Calcutta High Court
United Cycle Co. Ors vs Firefox Bikes Pvt. Ltd on 15 December, 2014
Author: Soumen Sen
Bench: Soumen Sen
ORDER SHEET
G.A. No. 3119 of 2014
C.S. No. 357 of 2014
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
UNITED CYCLE CO. ORS.
Versus
FIREFOX BIKES PVT. LTD.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 15th December, 2014.
Appearance :
Mr. Ranjan Bachawat, Sr. Adv.
Mr. Debnath Ghosh, Adv.
... for the petitioners.
Mr. Sayantan Basu, Adv.
Mr. S. Majumder, Adv.
Mr. Sudhakar Prasad, Adv.
... for the respondent.
The Court : Mr. Ranjan Bachawat, learned senior counsel appearing on behalf of the plaintiffs submits that in terms of earlier order dated 26th of November, 2014 the plaintiffs has not initiated any action against the defendant. This conduct shows that the notices issued by the defendant are empty and groundless threats.
2
Mr. Bachawat submits that having regard to the fact that the defendant has not claimed any copy right or trademark over the word 'fox' the basis of the cease & desist notice by the defendant is only an empty-threat and without any real intention to establish their so called rights.
Mr. Bachawat has referred to the decisions in the case of Tractor and Farn Equipment Ltd., Appellant vs. K.S. Sunil Kumar, Respondent reported in 2006 (32) 123 (Ker.)(DB) and in the case of Living Media (India) Ltd. and Anr., Plaintiff vs. Alpha Dealcom Pvt. Ltd. & Ors., Defendant reported in 2104(58) PTC 589 (Del.) to show that no special right has been created in favour of the plaintiffs simply by using the word 'fox' in addition to the other words. The decisions cited by Mr. Bachawat were rendered on consideration of affidavits. Moreover, at this stage when an order of injunction has been prayed for, the Court is required to be satisfied as to the honest adoption of the word 'fox' by the defendant since on the basis of the pleading itself it would appear that the plaintiff sought to assert its right in respect of the said mark 'Unifox' only in January 2013 whereas the documents on record would prima facie go to show that the defendants have been using the word 'fox' in conjunction with the other words since 2005.
The Court is to be satisfied with the bona fide adoption of the said mark after taking into consideration the fact 3 that both the plaintiffs and the defendant are operating in the same field. The plaintiffs claimed that they are the bona fide user of the mark 'Unifox'. In view thereof, affidavit-in- opposition shall be filed on or before 9th of January, 2015. Reply thereto, if any, filed by 16th January, 2015. Let the matter appear on 19th of January, 2015 under the heading 'Motion (Adj.)'. The interim order grated earlier shall continue till the disposal of this application. It is also recorded that G.A. No. 3416 of 2014 is the vacating application of the defendant. The application was disposed of by an order dated 26th of November, 2014. The Computer section is directed to record the disposal of G.A. No. 3416 of 2014 on 26th November, 2014 and the said application shall not be shown as pending. The computer section is also directed to take appropriate steps for endorsement.
(SOUMEN SEN, J.) SBI