Madras High Court
Case BriefsHigh Courts

   

Madras High Court: In a case of marital discord and petitioner-wife, a practicing advocate was seeking removal of respondent-husband from the matrimonial home, R N Manjula, J. granted protection order and directed the husband to move out of the matrimonial home in the best interest and welfare of the children and to ensure peaceful possession and enjoyment of the petitioner wife in the home in any manner.

The petitioner wife filed an Original Petition for dissolution of marriage against the respondent-husband. During the pendency of matrimonial proceedings, the wife filed an interim application seeking mandatory injunction directing the respondent to move out of the matrimonial home in the best interest and welfare of the children till the disposal of the Original Petition which was partly allowed by the Family Court directing the respondent to not disturb the peaceful possession and enjoyment of the petitioner in the matrimonial home in any manner whatsoever where the petitioner living along with her children, till the disposal of the main petition. Assailing this, the revision petitioner preferred the instant Civil Revision Petition.

The Court noted that instead of giving a supportive hand to the petitioner by being accommodative of her demanding profession, the respondent developed a complaining attitude and found fault with the respondent for being engaged with her work.

Placing reliance on Samir Vidyasagar Bhardwaj v. Nandita Samir Bhardwaj, (2017) 14 SCC 583, the Court noted that if the removal of the husband from home alone is the only way to ensure domestic peace, the courts need to pass such orders irrespective of the fact whether the respondent has or has not another accommodation of his own. If the husband has got alternate accommodation, it is fine that he can be asked to accommodate himself in those alternate premises. If he does not have any other accommodation, it is up to him to secure alternate accommodation.

On the impugned order passed by the Family Court, the Court remarked that “Allowing the respondent to be at the same home but directing him that he should not disturb the other inmates of the home is something impractical. A relief for a person who fears about an impending atom bomb, would be just to remove the bomb from his/her vicinity.”

Thus, the Court observed that when a couple lives under one roof, the conduct of one party to the other is always vital in defining the respect and recognition the family would get from others. If domestic peace is disturbed due to unruly acts of one party, namely the husband, there need not be any hesitation in giving the practical enforcement for the protection order by removing the husband from the house.

The Court modified the impugned order passed by the Family Court and directed the respondent-husband to leave the house where the petitioner and the children live and find alternate accommodation within a period of two weeks from the date of receipt of a copy of the order, failing which, the respondent shall be removed from the matrimonial home with the help of police protection.

[V Anusha v. B Krishnan, CRP (PD) No. 1824 of 2022, decided on 11-08-2022]


Advocates who appeared in this case :

S. P. Arthi, Advocate, for the Petitioner;

D. Suresh Kumar, Advocate, for the Respondent.


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Mini Pushkarna, J. granted ad interim injunction against Pawan Khera and others (‘defendants’) who allegedly organized a Press Conference dated 23-07-2022 from New Delhi wherein various wild and defamatory allegations were made against Smriti Zubin Irani (‘plaintiff’) without any substance, pertaining to a statutory license in respect of food and beverages operations at a restaurant, named, Silly Souls Cafe and Bar, located in Goa.

Smriti Irani (‘plaintiff’) is a highly respected citizen of the country and a Minister in the Union Cabinet of India, currently administrating the Ministry of Women and Child Development and Ministry of Minority Affairs. It was alleged that the defendant 1, 2 and 3 organized a Press Conference on 23-07-2022 from New Delhi. During the course of the Press Conference, various wild and defamatory allegations were made against the plaintiff without any substance, pertaining to a statutory license in respect of food and beverages operations at a restaurant, named, Silly Souls Cafe and Bar, located in Goa.

Various false and defamatory contents of the utterances of the defendant 1, 2, 3 in the Press Conference were used and continued to be used by the defendant 1, 2, 3 and various other individuals and entities, directly and indirectly disseminating such and similar misrepresentation on various social media websites . Aggrieved by this, an application was filed under Order XXXIX Rules 1 & 2 read with Section 151 Civil Procedure Code (‘CPC’) by the plaintiff seeking an ad-interim injunction.

The Court noted after perusing various documents filed before the Court by the plaintiff and also the excerpts from the Press Conference carried out by the defendant Nos. 1, 2, 3, that slanderous and libelous allegations have been made against the plaintiff without verifying the actual facts. Great injury has been caused to the reputation of the plaintiff and her family in view of the various tweets and re-tweets which have followed the Press Conference carried out by the defendant Nos. 1, 2 & 3.

Placing reliance on Ram Jethmalani v. Subramaniam Swamy, 2006 SCC OnLine Del 14, the Court observed that considering the documents on record it is clear that there was no license ever issued in favour of the plaintiff or her daughter. The plaintiff or her daughter are not the owners of the restaurant, infact they never applied for a license. Neither the restaurant nor the land on which the restaurant exists is owned by the plaintiff or her daughter, even the show cause notice issued by the Government of Goa is not in the name of the plaintiff or her daughter as also stands affirmed in the affidavit by the plaintiff.

The Court held the plaintiff has been able to make out a prima facie case. Balance of convenience also lies in favour of the plaintiff and against the defendants. Thus, if the defamatory allegations and contents linked to it, is allowed to remain on the internet and social media platforms, then the extent of damage to the plaintiff could be of immense magnitude and injurious to the reputation of the plaintiff and her family.

The Court thus passed an ad-interim injunction directing defendant 1, 2 & 3 to delete and remove the allegations, video of impugned Press Conference dated 23-07-2022 and the contents linked to the same published against the plaintiff from all the social media platforms, namely, YouTube, Facebook, Instagram and Twitter.

The Court further directed the defendant 4 to 6 to remove the allegations, videos, posts, tweets, re-tweets, captions, taglines along with the morphed pictures of the plaintiff and her daughter along with the underlined material with such defamatory content or anything similar thereto including recirculation on their respective platforms. In case of failure to comply with the directions within 24 hours of pronouncement of the order, defendant 4 to 6 are directed to take down the tweets and other materials on the URLs as well as other tweets which may appear in the plaint thereof.

[Smriti Zubin Irani v. Pawan Khera, 2022 SCC OnLine Del 2310, decided on 29-07-2022]


Advocates who appeared in this case :

For Plaintiff: Mr. Rajiv Nayar, Mr. N.K. Kaul, Ms. Pinky Anand, Sr. Advocates with Mr. Kirat Singh Nagra, Mr. Kartik Yadav, Mr. Pranav Vyas, Mr. Manhar S. Saini, Mr. Hardik Jain, Ms. Sumedha Chadha, Mr. Saurabh Seth, Mr. Dhruv Sharma, Mr. Anil Soni, Advocates

For Defendant: Counsel for D-1, 2 3 (appearance not given). Mr. Dayan Krishnan, Sr. Advocate with Mr. Saransh Jain, Mr. Ankit Agarwal, Ms. Shloka N., Mr. Shaurya Rai, Mr. Sanjeevi, Mr. Sukrit, Advocates for D-6/Twitter, Inc


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Prathiba Singh, J. permanently injuncts Neeraj Food Products (‘defendants’) for trading JAMES BOND a chocolate product in pillow packs which is deceptively similar with Mondelez India Foods Private Limited (formerly Cadbury India Ltd.) (‘plaintiff’) GEMS, the name of which has derived inspiration from a copyrighted artistic character GEMS BOND. The Court thus directed the compensation upto 15 lakhs to Cadbury India finding deceptive similarity in the product under challenge.

The suit was filed in August 2005 against Neeraj Food Products (‘defendant’), the sole proprietary concern of Mr. Charan Das. The Plaintiff 1 – Cadbury India Ltd. and Plaintiff 2 – Cadbury Schweppes Overseas Limited claim ownership in the mark ‘CADBURY GEMS’/‘GEMS’ which is the subject matter of the present suit. The case of the Plaintiffs is that the Defendant launched a chocolate product under the mark ‘JAMES BOND’ with an identical colour scheme, layout, and arrangement as that of the Plaintiffs’ ‘CADBURY GEMS’/ ‘GEMS’ products. Thus, the present suit has been filed seeking permanent and mandatory injunction and damages for infringement of trademark and copyright, passing off, unfair competition and other reliefs.

Plaintiff 1 holds copyright registrations in its former name being Hindustan Cocoa Products Ltd. bearing registration numbers A-50680/90 and A-49975/89 for the artistic works in respect of a character known as ‘GEMS BOND’ which character has been used by the Plaintiffs for promotion of its ‘GEMS’ branded products.

The Court opined that the present is a case of res ipsa loquitur and the comparative labels set out hereinabove show that the two products have startling similarities. The elaborate features that are similar are set out in order copy are skipped here for the sake of brevity.

The Supreme Court discussed the test of infringement and deceptive similarity of competing marks in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968 and Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618 wherein it was observed that, the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them and the Court has to see similarities and not the dissimilarities.

Reliance was placed on ITC Ltd. v. Britannia Industries Ltd. 2016 SCC OnLine Del 5004 wherein it was observed

Where the product is eatable like a biscuit, the colour and the colour scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.

Explaining the aspect of ‘initial interest’ in the same judgment, the Court relied on Baker Hughes Limited v. Hiroo Khushalani to observe

“In some case, however, it is also possible that such a purchaser after having been misled into an initial interest in a product manufactured by an imitator discovers his folly, but this initial interest being based on confusion and deception can give rise to a cause of action for the tort of passing off as the purchaser has been made to think that there is some connection or nexus between the products and business of two disparate companies.”

However, that may not be entirely true when it comes to products like biscuits. The packaging of a biscuit does become associated with the manufacturer or brand. The colour on the wrapper would certainly play an important part.

The Court noted that in the present case, the products in question are chocolates which may be consumed by young and old alike. The ‘GEMS’ product is also usually consumed by small children, both in urban and rural areas. The test in such a matter is not that of absolute confusion but even the likelihood of confusion is sufficient. Hence, the product’s get-up layout, and also, the colour combination of the packaging plays a significant role at the point of purchase. Moreover, chocolates are sold not merely in big retail stores or outlets, but also, in roadside shacks, paan shops, patri vendors, kirana stores and stalls outside schools, etc. Thus, there is an immense likelihood of confusion, particularly considering the class of consumers that the product is targeted at, that is, children.

The Court grants permanent injunction restraining the Defendant, its proprietor, partners, directors, servants, agents, distributors, franchisees, representatives and assigns from using the trademark as well as pillow packs of JAMES and/or JAMES BOND and/or any other trademark deceptively or confusingly similar to the Plaintiffs’ registered trademark GEMS or in any other manner infringing the registered trademark GEMS of the Plaintiff.

Placing reliance on Uflex Limited v. Government of Tamil Nadu, (2022) 1 SCC 165, the Court directed damages to the tune of Rs.10 lakhs and thereby actual costs of Rs.15,86,928/- were awarded in favour of the Plaintiffs, in terms of the relief as sought, to be paid within three months.

[Mondelez India Foods Pvt. Ltd. v. Neeraj Food Products, 2022 SCC OnLine Del 2199, decided on 26-07-2022]


Advocates who appeared in this case :

Ms. Prakriti Vaishney, Advocate, for the Petitioner.


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Pratibha M Singh, J. rejected to pass a permanent injunction order restraining GODADDY and other Domain Name Registrars (‘DNR’) from offering any domain name(s) which incorporate SNAPDEAL (‘plaintiff’s’) trademarks amounting to infringement of the registered trademark, passing off and unfair competition. Such a wide order, without identifying the specific domain names, cannot be granted and for every domain name specific relief has to be sought by the Plaintiff after identifying the domain name.

