Delhi District Court
M/S Anup Sharma (Proprietor) vs M/S Information T. V. Private Ltd. ... on 21 August, 2012
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 01
TIS HAZARI COURTS, DELHI.
T.M. No. 106/2011
Unique I. D. No. 02401C1157002008
M/s Anup Sharma (Proprietor)
M/s Ganga Cassettes
A115, Vikas Surya Plaza,
C6B, Janakpuri New Delhi110058. ....Plaintiff
Versus
M/s Information T. V. Private Ltd. (Ganga T.V.)
Trough its Managing Director
At276, Ground Floor, (Captain Gaur Marg),
Sriniwas Puri (near Okhla Subji Mandi),
New Delhi110065. ....Defendants
Application U/o 39 Rule 1 & 2 CPC
ORDER: This order is on the application of the plaintiff U/o 39 Rule 1 & 2 CPC wherein the plaintiff seeks a restraint against the defendant from using the trade mark "Ganga".
2. Briefly stated, the case of the plaintiff is that he is proprietor of M/s Ganga Cassettes which is engaged in business of production of Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 1 of 8 2 Audio/Vedio titles/Albums and using the mark trade mark 'Ganga' on its products since 1994. Its trade mark 'Ganga' is registered under Class 9 of Trade Marks Act, 1999. It has spent considerable amount on publicity and gained goodwill for its trade mark in the course of the trade. In July, 2008 plaintiff came to know that the defendant is running a T.V. Channel in the name of Ganga T.V. This act of defendant is just to malafidely ride upon the goodwill of the plaintiff. Hence it is liable to be restrained.
3. The defendant has resisted the suit stating that it has applied for registration of its trade mark 'Ganga' in class 38 and 41 of the TMA 1999. The word 'Ganga' is not an invented word. It is a generic word. It is being used by various third parties in respect of a host of products. Subsequently, the trade mark has been registered vide no. 1686171 on 12.05.2008 in clause 38 in respect of Television and Broadcasting service including Cable and Satellite in class 38. The suit is barred by delay and latches. The suit is malafide.
4. I have heard Sh. J. P. Yadav, Ld. Counsel for plaintiff and Sh. Anil Sharma, Ld. Counsel for defendant.
5. Ld. Counsel for the plaintiff has argued that both the trade Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 2 of 8 3 marks being the same, the plaintiff first in adoption and the goods being of same nature having the same class of consumers the defendant is liable to be restrained.
6. Ld. Counsel for plaintiff has relied upon the following citations in support of his submissions:
i) Aktiebolaget Volvo & Ors vs. A. K. Bhuva & Ors, 2006 (32) PTC 682 (Del) (Cited for: The plaintiff had adopted an invented word 'Volvo' , which has no obvious meaning and the defendant's adoption of the same is unauthorized and dishonest with the sole purpose to ride upon the goodwill of the plaintiff. Hence injunction issued).
ii) Pizza Hut International LLC and Others vs. Pizza Hut India Pvt Ltd. 2003 (26) PTC 208 (BOM). (Cited for: Dishonest adoption of word mark 'Pizza Hut' by defendant for the same business, though it has not commenced the business; plaintiff having a world wide reputation Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 3 of 8 4 and hence the defendant restrained).
7. Ld. Counsel for defendant has argued that the suit can not proceed in this Court as it has been valued @ Rs. 130/ for each of the relief claimed and therefore is not within the pecuniary jurisdiction of this Court. It is submitted that the proper course to plaintiff is to go for rectification of register of trade marks and the suit is not maintainable on this count also. It is prayed that the application is liable to be dismissed.
8. To support his arguments, Ld. Counsel for defendant has relied upon the following citation:
i) Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Company Ltd. Hyderabad and another, (1997) 4 SC 201. (Cited for: The plaintiff must apply for cancellation of the trade mark of the defendant).
9. I have considered the submissions, the material on record and the case law cited.
10. The provision relating to the jurisdiction in respect of trade mark matters has been enunciated in section 134 of the TMA, 1999 Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 4 of 8 5 which reads as under: "134. Suit for infringement, etc., to be instituted before District Court(1) No suit
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the de fendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether, registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub section (1), a "District Court having jurisdiction"
shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceed ing, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation : For the purposes of subsection (2), "person" includes the registered proprietor and the registered user."
Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 5 of 8 6
11. In view of the above, the objection of the defendant as to the jurisdiction is without merits.
12. The plaintiff is a manufacturer of audio/video cassettes/CDs, whereas, the defendant is a service provider of television and radio broadcasting services. Thus, the sphere of action of both the parties is quite different as one is the seller of particular goods and the other is a service provider. Thus both operate in different fields.
13. The word 'Ganga' is a geographical word. It is the name of a sacred river in India. Therefore, as far as registration is concerned it attracts contained in section 9 (1) (b) of the Trade Marks Act 1999 which provides for absolute grounds of refusal of registration. Under the Trade and Merchandise Marks Act, 1958 the prohibition is contained in section 9(1) (d) of the Act. However this court cannot go into the question of registration as the same is not within its domain.
14. This Court has to examine whether the acts of the defendant are such as to be violative of the statutory or common law rights of the plaintiff. Thus the plaintiff in order to succeed has to be establish a prima facie case; apprehension of legal injury which cannot be compensated in terms of money and balance of convenience. Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 6 of 8 7
15. As far as the word 'Ganga' is concerned, the plaintiff must have been aware of the meaning of word while adopting the same for his goods at the time of adoption. 'Ganga' is a word which belongs to the public at large. Thus the intended monopoly of the plaintiff in the word 'Ganga' came with an inherent risk attached to this common and geographical word.
16. The defendant had divulged in its written statement filed on 05.09.2008 that the defendant has applied for registration of its trade mark 'Ganga' in respect of Television and Radio Broadcasting Services. Thus the plaintiff had been aware of the same but ostensibly did not put a challenge to the same before the Registrar of trade marks. The application for registration of defendant's trade mark has been allowed on 28.01.2011 w.e.f. the date of application i.e. 12.05.2008.
17. In an injunction application it is not the actual damage, but the apprehension of likelihood of damage is relevant. However apprehension is something more than mere fear. A fear may be without any basis, it may be a lurking feeling only. On the contrary the apprehension must have some tangible basis. There appears Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 7 of 8 8 nothing on record that any formidable damage is apprehended by the plaintiff.
18. There is also nothing to show prima facie that the acts of defendant are per se malafide or with a view to ride upon the goodwill of the plaintiff. When the plaintiff has adopted a word of common usage like 'Ganga' which is the name of a sacred river in India i.e. a geographical word, he has done so with the risk it invites. The defendant has also obtained a registration of the same trade mark in its name. The balance of convenience also does not tilt in favour of the plaintiff. The apprehension of legal injury is also not strong in favour of the plaintiff.
19. In my view the plaintiff has failed to satisfy the necessary ingredients of prima facie case, balance of convenience and irreparable loss. Therefore, the application is dismissed.
20. Nothing stated herein shall tantamount an expression of opinion on the merits of the case.
Announced in the Open Court today on : 21.08.2012 (MAN MOHAN SHARMA) ADJ (Central)01, Delhi Anup Sharma Vs. M/s Information T. V. Pvt Ltd. T. M. 106/2011 8 of 8