Delhi District Court
M/S R & R Bikes vs M/S Kaveri Industries on 24 September, 2012
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 1
TIS HAZARI COURTS, DELHI.
T. M. No.: 109/2011
Unique case ID no. 02401C0324812007
M/s R & R Bikes
C113 & D89
PhaseV, Focal Point
Ludhiana141010 (Punjab)
and also at
2703, Sadar Thana Road
Opp. Post Office
2nd Floor, Delhi110 006
Through Sh. Rajeev Jain
Partner
.....Plaintiff
Versus
M/s Kaveri Industries
Sewak Pura,
Kalsian Street no.4,
Gill Road, Miller Ganj,
Ludhiana141 003
....Defendant
Date of institution of the suit: 29.03.2007
Reserved for judgment on: 24.09.2012
Date of pronouncement of judgment: 24.09.2012
TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 1 of 16
2
SUIT FOR DECLARATION & PERMANENT INJUCTION
JUDGMENT:
1 The present suit has been instituted by the plaintiff for declaration and for permanent injunction against groundless threats for legal proceedings being issued by the defendant and damages. 2 The facts, as narrated in the plaint, are as under:
(i). The plaintiff, M/s R & R Bikes, is a registered partnership firm having partners Sh. Rajesh Jain, Sh. Sanjeev Jain and Sh. Rajeev Jain and having office at C113 & D89, PhaseV, Focal Point. Ludhiana141010 (Punjab) and also at 2703, Sadar Thana Road, Opp. Post Office, 2nd Floor, Delhi110006. The plaint has been filed by Sh. Sanjeev Jain, one of the partners of the plaintiff firm.
(ii). The plaintiff is engaged in manufacturing of Bicycle, parts, fittings and accessories thereof (including tyres and tubes). It is one the leading exporter of its goods to various countries including Ugnada.
(iii). The plaintiff firm adopted the trade mark BODA for the above mentioned goods on 01.04.2003. The plaintiff has extensively used the trade mark BODA on bicycles, bicycles part, fittings and accessories.
TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 2 of 16 3
(iv). The plaintiff has applied for registration of trade mark BODA in class 12 under the provisions of the Trade Marks Act, 1999. The applications are pending adjudication.
(v). The trade mark BODA was applied for registration in the Republic of Uganda by one M/s AVS CYCLES LTD having address of P.O. Box 29722 Kampala, Uganda. The application was filed in the international class 12 for the goods viz. pedals for cycle. The application was numbered as 27210 in class 12 and was subsequently granted registration by the appropriate authority i.e. The Registrar of Trade Marks, having office at Parliamentary Building, Kampala. Subsequently the aforesaid M/s AVS Cycles Limited entered into an agreement dated 27.12.2005 with the present plaintiff nomenclature as was as Assignment of Trade Mark. It was mentioned in the agreement so entered into between the parties:
"Whereas
i) The Grantor is the beneficial owner of the Trade MArk (BODA) shown in annexture "A"
hereto which is registered in Part A of the Trade Mark Register in the Grantor's name in class 12 under no. 27210 under the seal of the Registral of Trade Marks and sealed as of 6th December 2004 in respect of Pedals for cycles,
ii) The assignee is desirous of acquiring from TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 3 of 16 4 the Grantor the said Registered Trade Mark all its rights and interests,
iii) The Grantor has agreed with the Assignee for the latter to acquire the Registered Trade Mark form the Grantor.
Now this deed made in pursuance of the said agreement and for valuable consideration, the receipt whereof the Grantor shall acknowledge by executing part of this deed, witnesses as follows:
1. The Grantor as owner of the said Trade Mark hereby assigns and conveys to the assignee all of the Grantor's Rights, title and interest in the said Trade Mark, and all the privileges and advantages appertaining thereto to hold unto the assignee absolutely".
(vi). The plaintiff then applied for seeking recording of its name in the Register in respect of trade mark BODA in the republic of Uganda. The registrar of Trade Marks of the republic of Uganda has been pleased to record that the present plaintiff has been registered as proprietor of Trade Mark no. 27210 in class 12.
(vii). The registrar of Trade Marks of the Republic of Uganda has been pleased to issue another certificate wherein it has been stated:
THE REPUBLIC OF UGANDA TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 4 of 16 5 THE TRDEMARKS ACT (CAP.83) SECTION 37(1) RULES 85 & 86 M/S R & R Bikes C/o Ntende Frederick Samuel Advocate P.O. Box 27942 KAMPALA AMENDMENT OF SPECIFICATION OF TRADEMAR NO. 27210 In pursuance of your application on Form TM No. 22, the specification of goods of Trade Mark no. 27210 in class 12 (Schedule III) has been amended to read as "Bicycles, bicycle accessories, motor cycle, two wheel vehicles". Dated this 30th day of January, 2006.
(Asst. Registrar of Trademarks)
(viii). In such circumstance, the plaintiff is the Registered Proprietor of trade mark BODS in class 12 in The Republic of Uganda and as a consequence is authorized to use the trade mark BODA as a Registered Proprietor of the trade mark in Uganda.