The present suit was filed seeking permanent injunction restraining the infringement of trademarks, passing off, unfair trade practices, damages, rendition of accounts and other reliefs. The Plaintiff is the registered proprietor of the trademarks ‘SNAPDEAL’/’SNAPDEAL’ and its formative marks and defendants are mostly DNR’s engaged in the business of creation, registration and sale of domains to the Registrants. It is the case of the Plaintiff that the said DNRs have registered various domain names containing the Plaintiff’s registered trademark ‘SNAPDEAL’. Thus, a prayer is sought under Order XXXIX Rules 1 & 2 Civil Procedure Code regarding not offering any domain names which incorporate the Plaintiff’s mark ‘SNAPDEAL’.

The Court mentioned an interim order dated 18-04-2022 passed by a predecessor Bench that noted such a wide order, without identifying the specific domain names, cannot be granted and for every domain name specific relief has to be sought by the Plaintiff after identifying the domain name. Relevant part of the order is mentioned below:

“…such rogue websites keep mushrooming, and that it is impracticable for the plaintiff to approach this Court repeatedly on coming to know of such websites.”

“…it is not permissible for the Court to hold, in advance, that every prospective alternative domain name, containing the word/thread/string “SNAPDEAL” would necessarily be infringing in nature and, thereby, injunct, in an omnibus and global fashion, DNRs from ever providing any domain name containing “SNAPDEAL”. This, in my view, would be completely impermissible.

“The cause of action, in any trademark infringement suit, has to be with respect to the particular infringing trademark/trademarks. The Court cannot pass an order to operate in futuro, restricting the defendants from offering, for registration, any domain name, which includes the thread “SNAPDEAL”, as that would be attributing, to the Court, a clairvoyance which it does not possess.

The plaintiff has, therefore, necessarily to petition the Court against each domain name that it finds to be infringing. This may be a long and cumbersome exercise. It cannot be helped. There is no shortcut to justice.”

The Court noted that a suit cannot be continued in perpetuity qua the infringement of a particular mark and to expect that the Plaintiff would file a suit or move an application each and every time a domain name containing its trademark is registered would make it an extremely cumbersome and expensive exercise.

Counsel for defendant brought before the Court “abuse policy” used by GoDaddy that enables the trademark owners to fill up a form to seek suspension/locking of the domain name complained of, but this abuse policy may not be sufficient as the same still requires the IP owner to approach a court of law.

The Court thus observed that there ought to be a mechanism where the abuse policy is not merely dealing with suspension/locking but should also be able to cancel/transfer the infringing domain names. Such an abuse policy should also be implemented by the DNRs through a specified set of officials based in India, to ensure that if in a case, the transfer/cancellation is not permitted under the abuse policy; the trademark owner would be able to avail of their remedies before the Courts in India, against such a decision of the DNR.

The Court directed an affidavit to be filed “as to whether an independent and impartial mechanism could be put in place by the Defendant 1 to 4 to prevent the abuse of trade marks through registration of domain names and to disable the privacy protect features and make available the details of the registering person in respect of domain names on the ‘Whois’ database.”

The Court also directed to seek instructions from Department of Telecommunications, ‘DoT’, as to the manner in which all DNRs, who are offering their services in India and earning revenues from India despite being based out of other countries, could be made to implement orders passed by Courts in India.

[Snapdeal Private Limited v. GoDaddycom LLC, 2022 SCC OnLine Del 2044, decided on 13-07-2022]


Advocates who appeared in this case :

Ms. Tanya Verma & Ms. Devyani Nath Suvangana, Advocates, for the Plaintiff;

Ms. Shweta Sahu and Mr. Shreyansh Jain, Advocates for the D-1 to 4;

Mr. Harish Vaidyanathan Shankar, with Mr. Srish Kumar Mishra, Mr. Sagar, Mehlawat and Mr. Alexander Mathai Paikaday, Advocates, for the D-33;

Mr. Praveen Kumar Jain and Ms. Shalini Jain, Advocates, for the D-34.


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Navin Chawla, J. passed an ad-interim injunction in favour of Marico Pvt. Ltd (‘plaintiff’) and found that the advertisement by Dabur India Ltd (‘defendant’) was disparaging their goods by mentioning them as ‘sasta amla’ and hinting that use of such oil will be detrimental to the customer, thus causing grave commercial injury to the plaintiff.

A company named Marico Limited, was engaged in the business of making hair oil. The plaintiff claimed in the application that it is the market leader by volume in the ‘AMLA HAIR OIL’ segment in the country and currently has a market share of more than forty percent. The Plaintiff further stated that it was informed by sources that a WhatsApp message was being circulated which showed a similar bottle as that of the Plaintiff’s bottle. Aggrieved by the WhatsApp message, a present suit was filed.

It was contented by the petitioner that the print advertisement of the respondent showed a similar bottle to that of Plaintiff’s product and showed a big cross on it, thereby asking the customers to reject it. The Plaintiff contended that reference to ‘sasta amla’ on the advertisement is a direct reference to his product since he has been running a long campaign for a significant period of time showing that his product is ‘affordable’ and ‘beneficial product.’

In order to further substantiate the claim, the plaintiff pointed out that his company’s hair oil was duly certified by the independent authorities and was found to be of similar quantity and efficacy as that of the respondent’s company. The Plaintiff also brought to the notice of the Court that Advertising Standards Council of India had found the claim ” Asli Amla, Dabur Amla” to be misleading.

The Counsel for the petitioner submitted that the print advertisement of the defendant was a clear case of disparagement of the plaintiff’s product. He also stated it was clear through the WhatsApp message which was circulated by the defendant that the product of the plaintiff along with print advertisement brought a clear association of the advertisement with the plaintiff ‘s product.

The Court noted that the plaintiff was able to make a good prima facie case in its favour. The Court took into account the fact that the WhatsApp Messages not only referred to the print advertisement but also to the product of the plaintiff. The Court held that the print advertisement was drawing reference to the plaintiff’s product and the allegation of cheaper oil being harmful to hair would prima facie amount to disparaging of the goods of the plaintiff. Thus, the Court granted ad-interim injunction in the favour of the plaintiff as balance of convenience liesin favour of him. Compliance with the said order should take place within two days.

[Marico Ltd. v. Dabur India Ltd., 2022 SCC OnLine Del 2070, decided on 13-07-2022]


Advocates who appeared in this case :

Senior Adv. Chander Mohan Lall, Adv. Ankur Sangal, Adv. Pragya Mishra, Adv. Raghav Vinayak Sinha, Adv.Trisha Nag, for the Petitioner;

Case BriefsInternational Courts

   

European Court of Justice (ECJ): In a far-reaching decision, the Bench of C. Lycourgos (Rapporteur), President of the Chamber, S. Rodin, J.-C. Bonichot, L.S. Rossi and O. Spineanu-Matei, JJ., held that sending of a warning letter for trademark infringement, per se, will not break the limitation period and end acquiescence for use of the similar later trademark.

The German Federal Court of Justice had requested the ECJ for a preliminary ruling on the interpretation of Article 9 of Directive 2008/95/EC of the European Parliament of 22-10-2008 to approximate the laws of the Member States relating to trademarks, and Articles 54 and 111 of Council Regulation (EC) No 207/2009 of 26-02-2009 on the Community trademark.

The European Union law in question provides that where, in a Member State, the proprietor of an earlier trademark has acquiesced, for a period of five successive years, use of a similar later trademark while being aware of such use, he shall no longer be entitled either to apply for a declaration that the later trademark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used; unless registration of the later trademark was applied for in bad faith.

Factual Backdrop

The request had been made in proceedings between HEITEC AG (the applicant) and HEITECH Promotion GmbH and RW concerning the use of the trade name HEITECH Promotion GmbH and trademarks containing the word element ‘heitech' by the latter.

The applicant is the proprietor of the EU word mark HEITEC, with seniority claimed as from 13-07-1991, and registered on 04-07-2005. It was entered in the commercial register in 1984 under the name Heitec Industrieplanung GmbH which was later changed to Heitec GmbH. Since the year 2000, it has been operating under the name of Heitec AG.

Heitech, of which RW is the managing director, was entered in the commercial register on 16-04-2003 as the proprietor of a German figurative mark containing the word element ‘heitech promotion' and of an EU figurative mark containing the word element ‘heitech', applied for on 06-02-2008 and registered on 20-11- 2008, which it has used since 06-05-2009 at the latest.

Chronology of Events

The applicant became aware of Heitech's application for registration of the EU figurative mark containing the word element ‘heitech' on 07-07-2008 and by a letter dated 22-04-2009, it sent Heitech a warning letter regarding the latter's use of its tradename and the EU trademark containing the word element ‘heitech'. In its reply, Heitech proposed to enter into a coexistence agreement.

On 31-12-2012, the applicant approached the Nuremberg Regional Court to initiate proceedings against Heitech and RW. However, the proceedings could not begin since the applicant had failed to make the advance payment and lodge the originals of the application initiating proceedings. It was only on 30-12-2013 that the Regional Court received written submissions dated 12-12-2013 from the applicant, together with a cheque for court fees and a new application initiating proceedings bearing the date 04-10-2013. The preliminary proceedings were finally opened on 16-05-2014 and a notice was served to the defendants in the main proceeding on 23-05-2014.

Meanwhile, in a letter dated 23-09-2013, the applicant informed Heitech that it refused to conclude a coexistence agreement and proposed to conclude a licence agreement while stating that it had initiated legal proceedings.

Finally, the applicant claimed the infringement of its trademark rights and contended that Heitech should be ordered to refrain from identifying its company by the trade name ‘HEITECH Promotion GmbH', to refrain from affixing the word elements ‘heitech promotion' and ‘heitech' on goods and from marketing or advertising goods or services under those signs, to refrain from using or transferring, for commercial purposes, the website heitech-promotion.de and to agree to the removal of its company name from the commercial register.

The applicant also brought claims for information, for a finding of an obligation to pay compensation, for the destruction of goods and for the payment of the costs of sending the warning letter.

Findings of the Nuremberg Regional Courts

The Regional Court ordered Heitech to pay the applicant EUR 1 353.80, plus interest, for the costs of sending the warning letter and rejected the other claims. Aggrieved, the applicant appealed before the Nuremberg Higher Regional Court, which held that the applicant's action was unfounded as it was time-barred.

The Higher Regional Court noted that Heitech had used its later signs for an uninterrupted period of at least five years and that the applicant had acquiesced in such use, since, although it was aware of that use, it had not taken sufficient measures to stop that use.

The Higher Court held that the court action had not interrupted the period of limitation, since it had been served on Heitech and RW only after five years had elapsed since the warning letter which preceded that action.

The applicant challenged the afore-mentioned findings before the Federal Court of Justice, Germany (referring court).

Questions Referred

That referring court noted that the outcome of the appeal depends on the interpretation of European Union (EU) law on whether the applicant is time-barred from bringing its claim for an injunction and its ancillary claims. Therefore, the referring court referred the following questions to the Court of Justice for a preliminary ruling:

  1. Can acquiescence be excluded not only by means of an administrative or court action but also through conduct not involving a court or administrative authority?

  2. Does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence?

  3. When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trademark?

  4. Does the limitation of rights encompass consequential claims under trademark law; i.e., claims for compensation, provision of information or destruction, as well as prohibitory injunctions?

Analysis and Findings

Is a warning letter sufficient to break the limitation period and end acquiescence?

Relying on Levi Strauss, C 145/05, the Court noted that by setting a period of limitation in consequence of acquiescence of five consecutive years with knowledge of the use of the later trademark, the EU legislature sought to ensure that the protection conferred by an earlier trademark on its proprietor remains limited to cases where the proprietor shows itself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe its mark.

