Gujarat High Court
Trupti Grover vs R G Mir Sanandwala Education Charitable ... on 25 October, 2021
Author: Vaibhavi D. Nanavati
Bench: Vaibhavi D. Nanavati
C/AO/143/2020 ORDER DATED: 25/10/2021
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 143 of 2020
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2020
In
R/APPEAL FROM ORDER NO. 143 of 2020
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TRUPTI GROVER
Versus
R G MIR SANANDWALA EDUCATION CHARITABLE TRUST
THROUGH BILKIS M MIR
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Appearance:
KAMAL J UPADHYAYA(7469) for the Appellant(s) No. 1
MR FB BRAHMBHATT(1016) for the Respondent(s) No. 1
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CORAM:HONOURABLE MS. JUSTICE VAIBHAVI D. NANAVATI
Date : 25/10/2021
ORAL ORDER
1. This Appeal from Order under Order 43 Rule 1 of the Civil Procedure Code, 1908 (for short 'the CPC') challenging the judgment and order dated 10.11.2020 passed below Exh.6/7 in Regular Civil Suit No. 653 of 2019 by the Additional District Judge, Court No. 28, City Civil Court, Ahmedabad.
2. The respondent herein is the original plaintiff, whereas, the appellant herein is the original defendant. The appellant - original defendant being aggrieved by the order passed by the Court below dated 10.11.2020 has filed the present Appeal from Order. The Court below allowed the application below Exh.6/7 (Notice of Motion) filed by the orig. plaintiff - respondent herein, seeking ad-
Page 1 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022C/AO/143/2020 ORDER DATED: 25/10/2021 interim injunction against the appellant - original defendant, their agents, servants, dealers, distributors from using, acquiring, providing and / or offering services qua business to others, advertising, marketing and / or exposing his services with identical and deceptively similar name "ANANT" and its logo and committing the act of passing off the brand name "ANANT" with its logo of the plaintiff.
3. The Court below passed the order on 10.11.2020 in Regular Civil Suit No. 653 of 2019 below Exh.6/7. The operative para reads thus:
"1). Present application preferred by the plaintiff seeking ad interim injunction against defendant is allowed.
2). The defendant, their agents, servants, dealers, distributors are hereby restrained from using, acquiring, providing and / or offering services qua business to others, advertising, marketing and / or exposing his services with identical and similar name "ANANT" with it's logo till the final disposal of the Suit.
3). No order as to costs."
4. The brief facts leading to the filing of the present Appeal from Order are summarized thus:
4.1. The respondent - original plaintiff filed the Trade Mark Civil Suit No. 653 of 2019 seeking the following reliefs:
"(A) To pass an order of Permanent Injunction restraining the defendant their agents, servants, Page 2 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 dealers, distributors from using, acquiring, providing and/or Offering services qua business to others, advertising, Marketing and/or exposing his services with Identical and Deceptively similar Name 'ANANT' and its Logo and by that way committing the act of Passing Off of the Brand Name 'ANANT' with its Logo of the Plaintiff.
(B) To pass an order for Damages of and Account of Profit to goodwill of the Plaintiff by the act of Passing off by the defendant by using the identical and deceptively similar name as of the Brand Name 'ANANT' with its Logo of the Plaintiff as calculated and decided by Hon'ble Court.
(C) To grant any other relief deem fit and just looking to the facts and circumstances of the case.
(D) To award cost in favor of the Plaintiff."
4.2. Pending the Civil Suit, the respondent- original plaintiff filed an application for interim injunction below Exh.6/7 under Order-39 of the CPC, seeking the following reliefs:
"(A) To pass an order of Ad-Interim Injunction restraining the defendant their agents, servants, dealers, distributors from using, acquiring, providing and/or Offering services qua business to others, advertising, Marketing and/or exposing his services with Identical and Deceptively similar Name 'ANANT' and its Logo and by that way committing the act of Passing Off of the Brand Name 'ANANT' with its Logo of the Plaintiff.
(B) To grant any other relief deem fit and just looking to the facts and circumstances of the case.
