Judgment
IN THE HIGH COURT OF KERAliA AT ERNAKULAM PRESENT THE HONOURABLE MR. JUSTICE P.S0IARAJEN TUESDAy, THE i4th DAy OF FEBRUARy 2o23 / 25TH mGHA, ig44 EAO NO. 63 OF 2ng AGAINST THE ORDER DATED 23.07.2021 IN IA 1/2021 IN OS 25/20210F 11 ADDITIONAL DISTRICT COURT, ERNAKULAM AP|ELliANTS/PETITIONERS/PliAINTIFFLS| Mr.ISMAIL DAFADAR, AGED 38 YEARS, S/o AJIT DEFADAR, TRADING AS ISRAIL DAFADAR BIRI WORKS, AJIT BIRI FACTORY & AAJIT BIRI FACTORY, VILL, P.O.DOMKAL, DIST. MURSHIDABAD, WEST BENGAL -742303.
A. VENKETTACHELliAM, AGED 67 YEARS, s/O ARUMUGAM CHETTIAR, TOBAcco MERCHANT, mRKET ROAD, ALUVA, ERNAKULAM, KERAljA -683101.
BY ADVS. O.A.NURIYA rmls BEEEN AZHAR ASSEES ENEND a. MENON RESPONDENT/RESPONDENT/DEFENDEN=Ei RAFIKUL ISLAM, AGED 50 YEARS, S/o KAJIMUDDIN MANDAI., KIRTANIYA PARA SAHEBRAMPUR JALANGI JALANI MURSHIDABAD, WEST BENGAL -742305.
BY ADVS. BASIL CHANDY VAVACHAN GEORGIE SIMON ABEY GEORGE THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR ADMISSION ON 14.02.2023, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:
FAO No.63 of 2021 euDenNT What actually constitute a ``trade mark" apart from a ``trade name" for the purpose of acquisition of reputation and a cause of action under the principle of ``passing off", whether it has got separate entity in relation to any such right, whether the expressions ``trade mark" and ``trade name" constitute the very same identification of any business or product for the abovesaid purpose or having different connotations are the questions came up for consideration, apart from the question relating to inclusion of a particular name of business in the trade mark and whether such inclusion would acquire the character of a ``trade name" as recognized under the law in force as against or over and above the trade mark.
2. Initially, an order of injunction was granted as against the defendant not to conduct his business by using the ``trade mark" of plaintiffs based on the claim of passing off . After hearing both the parties, it was vacated, against which the plaintiffs came up in appeal.
FAO No.63 of 2021 This Court based on the concession and submission made by the respective counsel remanded the matter to the trial court with a direction to adjudicate the issue after evidence. The Apex Court has set aside the abovesaid judgment for fresh consideration by this Court and remanded the matter back to this Court for fresh consideration of the appeal by this Court. Hence, the matter again came up.
3. The plaintiffs claim to be the manufacturers of Beedi (Biri) right from the year 2005 in the trade name ``AJIT BIRI" (AJIT BEEDI) and had applied for getting registration under Ext.A2 in the year 2010 and it was granted under Ext.A3 on 19.5.2014. The defendant in the year 2020 began to use the very same trade name ``AJITH BIRI" (AJITH BEEDI) for his product - Beedi as against the alleged reputation acquired by the plaintiffs under the abovesaid trade name for their product. What is supplied by the defendant is Beedi of inferior quality and that has af fected considerably the reputation acquired by the plaintiffs. It is supplied by the defendant under the trade name ``M. D. AJITH BIRI" (M. D.AJITH BEEDI). He had applied for getting
FAO No.63 of 2021 registration under Ext.A12 in the year 2020 and obtained registration under Ext.A13 dated 28/11/2020. It was submitted that in the application submitted by the plaintiffs for getting registration, a declaration was made by the plaintiffs in paragraph 3 of the application (Ext.A2) that they were doing the business of Beedi right from the year 2005. On the other hand, it is submitted that in the application submitted by the defendant for getting registration (Ext.A12), what is incorporated in paragraph 3 is to the effect that he is proposing to start a business. Based on the abovesaid entry, it was argued that the business of defendant was started only in the year 2020 as against the business of the plaintiffs which was started in the year 2005. It is also brought to the notice of this court that their business is going on profitably for the last several years.
4. The contention raised by the plaintiffs that they were doing business right from the year 2005 based on the alleged declaration made in paragraph 3 of Ext.A2 application can only be a self serving one, unless there is other evidence to show the conduct of business right from that year. But at the same time, the fact that the
FAO No.63 of 2021 application was submitted in the year 2010 would sufficiently show and satisfy that the alleged business commenced from the year 2010. The application submitted by the defendant is of the year 2020 and by that time, the plaintiffs have completed a period of ten years in their business. Further, the declaration made by the defendant that he is proposing to start a business in Ext.A12 application would stand binding on them as it is a declaration made by them for getting the registration of trade mark/trade name. Hence, there is some weight in the contention raised by the plaintiffs regarding the acquisition of right under the principle of passing of f prior to the commencement of the alleged business of the defendant. There is no dispute that both the products are Beedis .