Opining that the rule on limitation in consequence of acquiescence is intended to safeguard legal certainty, the Court stated,

“Where the proprietor of an earlier mark or other earlier right, within the meaning of Directive 2008/95 or Regulation No 207/2009, has knowingly ‘acquiesced' in the use of a later mark applied for in good faith for a continuous period of five years, the proprietor of the latter mark must be certain in law that such use can no longer be challenged by the proprietor of that earlier mark or other earlier right.”

As regards the conditions under which the proprietor of the earlier mark or other earlier right may be regarded as having carried out an act that interrupts the period of limitation, the Court observed that the proprietor must bring an administrative or court action before the expiry of the limitation period.

The Court observed that where the proprietor of the earlier mark has issued a warning letter with which the proprietor of the latter mark did not comply, the warning letter will only interrupt the period of limitation in consequence of acquiescence when, following the unsatisfactory response to the warning letter, the proprietor of the earlier mark invokes an administrative or court action to enforce its rights. In contrast, in such a scenario, the failure to bring an administrative or court action will mean that the proprietor of the earlier mark has failed to take the measures available to it to put an end to the alleged infringement of its rights. The Court opined,

“Any interpretation to the effect that sending a warning letter is sufficient to interrupt the period of limitation would allow the proprietor of the earlier mark or other earlier right to circumvent the regime for limitation in consequence of acquiescence by repeatedly sending a warning letter approximately every five years. Such a situation would undermine the objectives of the regime for limitation in consequence of acquiescence and would deprive that regime of its effectiveness.”

Date of action v/s Date of receipt by Defendant: Which one is decisive for calculating the five-year acquiescence period?

Referring to the rule as followed in civil matters, the Court observed that the date on which the application initiating proceedings was lodged is the date on which a court action must be deemed to have been brought.

The Court, though agreed with the opinion of the Advocate General that the lodging of the application initiating proceedings reflects the genuine and unambiguous wish of the applicant to assert its rights, which is sufficient to end acquiescence and to interrupt the period of limitation, it noted that the conduct of that party may nevertheless, raise doubts as to that wish and the seriousness of the action brought before the court.

Noting that the Regional Court with which the applicant had lodged an application initiating proceedings, repeatedly contacted it in order to draw its attention to irregularities that prevented service of the notice on the defendants, the Court opined that the applicant could not claim to have put an end to the acquiescence of the use of the later mark by lodging the application initiating proceedings. The Court noted,

“Where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date the action must be regarded as time-barred.”

Consequently, the Court held that it is for the referring court to ascertain whether the date on which the application to initiate proceedings was rectified to enable the court to commence the proceedings and to serve that document on the defendants was within the period of limitation and whether the conduct of the applicant in initiating proceedings could be characterized as lack of diligence.

Whether a proprietor of the earlier mark being time-barred from seeking a declaration of invalidity of a later mark, is also time-barred from bringing ancillary or related claims?

Affirming the opinion of the Advocate General that it would be contrary to the objectives of the regime for limitation in consequence of acquiescence to allow the proprietor of the earlier mark to bring an action against the proprietor of that later mark for damages and injunctions after the end of the limitation period, the Court held,

“If such action or such claims were to succeed after the expiry of the period of limitation, it would amount to leaving intact, beyond that date, the possibility of a finding that the use of the later mark infringes the earlier mark and to attributing a non-contractual liability to the proprietor of the later mark.”

The Court added,

“Such an interpretation of the regime of limitation in consequence of acquiescence would undermine the objective pursued by that regime, which is to give the proprietor of the later trademark the certainty, at the end of that period, that the use of that mark can no longer be challenged, by whatever legal means, by the person that has knowingly acquiesced in its use for an uninterrupted period of five years.”

Conclusion

In the backdrop of above, the Court ruled:

  • A warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution, does not stop acquiescence and, consequently, does not interrupt the period of limitation.

  • The application of action will be time-barred where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant.

  • Where the proprietor of an earlier mark is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that later mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

[HEITEC AG v. HEITECH Promotion GmbH, C466/20, decided on 19-05-2022]

*Kamini Sharma, Editorial Assistant has reported this brief

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: Navin Chawla J. restrains Facebake and Facecake based in Bangalore which sells confectionary items like cakes etc. from using a deceptively similar and a ‘well known trademark' as per Section 2(1)(zg) Trade Marks Act, 1999, Facebook which is a popular social media networking site.

Meta Platforms Inc. ‘plaintiff’, the parent company of Facebook which is a popular social media giant is inter-alia seeking a decree of permanent injunction restraining the defendants from using the mark ‘Facebake’ and/or the domain name www.facebake.in; the email IDs facebake.mail@gmail.com; facebake649@gmail.com, as also for seeking rendition of accounts. Despite two restraining orders being passed earlier by the Court, the Defendant 1 incorporated a company by the name of ‘Ehrlich Foods and Beverages Pvt. Ltd’ and is one of its directors seeking the registration of a deceptively-similar mark ‘Facecake’.

Meta Inc. submitted that it has successfully enforced its rights in the ‘Facebook’ marks in context of opposition or other challenges filed by the plaintiff against third parties, including with respect to food and/or food services in other cases alike. It further asserted that it is a “well-known trade mark” as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.

The grievance is regarding the adoption of the mark ‘Facebake’ by Defendant 1, which is allegedly mimicking the visual presentation by copying the colour scheme, font, commercial impression, and overall look and feel, and thus intentionally trading off the significant goodwill that the plaintiff has established in its ‘Facebook’ marks. Thus, it constitutes infringement of its statutory as well as common law rights as also results in passing off, dilution and unfair competition by the defendants.

The Court noted that a ‘wellknown trade mark’ as defined under Section 2(1)(zg) Trade Marks Act, 1999 is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. It further held that when a person uses another person’s ‘wellknown trade mark’, he tries to take advantage of the goodwill that such a ‘well-known trade mark’ enjoys. Such an act constitutes as unfair competition.

Placing reliance on Tata Sons Ltd. v. Manoj Dodia, 2011 SCC OnLine Del 1520, the Court applied the test laid down in it to observe that the plaintiff has been able to pass the test as set out for it to be declared as a ‘well-known trade mark’, as defined under Section 2(1)(zg) Trade Marks Act, 1999.

The Court observed that though there is some distinction between the marks of the plaintiff and of the defendants, the overall visual representation adopted by the defendants, clearly depicts the mala fide intent of the defendants which is also evident from the fact that upon the knowledge of the ad-interim injunction passed by the Court, the defendants changed the mark from ‘facebake’ to ‘facecake’ thereby changing only one alphabet, however, chose not to appear before the Court to defend the suit in spite of service.

Thus the Court restrained the defendants, its directors, proprietors, subsidiaries, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on its behalf from using the Facebake marks, the domain name, email ids and any other ‘Facebook’ formative trademarks of the plaintiff, or any other mark deceptively similar thereto in relation to products and services related to confectionary items, or any other goods or services, in any manner, including on social media.

The Court further held the plaintiff has not led any substantial evidence for relief regarding rendition of accounts, a nominal damages of Rs. 50, 000 to be awarded in favour of the plaintiff and against the defendants.

[Meta Platforms Inc. v. Naoufel Malol, CS(COMM) 499/2020, decided on 06-07-2022]


Advocates who appeared in this case :

Mr. Pravin Anand, Ms. Vaishali Mittal, Mr. Siddhant Chamola, Mr. Shivang Sharma, Advocates, for the Plaintiffs.


*Arunima bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Dinesh Kumar Sharma J. granted an ex parte injunction to Voltas Limited restraining a website from using their registered trademark and logo VOLTAS and block and suspend the website.

The present application was filed under Order XXXIX Rule 1 and 2 read with Section 151 Civil Procedure Code ‘CPC’ seeking permanent injunction restraining Defendant 1 from infringing the VOLTAS Limited ‘plaintiff’ registered trademark(s) through use of the registered and well-known trademarks VOLTAS and/or the VOLTAS Logo on the website www.myvoltascare.com

Counsel for plaintiff submitted that the plaintiff adopted the mark “VOLTAS” over 65 years ago in the year 1954, as not only a trademark but also as its corporate name and trading style and the continuous and extensive use of the trademark “VOLTAS” by the plaintiff over a long period of time spanning a wide geographical area coupled with extensive promotion and publicity, the trademark enjoys an unparalleled reputation and goodwill and has become a well-known mark.

It was also submitted that defendant 1 had copied identically the entire look, feel, colour scheme, photographs of the Plaintiff’s website and therefore, the defendant 1 is intentionally and dishonestly defrauding customers by projecting itself to be the plaintiff.

The Court observed that the plaintiff has a good prime facie case in its favour and the activities of defendant 1 are causing irreparable loss and injury to the plaintiff. The balance of the convenience also lies in favour of the plaintiff. Further it was noted that the objective of granting an injunction would be defeated by the delay and issuance of notice to the opposite party.

The Court thus granted an ex parte injunction by restraining the defendant from “using the Plaintiff’s registered and well-known trademark VOLTAS and/or the VOLTAS Logo, and/or any mark deceptively similar to the Plaintiff’s trademarks and/or formative marks in any manner including though not limited to in relation to advertising, directly or indirectly offering any goods or services, using or registering corporate names, domain names, including the Impugned Website, www.myvoltascare.com, or listings on social media websites or e-commerce sites or doing any other act amounting to infringement of the Plaintiff’s registered trademarks.”

The Court also directed to lock/block/suspend and disable the domain name/ website www.myvoltascare.com.

[Voltas Limited v. Ashok Kumar, 2022 SCC OnLine Del 1823, decided on 20-06-2022]


Advocates who appeared in this case :

Geetanjali Visvanathan, Kruttika Vijay and Abhishek Tripathy, Advocates, for the Plaintiff.


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: Pratibha M Singh, J. issued directions to the registrar of domain names whose offices are situated outside India and details are not revealed so that they do not escape injunction order passed by Indian Courts. 

  

The present two suits were filed after discovering that several fraudulent websites bearing Plaintiffs’ well-known marks ‘AMUL’ and ‘DABUR’ are soliciting business from vulnerable customers. Earlier in the case, Dabur India Ltd. v. Ashok Kumar, 2022 SCC OnLine Del 823, dated March 03, 2022, it was noted that there were various domain names and websites, which were operating with the name DABUR such as www.daburdistributor.com & https://daburdistributorships.in. Monies were being collected from vulnerable customers through the said websites. 

  

The DoT and MEITY were directed to block the said fraudulent websites. It was further directed whenever any person or entity registers a mark, name, company, firm etc., the identity of such person is openly available. However, in the case of domain names, this is not so. It appears that disabling the privacy protect feature may be essential to ensure that the identity of the persons registering domain names is clearly visible on the https://www.whois.com database, as also other such databases”.

  

The Court noted that there are various challenges faced by the Courts in respect of domain names, mobile applications, messaging services wherein various illegal activities are being carried out through the said domain names/websites, applications and messaging services. Such activities include: 

  1. Offering of franchises and distributorships as a means of collecting money from vulnerable Indian customers and citizens.
  2. Sale of counterfeit, pass off and knock off products.
  3. Use of infringing domain names and promoting the websites through the said domain names.
  4. Various other illegal activities including launching of schemes, infringement of copyright, unlawful communications etc.

  

It was further noted that there are a large number of domain name registering entities located across the globe, who offer domain name registration services in India. A large number of these companies do not have any base or office in India. Therefore, it has become increasingly challenging to enforce orders passed by Indian Courts against these companies in respect of: 

  1. Blocking/suspension of the website/domain name,
  2. Transfer of domain name,
  3. Revealing details of the registrants, 
  4. In a large number of cases, even upon the said registrant’s details being revealed, it is found that the said registrants’ names, contact details etc. are either non-existent or fictitious.
  5. The manner in which payments are being collected through these websites.

