Delhi High Court
Anand Kumar Deepak Kumar & Anr. vs Haldiram Bhujia Wala & Anr. on 13 May, 1999
Equivalent citations: 1999VAD(DELHI)41, 80(1999)DLT26, (1999)122PLR65
Author: J.B. Goel
Bench: J.B. Goel
JUDGMENT J.B. Goel, J.
1. Plaintiff No. 1, M/s. Anand Kumar Pradeep Kumar, a partnership firm constituted by Shiv Rattan Aggarwal, Manmohan Lal Aggarwal and Madhu Sudan Aggarwal and plaintiff No. 2 Shiv Kishan Aggarwal all sons of Late Mool Chand have filed a suit for permanent injunction against the defendents alleging that they are the registered proprietors of the trade mark and continuous user through their ancestors since 1941 of the trade mark name and trade mark "HALDIRAM BHUJIAWALA". They had strated a shop at 1454, Chandni Chowk, Delhi and doing business there since 1983 using the said trade mark. The defendents intended to start a new shop to carry on similar business under the same tradename and with the same trademark at Karol Bagh, New Delhi. They sought an injunction. The suit was intially filed in the Court of the District Judge, Delhi on 10.12.1991. However, subsequently, the plaintiff amended the plaint incorporating claim for recovery of damages of Rs. 6.00 lakhs which exceeded the pecuniary jurisdiction of that Court and the plaint was returned under Order 7, Rule 10A of the Code of Civil Procedure (for short the Code). The suit was presented in this Court on 17.2.1992.
2. Briefly the case of the plaintiffs is that late Shri Ganga Bishan who was also known as Haldiram Bhujiawala, had been doing his business of manufacture and sale of salted preparations like Bhujia, papads and sweets etc. since his chilhood since before 1941 under the name and style of " Chand Mal Ganga Bishan" and "HALDIRAM BHUJIAWALA" initially in Bikaner and later on also started in Calcutta he formed a partnership firm in the year 1965 under the name and style of M/s. Chand Mal Ganga Bishan with four partners: (1) Ganga Bishan (himself), (2) Mool Chand (his son), (3) Shiv Kishan (son of Mool Chand) and (4) Smt. Kamla Devi, w/o Shri Rameshwar Lal(his daughter in law). The said firm had adopted the trademark of HALDIRAM BHUJIAWALA".
3. On 29.12.1972, the said four partners applied to the Registrar of Trademarks for the registration of the said trademark in Class 30. The trademark was advertised in Trademark journal and in due course was registered as No. 285062 ( on 27.1.1981) as on 29.12.1972 in respect of sale of Bhujia, papad fried, namkeen, saltish dal etc. in class 30 in Part A in India except the State of West Bengal in the names of the aforesaid following four partners of the firm, namely:
1. Shri Ganga Bishan @ Haldiram,
2. Shri Mool Chand,
3. Shri Shiv Kishan, and
4. Smt. Kamla Devi.
4. The said partnership firm was dissolved by means of dissolution deed dated 16.11.1974 and thereby the registered trade mark No. 285062 was allotted/assigned exclusively to Shri Mool Chand for the whole of India Except the State of West Bengal; and it was agreed that in the territory of the State of West Bengal Smt. Kamla Devi or her representatives could carry on similar business there. Relevant Clause No. 3, 7, and 8 of the Dissolution Deed dated 16.11.1974 provide as under :
"3 That the Second Party shall be entitled to carry on the said business under the name and style of M/s CHANDMAL GANGABISHAN also trading as HALDIRAM BHUJIAWALA having its Head Office at Bhujia Bazar, Bikaner and/or at such other place or places, as he may think fit and proper under the said or style. The trademark "HRB-HALDIRAM BHUJIAWALA" shall be utilised by the party here to of the Second party throughout India except in the Territory of West Bengal. The Territory of West Bengal shall be utilised by the party hereto of the Fourth Part and/or by hae representatives. The other partners shall have no objection in using the trademark by the parties hereto of the Second and Fourth Parts as mentioned above.
7. That the Second Party shall be at liberty to carry on the business either as a solepro prietor or may invite partners and carry on the business in partnership and deal with the trademark "HRB-HALDIRAM BHUJIAWALA" Regd. at No. 285062 in Class 30 in any manner, he may deem fit and proper.
8. That parties hereto of the First, Third and Fourth parts shall have no onjection if the Regd. Trade Mark No. 285062 in class 30 is transferred in the name of the Second Party in the records of the Registrar of Trade Marks by taking proper proceedings."
5. Mool Chand is described as party No. 2 and Smt. Kamla Devi as party No. 4.]
6. Shri Rameshwar Lal husband of Smt. Kamla Devi simutaneously by a seperate writing of same date also had acknowledged, declared and recognised this right of Mool Chand as a sole/exclusive user and propietor of this trademark. That writing reads as under:
"Dated:16.11.1974.
