Bombay High Court
The National Sports Club Of India vs Rajesh Devji Ganatra on 1 March, 2019
Author: S.J.Kathawalla
Bench: S.J. Kathawalla
Nitin 1 / 10 MNOB-NMCDL-569-2019-UR.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
NOTICE OF MOTION (L) NO. 569 OF 2019
IN
COMIP (L) NO. 286 OF 2019
The National Sports Club of India ... Plaintiff
Versus
Prashant Narendra Gayakwad ... Defendant
ALONG WITH
NOTICE OF MOTION (L) NO. 570 OF 2019
IN
COMIP (L) NO. 287 OF 2019
The National Sports Club of India ... Plaintiff
Versus
Rajesh Devji Ganatra ... Defendant
Mr.Amit Jamsandekar a/w. Ms. Sutapa Saha for the Plaintiff.
Mr.R.Carvalho i/b. Mr. R.M. Jain for Mr.Suresh Sheth.
Mr.Suresh Sheth present.
Mr.P.N. Gayakwad - Defendant No. 1 in COMIPL No. 286 of 2019 a/w. Mr. Maxim
Fernandes - Tax Consultant, present.
CORAM : S.J. KATHAWALLA, J.
DATED : 1ST MARCH,2019 P.C.:
1. Not on board. Upon mentioning, taken on board.
2. The Plaintiff - The National Sports Club of India (NSCI) is a Society ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 2 / 10 MNOB-NMCDL-569-2019-UR.doc registered on or about 26th September, 1949 under the Societies Registration Act, 1860. The Plaintiff adopted and started use of the mark 'The National Sports Club of India' since 26th September, 1949 and the abbreviation of the full name 'NSCI' since the year 1953. The Plaintiff is the registered Proprietor of the mark 'NSCI' bearing registration Nos. 3226806 and 3226807 in respect of goods / services falling in Classes 41 and 43 respectively of the Fourth Schedule of the Trade Mark Rules, 2002 (the said marks). The Plaintiff provides sports and recreational facilities to its members and promotes outdoor and indoor games of all kinds and all allied and cognate goods and services. The Plaintiff has around 20,000 members from both the Delhi and Mumbai Regions. The members include some national and international acclaimed sports personalties.
3. According to the Plaintiff, the said marks are solely and exclusively associated by the members of the public and Society at large with the Plaintiff alone and none else. According to the Plaintiff, by use of the said marks since 1953 on an extensive scale and by advertising the goods and services bearing the said marks, the Plaintiff has generated tremendous goodwill and reputation in the said marks, which are solely and exclusively associated and owned by the Plaintiff.
4. According to the Plaintiff, on or about 31st October, 2017, some of the members of the Plaintiff applied for an identical mark being 'NSCI UNITED ACTIVE FORCE'. When the Plaintiff realized this fact, the Plaintiff immediately filed a Civil Suit bearing COMIP (L) No. 111 of 2019 before this Court on 4th January, 2019 and ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 3 / 10 MNOB-NMCDL-569-2019-UR.doc moved this Court for urgent ad-interim reliefs on 7th January, 2019. The said Suit was disposed of by the following Order :
"1. The learned Advocate for the Defendants on instructions from Mr. Viren Shah, member of Defendant No.1, who is present in Court, undertakes :
(i) to delete NSCI from its name NSCI United Active Force within seven days from today;
(ii) not to use the word NSCI on any of their stationery, receipt books, publicity material etc;
(iii) to make necessary application within seven days from today to the Trade Mark Registry to remove 'NSCI' from its name and obtain fresh registration certificate.
The above undertakings are accepted.
2. In view of the above undertakings, the Suit is decreed in terms of prayer clauses (a), (b) and (c) which are reproduced hereunder :
"(a)that the Defendants, their office bearers, agents, servants or any other persons claiming through or under them be restrained by a permanent order and injunction of this Hon'ble Court from in any manner using the mark/name/logo/domain name NSCI or the mark National Sports Club of India or any mark/name/logo/domain name similar or deceptively similar thereto or as part of any other mark in respect of any goods or services and form any association or relation of whatsoever nature with the Plaintiff and represent that the Defendants are associated with the Plaintiff so as to infringe the Plaintiff's registered marks bearing Nos.3226806 and 3226807;
(b) that the Defendants, their office bearers, agents, servants or any other persons claiming through or under them be restrained by a ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 4 / 10 MNOB-NMCDL-569-2019-UR.doc permanent order and injunction of this Hon'ble Court from in any manner, using the mark/name/logo/domain name NSCI or the mark National Sports Club of India or any mark/name/logo/domain name similar or deceptively similar thereto or part of any other mark in respect of any goods or service and form any association or relation of whatsoever nature with the Plaintiff and represent that the Defendants are associated with the Plaintiff and pass the goods and services of the Defendants as and for the goods and service of the Plaintiff;
(c) that the Defendants, their office bearers, agent, servants or any other persons claiming through or under them be restrained by a permanent order and injunction of this Hon'ble Court from in any manner collecting money or providing any membership to any person or entity by using the mark/name/logo/domain name NSCI or the mark National Sports Club of India or any mark/name/logo similar or deceptively similar thereto or as part of any other mark"
3. The Suit is accordingly disposed of. Refund of Court Fees, if any, as per rules. Notice of Motion (L) No.20 of 2018 also stands disposed of."