The Court observed that there is a need for the authorities to keep a check against such registering authorities which do not have offices in India. While on the one hand, services of such companies are being offered in India and huge revenues are collected by these companies from India, it is seen that due to lack of physical office or assets in India, the orders passed are not being given effect to in an efficient and proper manner. 

  

The Court gave directions to ensure that the names of the registrants which are found to be fictitious, non-existent, or whose proper details are not revealed, do not escape injunction orders, the Registrars of domain names henceforth shall: 

  1. Disclose the details as available on their database of all the persons registering the said impugned domain names; 
  2. Disclose the details of the payments received by them for registering the domain name as also for any other services which may have been provided such as website hosting services, cloud services, etc. 

 [Dabur India Ltd. v. Ashok Kumar, 2022 SCC OnLine Del 1784, decided on 2 June, 2022]  


Appearances 

For petitioner- Ms Kripa Pandit and Mr Anirudh Bakhru 

For respondent- Mr Alipak Banerjee and Mr Brijesh Ujjainwal for D-4. 

Ms Geetanjali Viswanathan, Ms Kruttika Vijay and Ms Aishwarya Kane, for D-5. 

Mr  K.G. Gopalakrishnan and Ms Nisha Mohandas for D-7. 

Mr Moazzam Khan and Ms Shweta Sahu for D-15. 

Mr Harish Vaidyanathan  Ms S. Bushra Kazim, Mr Srish Kumar Mishra and Mr Sagar Mehlawat for UOI 

 


*Arunima Bose, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

Delhi High Court: Prathiba M. Singh, J., expressed that, the word ‘SHOLAY’, is the title of an iconic film, and consequently, as a mark having been associated with the film, cannot be held to be devoid of protection

“If there is one film that transcends generations of Indians, it is ‘SHOLAY’. The said film, its characters, dialogues, settings, box office collections are legendary. Undoubtedly, ‘SHOLAY’ is one of the biggest, record-breaking films that India has ever produced, in the history of Indian cinema.”

Instant suit was filed by Sholay Media and Entertainment (P) Ltd. and Sippy Films (P) Ltd. against defendants 1 to 8.

The defendants had registered the domain name ‘www.sholay.com’, published a magazine using the mark/name Sholay and had put on sale various merchandise, using scenes and names from the movie ‘SHOLAY’.

Further, defendant 5 – Netangle.com Pvt. Ltd. a company registered by Defendants 1 to 3 as well. Defendants 6, 7, and 8 were controlling entities of the domain name ‘Sholay.com’.

Film ‘SHOLAY’ has been described as a film which is a part of India’s heritage and some of the dialogues used in the said film such as ‘Jo dar gaya, samjho mar gaya’, ‘Ai chhammia’, ‘Arre o Sambha’, Kitne aadmi the?’ are part of colloquial language in the Hindi heartland.

The mention of the word ‘SHOLAY’ immediately creates a connection with the movie ‘SHOLAY’.

The rights in the word ‘SHOLAY’ which is also a registered trademark, have been recognised by the Courts in favour of the plaintiff.

The grievance of the Plaintiffs

In the present matter, the grievance was that upon coming across a magazine released in the year 2000 titled “IT-Information Technology”, the Plaintiffs learnt that the Defendants had registered the domain name ‘www.sholay.com’. The magazine was accompanied by a free compact disk (“CD”) containing the advertisement of the website.

In the above-said advertisement, the defendants sought to create an entertainment portal having various services such as chat, e-greetings, countdowns, horoscopes kid zone, classified, matrimonial, and grocery store.

The plaintiff also learnt that the defendants had filed a trademark application for the mark SHOLAY with the United States Patent and Trademark Office, also in India.

The said application with the USPTO was filed in the name of a Company called ‘SHOLAY.COM., INC’, which was based out of Bridgewater, New Jersey. In India, the trademark application was filed by Defendant 5 Company – Netangle.com Pvt. Ltd. which was registered in Hyderabad with Mr Jayesh Patel, Ms Bhavna Patel and Mr Yogesh Patel as its directors.

Further, the defendants registered defendant 4—company by the name of Sholay.com (P) Ltd. and the same was objected by the plaintiffs under the provisions of Section 22 of the Companies Act, 2013.

Therefore, the Registrar of Companies, Chennai directed defendant 2 to delete the word ‘Sholay’ from its existing name.

To challenge the above order, the defendants had filed a petition before the Madras High Court, and the same was allowed by which the impugned order of Regional Director, Company Affairs, Southern Region, was set aside solely on the ground of violation of principles of natural justice.

The use of the mark ‘SHOLAY’ on the internet caused actual confusion and a search of the word ‘SHOLAY’ returned the defendant’s website in the list of the results on various search engines, causing actual instances of confusion.

According to the plaintiffs, such use constitutes infringement, passing off, dilution and tarnishment of the well-known mark ‘SHOLAY’. Hence, the plaintiff filed the present suit seeking permanent injunction restraining the infringement of their registered trademark ‘SHOLAY’ by the Defendants, passing off, damages, rendition of accounts, delivery up, etc.

Issue: Whether future use of the word/name/mark ‘SHOLAY’ was liable to be injuncted?

The Defendants did not dispute the following facts:

  • That the Defendants have registered various domain names with the mark ‘SHOLAY’.
  • That the Defendants have applied for registrations of the marks in India and in the USA.
  • That the Defendants are using the word ‘SHOLAY’ as a prominent part of their corporate name.

Further, the Defendants only sought to justify their use of the Plaintiffs’ mark ‘SHOLAY’ by urging that:

  1. Film titles are not entitled to protection and that they have applied for registration earlier.
  2. There is no probability of confusion on the internet and that ‘SHOLAY’ is a dictionary word.

Analysis and Decision


i) The defendants claimed that their application was prior to the application and registration of the mark by the plaintiffs.

High Court expressed that the above-stated claim was bereft of any force, inasmuch as the film ‘SHOLAY’ of the plaintiffs was released in the year 1975, much before the application for registration and the incorporation of the company by the defendants.

“The manner of use of the word ‘SHOLAY’ by the Defendants, is not descriptive, but is a clear indication of an association with the Plaintiffs’ film.”

Bench added that the offering of the CD and DVD of the film ‘SHOLAY’ on the website of the defendants shows that the defendant’s adoption was, in fact, mala fide and dishonest. Moreover, the defendants had registered a series of domain names identical and deceptively similar to the name of the film ‘SHOLAY’, which cannot be justified.

“Their use of identical domain names is nothing but an attempt to encash the goodwill enjoyed by the blockbuster movie ‘SHOLAY’ of the Plaintiffs.”

Hence, the plaintiffs clearly had a cause of action under Section 27 of the Trademarks Act, 1999.

“The mark ‘Sholay’ enjoys continued goodwill in India.”

Bench elaborated stating that, the mark ‘SHOLAY’ has already been recognised as a well-known mark. Thus, the mere earlier trademark applications or use as part of a corporate name would not vest any prior rights in favour of the Defendants.

ii) It was noted that the plaintiffs had a large number of registrations, and the activities of the defendants would be covered by most of the said registrations.

The internet has itself created an additional market for ‘SHOLAY’, which is a film nearly 50 years old, the adoption by the defendants was with complete knowledge of the plaintiff’s film, especially considering that the defendant’s companies were being run by Indian, who were more than likely to be aware of the film ‘SHOLAY’. Hence the goods and services being offered could be considered as being off shoots emanating from the plaintiffs.

iii) Bench expressed that, Titles and films are capable of being recognised under trademark law and in India ‘SHOLAY’ would be a classic example of such a case.

On the above issue, Court cited the Supreme Court decision in Krishika Lulla v. Shyam Vithalrao Devkatta, (2016) 2 SCC 521.

iv) High Court opined that the contention that internet is only being used by educated persons was unacceptable. Hence, it would be easy for any person, not just educated individuals, to establish a connection between the Plaintiffs’ film and the Defendants’ website.

“The use of identical logos, marks and names originating from the movie ‘SHOLAY’ further confound the issue.”

v) High Court stated that, the use of the mark ‘SHOLAY’ as part of domain names and company names, etc. are completely illegal and unlawful.

Directions issued by the Court


Lastly, the High Court concluded while issuing the following directions:

i. The Defendants, their directors, partners, proprietor and anyone acting for and on their behalf are restrained from using the name ‘SHOLAY’ in respect of any goods and services and also from using the domain name ‘Sholay.com’ and making any reference to the movie ‘SHOLAY’ or using any images or clippings from the said movie, as also from selling merchandise using the name SHOLAY or any images from the said cinematographic film. The Defendants shall also stand restrained from using any variation of the mark/name ‘SHOLAY’ on the internet or otherwise including use as a metatag in the source code.

ii. The concerned domain names registrars are directed to transfer the infringing domain names to the Plaintiffs, within one week of the receipt of the present order and the details of the Plaintiffs.

iii. The statement of costs has been filed by the Plaintiffs. The same is taken on record. Though, the cost statement has been filed showing expenses to the tune of Rs 6,58,036.00/- on various accounts including court fees, miscellaneous expenses and legal fees. It is also submitted by Counsel for Plaintiffs that a substantial quantum of services were rendered even on pro bono basis. Considering the observations of the Supreme Court on the issue of costs to be awarded in commercial matters in Uflex Ltd. v. Government of Tamil Nadu  [Civil Appeal Nos.4862-4863 of 2021, decided on 17th September, 2021], actual costs ought to be awarded, keeping in mind the bill of costs, including counsel fees. In the present case, the Defendants have contested this matter for over 20 years. The adoption of the mark ‘SHOLAY’ by the Defendants was clearly mala fide and dishonest, owing to the use of the infringing logo, designs, selling of the DVD of the film ‘SHOLAY’ on the Defendants’ website, etc. For the reasons contained above, this Court is convinced that this is a fit case for award of costs to the Plaintiffs. Accordingly, the present suit is decreed for a sum of Rs 25,00,000/- as costs and damages, in terms of the relief as sought in the Plaint.

In view of the above, all the pending applications were disposed of. [Sholay Media Entertainment v. Yogesh Patel, CS (Comm) 8 of 2016, decided on 9-5-2022]


Advocates before the Court:

For the Plaintiffs:

Parvin Anand, Dhruv Anand, Udita Patro, Sampurna Sanyal, Shrawan Chopra, Achyut Tiwari, Advocates

For the Defendants:

None

Case BriefsSupreme Court

Supreme Court: Reversing the concurrent findings of all the Court below in a case where the plaintiff was granted the relief of permanent injunction despite having lost the title, the bench of MR Shah* and BV Nagarathna, JJ has held that the plaintiff is not entitled to a relief of permanent injunction against the true owner once the dispute is settled and the plaintiff has lost the title.

The Court was deciding the case where the suit filed by the plaintiff for cancellation of the registered sale deed and declaration had been dismissed and the defendant was held to be the true and absolute owner of the suit land in question. The judgment and decree passed by the trial court in so far as refusing to grant the relief for cancellation of the registered sale deed and declaration had attained finality. Despite the fact that the plaintiff had lost the title, still the Courts below granted relief of permanent injunction against the defendant, the absolute owner of the land in question.

The Supreme Court found it unsustainable, both, on law as well as on facts as an injunction cannot be issued against a true owner or title holder and in favour of a trespasser or a person in unlawful possession.

