Gujarat High Court
G.M.Bell Health Care Pvt.Ltd vs Universal Skin Impex Pvt. Ltd on 9 January, 2014
Author: S.G.Shah
Bench: S.G.Shah
C/AO/167/2013 CAV JUDGEMNT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 167 of 2013
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR.JUSTICE S.G.SHAH
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1 Whether Reporters of Local Papers may be allowed to see
the judgment ?
2 To be referred to the Reporter or not ?
3 Whether their Lordships wish to see the fair copy of the
judgment ?
4 Whether this case involves a substantial question of law as
to the interpretation of the Constitution of India, 1950 or any
order made thereunder ?
5 Whether it is to be circulated to the civil judge ?
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G.M.BELL HEALTH CARE PVT.LTD.....Appellant(s)
Versus
UNIVERSAL SKIN IMPEX PVT. LTD.....Respondent(s)
================================================================
Appearance:
MR FB BRAHMBHATT, ADVOCATE for the Appellant(s) No. 1
MR ARPIT A KAPADIA, ADVOCATE for the Respondent(s) No. 1
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CORAM: HONOURABLE MR.JUSTICE S.G.SHAH
Date : 30/11/2013
CAV JUDGMENT
The appellant is original plaintiff whose application for interim
relief in suit for infringement of copyright and passing off has been
dismissed by the trial Court vide impugned judgment and order dated
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16.3.2013 in R.C.S No.2 of 2012. Such impugned judgment and order is
by Principal District Judge of Ahmedabad (Rural). The sum and
substance of appellant's case is to the effect that he owns the copyright of
product in question, namely, COLBET GM, Fungdid B, Fungdid,
Qualidrim, Micozole - F, Enac Excel Gel, Enac Gel. It is the case of the
appellant that in view of assignment deed by original user since long,
namely, M/s.Universal Impex Ltd., they acquired the ownership of such
trademark and, therefore, nobody can be allowed to use such trademark
and product name for same product with similar and deceptive nature and
style of writing and packing.
2. Whereas, it is the case of the defendant that the name of the
product is generic drug and pursuant to order dated 6.7.2007 in notice of
motion No.1817 of 2007 in Suit No.1342 of 2007, the plaintiff is not
entitled to use the trademark in question since assignment deed executed
by one of the partner is under challenge before the Bombay High Court. It
cannot be ignored that there is multiplicity of proceedings in different
names for the same product and, therefore, atleast one another appeal
from order No.348 of 2010 was also heard and decided by this Court
today itself. It cannot be ignored that both these matters were kept
together since one of the litigant is common and product under dispute is
also common in both the appeals, though original defendant in both the
appeals are different. It is also not disputed that initially the trademark in
question was owned by Universal Impex, which had assigned it against
consideration of the present appellant - plaintiff in the year 2005. It is
also not disputed that present defendant has came in existence after the
year 2007 and, therefore, in any manner it cannot be said that they were
using such trade name in similar or deceptive manner well before it is
used by the appellant - plaintiff. Therefore, the only issue remains is
regarding nature of the trademark. The learned trial Judge has though
referred the previous litigation, it has failed to appreciate that when in
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previous litigation, interim relief was granted in favour of the present
plaintiff, though it was stated in Appeal from Order No.348 of 2010, it
was mainly on the ground of right of the party and not on the ground of
nature of the trademark. Therefore, basically, it is crystal clear that
though the appellant - plaintiff has purchased the trademark against
consideration by assignment deed in the year 2005, someone or several
persons are trying to take disadvantage of the judicial process and
litigation pending between some parties and thereby different firms like
Universal Pharma and present defendant like Universal Skin Impex
Pvt.Ltd. are created after the year 2007 have started to infringe the
copyright which was otherwise assigned to the appellant - plaintiff and
being used by appellant - plaintiff atleast since the year 2005.
