Calcutta High Court
Samir Kumar Roy & Anr vs Dev Sahitya Kutir Private Limited & Ors on 20 April, 2017
Author: Tapabrata Chakraborty
Bench: Nishita Mhatre, Tapabrata Chakraborty
IN THE HIGH COURT AT CALCUTTA
Civil Appellate Jurisdiction
ORIGINAL SIDE
Present:
The Hon'ble Acting Chief Justice Nishita Mhatre
&
The Hon'ble Justice Tapabrata Chakraborty
GA 935 of 2017
with
APOT 93 of 2017
CS 22 of 2017
OCOT 1 of 2017
SAMIR KUMAR ROY & ANR.
Versus
DEV SAHITYA KUTIR PRIVATE LIMITED & ORS.
For the Appellants : Mr. Jishnu Saha, Sr. Adv.
Ms. Mousumi Bhattacharya, Adv.
Mr. Sayantan Basu, Adv.
Mr. Ishan Saha, Adv.
Mr. Atish Ghosh, Adv.
For the Plaintiffs/
Respondents : Mr. Ranjan Bachawat, Sr. Adv.
Mr. Paritosh Sinha, Adv.
Mr. Debnath Ghosh, Adv.
Mr. Sayan Roychowdhury, Adv.
Hearing is concluded on : 04.04.2017. Judgment On : 20th April, 2017. Tapabrata Chakraborty J. :
1. The defendant nos.1 and 2 have come up in appeal against an order dated 6th March, 2017 passed by the learned Single Judge in G.A. No. 444 of 2017 arising out of C.S. No. 22 of 2017 restraining the defendant nos.1 to 6 from using the word 'A.T. Dev' or 'Dev' in the dictionaries they have published since January, 2016 with riders to the effect that such interim injunction shall not prevent the defendants to exploit the original work of Ashu Tosh Dev and from using the name of Ashu Tosh Dev in any other manner and that the preface to the offending book can be retained with a disclaimer that the dictionary is not published by Dev Sahitya Kutir. Against the said interim directions, the plaintiffs have also filed a cross-objection under Order 41 Rule 22 of the Code of Civil Procedure.
2. Mr. Jishnu Saha, learned senior advocate appearing for the defendant nos.1 and 2/the appellants herein submits that the learned Judge erred in law in restraining the appellants from using the name 'A.T. Dev' or 'Dev' in respect of the work authored by 'A.T. Dev' in spite of arriving at a finding that the plaintiffs "could not have claimed any right with regard to the original work and has failed to impress upon this Court that the contents of both the works are same and/or similar".
3. He further argues that by restraining the appellants from using the name 'A.T. Dev' or 'Dev' in respect of the work which has been authored by 'A.T. Dev', the learned Judge has in effect allowed extension of copyright of the work of 'A.T. Dev' when in fact after the efflux of a period of sixty years from the date of death of the author, the work comes within the public domain and the plaintiffs cannot claim any monopoly or exclusivity over the said work. The appellants have published the work in the month of January, 2016 prior to publication of the work by the plaintiffs in the month of September, 2016. The plaintiffs have miserably failed to bring on record appropriate documents to substantiate their pleas of being the prior user of the mark and of having used the mark continuously and uninterruptedly for a considerable period which entitle them to the reputation and goodwill in the name 'A.T. Dev' or 'Dev'.
4. He further argues that 'A.T. Dev' was the common ancestor of the parties and that as such the reference of 'A.T. Dev' by the appellants in the cover page of the dictionary cannot be construed to have been an infringement action and none of the ingredients of law of passing off action are present in the facts and circumstances of the case. The reference of 'A.T. Dev' in respect of book/dictionary authored by 'A.T. Dev' is indispensible and it cannot be described in any other manner and such description cannot, by the furthest of imagination, give rise to any likelihood or probability of any confusion or deception. There are sufficient distinguishing features between the books/dictionaries of the appellants and the respondents. The plaintiffs are trying to take wrongful advantage of the user of 'Dev Sahitya Kutir' where 'Dev' only forms a part of it and are trying to extend the same illegally over 'A.T. Dev'.
5. Per contra, Mr. Bachawat, learned senior advocate appearing for the plaintiffs/respondent nos.1 and 2 herein submits that Mr. Ashu Tosh Dev expired on 14th October, 1943 and thereafter the respondent no.1 was incorporated in the year 1945 and is an existing company within the meaning of the Companies Act, 1913 and it is using the marks and/or trade name as 'A.T. Dev' and 'Dev Sahitya Kutir' and since then there had been publication of 25 editions of the dictionary and as such there can be no dispute as regards the fact that the 'A.T. Dev' mark has been continuously and uninterruptedly used for a considerable period of time. It is only from the year 2016, the appellants have for the first time published dictionaries (compact edition) and (popular edition) by using the name 'A.T. Dev' with a malafide intent to confuse and deceive the people at large.
