Orissa High Court
Nrusingha Charan Satapathy vs Dalma Comforts And Entertainment on 9 May, 2014
Author: R. Dash
Bench: Raghubir Dash
ORISSA HIGH COURT: CUTTACK
F.A.O. NO.57 OF 2014
From the order dated 4.1.2014 passed by the learned District Judge,
Khurda in I.A. No.145 of 2013 arising out of Civil Suit No.5 of 2013.
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Nrusingha Charan Satapathy ...... Appellant
Versus
Dalma Comforts and Entertainment
Company Pvt. Ltd. ...... Respondent
For Appellant : M/s. Shib Shankar Mohanty,
H.P. Das & S.R. Pati
For Respondent : M/s. Prasanta Kumar Nanda
PRESENT :
THE HONOURABLE MR. JUSTICE RAGHUBIR DASH
Date of hearing : 23.04.2014 Date of judgment : 09.05.2014
R. DASH, J.The order of ad interim injunction dated 4.1.2014 passed in I.A. No.145 of 2013 arising out of Civil Suit No.5 of 2013 in the court of the learned District Judge, Khurda is under challenge in this appeal. The appellant is the defendant in the suit and the respondent is the plaintiff. The plaintiff is a Private Limited Firm incorporated under the provisions of the Indian Companies Act, 1956. The suit has been filed for permanent injunction restraining the defendant from continuing or repeating any infringement of the plaintiff's registered 2 trade marks as well as passing off the defendant's goods and services as that of the plaintiff.
2. Plaintiff's case, in nutshell, is that in the year 2001 it opened one restaurant as a proprietory concern, exclusively dealing with Odia Cuisine under the trade name and style 'Dalma'. The name of a famous Odia recipe 'Dalma' was adopted as the trade name and mark of the firm. The Restaurant prepares and serves Odia Cuisine. With the success of the Restaurant, the plaintiff expanded its business to other districts in Odisha. In the year 2005 the plaintiff formed a Company under the Companies Act, 1956 and opened its Restaurant at three more places in the capital city of Odisha and other outlets in the districts of Puri and Sundargarh under the trade and brand name 'Dalma'. The plaintiff is the first to adopt the brand and label 'Dalma' having a unique get up and colour combination with the word 'Dalma' encased inside a quadrilateral and has been using the brand and label continuously since 2001, as a result the brand has acquired immense reputation and goodwill over a period of twelve years. The consumers associate the said brand with the plaintiff and none else. Plaintiff has also acquired statutory rights in the said brand, both in Odia and English scripts, by obtaining registration certificates thereof from the Trade Mark Registry, Government of India. In November 2011, the plaintiff's attorney had issued a "public caution notice" about the details of plaintiff's trade 3 marks registration to caution other traders not to copy its trade marks to run similar business under its trade name.
As against the defendant the plaintiff has alleged that in or around November 2012 it came across the defendant's products being offered for sale in different places at Bhubaneswar under an identical/deceptively similar brand name in his restaurant business serving Odia Cuisine. Thus, the defendant has infringed the plaintiff's trade mark. It is further alleged that the defendant's use of the trade mark in question is fraudulent, intended to confuse and deceive members of the public by creating an impression that the defendant's trade has got nexus with that of the plaintiff. Thus, the defendant is passing off its inferior services as that of the plaintiff.
3. The defendant has filed counter in the I.A. contending that the term 'Dalma' or 'Dalema' is common to the trade in which the parties are. Being a customary and generic name, it is being commonly used by many hotels and restaurants within Bhubaneswar city as well as other parts of the State of Orissa. 'Dalma' or 'Dalema' is a customary Odia Cuisine. The words are neither invented nor coined by the plaintiff. They are in existence since time immemorial. Therefore, registration of the trade mark 'Dalma' or 'Dalema' in favour of the plaintiff is in violation of Section 9 of the Trade Marks Act, 1999. Further assertion made by the defendant is that it has never offered to sell his product to the customers representing the same to 4 be that of the plaintiff. Defendant's product is different from that of the plaintiff in all respect. Therefore, the question of passing off does not arise at all. Further contention is that the plaintiff did never object to many other traders rendering their business using the trade name 'Dalma' or Dalema', thereby tacitly allowing them to carry on their business in the said trade name for which the words have become 'publici juris'. In addition to all such defences it is also asserted that the defendant is the prior user of the said trade name. Another contention is that the plaintiff being a registered Company has filed the suit without being represented by anyone for which the suit is liable to be dismissed.
