Delhi High Court
Pritam Dass, (Trading As) Alka Food ... vs Anil Food Industries on 11 October, 1995
Equivalent citations: 60(1995)DLT465
JUDGMENT Vijender Jain, J.
(1) This order will dispose of Fao No. 106/92 and Fao No. 166/92 directed against the order passed by the Additional District Judge dated 24.4.1992 refusing to restrain the defendant from using trade mark 'CHATMOLA' with the pouch and another order dated 8.7.1992 restraining the appellant during the pendency of the suit from using the trade mark 'CHATMOLA' and marketing the same in the pouch marked 'C'.
(2) Mr. Man Mohan Singh, learned Counsel appearing for the appellant, has contended before me that the appellant-plaintiff was a prior user of the trade mark 'CHATMOLA' with the pouch having a device of an 'Elephant' and first use of the plaintiff was of 1.11.1990. The first sale of the goods were from 14.12.1990, whereas the defendant has on its own shown the first user to be that from 8.1.1991. Mr. Singh has argued that the pouch of the plaintiff having the distinctive mark of 'Elephant' containing the product 'CHATMOLA' was prepared by the plaintiff on 17.10.1990. He has further contended that the appellant has been using the device of 'Elephant', as has been made on the pouch, since 1988 in relation to its products and other confectionary items. Great stress was laid by Mr. Singh regarding the application for registration of pouch under Section 45 of the Copyright Act, 1957, which was made by the appellant. According to the appellant that application was filed by the appellant with the Registrar of Trade Mark on 1.11.1990 in relation to the trade mark 'CHATMOLA'.
(3) Yet another arguments advanced by the learned Counsel for the appellant was that the respondent-defendant acted cleverly and imitated trade mark of the appellant 'CHATMOLA' and design of another packing of the appellant 'tinimini /tiny miny' thereby giving impression to the unwary and innocent purchasers that respondent's goods emanated from the appellant's only and on the basis of written statement filed by the respondent in the Trial Court, Mr. Singh has contended that said averment has not been specifically denied by the respondent in the written statement. On the basis of above contentions, learned Counsel for the appellant has argued that the order of the Trial Court is to be set aside as appellant had amply demonstrated that the use of the plaintiff was prior in time than that of respondent and even otherwise by virtue of application for registration of the trade mark, the plaintiff had prior right to use trade mark 'CHATMOLA' with a device of 'Elephant' on the pouch.
(4) Learned Counsel for the appellant has further contended that as per Section 45 of the Copyright Act the author of the design of 'CHATMOLA' as well as of pouch having the device of 'Elephant' being prior in time with the plaintiff- appellant, the respondent cannot use the same trade mark and the Trial Court had erred in not restraining the respondent from using the said trade mark and the pouch having a device of 'Elephant'.
(5) On the other hand, Mr. K.L. Aggarwal, learned Counsel appearing for the respondent, has argued that the respondent was the lawful proprietor in respect of trade mark 'CHATMOLA' since August'1990 for confectionary goods. Knowing that, the appellant dishonestly, illegally and with mala fide intentions applied for registration of the said trade mark 'CHATMOLA' with the Registrar of Trade Mark, New Delhi wrongly claiming the user of the said trade mark since 1.11.1990. Mr. Aggarwal has argued that in the written statement at the first opportunity the defendant has denied the photocopies of the invoices, which had been filed by the plaintiff in the Trial Court, being fabricated and false documents. He argued that all the bills and invoices, which had been filed by 'the plaintiff, were fabricated documents. Mr. Aggarwal has contended that mere filing of an application for registration of copyright would not give any right to the appellant in the absence of any material to show that the appellant was prior user of the said trade mark than the respondent.
(6) In reply to the arguments advanced by the learned Counsel for the appellant that in reply to paragraph-12 of the plaint respondent has not taken a clear stand, Mr. Aggarwal has contended that paragraph-12 of the written statement inter alia states that the appellant was using the trade mark 'CHATAR MATAR' in respect of confectionary goods, which mark was later on changed to 'CHATMOLA' with the ulterior object of trading upon the goodwill and reputation of the defendant. Mr. Aggarwal has contended that the respondent has started selling its goods in January'1991 and has adopted the trade mark 'CHATMOLA' in the pouch having device of 'Elephant' during August'1990. Mr. Aggarwal has contended that the respondent had filed affidavit of one Shri Baldev Singh, who had designed the art-work of impugned trade, mark dated 24.2.1992 along with the written statement, which was Filed by the respondent in Trial Court. With the said affidavit, the artistic design of 'CHATMOLA' having a device of 'Elephant' and the photocopy of the original sketch were also brought on record by the respondent. Learned Counsel for the respondent has invited attention of this Court to the order passed on 10.3.1992 wherein the learned Trial Court directed the parties to produce the original art work at the time of arguments. Mr. Aggarwal has contended that pursuant to the directions of the Court, respondent did produce the original art work on 1.4.1992, which fact finds mention in the order of the Trial Court. Repelling the contentions of the learned Counsel for the appellant, Mr.Aggarwal has stated that it) the absence of original art work, no copyright can be claimed by appellant as copyright vests with the author of the design only and none else. In support of his arguments, he has cited the case of Camlin Private Ltd. v. Mis. National Pencil industries, in which it is held - "I had conveyed it to Counsel, during the course of arguments, that the card board appeared to be mechanically reproduced article, and that in order to qualify for being covered under the Copyright Act, the carton had to be "originally artistic work", that is to say, the Carton must originate from an author who must have expended his skill and labour upon it. This was put to the Counsel for the plaintiff, in view of the judgment in (1964) I All Er equal to (1964) I Wlr 273. In that case, the House of Lords, relying upon the observations in an earlier judgment, said that in Copyright law, "original" means that which originates from the author. The observations relied upon by the House of Lords contained in (1894) Ac 335 which reads as under:- "The work 'original' does not in this connexion mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in this case of literary work', with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work that it should originate from the author".