6. He further submits that before allowing the appellants to retain the preface of the offending book with a disclaimer, the learned Judge ought to have appreciated that even after categorically stating in the preface of their book that the Student Favourite Dictionary, Sabdobodh Abhidhan, Nutan Bangla Abhidhan were all unique and excellent and that the same have lost much of its importance with the passage of time and that as such they have come forward with a new dictionary, the appellants could not have adopted the mark 'A.T. Dev' to identify its publication with 'A.T. Dev'.
7. He further argues that the plaintiffs are using the word 'A.T. Dev' since 1945 and though the word mark 'Dev' has not been registered independent of the composite mark 'Dev Sahitya Kutir' but a part of the word, namely, 'Dev' by reason of long passage of time has acquired a considerable goodwill which has been sought to be infringed by the appellants.
8. He further submits that the appellant no.1 is the husband of the appellant no.2 and in the year 2000 the appellants formed three organisations under the name and style of 'Neelanjana Enterprise', 'Education Foundation' and 'P.P. Graphics' and were engaged in the 'DTP printing'. On the request of the defendant no.7, the plaintiffs entrusted the appellants to format and/or carry out the DTP job of the dictionaries sold and marketed under the mark 'A.T. Dev' but the appellants caused enormous delay in such work and as such the plaintiffs were constrained to terminate the agreement with the appellants. As the records were in possession of the appellants for a considerable period, they had the advantage of collecting data with which they started preparation of a new dictionary and published the same using the 'A.T. Dev' with a malafide intent to earn illegal gains.
9. According to Mr. Bachawat, the 'A.T. Dev' dictionary which involves the plaintiffs' literary, artistic and other copy- righted works cannot be appropriated by the appellants in a fraudulent and illegal manner. In the event the material contained in the respondents' works is culled out from the work of the appellants', the rest of the dictionary published by the appellants would become meaningless inasmuch as the appellants' work is nothing but a reproduction of the plaintiffs' work. The appellants' dictionary is an obvious imitation of the plaintiffs' work and the appellants have made mere cosmetic changes in the dictionary containing the literary and artistic work of the plaintiffs. In support of the arguments reliance has been placed upon the judgments delivered in S. Syed Mohideen -vs- P. Sulochana Bai reported in (2016) 2 SCC 683, in Euro-Solo Energy Systems Limited -vs- Eveready Industries India Limited reported in 2009 (4) CHN 162, in Laxmikant V. Patel -vs- Chetanbhat Shah & Anr. reported in (2002) 3 SCC 65, in Satyam Infoway Ltd. -vs- Siffynet Solutions (P) Ltd. reported in (2004) 6 SCC 145, in Amritdhara Pharmacy -vs- Satya Deo Gupta reported in AIR 1963 SC 449 and in K. R. Chinna Krishna Chettiar -vs- Shri Ambal and Co., Madras and Another reported in (1969) 2 SCC 131.
10. Heard the learned advocates appearing for the respective parties and considered the materials on record.
11. It is true that after expiry of a period of sixty years from the date of death of the original author, the work becomes public property but even after expiry of the said period, the use of the name of the original proprietor must be accompanied with indications sufficient to show that the new work sold is not the work of the original author but of the person producing it. The intent is to ensure that the public is not deceived. The prevention of passing off in common law is considered to be a right for protection of goodwill.
12. There is a broad equitable doctrine that one who has received information in confidence shall not take unfair advantage of it. The records pertaining to the plaintiffs' dictionaries were in possession of the appellants for a considerable period prior to termination of the agreement and coupled with such fact, the proximity amongst the dates of termination of agreement and the publication of work in the month of January, 2016 gives an indication of breach of confidence.
13. The learned Single Judge had invited affidavits from the respective parties to decide the issue finally and upon considering the balance of convenience and inconvenience amongst the parties, the learned Judge has correctly balanced the equities by restraining the appellants from using the word 'A.T. Dev' or 'Dev' in the dictionaries they have published since January, 2016 with riders to the effect that the appellants would be free to exploit the original work of Ashu Tosh Dev using the name of Ashu Tosh Dev in any other manner and that the preface to the offending book can be retained with a disclaimer that the dictionary is not published by Dev Sahitya Kutir.
14. A comparison of the present covers of the dictionaries of the appellants and the plaintiffs reveal a similarity both ocular and phonetic and creates a likelihood of confusion. Upon considering the goodwill earned by the plaintiffs through user of the mark for a continuous and uninterrupted period, the learned Judge passed the interim directions and we find full justification towards issuance of the same. The discretion exercised by the learned Judge is neither manifestly incorrect nor apparently without jurisdiction warranting interference in the present appeal. Since we are confronted with the legal propriety of a temporary injunction, we must abjure from going into minute details and refrain from discussing the case threadbare.
15. For the reasons discussed above, we do not find any reason to interfere with the order impugned and accordingly both the appeal and the cross-objection are dismissed.
There shall, however, be no order as to costs.
Urgent Photostat certified copy of this judgment, if applied for, be given to the parties, as expeditiously as possible, upon compliance with the necessary formalities in this regard.
(Tapabrata Chakraborty, J.) (Nishita Mhatre, A.C.J.)