned Joint
Registrar on 26.10.2010 for the purpose of cross examination
of the witnesses who was sought to be summoned and
examined orally. But neither the witness was summoned nor
he was brought. Even the person whose affidavit was filed
and who was to be examined also did not appear. It is in
this backdrop when the witness whose affidavit was filed did
not appear for cross examination and the witnesses whose
examination was to be recorded orally was also not present
that the learned Joint Registrar closed the evidence of the
plaintiff. The plaintiff is not to be given endless opportunities
to adduce evidence specially when objection is being taken by
the opposite side that he is deliberately indulging in dilatory
tactics because the stay order is operating against the
defendants. All these sequence of events shows that the
plaintiff had been deliberately negligent in prosecuting his
CS(OS) No. 806/2005 Page 13 of 18
matter because he was continuing to enjoy the restraint order
in his favour and against the defendant. There was
absolutely no justification for the plaintiff to have defaulted
on so many occasions and despite so many warnings in filing
the affidavit by way of evidence and even producing the
witness when he was visited by costs. It was in this
backdrop that I feel that the order of the learned Joint
Registrar cannot be found to be at fault and he was perfectly
justified in closing the evidence of the plaintiff. The plea of
the learned counsel for the plaintiff that grant of another
opportunity for the purpose of cross-examination or for
producing of witnesses will not cause any serious prejudice to
the defendant is of no consequence. This is an argument
only in desperation to see that the matter is kept alive for the
purpose of recording of evidence. The question of non-grant
of permission to adduce evidence in the instant case does not
hinge on the plea that no prejudice would be caused to the
defendant but on the fact that as to how many opportunities
have been given for the purpose of production of evidence
which the plaintiff has failed to avail of. Obviously, the
plaintiff has miserably failed to avail of even a single
opportunity having been given for the cross-examination of
the witnesses. I, accordingly, feel that there is no infirmity or
illegality in the order passed by the learned Joint Registrar in
closing the evidence of the plaintiff. If the evidence of the
CS(OS) No. 806/2005 Page 14 of 18
plaintiff is closed then the question which arises is as to
whether, as urged by Mr. Anand, Advocate that from the
existing record he is able to show that the defendant is
responsible for infringement, is to be examined. In this
regard, the following issues are relevant with regard to which
the onus of proof is on the plaintiff.
“(1) Whether the plaintiff no.1 is proprietor of
the trade mark POSTMAN? OPP
(2) Whether the plaintiff no.1 is proprietor of
artistic work in the label/packaging with the
mark POSTMAN? OPP
(3) Whether the defendants are guilty of
passing off their goods as those of the
plaintiff? OPP
(4) Whether the defendants have infringed
the plaintiff‟s trade mark POSTMAN and/or
the artistic work in the packaging/label?
OPP
(5) Whether the plaintiff is entitled to
damages? If so, to what amount? OPP
(6) Whether the plaintiff is entitled to decree
for rendition of accounts and/or damages, if
so, what amount? OPP
(7) Whether the plaintiff is entitled to decree
of permanent injunction(s) as prayed for?
OPP
(8) Relief.”
The onus of proof of these issues no. 1 to 4 and 6 to 8 was on
the plaintiff to establish that he is the proprietor of the trade
mark and that the said trademark was being infringed and
CS(OS) No. 806/2005 Page 15 of 18
the rest of the reliefs were consequential. No evidence has
been produced by the plaintiff to prove that he is the
proprietor of the trade mark of the word „Postman‟ or is even
the proprietor of the artistic work, therefore, issue Nos.1 and
2 have to be decided against the plaintiff.
19. So far as the issue nos. 3 and 4 are concerned, that deals
with the question of passing off and infringement of the trade
mark or the artistic work of the packaging. Since the
plaintiff himself has not been able to establish that he is the
proprietor of the trade mark of „Postman‟ or the artistic work
„Postman‟ as alleged by him, the question of the infringement
and passing off the trademark by the defendant does not
arise. The exhibits which have been admitted by the
defendants are of no consequence so far as the discharge of
onus in respect of the above issues is concerned. There has
to be either proof of a fact by the plaintiff or there has to be
an admission of the plaintiff‟s trademark or the artistic work
in the logo of „Postman‟, which are not there. Therefore, the
documents admitted become inconsequential. These exhibits
are:-
“i) Exhibit P-1 is the photograph of the defendant‟s
product.
ii) Exhibit P-2 (colly) is the bill by virtue of which
the impugned goods under the Mahalaxmi Oil
Company is purported to have been purchased.
In addition to this, there are two visiting cards.
CS(OS) No. 806/2005 Page 16 of 18
iii) Exhibit P-3 is the brochure of the Super
Postman in blue colour purported to have been
issued by the defendants.
iv) Exhibit P-4 is the pamphlet of Super Postman
purported to be issued by the defendants”.
20. The learned counsel for the defendants has placed reliance on
case titled Naresh Chand gupta Vs. Braham Prakash &
Smt.Dayawati 2007 (97) DRJ 193 (DB) in which under
somewhat similar circumstances, the Division Bench of this
Court observed that repeated adjournments by the plaintiff
for adducing evidence was not to be granted and the Court
could close the evidence of the plaintiff and pronounce its
order under Order XVII Rule 3 CPC. The Court has noticed
that there is a tendency on the part of the litigants to delay
the trial, therefore, the order of the learned Single Judge in
this case was approved. A reading of the judgment also
shows that reference has been made to the judgments of the
Apex Court as well as some of the other High Courts where
the repeated adjournments for adducing evidence have been
deprecated.
21. In the light of the aforesaid facts and the judgment cited by
the learned counsel for the defendants, I am satisfied that the
plaintiffs are only trying to prolong the trial on one pretext or
the other because he continues to enjoy the stay order in his
favour. Despite repeated opportunities and warnings having
been given, he has failed to adduce evidence. The evidence
of the plaintiffs is already closed and since the plaintiffs have
CS(OS) No. 806/2005 Page 17 of 18
not discharged onus of proof even in a single issue, therefore,
none of the issues is proved and the suit of the plaintiff is
dismissed.
V.K. SHALI, J.
DECEMBER 24, 2010
KP
CS(OS) No. 806/2005 Page 18 of 18