Karnataka High Court
M/S M K Enterprises vs M/S Jems Engineering on 28 April, 2022
1
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 28TH DAY OF APRIL, 2022
BEFORE
THE HON'BLE MR. JUSTICE SACHIN SHANKAR MAGADUM
MFA NO.8809 OF 2019 (IPR)
BETWEEN:
M/S.M.K.ENTERPRISES
A SOLE PROPRIETORSHIP FIRM
HAVING ITS REGISTERED OFFICE
AT NO.4/5, GULAB MANSION
SHOP NO.13 & 14
G.K.TEMPLE STREET
CHICKPET CROSS
BENGALURU - 560 053
REPRESENTED BY ITS PROPRIETOR
SHRI.ASHISH BHANSALI
...APPELLANT
(BY SRI.RAJENDRA M.A., ADVOCATE)
AND:
M/S. JEMS ENGINEERING
A SOLE PROPRIETARY CONCERN
HAVING ITS REGISTERED OFFICE AT
B-144, MARUTHI INDUSTRIAL ESTATE
OPPOSITE FIRE STATION
NARODA ROAD
AHMEDABAD, GUJARAT - 380 025
REPRESENTED BY ITS PROPRIETOR
MR.SURESH KUMAR VITTHALBHAI PATEL
...RESPONDENT
(BY SRI.SHIVARAMAN VAIDYANATHAN, ADVOCATE)
2
THIS MFA IS FILED UNDER ORDER 43 RULE 1(r)
READ WITH SECTION 151 OF THE CPC., AGAINST THE
ORDER DATED 29.08.2019 PASSED ON I.A.NO.1 IN
O.S.NO.1864/2018 ON THE FILE OF THE XVIII
ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY (CCH
NO.10) ALLOWING THE IA NO.1 FILED UNDER ORDER
39 RULE 1 AND 2 READ WITH SECTION 151 OF CPC.
THIS APPEAL HAVING BEEN HEARD AND RESERVED
FOR JUDGMENT ON 20.04.2022, COMING ON FOR
PRONOUNCEMENT OF JUDGMENT THIS DAY, THE COURT
DELIVERED THE FOLLOWING:
JUDGMENT
The captioned Miscellaneous First Appeal is filed by the appellant - defendant questioning the interim injunction granted in favour of the respondent - plaintiff in O.S.No.1864/2018 on the file of XVIII Additional City Civil and Sessions Judge (CCH-10), Bengaluru City.
2. For the sake of convenience, the parties are referred as per their ranks before the Trial Court. 3
3. Facts leading to the case are as under; The respondent - plaintiff has instituted a suit in O.S.No.1864/2018 for bare injunction and filed I.A.No.1 under Order 39 Rule 1 and 2 seeking interim injunction against the appellant - defendant from using the trademark JAMES or any other trademark, which is identical with and or deceptively similar with the plaintiff's trade mark JEMS. The respondent - plaintiff by placing on record the prima-facie material claimed that he has adopted the trade mark JEMS way back in the year 2004 and since then, the plaintiff has been using the said trademark from the year 2000-2004 being first adoptor and user of the said mark and therefore, claims that the plaintiff has become a true and lawful owner/proprietor of the said mark for said goods namely submersible pumps and parts thereof under the name and style of M/s JEMS Engineering. The plaintiff claims to be the merchants 4 and marketer of the above said products. The plaintiff has attributed specific allegation against the defendant that he is carrying on his business activities so as to encash the goodwill of the plaintiff. The plaintiff has also further pleaded that defendant has issued a cease and desist notice on 20.01.2018 calling upon the plaintiff to stop using of the said trade mark
- JEMS on the ground that the defendant is a registered proprietors of the impugned mark JAMES.
4. The appellant - defendant filed a counter suit in O.S.No.3648/2018 seeking similar relief against the plaintiff herein. The appellant - defendant filed an application in I.A.No.1 to grant interim temporary injunction. The appellant - defendant by producing in all nine documents claimed that M/s.M.K. Enterprises is doing the business of manufacture, distribution, marketing and sales of submersible pumps, motors, 5 compressors, mixers, grinders, blenders, juicers, wet grinders and parts thereof. The appellant - defendant claimed that his company is doing business since 2013 and his products are marketed and sold under the trade mark JAMES. Placing reliance on ten documents to make out a prima-facie case, the appellant - defendant produced the work orders and invoices of the defendant's firm. The appellant - defendant specifically pleaded that on 09.10.2015 had applied with the Trade Marks Registry for registration of his trade mark - JAMES in relation to the goods manufactures and sold by his firm.
