Bombay High Court
Brihan Karan Sugar Syndicate Private ... vs Chitali Botting Limited on 6 June, 2022
Author: A.S. Gadkari
Bench: A.S. Gadkari
ssm 1 ia897.20-in-comip309.20.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO.897 OF 2020
IN
COMIP SUIT NO.309 OF 2020
Brihan Karan Sugar Syndicate
Private Limited ...Applicant
IN THE MATTER BETWEEN-
Brihan Karan Sugar Syndicate
Private Limited,
A company incorporated under the
Companies Act, 1956 having its
Registered office at B-102,
Daffodils, Wing-B, Hiranandani Gardens,
A. S. Road, Powai, Mumbai - 400 076,
Maharashtra. ....Plaintiff.
Vs.
Chitali Bottling Limited,
A company incorporated under the
Companies Act, 1956 having its
Registered office at
D-1/4, Liberty Society, Phase-II,
North Main Road, Koregaon Park,
Pune - 411 001, Maharashtra. ....Defendant
Mr. Ravi Kadam, Senior Counsel and Mr.Hinashu W. Kane a/w. Mr. Rashmin
Khandekar, Mr. Rohan Kadam, Mr. Ashutosh Kane, Mr. Nikhil Sharma and
Mr. Ajaraj Bagwe i/by W.S. Kane & Co. for Applicant/Plaintiff.
Dr. Abhinav D. Chandrachud a/w. Mr. Bernardo Reis Mr. Lalit K.
Jhunjhunwala and Mr. Pavan S. Patil for Defendant.
CORAM : A.S. GADKARI, J.
RESERVED ON : 27th OCTOBER, 2021
PRONOUNCED ON : 6th JUNE, 2022.
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ORDER:-
1 Applicant/Plaintiff has filed present Application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 for temporary injunction against the Defendant by itself, its Directors, servants, employees, agents, stockist, dealers, distributors and all persons claiming under it, from infringing plaintiff's copyright in its artistic work for its logo 'Tango' and from restraining it by an Order of temporary injunction from infringing Plaintiff's trademarks namely 'Sakhu Santra Tango' and 'Tango Punch' and for other consequential reliefs, more specifically mentioned in the prayer clauses of para No.35 herein.
2 Heard Mr. Ravi Kadam, learned Senior counsel and Mr. Himanshu Kane for Applicant/Plaintiff and Dr. Abhinav Chandrachud, learned counsel for the Defendant. Perused record. 3 Plaintiff is the registered owner of the trade marks and copyrights of labels 'Sakhu Santra Tango'; 'Tango Punch' and logo 'Tango'. Since the year 1996 till the date of filing of the present Suit i.e. on 1 st February, 2020, Plaintiff's use of the said trade marks/labels is open, continuous and extensive. The Plaintiff and Defendant executed a License Agreement on 6th December, 2014 under which the Plaintiff granted Defendant a license to use Plaintiff's said relevant trade marks/labels and copyrights for two years on the terms and conditions more specifically mentioned in the said License Agreement.
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ssm 3 ia897.20-in-comip309.20.doc 4 It was agreed by and between the parties that, the Defendant
would use the said trade marks/labels/copyrights in conformity with the agreement. That, the goods manufactured by Defendant under the said trade marks/labels would be of superior quality. The Defendant specifically agreed that, it would not use the said trade marks/labels after expiry/termination of the said Agreement. That, any failure to insist upon strict performance would not be treated or deemed to constitute a modification of the Agreement or waiver of contractual rights. That, notwithstanding anything contained in the said Agreement, the Plaintiff as Licensor could terminate the Agreement without assigning any reason and without being liable in any way for payment of damages or other compensations whatsoever to terminate the said agreement upon giving not less than 30 days prior notice in writing in that behalf to the Defendant. That, upon termination/expiry of the said License Agreement, the Defendant would forthwith discontinue use of the said trade marks/labels/copyrights licensed thereunder. That, the said License Agreement constituted as a whole agreement and superseded any prior understandings and instruments on the subject. That, the Agreement could only be modified by a written instrument duly executed by the parties herein.
