Calcutta High Court
Khaitan India Limited vs Khaitar Industries Private Limited & ... on 5 March, 2021
Equivalent citations: AIRONLINE 2021 CAL 117
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GA No. 2 of 2021
CS 155 of 2020
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
COMMERCIAL DIVISION
KHAITAN INDIA LIMITED.
V.
KHAITAR INDUSTRIES PRIVATE LIMITED & ANR.
For the Plaintiff : Mr. G.D. Bansal, Advocate
Mr. Sourojit Dasgupta, Advocate
Mr. Rajesh Upadhyay, Advocate
Mr. Imtiyaz Ahmed, Advocate
For the Defendants : Mr. Shuvasish Sengupta, Advocate
Mr. Avirup Chatterjee, Advocate
Hearing concluded on : February 22, 2021
Judgment on : March 05, 2021
DEBANGSU BASAK, J. :-
1.By this application, the defendants have applied for dismissal of the suit.
2. Learned Advocate appearing for the defendant has submitted that, leave under Clause 14 of the Letters Patent, 1865 has not been granted. Though the plaintiff has claimed reliefs with regard to infringement of a registered trade mark, the plaintiff has not claimed anything with regard to passing of. Referring to 2016 Volume 2 2 Supreme Court Cases page 683 (S. Syed Mohideen v. P. Sulochana Bai) he has submitted that, a suit for infringement of registered trade mark, as against a defendant who also possess a registered trade mark is not maintainable. He has relied upon 2013 Volume 4 Maharashtra Law Journal page 627 (Jagdish Gopal Kamath & Ors. v. Lime and Chilli Hospitality Services P. Ltd.) and submitted that, leave under Clause 14 of the Letters Patent, 1865 is a discretionary exercise. In the facts of the present case, no leave under Clause 14 of the Letters Patent, 1865 has been granted and should be granted.
3. Learned Advocate appearing for the plaintiff has relied upon 2013 (53) PTC 410 (Bombay) (Siyaram Silk Mills Limited v. Shree Siyaram Fab Private Limited & Ors.), 2018 Volume 74 PTC 103 (Delhi) (Sun Pharma Laboratories Ltd. v. Lupin Ltd. & Anr.) and 2018 (76) PTC 365 (Shambhu Nath & Brothers & Ors. v. Imran Khan) and submitted that, the plaintiff has claimed relief on account of infringement of registered trade mark as well of passing of. Therefore, the suit is maintainable.
4. The plaintiff has filed the instant suit seeking leave under Clause 14 of the Letters Patent, 1865, leave under Order II Rule 2 of 3 the Code of Civil Procedure, 1908 and leave under Section 12A of the Commercial Courts Act, 2015. In the plaint, the plaintiff has claimed that it adopted an innovative and distinctive mark being "Khaitan" being with the word "Khaitan" being written in red colour in a stylish manner and a visual representation of a fan placed above the letter ' i' in the mark. According to the plaintiff, the mark has consisted of a distinct colour and font representing a distinctive manner. The plaintiff has claimed registration in respect of the mark 'Khaitan' in various forms. The plaintiff has claimed to be using such mark since 1970 for its products on different goods. According to the plaintiff, its mark has attained fame and recognition. The plaintiff has claimed that it is using such mark in respect of electric goods manufactured by it. According to the plaintiff, the defendants have imitated the unique and distinctive mark of the plaintiff and are using the mark "Khaitar" which is phonetically, visually and structurally similar and/or deceptively similar to the trade mark of the plaintiff. The plaintiff has come to learn that the defendant No. 2 had applied for registration of the mark "Khaitar" on September 13, 2017 and patent registration thereof fraudulently claiming user since April 1, 2011.
5. In the plaint, the plaintiff has claimed relief both on account of infringement of its registered trade mark as also for passing off. There 4 are pleadings in the plaint which makes out a case of passing off. The plaintiff has repeatedly used the word "identical and/or deceptively similar" to the trade mark of the plaintiff in the plaint to make out a case of both infringement of its registered trade mark as also for passing off.
6. In S. Syed Mohideen (supra) the Supreme Court has considered various provisions of the Trade Marks Act, 1999. It has held that, under Section 28 of the Trade Marks Act, 1999, owner of a registered trade mark cannot sue for infringement of its registered trade mark if the trade mark of the defendant is also registered. It has however gone on to say that, the Court should consider whether a plaintiff can bring an action against the defendant for passing off invoking the provisions of Section 27(2) of the Trade Marks Act, 1999. It has considered the interplay of Sections 27(2) and Section 28(3) of the Trade Marks Act, 1999. It has held that, on a collective reading of the provisions of the Trade Marks Act, 1999 specially Sections 27, 28, 29 and 34 thereof, it would show that the rights conferred by the registration are subject to the rights of the prior user of the trade mark. It has held that, rights in passing off emanate from the common law and not from the provisions of the Trade Marks Act, 1999 and that, they are independent from the rights conferred by the 5 Trade Marks Act, 1999. It has explained Section 27, 28 and 34 of the Trade Marks Act, 1999 by holding that, the scheme of the Trade Marks Act, 1999 is such were rights of prior user are recognised superior than that of the registration and even the registered proprietor cannot disturb/interfere with the rights of prior user. It has explained that, the overall effect of collective reading of the provisions of the Trade Marks Act, 1999 is that the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Trade Marks Act, 1999. The rights of prior user are superior than that of registration and are unaffected by the registration rights under the Trade Marks Act, 1999.
7. In the facts of the present case, as noted above, the plaintiff has claimed prior user than the defendants. The plaintiff has apart from claiming infringement of its registered trade mark, is claiming relief on account of passing off. The plaintiff has claimed that, the mark used by the defendants are deceptively similar to that of the plaintiff and that the public at large are being deceived by the mark used by the defendants.
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8. Siyaram Silk Mills Limited (supra) has considered the question whether the institution of an action for infringement is barred if the defendant's trade mark is also registered. It has construed Section 124 of the Trade Marks Act, 1999 and held that, Section 124 of the Trade Marks Act, 1999 expressly recognises the right to file an action for infringement even if the defendant's trade mark is registered. It has also held that, even the absence of Section 124, would not make any difference.
9. In Sun Pharma Laboratories Ltd. (supra), various authorities have been noted. It has noted that, various authorities have held that a suit for infringement is maintainable by a registered proprietor against any registered proprietor.
10. Shambhu Nath & Brothers & Ors. (supra) has considered the issue of maintainability of suit for infringement of trade mark. It has held that, the plaintiff is entitled to maintain a suit for infringement and passing off as the case may be as the plaintiff claims to be the actual user of mark in relation to the goods and/or services of the defendant.
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11. Jagdish Gopal Kamath & Ors. (supra), Shambhu Nath & Brothers & Ors. (supra) have considered provisions of Clause 14 of the Letters Patent, 1865. The issue of leave under Clause 14 of the Letters Patent, 1865 has not been decided as yet.
12. In view of the discussions in Paragraph 4 and 5 herein, it cannot be said that the cause of action of the instant suit is based solely on infringement of a registered trade mark. The plaintiff has pleaded and sought release with regard to passing off. The plaint has disclosed cause of action for the passing off. The plaintiff has claimed prior user of the mark also. Therefore, the instant suit cannot be said to be maintainable.
13. In such circumstances, IA GA No. 2 of 2021 is dismissed without any order as to costs.
[DEBANGSU BASAK, J.]