Calcutta High Court
Emami Limited vs Hindustan Unilever Limited on 7 July, 2020
Equivalent citations: AIRONLINE 2020 CAL 412
Author: Moushumi Bhattacharya
Bench: Moushumi Bhattacharya
ORDER SHEET
CS No.62 of 2020
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
EMAMI LIMITED
Versus
HINDUSTAN UNILEVER LIMITED
BEFORE:
The Hon'ble JUSTICE MOUSHUMI BHATTACHARYA
Date : 7th July, 2020.
Appearance:
Mr. Jishnu Saha Sr. Adv.
Mr. Sanjay Ginodia, Adv.
Mr. Debnath Ghosh, Adv.
Mr. Manoj Kr. Tiwari, Adv.
Mr. Shwetank Ginodia, Adv.
The Court : Leave had been given to learned Counsel appearing for the plaintiff for presenting the plaint at 2 p.m. today.
The suit is for restraining the defendant from using the mark "HANDSOME" and/or "GLOW & HANDSOME" for grooming products for men. The defendant's mark is "FAIR AND HANDSOME". The plaintiff claims ownership of its mark and hence seeks to institute the suit upon the plaint being presented under the Code of Civil Procedure.
Learned Senior Counsel appearing for the plaintiff hands up an order passed by a learned Single Judge of the High Court of Judicature at Bombay in a 2 Commercial suit of 2020 (LD/VC/IA/1/2020 IN LD/VC/144/2020 - Hindustan Unilever Limited vs. Emami Limited) which is a suit filed by the defendant herein against the plaintiff wherein an order of injunction was passed yesterday i.e. on 6th July, 2020. Counsel claims that the plaintiff herein was served with the order passed in Bombay High Court after the plaint had been finalized for filing.
From the order it seems that the subject matter of the suit filed in the Bombay High Court deals with the mark "GLOW & HANDSOME". The effect of the order, passed ex parte, of injunction would appear from paragraphs 13 and 14, which are set out below:
"13. I have heard the submissions made by Mr. Kamod and perused the record. Prima facie it does appear that having filed its trade mark application in September 2018 and subsequently on 25th June, 2020 for the mark 'GLOW & HANDSOME', the Plaintiff is the prior adopter of the said mark. Further, from a perusal of the newspaper cutting at Exhibit-S to the Plaint, it prima facie appears that the Plaintiff has already started commercial advertisements in respect of the trade mark 'GLOW & HANDSOME'. From a perusal of Exhibit W, it prima facie appears that the Defendant has adopted the 'GLOW AND HANDSOME' mark for the first time on 25 th June 2020 and has not commercially used it till date. The statements made by the Defendant and published in various newspapers annexed to the Plaint do amount to a threat, however, whether they are unlawful or groundless, that is something that will have to be decided after hearing both the sides. Today, the Plaintiff is pressing for a limited relief that the Defendant should give at least 7 clear days prior written notice to the Plaintiff before initiating any legal proceedings in any court or claiming any interim or ad-interim reliefs against the Plaintiff as threatened in the statements issued / made on behalf of the Defendant against the Plaintiff's use of the trade mark 'GLOW & HANDSOME'. Considering the facts and circumstances of the present case, I 3 believe that no harm or prejudice would be caused to the defendant if the said limited relief is granted.
14. In view of what is stated in paragraph 29 of the Plaint and in view of the above, I am satisfied that the object of granting the following reliefs would be defeated if notice of this application is given to the Defendant. There shall accordingly be an ad-interim order in terms of prayer clause (a) of the Interim Application, which reads as follows:
(a) That pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, dealers, against and all other persons claiming under it be directed by this Hon'ble Court to give at least 7 clear working days prior written notice to the Plaintiff at the Plaintiff's advocates' address at 91-92, 9th Floor Sakhar Bhavan, Nariman Point, Mumbai - 400021 by registered post acknowledgement due (R.P.A.D) including the email address [email protected] and [email protected] before initiating any proceedings including legal proceedings in any court or claiming any interim or ad-
interim reliefs against the Plaintiff as threatened in the statements issued/made on behalf of the Defendant against the Plaintiff's use of the trade mark 'GLOW & HANDSOME';"
In essence, the plaintiff herein was restrained from initiating any proceedings including legal proceedings or claiming any interim reliefs against the defendant without giving the plaintiff seven clear working days prior written notice at the designated address mentioned in prayer (a) of the interim application.