5 The License Agreement dated 6th December, 2014 expired on 5th December, 2016 by efflux of time. However, the Defendant continued to 3/10 ssm 4 ia897.20-in-comip309.20.doc use Plaintiff's said trade marks/labels without seeking an extension of License/permission in that behalf. On 9 th January, 2018, the Superintendent, State Excise Department informed the Sub-Inspector in- charge, State Excise at Defendant's premises, about a complaint forwarded by Divisional Deputy Commissioner, State Excise, highlighting impurities contained in the country liquor manufactured by Defendant under Plaintiff's said relevant trade marks. It is contended by the Plaintiff that, this was in breach of Clause No.5 of the License Agreement, as finding of impurities in the product manufactured by Defendant under the Plaintiff's relevant trade marks/labels was injurious to public health. Plaintiff therefore by its notice dated 3 rd May, 2018 called upon the Defendant to forthwith cease and desist from using the Plaintiff's relevant trade marks/labels. Upon receipt of the said notice/letter dated 3 rd May, 2018, between May 2018 to November, 2018, the Defendant stopped using Plaintiff's said trade marks/labels. Due to mediation by the other businessmen in the liquor industry, Plaintiff by its communication dated 30 th November, 2018 extended License Agreement dated 6 th December, 2014 for a period from 1st November, 2018 to 30th November, 2021 on the same terms and conditions as mentioned in the said License Agreement. 6 Plaintiff received various complaints between 1 st December, 2018 and 1st November, 2019 from consumers/traders regarding quality of country liquor manufactured and sold by the Defendant under plaintiff's 4/10 ssm 5 ia897.20-in-comip309.20.doc said relevant trade marks/labels. It is contended by the Plaintiff that the Defendant was once again in breach of its lawful obligation as agreed in Clause No.5 of License Agreement. By its notice/letter dated 3 rd November, 2019, Plaintiff called upon Defendant to suspend production and/or dispatch of (i) Deshi Daru Tango Punch, (ii) Deshi Daru Tango Punch Santra and (iii) Deshi Daru Sakhu Santra Tango Premium, which were being sold under the Plaintiff's trademarks/labels. 7 After receiving Plaintiff's notice/letter dated 3 rd November, 2019, Defendant in fact stopped using Plaintiff's said relevant trademarks/labels upto December, 2019. That, the Plaintiff received a letter on 24th January, 2020 from Defendant, informing it about an ex-parte ad-interim order obtained by it in Special Civil Suit No.95 of 2020 by the Civil Judge, Senior Division, Pune on 21st January, 2020, injuncting Plaintiff from disturbing/interfering with production of country liquor under the Plaintiff's said trade marks/labels. The Defendant in the said Suit has contended that, there was an 'oral assignment' of the said trade marks in its favour. It is contended by the Plaintiff that the said stand was contrary to the License Agreement which expressly stipulated that, it constituted the entire agreement between the parties.
8 By a letter dated 30 th January, 2020, addressed to the Commissioner of the State Excise, the Defendant submitted a photocopy of the said License Agreement executed between the Plaintiff and Defendant 5/10 ssm 6 ia897.20-in-comip309.20.doc and renewal letter of license (Lease) issued by the Plaintiff.
In this brief premise, Plaintiff filed present Suit for infringement of its trade marks/labels/copyrights and has filed present Application for temporary injunction against the Defendant.
During the course of arguments of the present Application, it is contended by the Plaintiff that, between 9 th March, 2020 and 1st February, 2021, the Defendant did not manufacture, vend or sale goods bearing Plaintiff's said relevant trade marks. That, as per the record maintained by Excise Department, the Defendant once again started manufacturing and selling country liquor bearing Plaintiff's relevant trade marks/labels from February, 2022.
9 The authorized representative of Defendant has filed Affidavit- in-Reply dated 17th February, 2020 to the present Application.
It is the defence of the Defendant that, the License Agreement dated 6th December, 2014 was and is a 'sham document' as it was never acted upon. That, the intention of the parties herein for executing the said document can be gathered from the 'Share Purchase and Share Holders Agreement' dated 2nd August, 2014. The Plaintiff had given perpetual 'Oral License/Verbal License' to use the said trade marks/labels/copyright of said logo to the Defendant. That, as per the oral agreement/understanding between the parties, the said oral license was to remain in force for perpetuity as it was co-extensive with the Share Purchase Agreement dated 6/10 ssm 7 ia897.20-in-comip309.20.doc 2nd August, 2014. It is contended by the Defendant that, there is no material on record to show that the goods which were manufactured by the Defendant were of inferior quality. The bone of contention in defence by the Defendant is that, an oral license of trade marks is permissible under the common law even after the enactment of Trademarks Act, 1999 and such a defence adopted by it, is permissible under the existing law. Defendant has therefore prayed that the present Application may be dismissed.
10 I have heard extensive and elaborate arguments of the learned counsel for the respective parties and have also perused Written Submissions filed by them. This Court feels that, with a view to avoid verbiage, it is not necessary to reproduce all the arguments advanced by both the learned counsel for the respective parties and the catena of the decisions cited by them.