3. For better clarity of the dispute, observation and conclusion in A.O.
No.348 of 2013 in favour of present appellant are relevant. Hence, it is
reproduced hereunder, which categorically confirms the rights of
appellant over the trademarks under reference.
"3. Though the trial Court has granted an injunction in
favour of the plaintiff after hearing both the parties, by an order
dated 26.11.2010 such order of injunction has been stayed by
this Court and such stay is in force till date. Thereby, plaintiff is
not in a position to restrain the defendant from continuing the
infringement of copyright of the product name, which is
otherwise in its favour.
4. Coming to the factual details and dispute between the
parties, after argument of both the sides and on perusal of
record, it becomes clear that the dispute rests in very narrow
compass and, therefore, minor facts and details are not relevant
at this stage of deciding appeal against the interim order of
injunction, when main suit is yet to be decided, wherein both
the parties would have ample and sufficient opportunity to
adduce proper evidence to prove their case for final
determination of the dispute amongst them.
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5. The record shows that initially there was one
partnership firm, namely, Universal Impex which was
manufacturing certain medicines including medicines which are
in dispute in present litigation since 1998. It is not disputed that
such Universal Impex was having registration in its favour for
several medicines so far as brand name, trade name, product
name etc. are concerned. It is also not disputed that the product
in reference and question in the present litigation was being
manufactured by such Universal Impex for couple of decades.
However, some of such product was registered with the
competent authority whereas some of them were not registered
at relevant time. It is also not disputed that initially partners of
such partnership firm were family members, amongst them at
present we are concerned with name of two partners, who are
real brothers, namely, Satish Kantilal Mehta and Jayesh Kantilal
Mehta. It is also not disputed that the plaintiff company was
established by several persons including Jayesh Kantilal Mehta.
It is also not disputed that in turn Jayesh Kantilal Mehta has
entered into an agreement of assignment of certain product in
favour of present plaintiff company. Such deed of assignment
was signed and executed on 4.10.2005 wherein it is
categorically stated on behalf of M/s.Universal Impex as
assignor in favour of present plaintiff company that in
consideration of a sum of Rs.5 Lacs paid by the assignee i.e.
present plaintiff to the assignor i.e. Universal Impex, the
assignor assigns, transfer, grant, convey and assure absolute
right, title and interest forever in all and each of the trademark
including common law rights together with the goodwill and
benefits attached to the business related to the trademark under
reference for the exclusive benefit of the assignee. The assignor
has further undertaken to do, execute and perform all further
and other acts, deeds, matters and things and documents or
writing as may be reasonable and necessary, appropriate or
desirable for absolutely vesting of full right, title, benefit and
interest on property in and each of the trademark in favour of
the assignee. It is submitted that Mr.Jayesh Kantilal Mehta has
signed such a deed for and on behalf of M/s.Universal Impex in
presence of two witnesses in favour of the plaintiff. It is the case
of the plaintiff that since then i.e. since 2005, plaintiff is
enjoying such trademark for their product. However, Satish
Kantilal Mehta has filed one suit being Suit No.1342 of 2007
before the Original Civil Jurisdiction of the High Court of
Judicature at Bombay for declaration that the assignment deed
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dated 4.10.2005 is void, illegal, non-est and of no consequence
and not binding upon him. In the same suit, said Satish Kantilal
Mehta in his personal capacity has also prayed to restrain his
brother Jayesh Kantilal Mehta as well as present plaintiff and its
Directors by perpetuate order of injunction from using in any
manner the trademarks reference with other ancillary reliefs
with reference to trademarks under reference as well as deed of
assignment dated 4.10.2005. In such civil suit, the High Court
of Bombay has, in its Original Civil Jurisdiction, while deciding
the application for injunction on July 6, 2007 granted ad-interim
relief in relation to the "registered trademark only". Thereby,
though ad-interim relief in terms of prayer clause B(i) and B(iv)
was granted, it was granted for limited product i.e. only for
registered trademarks and not for all the products which are
referred or listed either in the pleading or in the prayer clause of