The Court explained that an injunction is a consequential relief and in a suit for declaration with a consequential relief of injunction, it is not a suit for declaration simpliciter, it is a suit for declaration with a further relief. Whether the further relief claimed has, in a particular case as consequential upon a declaration is adequate must always depend upon the facts and circumstances of each case. Where once a suit is held not maintainable, no relief of injunction can be granted. Injunction may be granted even against the true owner of the property, only when the person seeking the relief is in lawful possession and enjoyment of the property and also legally entitled to be in possession, not to disposes him, except in due process of law.

In a given case, the plaintiff may succeed in getting the injunction even by filing a simple suit for permanent injunction in a case where there is a cloud on the title. However, once the dispute with respect to title is settled and it is held against the plaintiff, in that case, the suit by the plaintiff for permanent injunction shall not be maintainable against the true owner. In such a situation, it will not be open for the plaintiff to contend that though he/she has lost the case so far as the title dispute is concerned, the defendant – the true owner still be restrained from disturbing his/her possession and his/her possession be protected.

Applying the said principles to the case at hand, the Court observed that once the defendant was held to be the true and absolute owner pursuant to the registered sale deed executed in his favour and the plaintiff was unsuccessful so far as the declaratory relief is concerned, thereafter, it cannot be said that there was a cloud over the title of the plaintiff and/or even the defendant. Therefore, the only relief which survived before the trial court was the consideration of relief of permanent injunction and having been unsuccessful in getting the relief of cancellation of the registered sale deed and the declaration thereof, the relief of permanent injunction could not have been granted by the trial court as well as by the first Appellate Court. The Court observed that the Gujarat High Court lost sight of this aspect in the second appeal.

The Court noticed that the High Court had not properly appreciated the distinction between a substantive relief and a consequential relief as it had held that in the instant case the relief of permanent injunction can be said to be a substantive relief. Finding this view to be erroneous, the Court explained that the main reliefs sought by the plaintiff in the suit were cancellation of the sale deed and declaration and the prayer of permanent injunction restraining defendant from disturbing her possession can be said to be a consequential relief. Therefore, the title to the property was the basis of the relief of possession.

“If that be so, in the present case, the relief for permanent injunction can be said to be a consequential relief and not a substantive relief as observed and held by the High Court. Therefore, once the plaintiff has failed to get any substantive relief of cancellation of the sale deed and failed to get any declaratory relief, and as observed hereinabove, relief of injunction can be said to be a consequential relief.”

Therefore, holding that the prayer for permanent injunction must fail, the Court said that the plaintiff cannot be said to be in lawful possession of the suit land, i.e., the possession of the plaintiff is “not legal or authorised by the law”, the plaintiff shall not be entitled to any permanent injunction.

The Court, hence, found that all the Courts below erred in granting permanent injunction in favour of the plaintiff and against the defendant, who is the true owner. It is to be noted that the Supreme Court is usually slow in interfering with the concurrent findings of the Courts below. However, in the case at hand, the Supreme Court reversed the findings of three Courts i.e. the Trial Court-decree, First Appellate Court, and the High Court.

[Padhiyar Prahladji Chenaji v. Maniben Jagmalbhai, 2022 SCC OnLine SC 258, decided on 03.03.2022]


*Judgment by: Justice MR Shah


Counsels

For Original Defendant: Senior Advocate Pallav Shishodia and Advocate Rishabh Sancheti

For Original Plaintiff: Advocate Rauf Rahim

Uttarakhand High Court
Case BriefsHigh Courts

Uttaranchal High Court: Ravindra Maithani, J. dismissed an appeal that challenged an order given by the court of Civil Judge pertaining to cancellation of gift deed.

Appellant was aggrieved by that part of order by which an ad-interim injunction was not granted. He had purchased an agricultural property in the year 1989 and his father, Manmohan Thapar constructed a resort thereupon. In the year 2007, father insisted for construction of the resort, but the appellant was not in a position to undertake that task at that point of time. He insisted the appellant and his brother to transfer the shares in the property, in his favour to facilitate the requisite permission and licenses for construction of resort and the same were transferred on 13-04-2007.

In the year 2015, the appellant came to know about the marriage of Manmohan Thapar with the respondent, who was working as a Secretary with Manmohan Thapar. Respondent furnished herself as unmarried, though she was married and had a child. Manmohan Thapar expired on 26-07-2019 and the appellant came to know about his will dated 18-11-2006 in the year 2019. The property was mutated in the name of respondent on the basis of the gift deed dated 27-02-2013.

The suit was filed for the cancellation of the Gift deed as also for permanent injunction. The appellant also moved an application under Order 39 Rules 1& 2 of the Code. The Court below observed that there was no ground to grant ex-parte ad-interim-injunction and issued notice.

The appellant and his brother transferred their shares in the property to him in the year 2007. Therefore, it was argued that this will was not genuine.

When they came to know about the gift deed, the respondent mutated her name in the revenue records. It was the case that mutation was done on the basis of gift deed which was allegedly executed sometimes in the year 2013. The respondent was recorded tenure holder.

Without making any further observation with regard to merits of the case, the Court was of the view that the Court had not committed any error in denying to issue ex-parte temporary injunction to the appellant. The appeal was dismissed.[Samir Thapar v. Tiny Kesag Ligtsang Thapar, 2022 SCC OnLine Utt 68, decided on 11-02-2022]


Mr U. K. Uniyal, Senior Advocate, assisted by Mr Rajesh Sharma, Advocate for the appellant.

Mr V. S. Rathore, AGA for the State


Suchita Shukla, Editorial Assistant has reported this brief.

Kerala High Court
Case BriefsHigh Courts

Kerala High Court: In an interesting case the Division Bench of A.Muhamed Mustaque and C.R. Sophy Thomas, JJ., held that not taking treatment for mental illness in order to bring out a peaceful and harmonious family atmosphere can also be counted as cruelty to the persons at the receiving end. Upholding the Family Court’s order granting divorce on the ground of cruelty, the Bench remarked,

“There is no merit in preserving intact a marriage, when the marital tie becomes injurious to the parties. When there is no rose, and only thorns left, and there is no scope for the plant to sprout again, there is no meaning in watering the same, knowing that it is dead forever.”

Factual Backdrop

In the instant case, the husband, who was an Engineer cum Yoga Trainer approached the Family Court to dissolve marriage under Section 10 of the Divorce Act, alleging cruelties, both mental and physical, and desertion, from the part of the wife, who was a Post Graduate. The husband was alleging that, from the very inception of marriage, the wife was showing behavioural disorders. She was intolerable even on minor domestic problems and she was abusive and assaultive in nature. She often threatened the husband that she would slice his throat and even strangulated him during sleep. Whenever he did not accede to her demand for unnatural sex, she threatened to slice away his penis. She often threatened him with suicide, and once she jumped out of a running car. She went out of the house during night hours without informing the husband, and there was occasion to bring her from street during midnight.

It was further the case of the husband that in spite of being taken to various psychologists and psychiatrists, his wife was not co-operating with the treatment. In July 2005, she went to her paternal house and never came back to live with her husband and children.

Findings of the Family Court

On analysing the facts and evidence, the Family Court found that the husband could establish the grounds of cruelty and desertion against the respondent-wife, and so, the O.P was decreed dissolving the marriage.

Challenging the said judgment and decree, the wife had come up in the instant appeal alleging that, by the impugned judgment, the husband was given an incentive for his own cruelty and desertion. The Family Court ought to have found that she had never intended to terminate her matrimonial life with the husband. In fact, she was prevented from entering her matrimonial home by an injunction suit filed by the mother-in-law.

Factual Analysis

Relying on the decision of the Supreme Court in Samar Ghosh v. Jaya Ghosh, (2007) 4 SCC 511, the Bench stated that in matrimonial life, cruelty can be defined in many ways; it has many perspectives which depend upon the socio-economic status and circumstances of parties to the marriage. With regard to the allegations made by the husband the Bench made following observations:

  • The appellant used to get irritated over minor domestic issues, and on one such occasion, since the husband could not heed to her request for purchasing a nighty from a shop, she bit off a portion of his shoulder muscle, and the bite mark was still there on his shoulder. His mother had to call the Police to manage that situation.
  • Statements of the doctors revealed that appellant was suffering from impulse control disorder which means, not able to control anger, and exhibiting anger in an excessive manner, which may adversely affect marital life. The persons suffering from impulse control disorder may be assaultive in nature and may throw things or may exhibit homicidal or suicidal tendency as stated by the doctor.
  • The doctor further stated that there is no complete cure for this illness, but it could be controlled under proper medication. However, even according to the appellant, after 2007 she had not continued the treatment.
  • The allegations of arrogance, and abusive and assaultive nature of the appellant, spoken to by her husband and children, get corroboration from medical report, and the testimony of Doctor.

One may suffer mental stress or strain due to very many reasons. But, not taking treatment for the same in order to bring out a peaceful and harmonious family atmosphere also may have to be counted as cruelty to the persons at the receiving end. The appellant has no case that, she had any difficulty to continue the treatment, but according to her, she had no psychiatric problem and so she discontinued the treatment.

Observations and Findings

In A: husband v. B: Wife, 2010 SCC OnLine Ker 4925, it had been held that law cannot recognise different varieties of cruelty as Hindu cruelty, Muslim cruelty, Christian cruelty or secular cruelty to justify a decree for divorce and matrimonial cruelty must have a uniform definition or conceptualisation to justify the founding of a decree for divorce. Further, under S.10(1)(x) of the Divorce Act, the cruelty must be such as to cause reasonable apprehension in the mind of the petitioner, spouse that it would be harmful or injurious for the petitioner to live with the respondent.

From the available facts and evidence, the respondent husband had amply proved that the appellant had treated him with such cruelty as to cause reasonable apprehension in his mind that it would be harmful or injurious to him to live with the appellant and that his children were also anxious to save the life of their father as the children deposed that if the appellant and respondent were again put together, they will lose their father. Further, from the evidence on record following circumstances were proved against the appellant wife:

  • The appellant herself admitted that she had left her matrimonial home in July 2005. She had no case that before her mother-in-law filed injunction suit against her, she preferred any complaints or petitions before any authority seeking restitution of conjugal rights or even for getting custody of her minor girl children.
  • She had no case that, when she left her matrimonial home, she was prevented from taking her children with her. So, of obviously, she left her matrimonial home even without caring her little girl children.
  • The children would say that, even when she was informed about their biological maturity, she did not care to see them. In the year 2005, the respondent was hospitalised due to heart attack and then also, the appellant did not turn up.
  • In 2009, when the appellant and her parents tried to make a forcible entry in the house, the mother-in-law filed a civil suit and obtained injunction. Though, the injunction was later vacated and subsequently the mother-in-law not pressed that suit, only after the civil suit, the appellant filed complaint under the Domestic Violence Act for getting residence order in the shared household.

Conclusion

Hence, considering the fact that the parties lived separately for the last more than 16 years, the Bench held that their marriage was to be treated as a deadwood which had no signs of life. In the result, the appeal was dismissed and the impugned judgment and decree were upheld. [Mary Margret v. Jos P Thomas, Mat. Appeal No.1119 of 2015, decided on 21-01-2022]


Kamini Sharma, Editorial Assistant has reported this brief.


Appearance by:

Advocates for the Appellant: P.George William, Achu Subha Abraham, Philip T.Varghese and Thomas T.Varghese

Advocates for the Respondent: V.V.Asokan (Senior.), V.M.Kurian, Mathew B. Kurian, C.N.Sreekumar, K.T.Thomas and K.I.Mayankutty Mather

Case BriefsHigh Courts

Delhi High Court: Explaining the significance of a trademark, Asha Menon, J., observed that,

When people are satisfied with the products supplied by a manufacturer or service provider, they buy them on the basis of the trade mark and over time it becomes popular and well known. Thus, the use of a similar or identical trademark by a competitor in the same product would lead unwary customers to believe that it originates from the same source.