5. Thereafter, the Plaintiff took disciplinary action against the members including Mr. Suresh Seth and Mr. Viren Shah who had formed 'NSCI UNITED ACTIVE FORCE' and had applied for registration of the said mark, and by Order dated 8th February, 2019 suspended their membership for a period of six months. The members who were suspended from the Plaintiff Club including Mr. Suresh Seth and Mr. Viren Shah filed a Suit before this Court being Suit (L) No. 202 of 2019 impugning the said action and also took out Notice of Motion (L) No. 428 of 2019 seeking ad-interim / interim reliefs. One of the arguments of the suspended members ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 5 / 10 MNOB-NMCDL-569-2019-UR.doc (Plaintiffs therein) before the learned Single Judge, was that, in the suit filed against them by the Plaintiff Club they had on the very first day agreed to discontinue the use of the name 'NSCI' and submit to a decree of perpetual injunction. Thereafter, they have not breached the injunction or continued to use the NSCI name. The Learned Single Judge (S.C. Gupte, J.) inter-alia accepted the said submission of the members who were suspended including Shri. Suresh Seth and Shri. Viren Shah and recorded in his order dated 15th February, 2019 that : "On the very first day, when the matter was brought before the Court, the Plaintiffs agreed to discontinue the use of the name 'NSCI' and submit to a decree of perpetual injunction. There is no case that the Plaintiffs are breaching that injunction or continuing to use the 'NSCI' name" and restrained the Club from giving effect to the order of suspension dated 8 th February, 2019 and placed the Notice of Motion for final hearing on 12th March, 2019.
6. Today, urgent Applications are made before this Court by the Plaintiff in the above Suits / Notices of Motion filed against the Defendants - Mr. Prashant Narendra Gayakwad and Mr.Rajesh D. Ganatra stating that the said Mr. Prashant Narendra Gayakwad and Mr.Rajesh D. Ganatra have filed Applications before the Trade Mark Registry seeking registration of the names / marks 'NSCI UNITED ACTIVE FRONT' and 'NSCI UNITED ACTIVE FORUM' respectively. The Plaintiffs submitted before the Court that it is only on 26th February, 2019 that they came to know about the said Applications filed by the Defendants with the Trade Mark Registry, Mumbai, and they apprehend that the Defendants are made to file the said ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 6 / 10 MNOB-NMCDL-569-2019-UR.doc Applications by certain members, who are interested in causing harm, injury and damage to the Plaintiff, its property, goodwill and reputation attached to their mark 'NSCI'. It is submitted that the Defendants may deal with the said mark 'NSCI' and create third party rights therein ; the Defendants may also enroll members by charging money and misappropriate the same ; the impugned marks being identical / deceptively similar, the members of the public may deal with the Defendants or any person claiming through or under the Defendants and may become members of the organizations of the Defendants, under a mistaken impression that the same are the organisations formed by the Plaintiff or are connected to the Plaintiff ; the Defendants may also enter into illegal and fraudulent transactions which will harm the goodwill and reputation of the Plaintiff. The Plaintiff therefore submitted that they be granted urgent ad-interim reliefs without notice.
7. The Plaintiff Club was directed to give notice with liberty to move this Court today at 03.00 p.m. for urgent ad-interim reliefs.
