Madras High Court
Mehta Unani Pharmacy & Co., ... vs Amrutanjan Limited, Luz Church Road, ... on 16 April, 2002
Equivalent citations: (2002)2MLJ494
Author: R. Jayasimha Babu
Bench: R. Jayasimha Babu, A. Kulasekaran
JUDGMENT R. Jayasimha Babu, J.
1. The appeals filed are against the judgment of the learned single Judge who has given the declaration that had been sought by the plaintiff Amrutanjan Limited against the appellants in O.S.A. No.364 of 1997 - Mehta Unani Pharmacy & Company and Mehta Unani Pharmacy & Company Private Limited, who were the defendants in that suit, that the claim made by the defendants that they are exclusive owners of the expression 'Cold Rub' is unjustifiable and has injuncted them permanently from threatening the plaintiff by issuing memos, circulars, advertisements or notices, directly or indirectly declaring that the expression 'Cold Rub' shall not be used by anyone.
2. The threat which the plaintiff had alleged to be groundless has been held out in the advertisement issued in 'Times of India' dated 06.09.1986 by the defendants in the suit. That notice titled `CAUTION NOTICE', after referring to the fact that the defendants in the suit who were the owners of the registered trade mark 'COLDRUB' in respect of vapourising ointment have obtained ad interim injunction against M/s.Warner Hindustan Limited of UPPAL, Waraneal Road, Hyderabad and M/s. Akin Laboratories Private Limited at Hyderabad, from the District Judge, Rajkot; went on to state -- 'anybody manufactures or sells or markets the said vapourising ointment under the trade mark 'COLDRUB' shall be liable for breach of injunction and/or in contempt of Court. TAKE NOTICE."
3. It was the case of the plaintiff before the trial Court that the plaintiff is the owner of the trade mark 'Amrutanjan and Anoleum; that `Anoleum' had been advertised by it along with descriptive expression 'COLDRUB', such advertisements have been effected from 1969 onwards; that the plaintiff had obtained a decree in C.S. No.269 of 1977 against the same defendants against infringing the plaintiff's mark on account of the use by the defendants by name 'AMRUTMANTHAN'; that the defendants had applied for registration of the mark `ATMAMANTHAN' in the year 1977 and had on 10.07.1978 undertaken to disclaim the descriptive expression 'COLD RUB' which had appeared in it's Trademark Application No.329747; that in a suit filed by the manufacturers of Vicks Vaporub in the year 1982, the defendant had filed an affidavit stating that 'COLDRUB' is a descriptive expression and that after having taken that stand the defendants had on 07.07.1983 applied to register the term 'COLDRUB'. The application for registering the same name was also filed by the defendants on 02.01.1986 and that the advertisement issued by the defendants in the `Times of India' on 06.09.1986 threatened all persons with an action of proceedings for breach of injunction and for contempt of court and that the plaintiff being aggrieved by the threat, had instituted the suit seeking reliefs under Section 120 of the Trade and Merchandise Marks Act, 1958.
4. The suit was resisted by the defendants who did not specifically deny that the advertisement had indeed been issued by the defendants in the 'Times of India' and that `Times of India' did have all India circulation. The defendants raised various other pleas with regard to that mark having been registered in their favour under the trade mark name 'ATMAMANTHAN' Cold Rub as Trademark No.329747. They also raised other pleas which resulted in the learned single Judge having had to frame as many as nine issues. The advertisement issued by the defendants in Times of India on 06.09.1986 was marked as Ex.P.22 at the trial. The four advertisements which the plaintiff had issued in 'Kumudam' issues dated 09.10.1969, 30.10.1969, 20.11.1969 and 11.12.1969 were together marked as Ex.P.37. The letter of the defendants through their Attorney dated 10.07.1978 disclaiming the descriptive expression 'COLDRUB' appearing in the trade mark Application No.329747 was marked as Ex.P.20. A copy of the affidavit filed by the defendants in the case against them by Vicks Vaporub and in which affidavit it had been stated by the defendants that 'Cold Rub' is a descriptive expression, was marked as Ex.P.23.
5. The learned single Judge framed the following issues:
1.Whether part of the cause of action for filing this suit has arisen within the jurisdiction of this Court or not?
2. Whether the defendants have not been using the expression 'COLD RUB' since 1970 along with the Trade Mark 'ATHMAMANTHAN'?
3.Who has adopted the expression 'COLD RUB' earlier, whether the plaintiff or defendants to sell their respective product along with their trade names namely 'ANOLEUM' and 'ATHMAMANTHAN'?
4. Whether the expression 'COLD RUB' found in the label mark registered under No.329747 dated 13.10.1977 in Class 5 in favour of the defendants is a Trade Mark by itself as defined in Section 2(V) or mere mark as defined in Section 2(J) of the Trade and Merchandise Marks Act, 1958?
