Calcutta High Court
Skipper Limited vs Akash Bansal & Ors on 13 January, 2016
Author: Arijit Banerjee
Bench: Arijit Banerjee
T No. 3 of 2016 TA No. 1 of 2016 IN THE HIGH COURT AT CALCUTTA ORDINARY ORIGINAL CIVIL JURISDICTION Skipper Limited Versus Akash Bansal & Ors.
Before:
The Hon'ble Justice ARIJIT BANERJEE Date: 13th January 2016 Appearance:
Mr. Ranjan Bachawat, Sr. Advocate Mr. Rudraman Bhattacharya, Advocate Mr. Sidharth Das, Advocate Mr. Souresh Banerjee, Advocate for the petitioner The Court: The plaintiff trades in steel and UPVC pipes of various types. The plaintiff's turnover during the last financial year was in excess of Rs.1,300 crores. The plaintiff has registered in its name as trademarks the words "BANSAL", SKIPPER BANSAL", BANSAL SKIPPER" etc. The said marks are registered under class 6 and 17 which pertain to pipes and tubes of metal and flexible pipes not of metal. The plaintiff markets its products under the aforesaid marks of which the plaintiff is undisputedly the owner.
Sometime in May, 2015 the plaintiff came to learn that the defendant was marketing similar products under the marks "BANSAL ASTOR" and using the business name "BANSAL POLYMERS". The plaintiff caused a legal notice dated 7th May 2015 to be sent to the defendant complaining of infringement of the plaintiff's trademark by the defendant as also passing off the defendant's products as that of the plaintiff's products. By a letter dated 26th May 2015 the 2 defendant's advocates replied that they have discussed the matter relating to infringement with their clients for arriving at a positive conclusion and that they shall get back as soon as they receive further instructions from their clients.
The plaintiff claims user of the said trademarks from 1981. The defendant, it appears from the records, had made an application on 8th January 2015 claiming user of the mark "BANSAL ASTOR" from 3rd December 2015. However, subsequently another application appears to have been made by the defendant on 23rd June 2015 claiming user of the mark "BANSAL ASTOR" from 1st April 2012. This conduct of the defendant also raises some suspicion in the mind of the Court as to the bonafides of the defendant.
The plaintiff being the registered owner of the aforesaid marks, its case falls squarely within section 29 of the Trademarks Act. I am satisfied that the plaintiff has made out a prima facie case of infringement of its trademarks by the defendant.
Mr. Bachawat, learned senior counsel appearing for the plaintiff has drawn my attention to a decision of the Hon'ble Supreme Court in the case of Laxmikant V. Patel v. Chetanbhai Shah And Another reported in (2002) SCC 65 wherein the Hon'ble Apex Court has observed that once a case of passing off is made out the practice is generally to grant a prompt ex parte injunction followed by appointment of Commissioner, if necessary. Such practice in my opinion should apply a fortiori in case of infringement of registered trademark. Further section 135(2) of the Trademarks Act, 1999 clearly states that the order of injunction that may be granted under sub-section (1) of that section may include an ex parte injunction.3
I am of the view that a case has been made out for passing an ex parte order of injunction. The balance of convenience also is, in my opinion, in favour of passing such order.
Accordingly there shall be an order in terms of prayer (c) of the Notice of Motion. Such order shall continue till 10th February 2016 or until further orders whichever is earlier.
The defendant shall be at liberty to apply for vacating of this ex parte order upon notice to the plaintiff.
Let this matter appear as "New Motion" before the regular Bench on 21st January 2016.
Certified photocopy of this order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(ARIJIT BANERJEE, J.) R. Bose AR[CR]