(7) He has also cited the case of Glaxo Operations Uk Ltd., Middlesex (England) & Ors. v. Samrat Phannaceuticals, Kanpur, . Mr. Aggarwal vehemently contended that even in Diwali pack gift items of the confectionary manufactured by appellant, the appellant has never used the pouch having device of 'Elephant' in relation to the goods. He has also invited the attention of this Court on the legal notice issued by the respondent dated 11.11.1991, which was prior to the filing of the suit by the appellant, which was filed on 20.1.1992. Mr. Aggarwal has contended that after the said legal notice a public notice was also issued, which was published in 'Sandhaya Times', New Delhi dated 7.12.1991, the plaintiff filed the suit and, therefore, the action of the appellant in maintaining the present application, which is the subject-matter of this appeal, is mala fide. He has also taken me to the advertisement of 'CHATMOLA', which was published by Lions Club on 7.12.1991. Mr. Aggarwal has also filed the price list of the appellant dated 1.2.1991 at page-843 of the paper book of the Trial Court, which does not contain the name of 'CHATMOLA' in the list of articles manufactured by the appellant but it mentions 'CHATAR MATAR'. On the basis of the above price list, Mr. Aggarwal has contended that this shows that the product was not introduced by the appellant in the market and the claim of the appellant in this regard of user is without any basis.
(8) Another argument advanced by the learned Counsel for the respondent is that no reliance can be placed on the affidavit filed by one Shri Vidya Bhushan as the same was filed after the written statement was filed by the respondent on 24.2.1992. Lastly Mr. Aggarwal has contended that as a matter of fact the design and colour scheme of label 'tini mini/tiny miny' of the appellant was subsequent adoption than the adoption of the label 'CHATMOLA' by the respondent. Defendant has also filed counter-claim in the Trial Court and had filed an application in that counter-claim to restrain the plaintiff from using the impugned design and colour scheme of the label. In the said counter-claim the Trial Court restrained the appellant from using the trade mark 'CHATMOLA' with the device of pouch marked 'C'.
(9) 1 have heard the submissions of the learned Counsel appearing for both the parties at length. At the stage when the application was for inter-locutory order, the Trial Court was to be governed with the three well-settled principles for grant of interim injunction, firstly, whether plaintiff has a prima facie case, secondly, if injunction is not granted irreparable loss and injury would be caused to the plaintiff and lastly, balance of convenience is in granting the injunction. From the documents placed on record and the pleadings, it cannot be said that the plaintiff has established a prima facie case in his favor. From the documents Filed on record and from the pleadings, it cannot be said that the plaintiff was a prior user of the trade mark 'CHATMOLA' with pouch having device of an 'Elephant'. With the plaint, plaintiff has not filed the original design of 'CHATMOLA' and the pouch having device of an 'Elephant'. Although the defendant had filed along with written statement the photocopy of artistic design and affidavit of Mr. Baldev Singh dated 24.2.1992. Even when the Trial Court directed the parties to produce the original art-work at the time of arguments, only defendant produced the original art-work on 1.4.1992 but the plaintiff did not file the art-work. During the course of hearing of this appeal, this Court also directed the appellant to produce the original art-work but the appellant failed to do so.
(10) Another aspect, which I would like to mention, is that a legal caution notice dated 11.11.1991 was issued by the Counsel for the respondent, which was not replied by the appellant, thereafter a public notice was published in 'Sandhaya Times' on 7.12.1991, claiming 'CHATMOLA' to be the trade mark of the respondent and the suit of the plaintiff was filed after the caution notice and public notice were issued by the respondent, does not give much credence to the story put up by the appellant of using the trade mark prior in time than that by the respondent.
(11) In view of these facts, merely because the plaintiff has filed an application for registration of trade mark prior in time in the absence of anything to show that the said trade mark was used by the appellant than the respondent, I do not see any justification to interfere with the view taken by the Trial Court in refusing to grant injunction to the appellant. For the reasons stated above, I do not find any merit in this appeal as well as the appeal, which has been filed against the subsequent order passed by the Trial Court wherein the plaintiff has been restrained, during the pendency of the suit, from using the trade mark 'CHATMOLA' and marketing the same in pouch marked 'C' in view of the facts and circumstances of the case.
(12) However, nothing said above will be construed an expression of opinion on the merit of the case as it will be after framing of the issues and leading evidence Court will come on its own conclusion. Nothing said above will influence the order of the Court below. Once I have come to the conclusion that prima facie the case was not established by the plaintiff, I need not go to the questions of irreparable injury and balance of convenience. In view of the above discussions, I dismiss the appeal with no order as to costs.