5. Is it not lawful for the defendants to claim exclusive right over the expression 'COLD RUB'?
6. Is the plaintiff entitled for declaration and for injunction as prayed for?
7. Whether the suit is maintainable under Section 120 of the Trade Marks Act as the word 'COLD RUB' is an exclusive coined word belonging to the defendant?
8.Whether there is a disclaimer of the word 'COLD RUB' as contemplated under Section 17 of the Trade Marks Act?
9. To what other relief?
The documents which had been marked before the learned single Judge were Exs.P.1 to P.59 and Exs.D.1 to D.14 all of which were marked by consent. No oral evidence was let in by the parties.
6. All the issues framed were framed on the basis of the pleadings filed by the parties. On issue No.1 as to whether the Court has jurisdiction to entertain the suit, the learned single Judge held that a part of the cause of action did arise within the jurisdiction of this Court and while holding so observed that the counsel for the defendants had not raised any objections regarding jurisdiction, in the course of the trial. On issue No.2 he has held that the defendants had been using the expression 'COLDRUB' since 1970 along with trade mark Atmamanthan. On issue No.3 he held that the mark 'COLDRUB' was used by the defendants from 1970. While so holding he did not advert to Ex.P.37 'Kumudam' advertisements to which there is no reference at all in the judgment. On issue No.4 as also issue No.8 he did not record any finding as, in his view, he did not consider it necessary to do so. On issue No.5 as also on issue No.6 he held that 'COLDRUB' is a descriptive word; that neither party to the suit had coined the word; that the plaintiff is entitled to use the term as a bona fide description of it's products in terms of Section 34 of the Act and held that the plaintiff was entitled to declaration and injunction as prayed for. On issue No.7 he held that the suit was maintainable.
7. In the appeal filed by the defendants it was submitted that the Court did not have jurisdiction to maintain the suit. Having omitted to even argue that point before the learned single Judge, it is not open to the appellants now to contend that the single Judge ought to have held that the Court had no jurisdiction to try the suit. Even otherwise there is no substance in this contention. In the written statement filed, there is no denial of the fact that the advertisement had been issued in the 'Times of India' and 'Times of India' had wide circulation in different parts of India including Chennai. The appearance of an advertisement in a newspaper which has circulation in the area is sufficient to enable the aggrieved plaintiff to invoke the jurisdiction of this Court as, a part of the cause of action can be said to arise by reason of such circulation within the jurisdiction of the Court.
8. Counsel further submitted that Section 120 of the Trade and Merchandise Marks Act could not have been invoked by the plaintiff as the notice Ex.P.22 was not addressed to the plaintiff. It was urged that in Section 120 of the Act a reference is made to `a person' and therefore, it is only persons to whom the threat is directed individually who can seek relief under Section 120 of the Act. It is useful at this point to set out Section 120 of the Act which reads thus:
120. Groundless threats of legal proceedings:
(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceedings for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained, unless the first mentioned person satisfies the Court that the trade mark is registered and that the acts in respect of which the proceedings were threatened to constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of Section 51, with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
(3) Nothing in this section shall render a legal practitioner or a registered trade mark's agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in any Court inferior to a District Court.
9. The opening part of Section refers to 'a person' who by means of circulars, advertisements or otherwise threatens a person with an action or proceedings for infringement of trade mark. The means employed to pose such threats referred to in the section are circulars, advertisements or otherwise. What is sought to be emphasised by the section by use of those terms is that the threat need not be contained merely in a letter addressed to the individual concerned, but that threat could be held out in circulars which are made available to a large number of persons as also in advertisements put up in newspapers which have large circulation. The scope of expression of 'a person' used in the section must, therefore, be ascertained in the context of the reference to circulars and advertisements. 'Person' referred to in Section 120 of the Act is the person who feels threatened by the action of the person who has issued the circulars, advertisements or otherwise, the threat being an action or proceedings for infringement of a trademark which is registered or alleged to be registered or with some other like proceedings. The right given under the section to invoke the jurisdiction of the Court is to `a person aggrieved'. There is nothing in the section which would support the interpretation sought to be placed on it by the learned counsel for the defendants who seeks to confine the scope of the term `threatens a person to a named individual. The threat can be made to a `body of persons' of whom the person who invoked the jurisdiction under Section 120 of the Act may be one, if he is aggrieved by the threat held out.
10. The threat held out in this case in the notice that was issued in the newspapers is to `anybody, who manufactures or sells or markets the vapourising ointment under the trade mark 'COLDRUB'. The threat held out in that notice to anybody is in fact a threat to everybody who manufactures, sells or markets the vapourising ointment in the name 'COLDRUB'. The plaintiff admittedly being such a manufacturer, who used the word 'COLDRUB' was certainly a person who had been threatened with an action by reason of an advertisement and was entitled to invoke the protection of Section 120 by initiating the proceedings thereunder. The proceedings initiated by the plaintiff was maintainable under Section 120 of the Act.