Present suit was filed to seek a perpetual and mandatory injunction restraining the defendants from infringement of plaintiff’s registered trademarks, passing off, unfair practices, etc.

In the instant matter, the plaintiff claimed to be a part of the “Baazi Group” and a leading and pioneering name in the Indian gaming industry. The said group has attained worldwide popularity and reputation.

Further, the plaintiff claimed that it had honestly and originally adopted “Baazi” as its trademark, registering several variations between 2014 and 2020 which were still valid, and had become the trading identity, corporate name and domain names of the “Baazi Group”.

Plaintiff even filed the registration certificates.

Senior Counsel, Chander M. Lall submitted that being the registered proprietor of the trademarks, Baazi, Baazi Games, PokerBaazi, RummyBaazi, BalleBaazi, etc., the plaintiff had the exclusive right to use the said trademarks in relation to the goods and services it was providing.

Defendant 1 had dishonestly started using “Baazi” in respect of the services that they were providing and thus passing off their services as those of the plaintiff.

Further, it was argued that in view of the success of the plaintiff’s venture defendant 2 began his own business called “WinZo Games” in India. Hence, defendant 1 was the competitor of the plaintiff.

Further, it was contended that under Section 29(3) of the Trade Marks Act, 1999, in view of the identity of the registered trademark of the plaintiff and that copied by defendants, the Court had to presume that confusion would be caused to the public as also within the trade circle. Therefore, the Court had to restrain the defendants from using the word “Baazi” in respect of the services they were providing.

Analysis, Law and Discussion

High Court noted that the plaintiff was the registered proprietor of the trademarked word “BAAZI” under class 41, class 9 and the trademarked word “Baazi Games” under class 28 and other trademarks, both words, devices and domain names in the same classes of gaming services.

Further, not just the combined words such as “POKER BAAZI”, “RUMMY BAAZI”, “BALLE BAAZI” were registered in the name of the plaintiff, in fact the word “BAAZI” was also registered.

On the other hand, it was noted that the defendants did not claim that they too have registered trademarks in their names with the word “BAAZI”, in fact, they did not insist that they were not even using “BAAZI” in the trademark sense. Though, their argument was that righ to use trademarks under Section 28 would be available only if the trademarks were validly registered and which Baazi had not been since it was only a descriptive word.

The word “Baazi” may be used in Hindi/Urdu to mean a test of skill or strength in a game. It may indicate wagering or betting. As observed by Lord Simon , Lord Chancellor in Yorkshire Copperworks Limited , the more apt is a word to describe the goods of a manufacturer the less apt would it be to distinguish them, but surely “Baazi” is not a word apt to describe gaming or wagering services online or as a mobile App. Thus it is a clever and creative use of a common word by the plaintiff for its services. There is nothing on record to indicate that the word “Baazi” is commonly used in the industry. 

The Bench observed that prima facie the plaintiff had disclosed a case for protection of its rights as a registered proprietor which is assured to it under Section 28 of the T.M. Act. Even under Section 29 of the T.M. Act, the plaintiff disclosed a case.

The Court elaborated stating that, even the conjunctive use of “Baazi” with “WinZo” is similar to the use by the plaintiff of “Baazi” with “Poker”, “Rummy”, “Balle”, etc. The services provided are identical and therefore, in the light of such identity under Section 29(2)(c) read with Section 29(3) of the T.M. Act, the court will necessarily presume that confusion would arise in the mind of a player as to the origin of the services and accordingly, injunction would have to be issued.

Delay and Acquiescence

Bench referred to the Supreme Court’s decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90,

“5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”

High Court remarked that if the adoption of the word “Baazi” appeared to be dishonest and intended to take unfair advantage of the reputation of or the distinctive use of the word by the plaintiff, the delay would not come in the way.

Another significant point that was noted was that even after filing the present suit, the defendants copied the word “Team Baazi” from the website of the plaintiff.

Interest of the Consumers

Bench proceeded to make another significant observation that the interests of the consumers cannot be overlooked and would need to be protected, as it is for the benefit of consumers that a trademark is used by a manufacturer or service provider to distinguish his products from those of competitors, so that on the basis of the quality provided the purchaser may make an informed and considered selection of the products in the market.

In the instant case, the online players may be led into believing that “WinZo Baazi” was another service offered by the plaintiff, therefore in order to protect such unwary customers, it would be necessary to protect the plaintiff’s rights to its registered trademark.

Bench held that the defence of delay and acquiescence are defences in equity and in the present case, the defendants do not appear to be fair and honest in adopting “Baazi” along with their registered trademark “WinZo”.

The manner in which “Baazi” was written and projected, and used in a mobile App in 2021, and the adoption of “Team Baazi”, while the suit itself was pending, reinforced the plaintiff’s grievance that the defendants were trying to pass off their services as probably originating from the plaintiff.

Hence, the plaintiff disclosed a prima facie case for interim injunction for infringement of trademark as well as for passing off.

“…the continued use of the word “Baazi” by the defendant 1 would impact the reputation and goodwill of the plaintiff, which clearly cannot be compensated in terms of money.”

 Bench found no reason from the defendants for the adoption of the word “Baazi” except to claim that it is a descriptive word.

After all, the trademark of the defendants is WinZo. Where was the need to borrow the word used by the plaintiff along with its registered trademark, if it was not for benefitting from the goodwill of the plaintiff‟s trademark? There are several words that could have been used to describe the gaming services and App of the defendant instead of “Baazi” and which are indicative of gaming /wagering/competing.

User of a similar word by a competitor coupled with dishonest intention and bad faith would suffice to restrain such user and misuser, to do equitable justice to the plaintiff.

High Court allowed the application and restraining the defendants from using or attempting to use the plaintiff’s well-known brand and registered mark “Baazi”, “Baazi Games”, “PokerBaazi”, “BalleBaazi”, et al., or any other mark or trade indicia, which is confusingly similar to the Plaintiff‟s said trademarks, in any form or manner, whatsoever, including as Winzo Baazi / WinzoBaazi, in respect to any product and service for which the plaintiff has obtained registration including inter alia gaming services, which use amounts to infringement or passing off its products/ services as that of the plaintiff.

Lastly, the defendants were directed to remove/delete/omit or withdraw any and all references or use of the plaintiff’s well-known brand and registered mark “Baazi” in any form which amounts to a violation of the plaintiff’s intellectual property rights. [Moonshine Technology (P) Ltd. v. Tictok Skill Games (P) Ltd., 2022 SCC OnLine Del 296, decided on 31-1-2022]


Advocates before the Court:

For the plaintiff:

Mr. Chander M. Lall, Senior Advocate with Ms. Ananya Chug, Mr. Subhash Bhutoria & Mr. Amit Panigrahi, Advocates

For the defendants:

Mr. Abhishek Malhotra, Ms. Shilpa Gamnani and Ms. Sanya Sehgal Advocates

Case BriefsHigh Courts

Rajasthan High Court: Anoop Kumar Dhand J. allowed the appeal and quashed the impugned order dated 17-08-2021 passed by the Court of Additional District and Sessions Judge No. 9, Jaipur Metropolitan-II, Jaipur.

The facts of the case are such that the disputed property was purchased by the plaintiff from one Balram vide agreement and the possession of the same was handed over to the plaintiff by said Balram. On 15-06-1996, allotment letter was also transferred in favour of the plaintiff by the defendant. Thereafter, boundary wall was constructed around the disputed property. When the father of the plaintiff visited the site on 03-02-2006, then he found that certain Land Mafias had broken the locks of the plot by trespassing upon it. When he asked them about the right, title of the property in question, then they started quarrelling with the father of the plaintiff. An FIR was also lodged in this regard and finally the instant suit has been filed for declaration, possession, damages, mandatory and permanent injunction with regard to the disputed property. Counsel for the petitioners submitted that after recording the evidence of both the sides on all the issues, the case was posted for final arguments and at that stage the learned court has no pecuniary jurisdiction to hear and decide the suit, hence, the suit is liable to be dismissed. It was further submitted that that 13 years have passed after filing of the suit and in case the impugned order is allowed to stand as it is then the plaintiff would be seriously prejudiced. Hence, the impugned order be quashed and set aside.

Counsel for the respondents submitted that the court has ample jurisdiction under Order 14 Rule 5 to frame any additional issue at any stage before disposal of the suit. So, rejection of the appeal was prayed. It was further submitted that from bare perusal of the contents of the plaint it was clear that the court has no pecuniary jurisdiction to hear and decide the suit. Hence, the court has rightly passed the impugned order. It was also submitted that the objection regarding the pecuniary jurisdiction can be taken at any stage even before the pronouncement of the judgment.

The Court stated “no such objection was taken by the defendants at the earliest stage or not during the course of trial when it reached to its final stage. Now at the stage of final disposal, the application has been submitted which has been accepted by the learned court below by overlooking the mandatory provisions contained under Section 21 of the Code of Civil Procedure.”

The Court observed that the suit was filed in the year 2008 and on bare perusal of the plaint, it is clear that the valuation of the suit was mentioned and the plea was also taken therein that the court below is competent to hear and decide the controversy in question on the basis of the valuation determined in the plaint by the plaintiff. and it is settled position of law as per Section 21 of the Code of Civil Procedure that the objection with regard to pecuniary jurisdiction shall be taken at the first instance at the earliest possible opportunity.

The Court held “the impugned order is not sustainable in the eye of law and the same is liable to be quashed and set aside.”

[Meeta Agarwal v. Hathroigiri, S.B. Civil Miscellaneous Appeal No. 1566/2021, decided on 04-01-2022 ]


Arunima Bose, Editorial Assistant has reported this brief.


Appearances

For Appellant(s) : Mr. Behari Lal Agarwal and Mr. Akash Gupta

For Respondent(s) : Mr. Bajrang Lal Choudhary

Case BriefsHigh Courts

Madras High Court: G. Jayachandran, J., decided a matter with regard to infringing the registered trademark BHARATMATRIMONY.

Present suit was filed for injunction restraining the defendant, men and agent from infringing the plaintiff’s registered trademark BHARATMATRIMONY and its variant.

Plaintiff’s company was registered in using the internet as a platform for matrimonial alliance and have been in business since 2001.

Plaintiff enjoys tremendous goodwill throughout India and abroad. The internet business of the plaintiff started in the year 1997, having its domain name as www.bharatmatrimony.com. Plaintiff registered several other domain names based on language and religion to cater for the needs of the regional customer.

In order to protect the mark and exclusively enjoy the plaintiff registered the domain name www.bharatmatrimony.com

Further, it was stated that, in order to take advantage of the reputation and wide acceptance by the public, the defendant herein had adopted the identical mark of the plaintiff for its online business. The said adoption www.bharatmatrimony.org was with intention to ride its goodwill and reputation and was not honest, but with malafide intention to cause deception and confusion to the users in order to gain illicit benefit.

Adding to the above it was stated that when the plaintiff came to know this unauthorized use and wrongful exploitation the name used for the plaintiff’s trademark by the defendant, notice was served on the defendant to cease and deceit from adopting the mark which was identical that of the plaintiff’s trademark BHARATMATRIMONY.

Cause of filing the suit

Since the defendant failed to restrain itself from deceptively, illegally adopting the plaintiff’s trademark, the present suit was filed.

This Court had granted interim injunction being prima facie satisfied about the alleged copyright infringement by respondent/defendant.