(ix). The defendant is Kaveri Industries, having office at TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 5 of 16 6 Sewak Pura, Kalsian Street no.4, Gill Road, Miller Ganj, Ludhiana141003. The defendant had filed a suit bearing no.
2578 of 2000 in the Hon'ble High Court of Delhi against one M/s Cyco Exports of Ludhiana. The suit was a suit for perpetual injunction restraining passing off, delivery up and rendition of accounts etc. The suit was in respect of the trade mark BODA. The defendant then filed an application under Order 23 Rule 3 read with Section 151 CPC. In the said application it was stated:
"1. That the plaintiff abovenamed have filed the above suit against the defendant, interalia, praying that defendant through its proprietor or partner, as the case may be, its servants, agents, dealers, stockists and assigns, representatives and all other acting for and on behalf of the defendant from manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in Bicycles, Cycles, parts, fittings, components, motorland vehicles and parts and other cognate and allied goods under the trade mark 'BODA BODA' and / or any other trade mark as may be TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 6 of 16 7 identical with and / or any other trade mark as may be identical with and / or deceptively and confusingly similar to plaintiff's trade mark 'BODA BODA' and / or from committing any such act or acts, which is likely to cause confusion and deception amounting to passing off the goods and business as that of the plaintiff."
2. That the plaintiff; SATISH SOOD, trading as Kaveri Industries and defendant; M/s Cyco Exports, above named have arrived at amicably compromise/settlement in the terms of followings:
a)..................
b).................
c).................
d).....................
e).....................
f) The plaintiff further agrees that defendant can manufacture, assemble or get it manufactured from outside and to export these goods of Pedals for Bicycles all parts of Bicycles and complete Bicycles of all kind but not entitled to sell the TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 7 of 16 8 Pedals for Bicycles in India bearing the Trade Mark BODA BODA and/or any other trade mark or inner box, as may be deceptively and confusingly similar to the plaintiff's trade mark and inner box as annexure P1.
g) The plaintiff agrees that defendant is the owner/proprietor of the Artistic work of inner Box for Pedals of BODA BODA having its distinctive design, getup, lay out and device and colourable combination and have exclusive right to reproduce the same from time to time. Inner Box of the defendant is filed and marked annexure D1 to application.
h).................
i)..............
j) The defendant is entitled to the registration of trade mark BODA BODA for complete Bicycles of all kinds, its parts (excluding Pedals for Bicycles for sale in India) and Pedals for Bicycles for exports only and plaintiff will not raise any objection to the registration of the TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 8 of 16 9 trademark BODA BODA for aforesaid goods and will not raise any objections for registration of copyright of inner box of the defendant as marked annexure V1 to application."
(x). The above application so filed by the defendant itself shows that the defendant has admitted that it has no right in the trade mark BODA especially for exports. Thus the defendant himself has no rights to export goods under the trade mark BODA as per the compromise arrived at between the parties namely the defendant and a third party M/s Cyco Exports. The defendant cannot now resile from the stand taken by it in earlier proceedings. The defendant has no right over the trade mark BODA especially for purposes of export. The defendant is bound by the compromise and cannot bully other manufacturer/exporters.
(xi). In this juxtaposition, the plaintiff is already the registered proprietor of trade mark BODA in the Republic of Uganda. The plaintiff is entitled to export its goods to Uganda and other countries. The defendant cannot interfere in the statutory rights of the plaintiff in Uganda. However, the defendant contrary to its own stand taken in the suit bearing no. TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 9 of 16 10
2578 of 2000 in the Hon'ble Delhi High Court has started threatening the trade including the plaintiff from using the trade mark BODA on goods for export. The defendant is bullying and threatening the trade with an alleged proprietorship over the word BODA and is continuously issuing illegal threats to any person who uses the trade mark BODA.
(xiii). The plaintiff has made extensive sale of its product such as cycle parts under the trade mark BODA. The people and members of trade have come to recognize the goods bearing the trade mark BODA as to be emanating from the plaintiff. The defendant has no reason/occasion to interfere in the business of the plaintiff in respect of trade mark BODA in respect of goods cycle parts. The defendant has been threatening the business of the plaintiff under the trademarks BODA. The plaintiff's partnerSh. Rajeev Jain has received threatening telephone calls from the defendant's office wherein the defendant has been informed that he should not use the trade mark BODA for exports. The defendant is also issuing groundless threats to the suppliers of the plaintiff; rumors have been circulated in the market, that the plaintiff's business under the trade mark BODA would be jeopardized by proceedings to be initiated by the TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 10 of 16 11 defendant.