4. Learned counsel for the appellant-defendant submits that the learned lower court has failed to appreciate several documents produced by the defendant and the contentions raised on behalf of the defendant, that learned lower Court's finding as regard the existence of prima facie case, balance of convenience and irreparable loss in favour of the plaintiff is grossly erroneous, that the learned lower court's finding that the plaintiff is the prior user of the brand name 'Dalma' is without any basis and without consideration of the documents filed by the defendant, particularly, a receipt dated 20.10.2001 issued by Bhubaneswar Municipality. Learned counsel for the respondent, on the other hand, has argued in support of the 5 findings recorded by the learned lower court and it is submitted that the impugned order is not liable to interference.
5. From the stand taken by the respective parties, it is found that the learned lower court has rightly observed that there is no serious dispute that the nature of activity of the parties is similar as they are providing Odia food to the general public in their respective outlets using the same trade name 'Dalma' or 'Dalema'. The learned lower court has further observed that though the sign- boards displayed in the respective outlets of the parties are not identical but the dispute between the parties centres round the use of the trade name 'Dalma/Dalema' which forms an essential feature of the trade mark/name of both the parties. Further observation of the learned lower court which is not disputed in this appeal is that on a bare look at the sign-boards of the defendant-appellant there appears to be similarity in colour combination and the use of trade name and a critical comparison of the trade mark/name of the plaintiff with that of the defendant showing some differences have over all similarity which is capable of deceiving or misleading a common customer with average intelligence to believe that the trade conducted by one party is that of the other. The learned lower court after examining the materials placed before it has arrived at a prima facie conclusion that the trade mark used by the defendant is phonetically and visually similar to that of the plaintiff and there is a scope to 6 make confusion in the mind of the customers and, therefore, there is every likelihood of passing off goods of the defendant as that of the plaintiff.
6. The main plank of argument advanced by the learned counsel for the appellant is on the prior use of the trade name. Learned lower court has prima facie found the plaintiff to be the prior user of the trade name. The only document on which the appellant- defendant has relied on, i.e., a Municipality receipt showing payment of license fee for a restaurant for the year 2001, has been taken into consideration but it has not been accepted on the ground that it does not mention the name of the restaurant for which the license fee has been paid. A Xerox copy of the said receipt (Annexure-3 to the appeal memo) is available for reference. It reflects that on 20.10.2001 the receipt has been issued in favour of Nrusingha Charan Satpathy, 270 Sachibalaya Marg, M.S. Nagar showing payment of license fee for the year 2001 and 2002 for a First Class restaurant. The word 'Dalma' is written at the top of the printed form of the receipt. The said word does not find place within the space which is meant for the contents of the receipt. Therefore, chance of the word having been inserted at a latter stage cannot be ruled out at this stage, more so, when it has clearly been averred by the defendant in para-5 of his show cause supported by affidavit dated 24.7.2013 (Annexure-4) that the defendant O.P. has been running his business since the year 2008. 7 No other supporting materials having been placed on record, the learned lower court appears to have rightly refused to place reliance on the receipt dated 20.10.2001. The plaintiff, on the other hand, appears to have filed some documents evidencing its existence as "Dalma Comforts and Entertainment" from 2001 which the respondent-defendant claims to be manufactured documents not connected with the plaintiff's business (see para-7 of the additional show cause filed by the respondent-O.P. supported by affidavit dated 7.10.2013-Annexure-5). With regard to the claim of prior usage, the defendant has taken different stand. In his additional show cause (Annexure-5) it is simply stated that the O.P. is the prior user of the offending trade marks, whereas, in his original show cause (Annexure-4) it is clearly stated that the O.P. has been running his business since 2008. As against such averments, the plaintiff has averred that it has been running its business since 2001 and that it has registered the trade mark 'Dalma' on 4.8.2008. With these averments and materials the presumption goes in favour of the plaintiff as the prior user of the trade mark.