High Court was satisfied that the user name BHARATMATRIMONY was being used by the plaintiff since 1997 and the domain name www.bharatmatrimony.com since 1999 had been dishonestly adopted by the defendant for its domain name, while its trade name is www.siliconinfo.com. On serving cease and deceit notice, the defendant did not respond to justify the adoption of the domain name.

Court expressed that defendant adopted the domain name www.bharatmatrimony.org which was squarely prohibited under Section 29 of the Trademark Act as infringement. Under Section 29(3), if the identical mark used for identical service, the Court shall presume the infringement.

Present matter is a case where the identical mark for identical service is adopted by the defendant and no justification came forward from the defendant, despite affording opportunity.

Therefore, the present suit was allowed in respect of the injunction relief against infringement.

Therefore the plaintiff was entitled to the following reliefs:

(a). A permanent injunction restraining the defendant, by themselves, their directors, partners, men, servants, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner infringing and/or enabling others to infringe plaintiff’s registered trademarks BHARATMATRIMONY and/or its variants by using the identical trademark BHARATMATRIMONY as part of the Domain name or in any other manner whatsoever;

(b). A permanent injunction restraining the defendant, by themselves, their directors, partners, men, servants, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on their behalf from in any manner diverting the plaintiff’s business to themselves by using Google’s search engine in which the plaintiff’s trademark BHARATMATRIONY and domain name BHARATMATRIONY. ORG and/or its variants, by using as domain name and/or as meta tags and thereby passing off the business and services of the defendant as that of the plaintiff or in any other manner whatsoever;

(c). A permanent injunction restraining the defendant, themselves, their partners, successors-in-business, servants, agents, representatives, assigns and all other persons claiming under them and through them from using or redirecting to the domain name www.bharatmatrimony.org or any other domain name that is identical and/or deceptively similar to that of the plaintiff’s domain name www.bharatmatrimony.com in any manner whatsoever;

(d). The defendant be directed to surrender to the plaintiff for destruction all compact discs, master copy, advertising materials, pamphlets, brochures, etc. which bears the plaintiff’s registered trademarks and/or any other variants which is phonetically and/or deceptively identical and/or similar to the plaintiff’s registered trademarks or in any other form whatsoever.

[Matrimony.com Ltd. v. Silicon Valley Infomedia (P) Ltd., 2021 SCC OnLine Mad 5463, decided on 6-10-2021]


Advocates who appeared in this case:

For Plaintiff: Mr Arun C. Mohan

For Defendant: No appearance

Case BriefsHigh Courts

“Principles laid down for Courts to deal with injunction applications, in a pending suit, seeking relief against passing off”

 Karnataka High Court:  A  Division bench of Aravind Kumar and Pradeep Kumar Yerur dismissed the appeal and affirmed the order dated 22-06-2021 passed in O.S.No.177/2021 by LXXXIV Additional City Civil and Sessions Judge (CCH-85) (Commercial Court), Bengaluru.

 The facts of the case are such that the plaintiffs i.e. ITC Limited launched itself into the manufacturing and sales of ‘instant noodles’ in September 2010, under the brand name, ‘Sunfeast YiPPee!’ having different variant of noodles, including ‘Magic Masala’, ‘Mood Masala’, ’Classic Masala’, to name a few. The Plaintiff claimed protection from alleged misrepresentation and copyright infringement in respect of the ‘overall visual appearance’ (wrapper) of ‘Magic Masala’ variant of Sunfeast Yippee noodles by the defendants i.e. CG (India) Private Limited who manufactures and sells in the instant noodles market under the brand name ‘WAI WAI’ and the product under challenge is one of its white-noodles product, ‘WAI WAI Xpress Noodles Majedar Masala”. Plaintiff claims that the action of the defendant has caused damage to its goodwill and reputation in the market and as such defendant has to be restrained from using same and thus the plaintiff has sued defendant and it bases its cause of action in passing off and copyright infringement.

Counsel for the appellant- plaintiff Mr. K.G Raghavan submitted that that extent of similarity is sufficient to ‘deceive’ that class of persons who are likely to buy plaintiff’s goods. It was further submitted that the court below has fallen into error on a matter of principle in so far as it has laid emphasis on the ‘dissimilarities’ between the competing wrappers, instead of estimating the effect of the similarities.

Counsel for the respondent- defendant Mr. Dhyan Chinappa submitted that on an overall consideration of the competing wrappers, after ignoring the descriptive marks and marks common to trade, it is the ‘brand names’ that is really distinctive of the plaintiff and since the brand names are completely dissimilar; there is no likelihood of confusion. If the plaintiff’s case is that the colour scheme has been copied to the extent that it may lead to confusion, the plaintiff will have to show that the ‘orange-red’ colour scheme has acquired such a high level of distinctiveness in the market, that the ordinary purchaser would ignore all other features and rely solely on the colour scheme to identify the products of the plaintiff.

Concept of “passing off”

One of the cause of action upon which the plaintiff relied was passing-off and to establish an arguable case in passing-off action, the plaintiff must show a misrepresentation express or implied that the defendants wrapper is connected with or may be associated with the plaintiffs’ business and that as a consequence damage is likely to result to the plaintiffs.  In passing-off, following points are under consideration:

  1. Distinctiveness of the plaintiffs mark
  2. Deceptive Similarity

 The entire basis of an action for the tort of passing-off lies in the making of a misrepresentation by the defendant which is calculated to cause damage to the business or goodwill of the claimant. The design that a typical form of misrepresentation generally takes is for the defendant to adopt that feature of the plaintiff’s mark which the ordinary purchaser is most likely to associate or use to identify the goods as that of a plaintiff.

Concept of “distinctiveness”

Professor Wadlow claims that term ‘distinctive’ has a meaning of its own, in the legal sense, which does not coincide with the ordinary use of the term in common parlance. In its legal sense, a name, mark or get-up can be said to be distinctive ‘if it denotes the goods of the claimant to the exclusion of all others’. What plaintiff claims to be distinctive may be ‘distinctive in fact’ but the plaintiff cannot have the final say on what is distinctive in law. The concept of ‘distinctiveness’, can be concluded as the features relevant for our analysis, does not include all features (that is, overall get up) as claimed by the plaintiff, but it is those distinguishing features which perform the function of a trade mark – the function of a trade mark being that of ‘source identification’.

The Court observed that even a bare look at the wrapper of the Magic Masala brand would indicate that ‘Yippee’ written in yellow color and relatively, the largest font (in both 12 Rs packs and 48 Rs pack) stands out in contrast to the ‘Sunfeast’ logo which is written in red font against a red background; and with respect to Magic Masala, which is written in dark blue color in a much smaller font size against an orange background. ‘Yellow’ being a light as well as bright colour , coupled with the fact that Yippee bears a stylised script and large font, appears to strike itself to the sensory organs quite easily purely on first impression as well.

The Court further observed that the features which can be said to be ‘distinctive’ in law in the sense that the relevant public would rely on such features to associate the goods as that of the plaintiff or to identify the goods as that of plaintiff or to distinguish the goods of the plaintiff from others would be, essentially, the brand ‘Sunfeast Yippee’ and to a lesser extent, the sub-brand which indicates the various flavours – in this case, ‘Magic Masala’.

The Court thus observed that the misrepresentation must be believed by those to whom it is communicated [through word marks, visual marks, labels or the entire get up as a whole], and such persons must be likely to act in reliance of the supposed misrepresentation. As noted, persons are likely to act in reliance of those features of a plaintiffs product which is said to be ‘distinctive’ of it in the legal sense. Hence the question of distinctiveness and that of misrepresentation are not independent of each other but are strongly interdependent and are always capable of interacting with each other.

Examination of ‘deceptive resemblance’ vis a vis present case

The test to determine ‘deceptive resemblance’ is essentially decided by asking two questions:

  1. Person / Hypothetical purchaser
  2. ‘Rules of Comparison’

 It was observed that in general it would not be an easy task for a plaintiff to establish a case of passing off by “get up” alone, especially at the interlocutory stage, unless the resemblance between the goods is so close that it can hardly have occurred except by deliberate imitation.

The Court observed that on careful analysis of the marks, logos, pictures and how the products are listed on digital platforms and physical stores it is clear that from the perception of the hypothetical purchaser, even after making allowance for imperfect recollection, the point of reference for purchasing the plaintiff’s goods is primarily the brand – Sunfeast Yippee, or the mark – Yippee or the phrase ‘Yippee Magic Masala’. “We find it rather unconceivable, at this stage (without any data or evidence in front of us) to conclude that the hypothetical purchaser would go and ask for ‘red-orange noodles’. Even if he does, it is very unlikely that a shopkeeper would straightaway handout the ‘Yippee Magic Masala’ brand of noodles since it has been show to us that there are other wrappers which may though not have, strictly speaking, an identical colour scheme but have similar colours on their wrappers.”

 Test of Copyright Infringement

 The Court observed that while deciding the question of copyright infringement it is not necessary that the defendants work must be an exact reproduction of the plaintiffs work. What is essential is to see whether there is a reproduction of the substantial part of the plaintiffs work. It was further stated that if the plaintiff cannot demonstrate that substantial features of the plaintiff’s get up has been reproduced in the defendant’s get up, then merely showing similarity or identity in other non-essential features will be of no consequence.

The Court further laid down principles for Courts to deal with injunction applications, in a pending suit, seeking relief against passing off. [Refer judgment]

The Court thus held “that order of learned trial Judge dismissing the applications filed by the plaintiff for grant of temporary injunction deserves to be affirmed.”

[ITC Limited v. CG Foods (India) Private Limited, 2021 SCC OnLine MP 1906, decided on 28-09-2021]

 


Arunima Bose, Editorial Assistant has reported this brief.


Appearances:

For Appellants: Mr. K G Raghavan , Dharmendra Chatur and Sanjanthi Sajan Poovayya and Co.

For Respondents: Mr. Dhyan Chinappa, Lomesh Kiran N, Mr. Abhinay V and Mr. Tejas

Case BriefsHigh Courts

Madras High Court: Asserting that “Deity” in the temple is a “minor” and the Court should be astute to protect the interests of an idol in any litigation, S.M. Subramaniam, J., held that,

When the trustee or the Executive Officer or the custodian of the idol, temple and its properties, leave the same in lurch, any person interested in respect of such temple or worshipping deity can certainly be clothed with an adhoc power of representation to the protect its interest.

Background

Petitioner submitted that land to an extent of 3227 sq. feet belonged to the 4th respondent temple and the superstructure originally belonged to the father of the petitioner.

Further, it was stated that by a registered sale deed, petitioner’s father had sold the superstructure along with the Lease Hold Rights to his brother. After the death of the father of the petitioner, his brother Mr D. Kumarasamy executed the settlement deed in favour of the petitioner.

Pursuant to the said settlement deed, the petitioner was a permissible tenant and was in continuous possession and enjoyment of the property till date by letting out to tenants. Further, the petitioner claimed that he paid the admitted rent regularly. He requested the 4th respondent for name transfer as he had done some minor repairs to the property.

Adding to the above, it stated that the 4th respondent had been increasing the rent and the same was being paid by the petitioner.

Petitioner submitted that the 4th respondent had terminated the lease deed and thereafter, the suit was filed for injunction not to put up any illegal construction in the temple properties.

In view of the above circumstances, the competent authorities initiated action under Section 78 of the Tamil Nadu Hindu Religious and Charitable Endowments Act, 1959 and passed the eviction order. An eviction order had been communicated to the petitioner and thereafter an appeal was filed.