8. Mr.Prashant Narendra Gayakwad, Defendant in COMIP(L) No.56 of 2019 is present in Court at 03.00 p.m. In response to the queries raised by the Court, he initially informed the Court that he is a real estate broker, has no office premises and operates from his residence. On a further query raised by the Court as to why he has submitted an Application to the Trade Marks Registry, Mumbai seeking registration of the name/mark 'NSCI UNITED ACTIVE FRONT', he has no answer. At this point of time, the learned Advocate appearing for the Plaintiff informed the Court that there ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 7 / 10 MNOB-NMCDL-569-2019-UR.doc is an individual, who has accompanied Mr.Gayakwad, and the said individual was briefing Mr.Gayakwad qua the submissions that he should make before the Court. On hearing this, the said individual immediately left the Court room. The Advocate on Record for the Plaintiff followed him and informed him that his presence is required in Court. Thereupon, the said individual appeared and informed the Court that his name is Maxim Fernandes ; he is a Tax Consultant by profession and Mr.Gayakwad had come to him with all the necessary papers to get the Trade Mark 'NSCI UNITED ACTIVE FRONT' registered and since he knows a Trade Mark Attorney by the name of Mr.Fuez, he forwarded the papers to him to get the Trade Mark 'NSCI UNITED ACTIVE FRONT' registered. When this Court asked Mr.Gayakwad to reveal the name of the person at whose instance he had filed the said Application with the Trade Mark Registry, he informed the Court that he was asked to make the said Application by Mr.Fernandes himself. Mr.Fernandes who was surprised at the answer given by Mr.Gayakwad, was now left with no other option but to speak the truth. Mr.Fernandes now informed the Court that since he is a Tax Consultant he is taking care of the accounts of Mr.Suresh Seth, who is a member of NSCI and the Application before the Registry of Trade Marks is filed at his instance. This Court therefore again turned to Mr.Gayakwad, who too was now left with no other option but to speak the truth. He now admitted before the Court that since the last 18 months he is working as a Peon in the office of Mr.Suresh Seth and that the said Application was filed in September-2018 before the Trade Mark Registry at the instance of Mr.Suresh Seth. ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 :::
Nitin 8 / 10 MNOB-NMCDL-569-2019-UR.doc Mr.Fernandes informed the Court that Mr.Ganatra who is the Defendant in COMIP(L) No.287 of 2019 and who has applied for registration of the name/mark 'NSCI UNITED ACTIVE FORUM' is an employee of Mr.Viren Shah.
9. In view of the above, the Plaintiff was directed to inform Mr.Suresh Seth and Mr.Viren Shah to remain present in Court at 05.00 p.m. However, at 05.00 p.m. only Mr.Suresh Seth is present along with his Counsel. Mr.Suresh Seth has admitted that Mr.Gayakwad is working as a Peon in his firm and the Application was filed by his Peon, at his instance.
10. In the circumstances, it is clear that, Mr.Suresh Seth and Mr.Viren Shah were not only responsible in forming 'NSCI UNITED ACTIVE FORCE' and thereafter applying for registration of that name, but they had in the names of their respective peons / employees also applied for registration of the names 'NSCI UNITED ACTIVE FRONT' and 'NSCI UNITED ACTIVE FORUM' respectively. However, when the Suit being COMIP No. 111 of 2019 was filed by the Plaintiff Club inter-alia against them, they agreed to delete NSCI from the name 'NSCI UNITED ACTIVE FORCE' and to make necessary application to the Trade Mark Registry to remove 'NSCI' from its name and obtain a fresh registration certificate, but suppressed the fact from this Court that they have also sought registrations through their peons / employees seeking registration of the names / marks 'NSCI UNITED ACTIVE FRONT' and 'NSCI UNITED ACTIVE FORUM'. It appears that even in the Suit filed by Mr.Suresh Seth, Mr. Viren Shah and others impugning their suspension ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 9 / 10 MNOB-NMCDL-569-2019-UR.doc orders issued by the Plaintiff Club, they obtained orders from the Court by suppressing the fact that they have through their peons / employees also applied for registration of the names 'NSCI UNITED ACTIVE FRONT' and 'NSCI UNITED ACTIVE FORUM' respectively and that the said Applications continue to be on the record of the Trade Mark Registry and in fact they had also exchanged correspondence with the Trade Mark Registry through Mr.Gayakwad and Mr.Gantra.
11. In my view, Mr. Seth and Mr. Shah, at the time of giving aforesaid undertaking to this Court on 19 th January, 2019 that they will remove 'NSCI' from its name and obtain a fresh registration certificate ought to have informed the Court that they have through their employees also sought registration of the names 'NSCI UNITED ACTIVE FRONT' and 'NSCI UNITED ACTIVE FORUM' and that the said Applications are pending before the Registry of Trade Marks. Instead they did not make a whisper about the same and the said Applications seeking registration of the names 'NSCI UNITED ACTIVE FRONT' and 'NSCI UNITED ACTIVE FORUM' are till date pending before the Registry of Trade Marks. The true and correct facts which ought to have been disclosed before Justice Gupte whilst obtaining an ad-interim order dated 15th February, 2019 against the Plaintiff-Club, were also suppressed.
12. In the above circumstances, prime facie, the conduct of Mr.Suresh Seth and Mr.Viren Shah appears to be dishonest and contemptuous. However, the Plaintiff is allowed to join Mr.Suresh Seth and Mr.Viren Shah as party Defendants to the above ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 ::: Nitin 10 / 10 MNOB-NMCDL-569-2019-UR.doc Suits and Notices of Motion and Mr.Suresh Seth and Mr.Viren Shah are given an opportunity to file their respective Affidavits. Amendments to be carried out on or before 5th March, 2019. Ad-interim injunction is granted in terms of prayer Clauses
(a), (b) and (c) of the Notices of Motion. Stand over to 4th March, 2019.
( S.J.KATHAWALLA, J. ) ::: Uploaded on - 05/03/2019 ::: Downloaded on - 12/03/2019 21:05:07 :::