7. Next, the plea that 'Dalma' or 'Dalema' is a customary and generic name and the same trade name is being used by other Hotels and Restaurants within Bhubaneswar city and other parts of the State of Odisha may be taken up. The merit of this stand is to be decided during the trial of the suit. However, materials available on 8 record make out a prima facie case that the field of operation of both the appellant and the respondent is the same and under similar trade name/mark. Plaintiff-respondent is prima facie found to be the prior user of the offending trade mark. It has also registered the trade mark in the year 2008. The plea that under the Trade name 'Dalma' or 'Dalema' several traders have been running restaurant business is itself indicative of the fact that the word has acquired a secondary meaning. When customer visits the restaurant with the trade name 'Dalma' they do not go there to purchase the Odia food item called 'Dalema' but to enjoy Odia Cuisine. From the plaintiff's averments that within 12 years it has opened several outlets at different places in Odisha and that its gross sale has increased by more than eleven times within a period of six years, there appear a prima facie indication that the trade name 'Dalma' has some amount of distinctiveness. From all these facts and circumstances it can be said that the respondent has got a very good prima facie case.
8. In Rajendra Sahoo -v- Ganeswar Swain, reported in 62 (1986) C.L.T. 671 which is relied on by the appellant neither of the parties had registered his Trade Mark entitling him to be the exclusive user of the Trade Mark but it was alleged that the defendant had been selling and passing off his 'bidis' under the name and with the mark which were deceptively similar to those used by the plaintiff. Under such circumstances it was held that the plaintiff's 9 suit was not for infringement of the Trade Mark but an action against passing off by the defendant. In the case on hand, the plaintiff- respondent has registered the Trade name/mark. It is settled position of law that in a passing off action proof of actual damage or fraud is not necessary. In Rajendra Sahoo -v- Ganeswar Swain (supra) this Court has observed that if there is a likelihood of the offending trade mark invading the proprietary right, a case for temporary injunction is made out. Prima facie, this is a case of both infringement of registered Trade mark and an action for passing off. Under such circumstances, the balance of convenience can be said to be leaning in favour of the plaintiff respondent and if interim protection is not granted the plaintiff would suffer irreparable injury.
9. In T.V. Venugopal -v- Ushodaya Enterprises Ltd., reported in (2011) 4 SCC 85, the Hon'ble Apex Court has held that the appellant was the proprietor of a firm carrying on business in incense sticks in the name and style of "Ashika's Eenadu" and the respondent company was engaged in the business of publishing a newspaper in Telugu entitled 'Eenadu'. The respondent contended that the use of the word 'Eenadu' by the appellant amounted to infringement of their copyright and passing-off in trade mark. The appellant took the defence that 'Eenadu' is a generic word. It was also contended that 3rd party used to carry on their trade using different trade names but containing the word "Eenadu" as a part of their 10 respective trade name. Hon'ble Supreme Court did not accept both the contentions, observing that the respondent company's mark 'Eenadu' having acquired extraordinary reputation and goodwill, adoption of the word 'Eenadu' by the appellant was ex facie fraudulent and mala fide from the very inception. It was further observed that permitting the appellant to sell his product with the mark 'Eenadu' would create confusion in the minds of the consumers by leading them to believe that the appellant's products are, in fact, the products of the respondent-Company and it would be like encroaching on the reputation and goodwill of the respondent- Company.
10. Another ground taken in the appeal memo is that the I.A. is liable to be dismissed on the sole ground that the plaintiff- petitioner is a Company incorporated under the Indian Companies Act, 1956 and the suit has been filed without any representation. But no authority has been cited in support of the contention that in the absence of Company being represented by some one the suit against the registered Company would be not maintainable. Under Order 29, C.P.C. a suit by or against a registered Company must be instituted in the name of the Company. However, the pleading may be signed and verified on behalf of the Corporation by the Secretary or by any Director or other principal officer of the Corporation, who is able to depose to the facts of the case. Therefore, the maintainability of the 11 suit on the ground of improper representation of the plaintiff Company is not sustainable.
11. Having considered the grounds raised by the appellant and the findings recorded by the learned lower court it is held that there are no sufficient grounds to interfere with the finding of the learned lower court to support the order of interim injunction passed against the appellant. Accordingly, the appeal stands dismissed on contest but without cost. Before parting with, it is considered necessary to observe that the view taken by this Court as well as the trial court in the matter of grant of interim relief shall be deemed to be tentative view and not the final view.
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R. Dash, J.
Orissa High Court, Cuttack The 9th May, 2014/A.K.Kar, Secretary