such suit before the Bombay High Court. It seems that therefore
plaintiff and Jayesh Kantilal Mehta, the assignor in assignment
deed dated 4.10.2005, had utilised the trade name and in the
same manner for their product considering tis assignment in
their favour, mainly because of the fact that those trade names
were not registered in the name of Universal Impex and thereby
according to them it was not covered under the injunction issued
by the Bombay High Court in above referred proceedings. In
turn, Satish Kantilal Mehta has preferred an application for
disobedience of Court's order i.e. contempt of Court before the
Bombay High Court. However, while passing the order below
such an application for contempt/disobedience of the Court's
order on 14.8.2008, Bombay High Court has categorically
reconfirmed that its initial order granting injunction was limited
for the "registered trade mark only" and not for all the products
which were referred in the complaint before it. While
dismissing such notice of motion No.974 of 2008 in Suit
No.1342 of 2007, the Bombay High Court has on its Original
Civil Jurisdiction, in paragraph 12, categorically stated that the
plaintiff (plaintiff of Suit before the High Court), namely,
Jayesh Kantilal Mehta got a limited relief in respect of only
registered trademark as a relief prayed for by him were not
pressed by him for unregistered trademark and/or trade name,
hence, the same was not granted. So far as breach of injunction
order by present plaintiff being defendant no.3 before the
Bombay High Court is concerned, it is specifically stated in
paragraph 11 that though the notice of motion is pressed against
defendant no.3 also, it is seen that apart from the aforesaid
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products marketed by defendant no.3, no other act against the
defendant no.3 is shown. Therefore, marketing of any product
under reference which was also subject matter in such notice of
motion was not considered as breach of injunction against use
of such trade and product name by the plaintiff, even after filing
of a suit by Satish Kantilal Mehta to declare the assignment
deed as null and void. Therefore, to that extent, assignment deed
for unregistered trademark be said to be null an void unless and
until Suit No.1342 of 2007 is finally decided by the Bombay
High Court where the main issue is regarding the validity and
legality of such assignment deed and it is declared as null and
void.
6. In the present case, the present plaintiff is claiming his
right to utilise the trade and product name under reference as its
trademark, mainly because of such assignment deed and
because of their application for registration which is under
process. However, surprisingly at present Satish Kantilal Mehta
or his company Universal Impex are not in picture, but brother
of Satish Kantilal Mehta, namely, Jayesh Kantilal Mehta who
was one of the co-defendant with plaintiff in a suit before the
Bombay High Court has initiated one another form, namely,
Universal Pharma and started to use the same trade name and
product name, which was assigned by Universal Impex in
favour of present plaintiff i.e GMBELL Healthcare Pvt. Ltd.
7. So to recollect the factual details in mind, it is made
clear that the product in question was initially used by Universal
Impex, the partnership firm which was assigned to GMBELL
Healthcare Pvt.Ltd. by assignment deed in the year 2005 and
one of the partner of Universal Impex, namely, Satish Kantilal
Mehta has miserably failed to restrain the plaintiff from
utilizing such trademark in a suit filed before the Bombay High
Court in the year 2007. Thereafter, brother of said Satish
Kantilal Mehta, namely, Jayesh Kantilal Mehta has started a
partnership firm, namely, Universal Pharma and since he was
one of the defendant before the Bombay High Court in a suit of
his brother Satish Kantilal Mehta and though he was very much
aware about the assignment deed in favour of the present
plaintiff, probably to get disadvantage of the observation of the
Bombay High Court that injunction granted by Bombay High
Court is restricted for registered trademark only. He has tried to
get disadvantage of the entire situation and started production
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and marketing of same medicine with same trade name and
product name with similar artistic logo and seal etc. and thereby
tried to infringe the copyright of the product which is in favour
of present plaintiff and thereby committed passing off also. It is
also evidence from the record that plaintiff has served notice to
respondent in the year 2007 with all other concerns to restrain
them from continuing infringement of its copyright and to pay
compensation for passing off and, therefore, it was certain that
defendants were very much aware about the factual details. All
