Delhi High Court
Altab Hossain vs Howrah Super Biri No. 202 And Ors. on 23 January, 2001
Equivalent citations: 2000(57)DRJ660
Author: Madan B. Lokur
Bench: Madan B. Lokur
JUDGMENT Madan B. Lokur, J.
1. The Plaintiff has filed a suit for a perpetual injunction restraining the Defendants from manufacturing and selling biris under the name and style of HOWRAH BIRI. The Plaintiff filed IA No.5582 of 1997 for an interim injunction against the Defendants. An ex parte ad interim injunction was granted in favor of the Plaintiff on 4th July, 1997.
2. Feeling aggrieved by the ex parte injunction, the Defendants filed FAO(OS) No.178 of 1997. On 17th October, 1997 the Plaintiff stated before the Division Bench that the parte order may be vacated and the injunction application be decided on merits. In the meanwhile, the Defendants filed IA No.9381 of 1997 praying for an injunction restraining the Plaintiff from manufacturing and marketing biris under the name and style of HOWRAH BIRI. Both these applications are now being disposed of.
3. According to the Plaintiff, it has been carrying on the business of manufacturing and marketing biris since 25th August, 1995. It adopted a label HOWRAH BIRI and the numerals 102 are also written on the label. It applied for registration of the label on 3rd December, 1996 by filing an appropriate application in the Trade Mark Registry in Calcutta (now Kolkata). It is alleged that the Defendants had recently started manufacturing and selling biris under the name and style of "HOWRAH SUPER BIRI" with the numerals 202 written on the label. It is alleged that the label of the Defendants is identical to that of the Plaintiff (except for a few changes) and, therefore, the Plaintiff is entitled to the relief prayed for.
4. The Plaintiff has left quite a few gaps in the plaint and has been quite vague in respect of a few averments. However, I do not think it necessary to deal with these omissions.
5. The Defendants filed a written statement and a counter claim denying the various averments of the Plaintiff. The Defendants claimed that they have been manufacturing and marketing HOWRAH SUPER BIRI with the numerals 202 since 1st January, 1995 (earlier mentioned as 1st April, 1995). They applied for registration of this trade mark in the Trade Mark Registry in New Delhi on 30th October, 1996. It is stated that the Defendants had given a reply dated 12th April, 1997 to the notice sent by the Plaintiff. This fact was suppressed by the Plaintiff. It was prayed that since several material facts had been concealed by the Plaintiff, the suit deserved to be dismissed and the injunction prayed for by the Defendants should be granted.
6. Learned counsel for the parties made their submissions on 1st December, 2000 when judgment was reserved.
7. From the facts placed before me, two things stand out. Firstly, the Defendants claim to be manufacturing and marketing HOWRAH SUPER BIRI with the numerals 202 since 1st January, 1995. The Plaintiff claims to be manufacturing and marketing HOWRAH BIRI with the numerals 102 since 25th August, 1995. In other words the user of the words HOWRAH BIRI by the Defendants is prior in point of time to the user of these words by the Plaintiff. So also, the application for registering the mark HOWRAH BIRI was made by the Defendants on 30th October, 1996 which is prior in point of time to a similar application made by the Plaintiff on 3rd December, 1996.
8. Learned counsel for the parties relied upon a plethora of decisions in support of their contentions. Except for two or three decisions, which do not advance the case of either of the parties, all other decisions relied upon were decisions rendered in interim applications. I do not think the principle of stare decisis will apply in respect of orders passed in interim applications. I do not, therefore, think it appropriate to deal with any of these decisions rendered in interlocutory applications.
9. Learned counsel for the Plaintiff also submitted that according to the Defendants they have been manufacturing and selling biris since January or February 1995 but the gate passes relating to payment of excise duty filed by the Defendants pertain to the year 1996. It was contended that the presumption, therefore, is that the Defendants started manufacturing biris only in 1996. I do not think any such presumption can be drawn. The application form filed by the Defendants for registration of their HOWRAH SUPER BIRI filed in the Trade Mark Registry in New Delhi states that they started their manufacturing activities on 1st January, 1995. The application has been filed for an official purpose and must be presumed to state the correct facts. Therefore, merely because the gate passes for payment of excise duty are for the year 1996 is of no consequence. It can, at best, lead to the inference that the Defendants evaded payment of excise duty. This is a matter between the Defendants and the excise authorities.
10. In view of the facts that appear on record, it seems to me that the Defendants started manufacturing their HOWRAH SUPER BIRI 202 prior to the Plaintiff's manufacture of HOWRAH BIRI 102. The application for registration of the trade mark was filed by the Defendants in the Registry in New Delhi prior to the application filed by the Plaintiff in the Registry in Calcutta (now Kolkata). In view of the prior user of the mark HOWRAH SUPER BIRI 202 by the Defendants, the Plaintiff has not made out any prima facie case for the grant of an interim injunction.
11. IA No.5582 of 1987 is, therefore, dismissed.
12. In so far as IA No.9381 of 1997 is concerned, it appears to me that apart from a prior user of the mark HOWRAH SUPER BIRI 202, the Defendants have not shown any right to exclusively use this mark. From the record it appears that even though the Defendants claim to have sales of their biris all over the country, they have not placed on record any document in support of their contention. A handful of documents have been filed to show that they sold their biris to some dealer in West Bengal. Strangely, all these transactions are of small amounts, the maximum being Rs.320/- and are against cash payments. Even the gate passes do not show a large turnover of the Defendants. As such, it is unlikely that the Defendants have a country-wide reach as alleged by them. The volume of sales does not appear to be very heavy.
13. I also find it a little odd that even though the Plaintiff sent a notice to the Defendants alleging that the Defendants were passing off their goods as those of the Plaintiff, the Defendants took no action against the Plaintiff until an ex-parte order was passed against the Defendants. If indeed the business of the Plaintiff was damaging the reputation or affecting the sales of the Defendants, surely they would have taken some steps against the Plaintiff. The fact that the Defendants took no steps against the Plaintiff cannot, as a rule, be held against them but it is certainly a matter which can be taken into consideration for assessing whether any irreparable loss or injury is being caused to the Defendants or if the balance of convenience lies in favor of the prayer of the Defendants being granted.
14. Prima facie, it appears that the geographical coverage of the biris manufactured by the Defendants is not nation-wide as alleged nor does it appear that they have a large turnover. The Defendants have also not made out a prima facie case to show that the balance of convenience lies in favor of the prayer of the Defendants being granted. IA No. 9391 of 1997 is, therefore, dismissed. Needless to say, any expression of views herein will not be binding at the time of the final disposal of the suit. IAs No.5582 of 1997 and 9381 of 1997 are dismissed.