(xiv). The defendant has no reason to issue groundless threats to the plaintiff. The defendant has no locus standi to issue such threats especially when the plaintiff is the registered proprietor of the trade mark BODA in the republic of Uganda. The plaintiff has suffered heavily due to these rumors and threats being issued by the defendant. The plaintiff's consignment of goods under the trade mark BODA are ready but the plaintiff activities have been restricted by the groundless threats of legal action issued by the defendant. The threats of the defendant has caused mental torture and mental distress to the plaintiff and has delayed the launch of the product in the market. The plaintiff had to also tell his suppliers/customers about the postponement of the supply of its product under the trade mark BODA. The defendant cannot stop the plaintiff from exporting its goods under the trade mark BODS especially to Uganda. Thus, the plaintiff is entitled to damages and costs to be recovered from the defendant.
3. The defendant contested the suit by filing a written statement. The defendant has taken as preliminary objection that the suit has been filed against proprietorship concern which can not be sued as TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 11 of 16 12 such it is not an independent legal entity; the defendant has been using the trade mark BODA since 1999 whereas the defendant is stated to be using the same since 2003, therefore the defendant is the prior user:
the plaintiff has no prima facie case and it is the defendant who posses its goodwill in respect of the trade mark and has an established market and considerable goodwill; this court has no jurisdiction as the plaintiff is carrying out its business at Ludhiana and no cause of action has accrued to plaintiff in Delhi and that the plaintiff is guilty of misrepresentation and concealment of material facts.
4. On merits the averments of plaint have been denied in above terms.
5. Replication has been filed in which the material averments of written statement and reiterated the averments of the plaint.
6. The issues have been framed by the minutes of proceedings dated 29.01.2010 as under:
1. Whether the plaintiff is registered proprietor of trade mark no. 27210 in class 12 in the Republic of Uganda? If so, its effect? OPP
2. Whether the defendant is owner and proprietor of trade mark "BODA BODA" since the year 1999? If so, its effect? OPD TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 12 of 16 13
3. Whether the defendant is not entitled to export goods under the trade mark "BODA BODA"? OPP
4. Whether the plaintiff is entitled to decree of permanent injunction as prayed? OPP
5. Whether the plaintiff is entitled to decree of declaration as prayed? OPP
6. Whether the plaintiff is entitled to damages? If so to what amount? OPP
7. Relief.
7. No evidence has been led by the plaintiff despite repeated opportunities. PE was closed on 24.09.2011. No evidence has been led by the defendant also. The defendant also did not lead any DE. It was proceeded as exparte on 30.01.2012. However, later on it joined the proceedings and addressed the final arguments. Despite repeated opportunities the plaintiff has not come forward to address the final arguments.
8. I have heard Shri Nishi Ranjan Singh, Ld. Counsel for the defendant.
9. Ld. Counsel for the defendant has argued that it is the plaintiff who has come to the court for seeking relief and on account of no TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 13 of 16 14 evidence led by it, the suit is to be dismissed for this reason only.
10. I have considered the material on record. My findings on various issues are as under:
11. It is not necessary that the plaintiff must necessarily enter into the witness box. A case can be proved in many ways like by leading the evidence of the party; by admissions of the adversary; by non traversed pleadings or deposition or in an admixture of all the means. It is in this context the material on record is to be appreciated. Issue No. 1. Whether the plaintiff is registered proprietor of trade mark no. 27210 in class 12 in the Republic of Uganda? If so, its effect?
12. The issue is an issue of fact. The registration of a trade mark is to be proved as a factual aspect. No document of registration or legal proceedings certificate has been tendered in evidence by the plaintiff.
13. As no evidence has been led by the plaintiff on this factual aspect, the finding on this issue is rendered against it. Issue No. 2. Whether the defendant is owner and proprietor of trade mark "BODA BODA" since the year 1999? If so, its effect?
14. This issue sails in the same boat, as the issue no. 1. The onus of this issue has been on the defendant. The defendant has elected not to lead any evidence. As such this issue is decided against the defendant. TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 14 of 16 15 Issue No. 3. Whether the defendant is not entitled to export goods under the trade mark "BODA BODA"?
15. The onus of this issue had been on the plaintiff. No evidence has been led by the plaintiff. It is a factual issue.
16. Hence the finding on this issue is returned against the plaintiff. Issue No. 4. Whether the plaintiff is entitled to decree of permanent injunction as prayed?
& Issue No. 5. Whether the plaintiff is entitled to decree of declaration as prayed?
& Issue No. 6. Whether the plaintiff is entitled to damages? If so, to what amount?
17. These issues have their genesis in the cause of action as propounded by the plaintiff. The plaintiff has elected not to lead any evidence. There is no other material on record to suggest in any way that the case of the plaintiff has been admitted, in part or in whole, by the defendant.
18. In view of the above, these issues are held against the plaintiff.
RELIEF
19. In view of the findings on the above issues, the suit of the plaintiff is liable to be dismissed.
20. The suit of the plaintiff is dismissed. TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 15 of 16 16
21. Decree sheet be drawn accordingly.
22. File be consigned to the Record Room.
Announced in the Open Court today on this 24th day of September 2012.
(Man Mohan Sharma) ADJ (Central)1, Delhi TM 107/2011 (R & R Bikes Vs. Kaveri Industries) Page 16 of 16