11. Learned counsel for the defendants then submitted that the whole proceedings was rendered infructuous by reason of the defendant having filed a suit in the High court of Delhi on 13.08.1989 in C.S. No.158 of 1989 alleging infringement of their trademark, that suit having been filed against the plaintiff in the suit from and out of which this appeal had arisen. In that suit there is no interim order in favour of the plaintiff in that suit who is the defendant in the suit from which this appeal had arisen.
12. Sub-section (2) to Section 120 of the Act on which reliance is placed by counsel provides that sub-section (1) of Section 120 will not apply if the registered properietor of the mark, or a registered user acting in pursuant to sub-section (1) of Section 51 'with due diligence' commences and prosecutes an action against the person threatened for the infringement of the trademark. The facts of the case show that the suit in C.S. No.42 of 1987 was filed in this Court on 15.12.1986 within three months from the date of the advertisement issued in 'Times of India' on 06.09.1986. It is only some 2-1/2 years after the institution of the suit that the defendants filed the suit in C.S. No.158 of 1989 in the High Court at Delhi. This long interval cannot be regarded as evidence of 'due diligence' referred to in section 120(2) of the Act. The fact that the suit came to be filed by the defendants after this Court had in an interim order held that the institution of such a suit was permissible even after a proceeding under Section 120 of the Act was initiated, cannot be of any assistance to the defendants when they seek to contend that the belated institution of the suit should still be regarded as amounting to due diligence on their part. It cannot, therefore, be said that the filing of the suit by the defendants about 2-1/2 years later in the High Court at Delhi would have the effect of rendering the earlier suit filed by the plaintiff here, infructuous.
13. Counsel also contended that the learned trial Judge should not have framed the issues that he has, as the scope of the suit under Section 120 is limited to deciding as to whether the threat held out was justified or unjustified, and to grant or refuse an injunction against the continuance of those threats.
14. As noticed earlier, the issues framed were issues which arise out of the pleadings in the suit. The defendants having sought to justify the threats held out, the tenability or otherwise of the justification so offered had necessarily to be examined by the Court and to facilitate such examination, the framing of the issues with reference to the pleas raised was required and it cannot, therefore, be said that the matters dealt with by the learned single Judge are outside the purview of Section 120 of the Act. In respect of those issues which were not necessary, i.e., issues 4 and 8, the learned Judge has not recorded any finding. The validity of the trade mark which was raised in issue No.4 was rightly not considered as, it was not necessary to consider and pronounce on the validity of the registration in this proceedings. The learned trial Judge had also not recorded any finding on the question as to whether there was a disclaimer as contemplated by Section 17 of the Trademarks Act. All the issues on which he has entered decision are issues which are relevant for the purpose of findings the extent of reliefs to be granted under Section 120 of the Act.
15. One more argument that was raised for the defendants needs to be noticed. It was submitted for them that notice had been issued bona fide and that therefore such a notice should not be regarded as amounting to a threat. In this context, attention was invited to Narayanan's book on the Law of Trademarks and Passing Off, 4th Edition, wherein at page 671 it is stated that 'a general warning or cautionary notice to the public regarding infringement of the rights of the owner of patent, trademarks or copyright published in good faith may not amount to a libel'. In support of that proposition three old English cases are referred to. Those cases have not been placed before us nor have the provisions of the statute considered therein been placed before us. The question here also is not libel. The question here is one of protecting the person entitled to such a protection against groundless threats or action, where a threat which is found to be groundless cannot be regarded as having been made bona fide. The plea of bona fide now raised is also without any substance. The defendants themselves had filed an affidavit in another proceedings saying that 'COLD RUB' is a descriptive expression which prima facie, indeed, it is. It is also the case of the plaintiff that the defendants had specifically undertaken to disclaim the descriptive expression 'COLDRUB' appearing in the trademark application. Having taken that stand, it can hardly be said that the defendants were acting bona fide when they asserted a claim and on such assertion held out a threat of action against anyone-else using the words 'Cold Rub' which two words clearly are words of common use and are indeed descriptive.
16. We find no merit in the appeal filed by the defendants in O.S.A. No.364 of 1997 and the same is dismissed.
17. In so far as the appeal filed by the plaintiff with regard to the finding on issue No.3 is concerned, even the defendants did not dispute and rightly so, the fact that the relevant material evidence which had been placed before the Court, namely Ex.P.37 had not been looked into by the learned single Judge. These advertisements are part of the documents produced by the plaintiff which had been admitted by consent as documents in the case and marked. The authenticity of the documents are not in issue. The advertisement effected for the product Anoleum combined with the words 'Cold Rub' in the year 1969 which is prior to the year 1970 when even, according to the defendants, they had not used those words prior to that year, would clearly show that the plaintiff had used those words at a time when the defendants had not commenced it's user. The finding recorded by the learned single Judge on issue No.3 is erroneous and is set aside. In it's place shall be recorded a finding that the expression 'Cold Rub' had been adopted by the plaintiff prior to it's adoption by the defendants. The plaintiff's appeal in O.S.A. No.373 of 1997 shall stand allowed.