5. The appellant - defendant has also claimed that the Trade Marks Registry on 11.01.2018 vide Registration No.3074628 in Class 7 registered the appellant's trade mark - JAMES with effect from 09.10.2015 and the same is registered by the Trade Marks Registry after wide publication and 6 advertisement. The appellant - defendant, as a counter, claimed that the products of appellant's firm are traded under mark JAMES and due to its quality and reliability, has become distinctive of the name among the customers in the market and therefore, he has specifically contended that the respondent - plaintiff with malafide intention of marking unlawful gain and as a part of his unfair trade practice, has deliberately creating confusion among the customers and potential buyers of submersible pumps.
6. The learned Judge examined both the applications filed by the appellant - defendant and respondent - plaintiff and having also taken note of the prima-facie material placed by both the parties, has proceeded to allow the application filed by the respondent - plaintiff thereby injuncting the present appellant - defendant from passing off the appellant - defendant's good with trade mark JAMES as that of 7 the respondent - plaintiff's trade mark JEMS till disposal of the case and consequently, the application filed by the appellant - defendant seeking interim injunction in O.S.No.3648/2018 was dismissed by the Trial Court.
7. Feeling aggrieved by the order passed by the Trial Court on I.A.No.1 in O.S.No.1864/2018, this captioned appeal is filed.
8. The learned counsel appearing for the appellant - defendant reiterating the grounds urged in the appeal memo would contend that the appellant - defendant is a registered proprietor of his trade mark
- JAMES and therefore, he has statutory right to use the same to the exclusion of all others under Section 28 of the Trade Marks Act, 1999. Learned counsel appearing for the appellant - defendant would contend that suit filed by the appellant - defendant is 8 based on infringement of his trademark and therefore, the appellant - defendant had every right under the Trade Marks Act, 1999 to cause legal notice to the respondent - plaintiff as the respondent - plaintiff's trademark JEMS is phonetically similar to his trademark, which is causing confusion and in this background, he would contend that the learned Judge has virtually misread the prima-facie materials on record and erred in construing the stand taken in the legal notice as an admission in regard to the alleged fact of passing off the respondent - plaintiff's goods. He would point out that the learned Judge has not taken into consideration the provisions of Section 31 of the Trade Marks Act, 1999 and therefore, he would contend that learned Judge has committed an error in passing the impugned order only on the basis of the principle of 'prior user'. He further submits that the learned Judge has failed to satisfy himself with prima 9 facie with the evidence available on record. He would submit to this Court that the Trial Court has exceeded its jurisdiction while passing the impugned order by virtually invalidating the registration of the appellant's trademark - JAMES without considering or discussing the validity thereof and therefore, he would contend that the order under challenge suffers from serious perversity and therefore, would warrant interference at the hands of this Court. He would further contend that the impugned order granting interim injunction in favour of the respondent - plaintiff is without satisfying regarding the validity of the registration and therefore, he would contend that the Trial Court erred in not granting injunction in favour of the registered owner. He further contend that the respondent - plaintiff has not approached with clean hands and sufficient prima-facie materials are placed on record by the appellant - defendant indicating that the 10 respondent - plaintiff is involved in infringement of trademark of another person, who is running the business of selling pumps in the name of 'GEMS', who was not only a prior use but also registered owner, who has filed his objections with the Registry.
9. To buttress his arguments, he has placed reliance on the following judgments.
1. S.M.Dyechem Ltd. Vs. Cadbury (India) Ltd., reported in (2000) 5 SCC 573.
2. Wander Ltd., and another vs. Antox India Pvt. Ltd., reported in 1990 (Supp) SCC 727.
3. S.P.Chengalvaraya Naidu vs. Jagannath reported in (1994) 1 SCC 1.
4. S.J.S Business Enterprises (P) Ltd., vs. State of Bihar and others reported in (2004) 7 SCC 166.
5. Neon Laboratories Ltd., vs. Medical Technologies Limited and Others reported in (2016) 2 SCC 672.
11
6. Uniply Industries Ltd., vs. Unicorn Plywood Pvt. Ltd., and Others reported in (2001) 5 SCC 95.
7. Dalpat Kumar and Another vs. Prahlad Singh and Others reported in (1992) 1 SCC 719.
8. Rajkumar Sanahal Singh and others vs. R.K.Khutasana Singh and others reported in 1984 SCC Online Gau 32.
9. Kittamma and another vs. B.Subba Rai and another reported in AIR 1959 Mys
75.