5. But the passing off claimed by the plaintiffs is not based on any trade name though such a case was advanced. It is evident from the fact that in their application, Ext.A2 and the registration obtained under Ext.A3, what was sought to be registered is not any particular trade name, but a trade mark having its own specific nature and design with colour
FAO No.63 of 2021 pattern/combination. Admittedly, what they have applied for in the year 2010 in Ext.A2 and the registration obtained under Ext.A3 is to a particular trade mark, wherein the photograph of their grandfather is depicted within a circular (somewhat oval shaped) design surrounded by an yellow shaded background with the name on its bottom ``AJIT BIRI" (AJIT BEEDI) . It is true that a name ``AJIT BIRI" (AJIT BEEDI) is also inscribed within the trade mark with its specific design and colour coinbination after depicting the photograph of his grandfather within an oval shaped design surrounded by yellow shaded background. It is for that particular trade mark, they have applied for getting registration in the year 2010 under Ext.A2 and obtained registration under Ext.A3 certificate. Till that time, no claim was raised and no registration was sought pertaining to any particular trade name. The fact that a specific name was also inscribed in a particular trade mark, by itself , does not show that the said specific name has got a different entity from that of the trade mark, the design, the colour combination and pictures, if any, depicted therein. On the other hand, it should only be treated as
FAO No.63 of 202l part of the trade mark. It is true that in so far as acquisition of right by way of passing off and the cause of action thereof is concerned, there is no much relevance whether any registration was obtained for any particular trade mark or trade name, unless the cause of action is based on infringement of registered trade mark/trade name. In so far as the factun of registration of a particular trade mark/trade name is concerned, it may not have much relevance when the cause of action and the claim is based on passing off . But the subsequent registration itself is a relevant factor to be taken into consideration showing the nature of the business and the trade name or trade mark being used. The trade name was not registered with any specification till the date of Ext.A2 and A3 or subsequently. What is obtained under Exts.A2 and A3 is a trade mark with all its specifications and one among the specifications constitute a name ``AJIT BIRI'' inscribed on its bottom.
The declaration made in Ext.A2 that they were doing business of Beedi under that ``title" i.e. the ``trade mark" applied for would sufficiently show that the declaration is to the effect that they were doing the
FAO No.63 of 2021 business under the trade mark applied for and not based on any trade name. The declaration made in paragraph 3 of Ext.A2 would stand binding on the maker, the plaintiffs, and that would show what is actually applied and obtained i.e. the recognition to a particular ``trade mark" by all its specifications by way of registration.
Further, the declaration made therein amounts to an adinission made by the plaintiffs to the effect that they were conducting their business on the specification sought to be registered i.e. the trade mark being used.
Though the trade mark contains the name ``AJIT BIRI'', it is only a part of design and specification included in the trade mark. So the reputation, if any, obtained should be based on the abovesaid trade mark and when there is user of the same trade mark by somebody else or any mark resembling to the abovesaid trade mark, necessarily, an action would lie under the principle of passing off .
6. In the instant case, during the course of argument, two printed formats were handed over to me showing the respective trade mark used by the plaintiffs and the defendant, which are for the purpose of this
FAO No.63 of 202l appeal marked as Annexure-I i.e. the printed format of appellants/plaintiffs (the same was already marked as Ext.A1) and the respondent/defendant as Annexure 11. Both Annexure I and 11 are having material reselTfolances in almost all aspects. Both the printed trade marks contain photographs depicted within an oval design at the middle of the trade mark covered by a rectangular design with identical corner designs engrafted with more or less identical colour pattern. The combination of colour is also somewhat one and the same. On all four corners also, the very same resembling designs were incorporated. In fact, a mere perusal of Annexure I and 11 would sufficiently show that both are identical and reselholing each other without any material differences. Certainly, Annexure 11 trade mark cannot easily be detected or identified from that of Annexure I trade mark. This would sufficiently bring the matter within the scope of the principle of passing off . But at the same time, it is clear from Exts.A2 and A3 that it is not Annexure I trade mark which was used by the plaintiffs/appellants at the time when they have submitted Ext.A2 application for getting Ext.A3 registration. The trade mark designed and
FA0 No.63 of 2021 10 included therein is entirely different from Annexure I and 11 and that is well evident from a mere perusal.