(C) To award cost in favor of the Plaintiff."
4.3. The respondent- orig. plaintiff is a trust registered under Page 3 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 the Trust Act vide registration No. E/22209/Ahmedabad carrying-on its activity in the field of education under the name 'ANANT PRE & PRIMARY SCHOOL WITH MONTESSORI METHOD' and doing the activity of providing services of education, providing training, entertainment, sporting and cultural activities by using the brand name 'ANANT' with its Artistic Logo at the address as mentioned in the cause-title of the plaint.
4.4. The respondent - orig. plaintiff adopted the mark 'ANANT' and its logo in 2018, more particularly, on 03.04.2018 and has earned valuable reputation towards the goodwill of the said name. The respondent herein applied before the District Panchayat Educational Committee for the permission on 02.05.2018 and the permission came to be granted on 03.07.2018 for the prescribed name 'ANANT'. The respondent- orig. plaintiff started using the name 'ANANT' and its Logo from 03.04.2018, prior to applying the permission for the school, by purchasing the stationery, viz. letter- pad, inquiry form, mark-sheet, noddy form sheet with stand, etc. and other materials as required for the school. The respondent- orig. plaintiff putting hard labour to establish the reputation of his trade / name (mark) 'ANANT' in the filed of above-referred services.
4.5. The respondent- orig. plaintiff approached for the Trade Mark Registry for registration of his Trade-Mark, the appellant- defendant had also applied for the same logo and name 'ANANT' by registration No. 3822450 in Clause-41, where, the appellant-orig. defendant had mentioned the user as 'PROPOSED TO BE USED'.
Page 4 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022C/AO/143/2020 ORDER DATED: 25/10/2021 The respondent-plaintiff immediately filed the Rectification
Application No. 266071 on 08.04.2019 and further issued cease and deist notice through his advocate and cautioned the appellant- defendant to stop the unauthorized and illegal use on 04.05.2019.
4.6. The appellant- orig. defendant is also carrying on the activity in the filed of education by running the classes of UPSC, GPSC, UGC NET exams with the name of 'ARIHANT'. The appellant-defendant has filed the Trade Mark Suit No. 5 of 2019 for the name of ARIHANT against the Principle for 'Passing Off' before the Ahmedabad District Court (Rural) seeking injunction against the use of 'ARIHANT'.
4.7. The respondent-plaintiff apprehended that the appellant- defendant may misuse the trademark and may commit the Passing Off action and that there was all possibility and likelihood that the appellant-defendant may knowingly and deliberately, knowledgeably and intentionally misuse and sell the franchisee to provide the educational services with the identical and deceptive similar mark 'ANANT' and Logo of the plaintiff. The respondent - orig. plaintiff approached the court below seeking injunction to stop the unauthorized and illegal use and act of Passing Off of the defendant-appellant.
SUBMISSIONS ON BEHALF OF THE APPELLANT - ORIG. RESPONDENT:
5.1. Mr. Kamal Upadhyaya, the learned counsel appearing for the appellant - orig. defendant vehemently submitted that the Page 5 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 appellant herein is the prior user of the trademark 'ANANT' in question and adopted the same since 02.01.2018. The appellant has purchased the trademark/ logo from one M/s. Insist Management for IT, who created the said logo for the appellant, upon the request made by the appellant. The said logo has legally purchased by the appellant from the creator.
5.2. Mr. Upadhyaya, the learned counsel would submit that the appellant being a prior adopter of the trademark and to secure the vested rights in the trademark 'ANANT', the appellant has also filed Civil Suit being Civil Suit No. 711 of 2019 before the City Civil Court at Ahmedabad against Ms. Suhana M. Mir, who is the principal of the plaintiff's school as well as against Mrs. Bilkis M. Mir, who is the one of the trustees of the plaintiff's trust, who applied for the trademark in question before the Trademark registry.