11 As noted earlier, the entire thrust of the contention of the Defendant is that, the Plaintiff has granted oral/verbal license to it for use of said trade marks/labels for perpetuity and the same is permissible under the general law.
It is important to note here that, the Defendant herein had preferred an Appeal from Order (Stamp) No.3938 of 2020 against the Order dated 25th February, 2020 passed by 19th Joint Civil Judge, Senior Division, Pune, below Exh-5 in Special Civil Suit No.95 of 2020 filed by it, 7/10 ssm 8 ia897.20-in-comip309.20.doc thereby refusing to grant interim relief in favour of the Defendant. The facts and documents involved in present case are same as are involved in the said Appeal from Order (Stamp) No.3938 of 2020 preferred by the Defendant.
12 This Court by its Judgment dated 6 th June, 2022 has dismissed the said Appeal from Order. In the said Judgment, after scrutinizing the said two agreements i.e. Share Purchase and Share Holders Agreement dated 2nd August, 2014 and License Agreement dated 6th December, 2014 and other relevant documents and after taking into consideration the defence adopted by the Defendant herein has held that; there is no clause of oral license or even oral assignment or verbal assignment in the Share Purchase Agreement dated 2nd August, 2014 in favour of the Defendant; the License Agreement dated 6th December, 2014 is determinable and was terminated by notice/letter dated 3 rd November, 2019; the plea of 'oral license' is adopted only to overcome the disability in the pleadings in the plaint of Suit No.95 of 2020 filed by the Defendant. In the said Judgment, this Court by relying on a decision of the Hon'ble Supreme Court in the case of Mumbai International Airport Private Limited Vs. Golden Chariot Airport & Anr. reported in (2010) 10 SCC 422, has held that, the Defendant is changing stances convenient to it, by adopting different pleas at different stages of the litigation and is not consistent in its pleadings. It is held therein that, the plea of Defendant of 'Oral License' is a palpably sham plea 8/10 ssm 9 ia897.20-in-comip309.20.doc adopted by it.
The Defendant has taken contrary plea herein than what is pleaded by him in the plaint of Special Civil Suit No.95 of 2020 filed by it. Therefore, with further modification to the above observations, it is hereby held that, the defence of Defendant of oral/verbal license is not only palpably sham but moonshine too.
The observations made and findings recorded by this Court in its Judgment dated 6th June, 2022 passed in Appeal from Order are mutatis mutandis applicable to the present case and needs no further elaboration in that behalf.
13 In view of the above, this Court is of the considered opinion that, the Applicant/Plaintiff has made out a strong prima facie case to grant temporary injunction in its favour against the Defendant. It is needless to mention that the balance of convenience lies in favour of the Applicant/Plaintiff. As the Defendant has claimed for liquidated damages in Special Civil Suit No.95 of 2020, the Defendant will not suffer any irreparable loss, least to say, monetary loss, if injunction is granted against it.
14 As a consequence of the above, Interim Application is allowed in terms of prayer clauses (a), (b), (d), (e), (g), (h) and (j). 15 At this stage, Dr. Chandrachud, learned counsel for the Defendant submitted that, the Defendant is using the trademarks/labels of 9/10 ssm 10 ia897.20-in-comip309.20.doc Plaintiff since December, 2014 and are in continuous use of it. He therefore prayed that, the operation and implementation of the present Order may be stayed for a period of four weeks from today, to enable the Defendant to prefer an Appeal.
16 Mr. Gorwadkar, vehemently opposed the said prayer. He submitted that, the said prayer may not be considered as the License Agreement has already been legally terminated by his client by issuing Notice/letter dated 3rd November, 2019.
17 As observed in Judgment dated 6th June, 2022 passed in Appeal From Order (Stamp) No.3938 of 2020, the parties herein are governed by the License Agreement dated 6th December, 2014. That, the Plaintiff has properly and legally terminated the said License Agreement by its notice/letter dated 3rd November, 2019 and since then, the Defendant is prohibited from using the said trademarks/labels/logo owned by the Plaintiff.
18 In view therefore, this Court is of the opinion that, it is not necessary to grant stay to the operation and implementation of the present Order. The said prayer is accordingly rejected.
(A.S. GADKARI, J.)
Digitally signed
by SANJIV
SANJIV SHARNAPPA
SHARNAPPA MASHALKAR
MASHALKAR Date:
2022.06.06
17:20:57 +0530
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