Annexure I and Annexure 11 trade marks which are now being used by the respective parties have no resemblance or similarity with the trade mark sought to be registered in the year 2010 under Ext.A2 and the registration under Ext.A3. What is sought in that application is a trade mark with its specific design by depicting the photograph of his grandfather at the middle encircled in a design in an yellow background with the name at the bottom ``AJITH BIRI". Annexure I was not in the picture at any point of time till the submission of Ext.A2 application or till the date of obtaining Ext.A3 registration. In short, the trade mark incorporated in Exts.A2 and A3 has no resemblance whatsoever with the present trade mark being used by the plaintiffs as evident from Annexure I. It is an entirely different one having different colour pattern and different design and the photograph of his grandfather inscribed in an oval design within a very small portion as against the photograph depicted in Exts.
A2 and A3 application and registration. Different colour patterns were used with several designs in Annexure I
FAO No.63 of 202l 11 trade mark. In short, it is not the one even used by the plaintiffs as on the date of Exts.A2 or A3. If the plaintiffs were actually using Annexure I trade mark with its specification, design and colour pattern, there may not be any occasion for the plaintiffs to apply for registration for a different trade mark, which has no reselholance or similarity with that of Annexure I trade mark. It is not made clear when and at what time, the subsequent changes were made in the trade mark design to the form and format of Annexure I. Necessarily, the resemblance of Annexure I with Annexure 11 may not give rise to a right of action based on the principle of passing off , unless there is evidence to show that it is Annexure I trade mark which was being used right from the year 2005 or from 2010 onwards or any subsequent date onwards. In so far as the year 2005 to 2010 is concerned, Annexure I trade mark was not in the picture even at the time when an application was submitted for getting its registration and no specific case was advanced from which date onwards they began to use Annexure I trade mark, which is totally different from the trade mark, which was being used till the year 2010. Necessarily, there is no
FAO No.63 of 2021 prima facie case made out reputation under Annexure principle of ``passing off''.
consideration by evidence.
12 regarding the acquisition of I trade mark based on the The issue requires detailed While applying the principle of irreparable injury and balance of convenience, it is not fit to grant interim injunction, which would take away the right of defendant to proceed with his business under the name and style of ``M.D.AJITH BIRI" under the format of Annexure 11.
7. Yet another contention was also raised by the appellants/plaintiffs that their name was registered under the Copy Right Act. No document is produced in that behalf or let in evidence. It is not clear how the provisions under the Copy Right Act would come into play in the matter of registration of a trade name.
8. Necessarily, this Court has no other option, but to concur with the interim order of the trial court.
The matter requires elaborate consideration by the trial court after evidence. Till that time, no injunction can be granted at the risk of the opposite party. There will be a direction to the trial court to dispose of the suit within a time schedule of three months from the date of
FAO No.63 of 2021 13 appearance of the parties, for which the parties shall appear before the trial court on 03/03/2023.
The appeal will stand dismissed accordingly.
Sidl - p . sobflLEngEN JunGE DhAV- ANNExuRE-I : PRINTED FORMAT OF THE TRADE rinK OF THE AP PELLANT S / PLAI NT I FFS .
ANNEXURE 11 : PRINTED FORMAT OF THE TRADE MARK OF THE RE S PONDENT / DE FENDANT .
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FAO No.63 of 2021 APPELI.ANTS ' ANNEXURES Annexure A1 Annexure A2 thnexure A3 Annexure A4 Annexure A5 ANNEXURE A6 ENNEXURE A7 ENNEXURE A8 14 EPErolx oF FAo 63/2LQ2± TRUE COPY OF THE O.S. BEING NO.25 0F 2021 ALONG WITH CERTIFIED COPIES OF DOCUMENTS.
TRUE COPY OF THE I.A BEING 1 OF 2021 IN O.S.
NO.25 0F 2021.
CERTIFIED COPY OF THE COUNTER AFFIDAVIT ALONG WITH THE DOCUMENTS.
TRUE COPY 0F THE OBJECTION FILED BY THE APPELLANTS / PLAINT I FFS .
TRUE COPY OF THE ARGUMENT NOTES FILED BY ME BEFORE THE LEARNED DISTRICT JUDGE AT E RNAKUI.AM .
A TRUE COPY OF THE DETAII.S OF RESPONDENT'S REGISTRATION AVAIIjED FROM GST WEBSITE.
A TRUE COPY OF THE DETAILS AVAILED FROM THE GST PORTAI. WITH REGARD TO RESPONDENT'S GST REGISTRATION.
A CERTIFIED COPY OF THE INTERIM INJUNCTION ORDER DATED 17.04.2021 PASSED BY THE COURT BELOW.
/ / T;PJliE. CfJPX / / P.A. TO JUDGE