5.3. It was further submitted that the mark in question was applied for its registration through Ms. Suhana M. Mir, who is the real daughter of the one of the trustees of the plaintiff trust as well as principal of the plaintiff's school. The registration of the claimed mark has not been sought for by her, for and on behalf of the plaintiff trust. Ms. Suhana M. Mir was neither the trustee, at the relevant point of time, when she filed the application nor she was trustee in the plaintiff's trust. The trademark was assigned or permitted to be used by Ms. Suhana M. Mir and not the plaintiff Trust. The plaintiff Trust has suppressed the above-referred fact that the Trust does not possess the mark in question. He further submitted that Ms. Suhana M. Mir gave a declaration in the Page 6 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 application before the Trademark Registry on 08.12.2019, which was subsequent to the filing of the present suit and requested for change of name to the plaintiff Trust. It was submitted that in view of the above submissions, the order passed below Exh.6/7 allowing the application filed by the respondent - original plaintiff, in spite of the fact that the appellant -defendant is prior adopter and user of the trademark in question, has restrained the appellant - defendant from using and utilizing the trademark in question. In view of above, the order below Exh.6/7 restraining the appellant herein from using the trademark 'ANANT', till final disposal of the Civil Suit No. 653 of 2019 is erroneous and against the provisions of law and the same is required to be quashed and set aside.
SUBMISSIONS ON BEHALF OF THE RESPONDENT - ORIG. PLAINTIFF:
6.1. Mr. F.B. Brahmbhatt, the learned counsel appearing for the respondent- original plaintiff submitted that the respondent - original plaintiff is prior user of the brand-name 'ANANT' with its logo, as he has been using the same since 03.04.2018. The respondent-plaintiff is a registered trust vide registration no. E/22209/Ahmedabad, engaged and imparting education under the name and style of 'ANANT PRE & PRIMARY SCHOOL WITH MONTESSORI METHOD' alongwith providing services in training, entertainment, sporting and cultural activities by using the brand- name as 'ANANT' with its artistic logo.
6.2. Mr. F.B. Brahmbhatt, the learned counsel has relied on Page 7 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 the copies of the invoice of stationery dated 03.04.2018 issued in the name of 'Anant' School, copy of purchase receipts of Flex Boards and Pamphlets, T-Shirts, white and green board dated 27.04.2018 respectively, in the name of Anant School, a copy of invoice of purchase of mats dated 03.05.2018 and various fee receipts. He further submitted that the plaintiff trust by application dated 02.05.2018 sought for permission to run school in the name of 'Anant Pre-Primary School' from the District Panchayat Educational Committee and the said permission was granted to the plaintiff - respondent trust, by the competent authority on 03.07.2018. He further submitted that the respondent - original plaintiff has put in hard laboured to establish its reputation of it's trademark 'ANANT' in the field of educational services.
6.3. Mr. Brahmbhatt, the learned counsel submitted that the appellant herein - orig. defendant has fraudulently applied and copied the name and logo of plaintiff -respondent herein 'ANANT' in deceitful manner by trademark registration No. 3822450 on 03.05.2018 in Class-1, wherein, the appellant herein has mentioned the user as 'PROPOSED TO BE USED'. The respondent-original plaintiff then filed the rectification application vide no. 266071 on 08.04.2019 and also issued a notice for cease and desist on 04.05.2019 through its advocate and cautioned the appellant- orig. respondent to stop using its trademark and logo. He also submitted that the appellant - original defendant is running the classes for competitive exams with the name 'ARIHANT CAREER GROUP' and has also preferred the Civil Suit (Trademark) No. 5 of 2019 against Ms. Suhana Mir, claiming its trademark right over 'Arihant Career Group'. He submitted that the respondent - original plaintiff was Page 8 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 apprehending that the defendant -appellant may misuse it's trademark and commit passing off action by gaining undue profit, and hence, the respondent herein was constrained to approach the Court below seeking ad-interim injunction to prevent unauthorized and illegal use and act of passing off by the defendant - appellant herein. The respondent - orig. plainiff is prior user of the brand 'Anant' and had acquired goodwill and reputation among the students, teachers and public at large.