amongst the pleadings and other documents, the relevant
document is letter dated 28.8.2008 by Mr.Satish Kantilal Mehta
as a partner of Universal Impex addressed to the present
plaintiff probably before applying for breach of injunction order
wherein it is categorically stated that as per the assignment deed
between GMBELL Healthcare (I) Pvt.Ltd. and M/s.Universal
Impex executed through one of the partner of our firm
Mr.Jayesh Kantilal Mehta unilaterally for the product in
reference which are approved by the Licensing Authority to
manufacture on behalf of Universal Impex only, and that the
purpose of such assignment deed is only to manufacture the
above mentioned brands and not to sell or market of whatsoever
nature. It is further stated that all brands manufactured by
plaintiff were to be exclusively marketed by Universal Impex
only and nobody else either in personal capacity or in the
capacity of company etc. is permitted to market the products. It
is also stated that all the products under reference are applied to
the Registrar of Trademarks long before by Universal Impex
only. Though it is stated in such letter that therefore Universal
Impex withdraws the effect of the said deed by assignment.
However, in absence of proper legal procedure for withdrawal
of such assignment, such withdrawal cannot be considered as
legal withdrawal and, therefore, Satish Kantilal Mehta has to
file a suit before the Bombay High Court, details of outcome of
which is already discussed herein above. However, reference to
such letter and its contents makes it clear that there was
assignment deed in favour of the present plaintiff. This fact is
also admitted by present defendant in affidavit in reply filed
before the Bombay High Court and admission of Mr.Jayesh
Kantilal Mehta before several other media and members to that
effect. From the record, it is also not disputed fact that
Universal Pharma came into existence only in July, 2007 i.e.
almost two years after the deed of assignment was executed by
original owner of the trademark in question, namely, Universal
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Impex and, therefore, in any case, the present defendants could
not have the ownership or other rights on trademark under
reference. When it is so clear that defendants have come into
existence in the year 2007 and that one of the partner of the
defendant was also partner of the transferring owner, namely,
Universal Impex by similar trademark and when he himself has
admitted before the judicial authorities that such trademarks
were assigned by Universal Impex in favour of the present
plaintiff, then, at present, defendants cannot be allowed to plead
or argue and if at all they do so, there is no substance in their
pleading and submission that assignment deed is without
consideration and never executed and, therefore, plaintiff has
never acquired any legal right over the trademark under
reference.
8. Learned advocate Mr.Kapadia is relying upon the
decision of Acme Pharmaceuticals Vs. Torrent
Pharmaceuticals Ltd. reported in 2010(1) GLR 802
submitting that if any trademark or trade name is found to be
derived from pharmaceutical preparation CEFADROXIL
designating the kind of goods and was devoid of any distinctive
character and parties cannot prevent from using such name as
brand name or trade name and thereby order of injunction
passed by the trial Court was set-aside. Therefore, Mr.Kapadia
has submitted that in the present case also, name of all the
products in question are derived from pharmaceutical
preparations and, therefore, it can never be treated as a
trademark and hence granting of injunction by the trial Court is
not proper. However, at present, registration of trademark is
under process and such issue can be taken care by the
competent authority registering the trademark. Whereas I am of
the opinion that irrespective of copyright and trademark, when
defendant is one of the party to the deed of assignment and
when trying to use same product name with same logo and same
style, this act could be treated as a tortuous act also and requires
to be stopped from continuous use of such trade name.
9. As against that learned advocate Mr.Brahmbhatt for
plaintiff is relying upon the case between Cadila Health Care
Ltd. Vs. Cadila Pharmaceuticals Ltd. reported in JT 2001(4)
SC 243, wherein the Apex Court has categorically held that
trademark is essentially adopted to advertise one's product and
make it known to the purchaser. A stricter approach should be
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adopted while applying the test to judge the possibility of
confusion of one medicinal product for another by the
consumer. While confusion in the case of non-medicinal
products may only cause economic loss to the plaintiff,
confusion between the two medicinal products may have
disastrous effects on health an din some cases life itself.