In an earlier order, this Court had directed the petitioner to deposit a sum of Rs 10,00,000 before the third respondent temple and the petitioner paid the said amount and thereafter, Court directed respondent 1 to dispose of the appeal.

What is the Grievance of the petitioner?

Petitioner stated that during the pendency of the appeal, respondent was initiating the steps to evict the petitioner as respondent 1 had not granted any interim stay of the eviction order.

Due to the above-stated facts, instant petitioner was moved.

Analysis, Law and Decision

Petitioner claimed to be the authorized leaseholder of the subject temple, though he could not produce any lease deed or documents to establish that his father was a leaseholder recognized by the Temple Authorities.

Bench noted that no one was holding a valid lease document properly executed by the Temple Authorities.

Court opined that the manner in which the temple properties were dealt with by the petitioner, sixth respondent and father of the petitioner were absolutely in violation of the provisions of the Act, and they were not only encroachers and illegal occupants, but utilized the property of the temple in an unlawful manner for their personal and unjust gains.

Bench was shocked to note the above and stated that though the Authorities initiated action, this Court had to record that such actions initiated were not only insufficient but raised a doubt about the active or passive collusion on the part of Competent Authorities of the temple.

Section 34 of the Act enumerates ‘alienation of immovable Trust property’. Sub section (1) of Section 34 stipulates that “Any exchange, sale or mortgage and any lease for a term exceeding five years of any immovable property, belonging to, or given or endowed for the purpose of, any religious institution shall be null and void unless it is sanctioned by the Commissioner as being necessary or beneficial to the institution”.

Court observed that, the temple property, which is meant for the benefit of the temple, can never be allowed to be encumbered in a different manner and in such circumstances, the Courts are bound to step in and deal with the issues properly

Significant, the Bench observed that where the persons in management of a temple failed to protect the interest of the temple diligently, the Court is empowered to take notice of such facts and deal with the issues in an appropriate manner.

If there are lapses, slackness or negligence on the part of the Executive Officer and the trustees of the temple, “it is the duty of the Court to ensure that the ‘Deity’ does not suffer thereby. The Courts should be astute to protect the interests of an idol in any litigation.”

Continuing to make some very interesting observations, Court added that the temple properties are allowed to be looted by few greedy men and by few professional criminals and land grabbers.

Lapses, negligence, dereliction of duty on the part of public officials are also to be viewed seriously and all appropriate actions in this regard are highly warranted.

High Court also noted that there are many instances where persons entrusted with the duty of managing and safeguarding the properties of temples deities and Devaswom Boards have usurped and misappropriated such properties by setting up false claims ownership or tenancy, or adverse possession.

The above is only possible with the passive or active collusion of the authorities concerned.

Such acts of ‘fences eating the crops’ should be dealt with sternly.

In the present matter, Court stated that the petitioner was not only an encroacher but abused the property of the temple for his personal gains. He has been enjoying the temple properties in an illegal manner, but derived profit from the temple properties and the profit gained was running to several lakhs.

In view of the above said, Bench expressed that,

High Court has its constitutional obligation in such circumstances to step-in and protect the interest of the minor idol and issue appropriate orders.

Directions of the Court:

  • Respondents 1 to 5 are directed to complete the eviction in all aspects and take over possession of the temple properties and deal with the same in accordance with the provisions of the Act and more specifically for the benefit of the temple administration;
  • Respondents 1 to 5 are directed to conduct an enquiry and assess the financial loss occurred to the subject temple and initiate all appropriate actions against all the persons concerned for the recovery of the financial loss caused to the temple;
  • Respondents 1 to 5 are directed to look into the active or passive collusion on the part of the Authorities in dealing with the temple properties in such a manner and initiate appropriate action against all those Authorities, who have contributed for the maladministration of the temple properties

[K. Senthilkumar v. Government of Tamil Nadu, WP No. 18190 of 2021, decided on 15-09-2021]


Advocates before the Court:

For Petitioner:G. Devi, For Mr V. Raghupathi

For Respondents: Mr N.R.R. Arun Natarajan, Government Advocate,  [For R1 to R4]

Mr Willson Topaz, For M/s A.S. Kailasam and Associates

Government Advocate [For R5]

Case BriefsSupreme Court

Supreme Court: The bench of L. Nageswara Rao and BR Gavai, JJ has, in two judgments, has held that where the plaintiff’s title is not in dispute or under a cloud, a suit for injunction could be decided with reference to the finding on possession.

“… if the matter involves complicated questions of fact and law relating to title, the court will relegate the parties to the remedy by way of comprehensive suit for declaration of title, instead of deciding the issue in a suit for mere injunction.”

While where there are necessary pleadings regarding title and appropriate issue relating to title on which parties lead evidence, if the matter involved is simple and straightforward, the court may decide upon the issue regarding title, even in a suit for injunction; such cases are the exception to the normal rule that question of title will not be decided in suits for injunction.

Below are two important rulings on the issue suits for prohibitory injunction relating to immovable property

Anathula Sudhakar v. P. Buchi Reddy, (2008) 4 SCC 594

(a) Where a cloud is raised over the plaintiff’s title and he does not have possession, a suit for declaration and possession, with or without a consequential injunction, is the remedy. Where the plaintiff’s title is not in dispute or under a cloud, but he is out of possession, he has to sue for possession with a consequential injunction. Where there is merely an interference with the plaintiff’s lawful possession or threat of dispossession, it is sufficient to sue for an injunction simpliciter.

(b) As a suit for injunction simpliciter is concerned only with possession, normally the issue of title will not be directly and substantially in issue. The prayer for injunction will be decided with reference to the   finding   on   possession.   But   in   cases where de jure possession has to be established on the basis of title to the property, as in the case of vacant sites, the issue of title may directly and substantially arise for consideration, as without a finding thereon, it will not be possible to decide the issue of possession.

(c) But a finding on title cannot be recorded in a suit for injunction, unless there are necessary pleadings and appropriate issue regarding title. Where the averments regarding title are absent in a plaint and where there is no issue relating to title, the court will not investigate or examine or render a finding on a question of title, in a suit for injunction. Even where there are necessary pleadings and issue, if the matter involves complicated questions of fact and law relating to title, the court will relegate the parties to the remedy by way of comprehensive suit for declaration of title, instead of deciding the issue in a suit for mere injunction.

(d) Where there are necessary pleadings regarding title, and appropriate issue relating to title on which parties lead evidence, if the matter involved is simple and straightforward, the court may decide upon the issue regarding title, even in a suit for injunction. But such cases, are the exception to the normal rule that question of title will not be decided in suits for injunction. But persons having clear title and possession suing for injunction, should not be driven to the costlier and more cumbersome remedy of a suit for declaration, merely because some meddler vexatiously or wrongfully makes a claim or tries to encroach upon his property. The court should use its discretion carefully to identify cases where it will enquire into title and cases where it will refer to the plaintiff to a more comprehensive declaratory suit, depending upon the facts of the case.

Jharkhand State Housing Board v. Didar Singh, (2019) 17 SCC 692

“11. It is well settled by catena of judgments of this Court   that   in   each   and   every   case   where   the defendant disputes the title of the plaintiff it is not necessary that in all those cases plaintiff has to seek the relief of declaration. A suit for mere injunction does not lie only when the defendant raises a genuine dispute with regard to title and when he raises a cloud over the title of the plaintiff, then necessarily in those circumstances, plaintiff cannot maintain a suit for bare injunction.”

[KAYALULLA PARAMBATH MOIDU  HAJI v. NAMBOODIYIL VINODAN, CIVIL APPEAL NOS. 5575­5576 OF 2021 and T.V. RAMAKRISHNA REDDY v. M. MALLAPPA, 2021 SCC OnLine SC 675, decided on 07.09.2021]


*Judgments by: Justice BR Gavai

Know Thy Judge| Justice B.R. Gavai

Appearance in first case:

For appellant/plaintiffs: Senior Advocate P.N. Ravindran

For Respondent/Defendant: Senior Advocate V. Chitambaresh

Appearance in second case:

For appellant/plaintiffs: Senior Advocate Ajit Bhasme

For BDA: Advocate S.K. Kulkarni

For respondent: Senior Advocate Basava Prabhu S. Patil

Case BriefsSupreme Court

Supreme Court: A 3-Judge Bench of N.V. Ramana, CJI and A.S. Bopanna and Hrishikesh Roy, JJ. upheld the judgment of the Madras High Court passed in a second appeal whereby it had reversed the order of the first appellate court granting injunction in favour of the appellant−plaintiff in a property dispute. Rejecting the contentions of the appellant regarding propriety of High Court’s exercise of jurisdiction in second appeal under Section 100 CPC, the Supreme Court observed:

“[M]erely because the High Court refers to certain factual aspects in the case to raise and conclude on the question of law, the same does not mean that the factual aspect and evidence has been reappreciated.”

The Supreme Court was deciding an appeal filed against the judgment of the Madras High Court passed in the second appeal preferred by the respondent−defendant. The plaintiff had filed an original suit seeking perpetual injunction to restrain the defendant from interfering with his peaceful possession and enjoyment of the suit property. The plaintiff claimed that he had been enjoying the suit property for a period of forty years by paying kist. The defendant disputed the right claimed over the suit property by the plaintiff.

The trial court dismissed the suit. The plaintiff preferred a regular first appeal under Section 96 CPC before the first appellant court. Placing much reliance on the kist receipts produced by him, the first appellate court concluded that the plaintiff was in possession of the suit property. Thereafter, the defendant filed a second appeal under Section 100 CPC before the High Court. The High Court framed a substantial question of law, as to whether the suit without the prayer for declaration is maintainable when especially the title of the plaintiff is disputed. Having taken note of rival contentions, the High Court concluded that the substantial question of law had substance, and therefore set aside the judgment of the first appellate court. Aggrieved, the plaintiff approached the Supreme Court.

The appellant contended that the parameter for interference by the High Court in the second appeal under Section 100 CPC is well established and the High Court cannot travel beyond the same and advert to reappreciate the evidence on factual aspects. It was contended that when the first appellate court, which was the last court for appreciated of facts, had recorded its finding, the same could not be interfered by the High Court on reappreciation of evidence.

Summarising the legal position on the subject, the Supreme Court reasserted the position that in a second appeal under Section 100 CPC there is very limited scope for reappreciating the evidence or interfering with findings of fact rendered by trial court or the first appellate court, and therefore it was necessary to see whether the High Court in the instant case breached the settled principle.

The Supreme Court noted that the findings by the trial court and the first appellate court were divergent. The trial court concluded that the kist receipts would not establish plaintiff’s possession, whereas the first appellate court in fact placed heavy reliance solely on the kist receipts. The Court observed:

“When such divergent findings on fact were available before the High Court in an appeal under Section 100 CPC though reappreciation of the evidence was not permissible, except when it is perverse, but it was certainly open for the High Court to take note of the case pleaded, evidence tendered, as also the findings recorded by the two courts which was at variance with each other and one of the views taken by the courts below was required to be approved.”

The Court said that question of law for consideration will not arise in abstract but in all cases will emerge from the facts peculiar to that case and there cannot be a strait jacket formula.

Even otherwise, the Supreme Court found that the plaintiff’s possession of the suit property was not established. Further, the Court was of the view that the first appellate court misdirected itself and proceeded at a tangent by placing burden on the defendant.

In such view of the matter, the Supreme Court held that it would not be appropriate to interfere with the judgment of the High Court which was in consonance with the fact situation in the case. The appeal was dismissed. [Balasubramanian v. M. Arockiasamy, 2021 SCC OnLine SC 655, decided on 2-9-2021]


Tejaswi Pandit, Senior Editorial Assistant has reported this brief.