6.4. Mr. Brahmbhatt, the learned counsel lastly submitted that the Court below has rightly allowed the injunction application filed by the respondent herein - orig. plaintiff by restraining the appellant herein from using the mark 'Anant' with its logo, till final disposal of the Suit. He submitted that the present Appeal from Order be rejected, since no error much less any error of law has been committed by the Court below in allowing the application below Exh.6/7.
7. Heard Mr. Kamal J. Upadhyaya, the learned counsel appearing for the appellant - orig. defendant and Mr. F.B. Brahmbhatt, the learned counsel appearing for the respondent - orig. plaintiff.
ANALYSIS:
8. The court below while allowing the application below Exh.6/7, considered the submissions made by both the sides, which is reproduced thus:
Page 9 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022C/AO/143/2020 ORDER DATED: 25/10/2021 "25. It cannot be said that by merely getting a logo of Anant School created by a copyright designer on 02.01.2018, prima facie establishes a prior use. It is pertinent to note that law in this respect uses the words, "prior use". Here, the word "use" holds significance however, the defendant has himself in his trade mark registration form mentioned "proposed to be used" and he has also not placed any document on record to show that he is already carrying activities in the name of Anant School. It rather appears from submissions of defendant that she had been carrying educational activities since the year 2011 in Punjab and from the year 2017, in Ahmedabad in the name of "Arihant", as averred by herself in Civil Suit (Trademark) No. 5 of 2019.
26. In the backdrop of the facts and circumstances coupled with settled legal position and also on weighing the documents produced by both the parties, at this stage, it appears that both the marks i.e. ANANT PRE & PRIMARY WITH MONTESSORI METHOD and ANANT SCHOOL have similar resemblance with an identical logo identical to each other which may cause confusion to the service seekers. The plaintiff which is an Education Charitable Trust has succeeded in establishing a prima facie case to contest in as much being a prior user of brand name, "Anant" with its logo."
9. The following undisputed facts emerge for consideration of this Court:
A. The appellant - orig. defendant started the educational activities in Punjab in the year 2011 in the name of 'ARIHANT' and started using the trademark, 'ANANT' with its logo since 02.01.2018. The appellant relied on the copyright transfer statement in the logo of Anant School dated 02.01.2018 issued by the designer M/s. Insist Management for IT. The appellant filed an application for registration of the said trademark on 03.05.2018 Page 10 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 being registration no. 3822450 and it is mentioned as 'PROPOSED TO BE USED' i.e. for future use. The appellant is carrying on the educational activities by conducting coaching classes in the name of 'ARIHANT'. The Trade Mark (Civil Suit) has also filed by the appellant against Ms. Suhana M. Mir for stopping the respondent from using the trade-name 'ARIHANT' and its logo.
B. The respondent - original plaintiff as referred earlier is using the trademark 'ANANT' with its logo since 03.04.2018 and on 27.04.2018 by producing the various documents to substantiate its use in the name and logo of 'Anant' School and the District Primary Educational Committee has also granted the permission to the orig. plaintiff school to start primary school in the name of 'ANANT' on 03.07.2018. The following documents are produced on record, which are taken into consideration of this Court:
(I) Invoices of stationery dated 03.04.2018 issued in the name of 'Anant' School.
(II) Copy of the purchase receipts of Flex Boards and Pamphlets, T-Shirts, white and green board dated 27.04.2018 in the name of 'Anant' School.
(III) Copy of invoice of purchase of mats dated 03.05.2018 and various fee receipts.
(IV) Application dated 02.05.2018 sought for permission to run school in the name of 'Anant Pre-Primary School' from the District Panchayat Educational Committee.