Stringent measures should be adopted specially where
medicines are the medicines of last resort as any confusion in
such medicines may be fatal or could have disastrous effects.
10. In the case of Sun Pharmaceuticals Industries Ltd.
Vs. Cipla Limited reported in 2009(39) PTC 347 (Del.) by
Delhi High Court wherein while considering the provision of
Section 45 read with Order 39, Rules 1 and 2 of the Civil
Procedure Code, 1908; which are also relevant in present case;
the Delhi High Court has categorically held that immediately on
assignment i.e. by writing, assignee acquires title to the
registered trademark. When there is nothing to show that
plaintiff is in any way to blame for non-decision by the
Registrar on his application, then, practically, title exists in
favour of assignee even before registration. Similar situation is
before us. Thereby the cited case confirms that registration of
trademark in favour of the plaintiff is to be considered from the
date of assignment itself i.e. 4.10.2012 and when assignment
date is produced on record, it cannot be said that plaintiff has
failed to prove the registration of trademark in his favour. The
Delhi High Court has further held that infringment of rights in a
trademark can never be sufficiently compensated and there is a
possibility of great injury being done if the defendant is
permitted to continue to use such trademark and, therefore,
balance of convenience is always in favour of registered user.
Thereby, the defendant has no equity in its favour and thus
plaintiff is entitled to interim order. The Delhi High Court has
dealt with the subject in depth and confirmed that the plaintiff
notwithstanding being not registered on a particular date is
entitled to exercise rights as a registered proprietor of the
trademark in question. While arriving at such conclusion, Delhi
High Court has taken care of several reported cases also.
11. In the case of Midas Hygiene Industries P. Ltd. &
Anr. Vs. Sudhir Bhatia & Ors. reported in (2004)28 PTC
121(SC) while dealing with the issue of interim injunction for
infringement and passing off action, the Apex Court has held
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that when plaintiff is prior and prominent user of trademark
under reference, grant of injunction becomes necessary, when
prima facie it appears that the adoption of the similar mark by
defendant, since such adoption itself is to be considered as
dishonest. However, the Apex Court has clarified that
observations at such stage are prima facie and shall not be taken
into consideration at the time of trial of the suit.
12. In Shree Sainath Industries Vs. Sainath Auto
Industries reported in 2004(28) PTC 377(Guj.), this High
Court has held that ultimately on the objective scrutiny of the
records and documents, the Court would have to come to a
conclusion, may be based on subjective satisfaction as to
whether the respondent is liable for an action of passing-off or
as to whether the appellant is entitled to an interim injunction
and if an answer to this question is in the affirmative, there is no
reason to deny this interim injunction to the appellant. Whereas
while confirming the order, the High Court has relied upon the
case of Midas Hygiene (supra) regarding prior user and
confirmed the injunction in favour of the original plaintiff.
13. I have gone through the record and proceeding and
averments of both the sides, which makes it clear that defendant
has misled the trial Court and trial Court has grossly erred in
appreciating the evidence at such stage where mainly prima
facie evidence is to be looked into i.e. Court is not deciding the
suit finally, but deciding the rights of the parties based upon the
prima facie evidence where interim injunction is sought for.
14. In background of above facts and circumstances, when
main suit is yet to be decided on its own merits wherein all the
parties would have sufficient and ample opportunity to adduce
final evidence to prove their case, scrutinizing and thereby
discussion and determination on any evidence on record in any
manner would ultimately prejudice the trial. Therefore, it is not
advisable to scrutinize, discuss and thereafter determining the
outcome of other documentary evidence and submissions of
both the sides so as to arrive at any specific conclusion either
regarding dispute or issue between the parties or regarding the
effect of such evidence at such interim stage.