10. Mangai Achi vs. Maharajan reported in AIR 1973 Madras 258.
10. Per contra, the learned counsel appearing for the respondent - plaintiff to counter the arguments canvassed by the learned counsel appearing for the appellant - defendant would contend that the appellant - defendant was quite 12 aware of the respondent - plaintiff's reputation and business in the market. Pointing the sequence in the manner the trademark was registered and legal notice dated 20.01.2018 came to be issued by the appellant - defendant, he would contend that the conduct of the appellant - defendant is grossly unfair and these aspects are dealt by the Trial Court in detail. He would contend that the appellant - defendant issued cease and desist notice on 11.01.2018 and 20.01.2018. Referring to these relevant dates, he would contend that prima-facie, it would clearly demonstrate that the appellant - defendant was well aware that the respondent - plaintiff has been using the trademark since 2000 being the first adopter and has acquired very good name in the market, which equally carries tremendous reputation and good will.
13
11. Learned counsel appearing for the respondent - plaintiff has brought to the notice of this Court that the judgment rendered by the Hon'ble Apex Court in the case of S.M.Dyechem Ltd. Vs. Cadbury (India) Ltd., reported in (2000) 5 SCC 573 has been over-ruled. On these set of grounds, he would submit to this Court that the order under challenge does not suffer from any perversity and therefore, would not warrant any interference at the hands of this Court. He would conclude his arguments by contending that the appellant - defendant had suffered an order, wherein the Trial Court has rejected his application filed in O.S.No.3648/2018.
12. Heard learned counsel appearing for the appellant - defendant and learned counsel appearing for the respondent - plaintiff. Perused the judgment under challenge.
14
13. The respondent - plaintiff to substantiate his claim has produced volumeness documents. The respondent - plaintiff by placing reliance prima-facie materials, has tried to make out a case to demonstrate that he is into business of manufacture, distribution, marketing and sales of submersible pumps and parts thereof in the name and style of M/s. JEMS Engineering. The plaintiff has further claimed that he has adopted the trademark JEMS in the year 2004 i.e., 15.03.2004. The plaintiff to make out a prima-facie case that he is the first adopter and user of the said trademark, had produced in all 77 documents with its Shop Establishment Certificate, Central Sales Tax Certificate and other documents connected to the business. The copy of the Shop Establishment Certificate is issued on 16.03.2004. The plaintiff has also placed reliance on the true copy of the Central Sales Tax Certificate, VAT Certificate 15 and also ISO Certificate. The plaintiff has also placed reliance on the copy of the user certificate filed along with trade mark application for trademark JEMS. The plaintiff has also placed reliance on the income tax returns from the year 2003-04 to 2017-18. The bills and invoices from the year 2004 onwards are also placed on record by the respondent - plaintiff, whereas the documents produced by the appellant - defendant indicates that the appellant - defendant is doing business since 2013-14 and except these documents, no other documents are placed on record by the appellant - defendant to make out a prima- facie case that even prior to 2013, they were doing the business of manufacture, distribution, marketing and sales of submersible pumps and parts thereof.
14. If all these significant details are taken into consideration, then this Court has to examine as to whether the order under challenge warrants any 16 interference at the hands of this Court. It is more than a trite in an action of passing off, the plaintiff has to establish user of trademark prior point in time than the impugned user by the defendant. The registration of the trademark or similar trademark is irrelevant in an action for passing off. In catena of decisions, the Hon'ble Apex Court has also held that mere presence of mark in the register maintained by the Trade Marks Registry does not prove its user. Therefore, the point for consideration is whether a prima-facie case is made out by respondent - plaintiff and is entitled to interim injunction restraining the appellant - defendant from manufacturing and marketing goods under the trade name JEMS. The prima-facie material, which is placed on record by the respondent - plaintiff, indicates the existence of legal right and also indicates the alleged violation at the hands of the appellant - defendant. Therefore, the Court, at this 17 stage, has to act on certain well settled principles and the Court has to ascertain whether plaintiff's right needs to be protected against injury by violation of his rights for which he cannot adequately compensate in damages. If need for such protection is meticulously waived against the corresponding need of the defendant, who has commenced his business some where in the year 2013, then this Court is of the view that balance of convenience obviously lies in favour of the respondent - plaintiff.
15. If the materials placed by both the parties and rival claims made by both the parties are examined, prima-facie what emerges is that both plaintiff and defendant are doing business activities, which are identical. Therefore, if the prima-facie material produced by the respondent - plaintiff indicates that he is a prior user and doing his business since 2004, is entitled for interim injunction. 18 Non-granting of interim injunction at this juncture would in all probabilities result in irreparable injury to the respondent - plaintiff. Therefore, on meticulous examination of the order under challenge, I do not find any error committed by the learned judge while exercising discretion in favour of the respondent - plaintiff. The judicial discretion exercised by the Trial Court is based on sound judicial principles and the discretion and equity is in favour of the respondent - plaintiff and not in favour of the appellant - defendant.
In that view of the matter, the appeal is devoid of merits and accordingly, stands dismissed.
Sd/-
JUDGE NBM