Page 11 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022C/AO/143/2020 ORDER DATED: 25/10/2021 C. In a suit for passing off action, what is primarily
required to be considered is the question as regards the prior use of the trademark. Section 27(1) of the Act provides that 'No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.' Section 27(2) of the Act provides that, 'Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.' D. The 'Passing Off' action prevents one person from misrepresenting other items or services. The action of passing off has undergone some changes in the duration of time. In the beginning, it was restrained to the representation of goods of one person to another. Later, it was elevated to business and non- trading activities. Therefore, it used to be additionally accelerated to professional and non-trading movements. Today, it is applied to many types of unfair trading and unfair competitors, where, the activity of one person cause damage to another person. The fundamental question on this tort turns upon the defendant's conduct is such as it would deceive or mislead the general public at large to confuse between the activities of the two. Further in a passing off claim, it is necessary to verify that the use of the trademark by the defendant is expected to cause injury or damage to the plaintiff's goodwill. The contention of the appellant - original defendant that the orig. plaintiff has suppressed facts from the Court pales into insignificant, when prima-facie case that the Page 12 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 orig. plaintiff is the prior user of trademark and logo of 'ANANT'.
F. The Hon'ble Supreme Court in the case of Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. reported in AIR 2002 SC 117, held thus:
"The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear of a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted. ...
Undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of 'Mahendra' or 'Mahendra & Mahendra' for the purpose of its trade and business."
G. The Hon'ble Supreme Court in the case of Dhariwal Industries Ltd. & Ors. v. M/s. M.S.S. Food Products, reported in AIR 2005 SC 1999, held thus:
"6. Section 27 of The Trade Marks Act, 1999 provides that nothing in that Act shall be deemed to Page 13 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 affect the right of action against any person for passing off goods or services as the goods of another person or as services by another person or the remedies in respect thereof. Therefore, the fact that neither party has a registered trade mark as on the date of the suit cannot stand in the way of entertaining the claim of the plaintiff and granting the plaintiff an injunction in case the plaintiff is in a position to show prima facie that it was the prior user of its mark, that it had a prima facie case and that the balance of convenience was in favour of the grant of an interim injunction. It is provided in Section 39 of the Act that an unregistered trade mark may be assigned or transmitted with or without goodwill of the business concerned. It is, therefore, possible for a plaintiff or a defendant to show that an unregistered trade mark that was being used by another person earlier had been assigned to it and that it can tack on the prior user of its predecessor."
"8. The principles governing the grant of interim injunction are well settled and do not require to be repeated. The interim injunction has been granted in favour of the plaintiff in this case mainly on the finding that there was prior user of the mark "Malikchand", if not by the plaintiff, by his assignors and the use of the mark "Manikchand" by the defendants in respect of Pan Masala and Gutakha and Supari commenced only at a later point of time. This prima facie finding of prior user was arrived at by the trial court relying on the deeds of assignments produced by the plaintiff and some documents and affidavits produced in support of its claim. Some inconsistencies in the claim of the defendants were also referred to. The High Court, in appeal, appreciated that the main contention on behalf of the defendants regarding prior user claimed by the plaintiff was based on a challenge to the assignments relied on by the plaintiff and the documents filed in support. The High Court noticed that the plea was that the entire series of documents were forged or manufactured for the purpose of litigation and hence were not reliable. The High Court felt that a wholesale condemnation of the documents produced by the Page 14 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022 C/AO/143/2020 ORDER DATED: 25/10/2021 plaintiff as forged or got up, could not be made at this interlocutory stage and this question seriously raised on behalf of the defendants has to be decided only at the trial. In other words, the High Court took the view that at this stage there was no reason for it to discard the various documents relied on by the plaintiff to establish prior user, first by its predecessors and then by itself, on the ground that they were not genuine."
10. In view of this Court, the appellant - orig. defendant is not using the trademark 'Anant' and its logo, whereas, the respondent - orig. plaintiff is using the same since 03.04.2018, and therefore, no irreparable injury could be said to occur to the appellant herein and the appellant is also continuing her business in the same field by the name 'Arihant'.
11. In view of above, the order passed by the Court below under Exh.6/7 dated 10.11.2020 is not required to be interfered with. Accordingly, the present Appeal from Order is dismissed. No order as to costs. Notice is discharged. As Appeal from Order is dismissed, connected Civil Application/s, if any, also stand/s dismissed.
(VAIBHAVI D. NANAVATI,J) Pradhyuman Page 15 of 15 Downloaded on : Mon Jan 17 02:38:41 IST 2022