15. At present, it is sufficient, at the cost of repetition to
recollect that the original user of trademarks under reference
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was one M/s.Universal Impex. One of the partners of such
Universal Impex against whom there is an allegation that he has
unilaterally executed an assignment deed, his partner of present
defendant Universal Pharma i.e. Jayesh Kantilal Mehta and,
therefore, he is very much aware about the fact that original
ownership of trademark by Universal Impex was assigned
against consideration in favour of present plaintiff and,
therefore, he has no reason whatsoever to use same trade name
and trademark for same product in any manner whatsoever.
Therefore, the trial Court was right in allowing the interim
application by the plaintiff restraining the defendant from
continuing infringement and passing off so far as other issues
are concerned, the trial Court has rightly granted the injunction
with an observation that it is subject to a decision by the High
Court of Bombay in Civil Suit No.1342 of 2007. Therefore,
after decision in such suit, either party is entitled to apply for
modification of such impugned order. However, at present, I do
not see any illegality or irregularity to interfere in the impugned
order. I have perused the record, pleading and impugned order
also. The trial Court has taken care in detail of all relevant
aspect, argument and submission of both the sides and referred
relevant decisions cited by both the sides and passed a reasoned
order."
4. Thereby, the application filed by the appellant - plaintiff before the
trial Court for interim injunction at Exh.5 in Civil Suit No.2/2012 stands
allowed as prayed for in terms of paragraph 12A and 12B of such
application. However, it is clear that parties are at liberty to pray for
modification of such order subject to decision of Civil Suit No.1842 of
2007 by the Bombay High Court and at such point of time, the trial Court
shall decide such application on its own merits without being influenced
by the present order.
(S.G.SHAH, J.)
binoy
Further Order
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Learned advocate Mr.Arpit Kapadia for the appellant is praying to
stay operation of the judgment and order for couple of days so as to
enable him to challenge the order before the appropriate Court. However,
since it is not disputed that respondent - Company is incorporated
afterwards and it has never utilised such trademark prior to its use by the
appellant, I do not see any reason to stay the operation of the judgment.
Hence, such request is rejected.
(S.G.SHAH, J.)
binoy
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C/AO/167/2013 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 167 of 2013
[On note for speaking to minutes of order dated 30/11/2013 in
C/AO/167/2013 ]
=============================================
G.M.BELL HEALTH CARE PVT.LTD.....Appellant(s)
Versus
UNIVERSAL SKIN IMPEX PVT. LTD.....Respondent(s)
=============================================
Appearance:
MR FB BRAHMBHATT, ADVOCATE for the Appellant(s) No. 1
MR ARPIT A KAPADIA, ADVOCATE for the Respondent(s) No. 1
=============================================
CORAM: HONOURABLE MR.JUSTICE S.G.SHAH
Date : 09/01/2014
ORAL ORDER
1. Learned advocate Mr.F.B.Brahmbhatt for the appellant has submit a note dated 17.12.2013, and has pointed out that in the judgment and order dated 30.11.2013, there are some typographical error so far as disclosing the name of concerned litigants are concerned. He has further pointed that in Line No.-18 of Para-3(5) on Page No.-4 the name of Satish Kantilal Mehta is required to be corrected as Jayesh Kantilal Mehta . Similarly, in the Line No.-12 of on Page No.-4 from the bottom the name of Satish Kantilal Mehta is to be replaced with the name of Jayesh Kantilal Mehta. Thereafter, in 13th Line from top on Page No.-5 the words "brother of" is required to be deleted.
2. In view of the above, when other side has no objection in such typographical error correction, the note for Speaking to Minutes is allowed as prayed for. Thereby, the names are to be corrected as aforesaid and the words "brother of" shall be deleted. Note for Speaking to minutes is disposed of accordingly.
(S.G.SHAH, J.) dharmendra Page 1 of 1 13 of 13