Learned counsel submits that the order passed by the Bombay High Court is contrary to the mandate of section 41(b) of the Specific Relief Act, 1963 under which no injunction can be granted for restraining any party from instituting or prosecuting any proceedings in a Court not subordinate to that from which the 4 injunction is sought. In aid of that provision, counsel relies on Cotton Corporation of India Limited vs. United Industrial Bank Limited and Others (1983) 4 SCC 625. Paragraphs 8 and 9 of the said decision outline the scope and intendment of section 41(b) of the Specific Relief Act and was expressed thus:
"8. It is, therefore, necessary to unravel the underlying intendment of the provision contained in Section 41(b). It must at once be conceded that Section 41 deals with perpetual injunction and it may as well be conceded that it has nothing to do with interim or temporary injunction which as provided by Section 37 are dealt with by the Code of Civil Procedure. To begin with, it can be said without fear of contradiction that anyone having a right that is a legally protected interest complains of its infringement and seeks relief through court must have an unhindered, uninterrupted access to law courts. The expression 'court' here is used in its widest amplitude comprehending every forum where relief can be obtained in accordance with law. Access to justice must not be hampered even at the hands of judiciary. Power to grant injunction vests in the court unless the Legislature confers specifically such power on some other forum. Now access to court in search of justice according to law is the right of a person who complains of infringement of his legally protected interest and a fortiori therefore, no other court can by its action impede access to justice. This principle is deducible from the Constitution which seeks to set up a society governed by rule of law. As a corollary, it must yield to another principle that the superior court can injunct a person by restraining him from instituting or prosecuting a proceeding before a subordinate court. Save this specific carving out of the area where access to justice may be impeded by an injunction of the court, the Legislature desired that the courts ordinarily should not impede access to justice through court. This appears to us to be the equitable principle underlying Section 41(b). Accordingly, it must receive such interpretation as would advance the intendment, and thwart the mischief it was enacted to suppress, and to keep the path of access to justice through court unobstructed.5
9. . . . In order to avoid such a situation the Legislature enacted Section 41(b) and statutorily provided that an injunction cannot be granted to restrain any person from instituting or prosecuting any proceeding in a court not subordinate to that from which the injunction is sought. Ordinarily a preventive relief by way of prohibitory injunction cannot be granted by a court with a view to restraining any person from instituting or prosecuting any proceeding and this is subject to one exception enacted in larger public interest, namely, a superior court can injunct a person from instituting or prosecuting an action in a subordinate court with a view to regulating the proceeding before the subordinate courts."
The ratio of the quoted portion is that the Supreme Court was of the view that a preventive relief in the nature of a prohibitive injunction cannot be granted by a Court with the object of restricting any party from prosecuting any proceedings unless the injunction is given by a superior Court with regard to initiation of proceedings in a subordinate Court with the purpose of regulating the proceedings in the later forum. The words of the Supreme Court are clear and unambiguous in that save and except institution of proceeding in a Court subordinate to that where the injunction is sought, preventing a person from instituting proceedings in a Court which is at par with that where the injunction is sought, cannot be done. In other words, there must be unobstructed access to justice.
The plaintiff has also sought leave under Section 12A of the Commercial Courts Act, 2015, which provides for pre-institution mediation and settlement and under Order II Rule 2 of the Code of Civil Procedure since the plaintiff intends to file further proceedings.
6
The extent and reach of Prayer (a) of the interim application filed by the defendant herein which has been granted by the Bombay High Court touches upon the canvas of section 41(b) of the Specific Relief Act. Prayer (a);
"(a) That pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, dealers, against and all other persons claiming under it be directed by this Hon'ble Court to give at least 7 clear working days prior written notice to the Plaintiff at the Plaintiff's advocates' address at 91-92, 9th Floor Sakhar Bhavan, Nariman Point, Mumbai - 400021 by registered post acknowledgement due (R.P.A.D) including the email address [email protected] and [email protected] before initiating any proceedings including legal proceedings in any court or claiming any interim or ad-
interim reliefs against the Plaintiff as threatened in the statements issued/made on behalf of the Defendant against the Plaintiff's use of the trade mark 'GLOW & HANDSOME';"
Learned counsel appearing for the plaintiff herein has assured that the defendant will be given sufficient notice before any application for injunction is moved by the plaintiff. This would preserve the spirit of the order of the Bombay High Court which is that the plaintiff herein will not initiate any legal proceedings or claim any interim or ad interim reliefs against the defendant without giving seven clear days prior written notice to the defendant. Simply allowing the plaintiff to file the plaint would not be inconsistent with the specific direction of the Bombay High Court.
In view of the above reasons, the plaintiff is given liberty to file the plaint. Leave under section 12A of the Commercial Courts Act as well as Order II Rule 2 of the CPC is granted.7
This order is subject to requisite Court fees being put in by the plaintiff's advocate on record by 12 noon tomorrow i.e. 8th July, 2020.
The plaint will be admitted subject to initial scrutiny by the department.
(MOUSHUMI BHATTACHARYA, J.) B.Pal/sp