TO WHOM SO EVER IT MAY CONCERN This is to confirm that the name Haldi Ram Bhujiawala (HRB) which was originally adopted and used by my father since 1941 shall remain the sole property of my brother Mool Chand and his representatives for whole of India except the State of West Bengal. I or any of my representatives shall not claim any further right on this and I shall trade under the name Haldi Ram Bhujiawala in West Bengal only.
sd/-
(RAMESHWAR LAL AGGARWAL)
7. Ganga Bishan died in 1980. Mool Chand also died on 30.7.1985 leaving behind him his four sons, namely, Shiv Kishan Aggarwal, Shiv Rattan Aggarwal, Manohar Lal Aggarwal and Madhu Sudan Aggarwal, besides two daughters and his wife. The widow and the two daughters gave "no objections", thereby relinquishing their right in the said trademark and agreeing for transfer of the registration of the trademark in the names of the aforesaid four sons of Mool Chand. These four sons of Mool Chand had made an application before the Registrar Trade Marks on 22.11.1985 for renewal and transmission of the said Registered Trade Mark No. 285062 in their names. Their application was allowed and they have been registered as subsequent proprietors of the said trade mark as from 30.7.1985, and the trademark was renewed in their names for 7 years ending on 28.12.1986 as per certificate issued on 28.2.1989. The trade mark was further renewed in their names for 7 years from 29.12.1993. After the institution of this suit the aforsaid four persons have formed a company under the Companies Act, 1956 with the name of M/s. Haldiram India (Pvt.) Ltd. having registered office at B-1/H8, Mohan Cooperative Industrial Estate, Mathura Road, New Delhi and on their application this trade mark was transfered and the said caompany has been registered as subsequent proprietors of the said trademark as from 27.7.1995. The trademark now stands renewed upto 29.12.2000 in the name of the company.
8. Plaintiff No. 1, the partnership firm had strated their business at 1454, Chandni Chowk, Delhi in the year of 1983 doing the same business and using the registered trademark " Haldiram Bhujiawala" . It is alleged that the defendants had never carried on the business anywhere else except in Calcutta not they were entitled to carry on business beyond West Bengal and they are not entitled to do business at Karol Bagh, Delhi under the name of Haldiram Bhujiawala nor entitled to use the trademark "Haldiram Bhujiawala". And their threat/intention to start such business was illegal. Alongwith the suit an application for ad interim injunction was filed before the learned District Judge. Temporary injunction was granted by the learned Additional District Judge on 10.12.1991.
9. The defendants in their written statement have disputed the claim of the plaintiff. They have pleaded that their father late Shri Rameshwar Lal Aggarwal was the first invento, adopter and user of this trade mark since the year 1958, (as against plaintiff's claim since 1965) and doing his business under this tradename and trademark since then; who had also made application for the registeration of this trademark in class 30 in the names of Shri Rameshwar Lal Aggarwal and Shri Prabhu Shanker Aggarwal trading at 7, Jugmohan Mullick Lane, Calcutta-7 claiming its user since 1958, which was registered as No. 330375, and later on the trademark was registered in their names as per certificate dated September 11,1980 as on 2.11.1977 and they have been using this trademark continuously. It is thus claimed that they being the prior user of the trademark have better and overriding rights over the rights of the plaintiffs.
10. Arguments have been addressed at length. Both claiming roght on the basis of prior user.
11. Two questions arise: (1) Who are the first adopters/users of the trademark; and (2) What is the effect of assignment of the trademark in question to be exclusively used by Mool Chand by virtue of dissolution deed dated 16.11.1974?
12. It is not disputed that the parties in the suit are the successors (grandsons) of late Shri Ganga Bishan, plaintiff being the sons of his son Mool Chand whereas defendants are the sons of his other son Rameshwar Lal. Both the parties have relied on documents in support of their respective claim.
13. It appears that some third party namely Haldiram Madan Lal trading at Calcutta had also sought registration of this very trademark "Haldiram Bhujiawala" through Application No. 284166 B in Class 30. Ganga Bishan @ Haldiram s/o Chandmal then aged 75 years had opposed it and in his affidavit filed in Opposition No. CAL-1048 on 25.6.1976, in paras 1 and 2 of his affidavit he had claimed as under:
1. That "HALDIRAM" is my nick- name and I have been commonly known and called by the name Haldiram than personal name "GANGAB ISHAN".
2. That from my very young age I have been in the business of manufacturing and sale of Bhujia, Papad, Namkin and Sweet-Meals and have been trading under the Trade Name "HALDIRAM BHUJIAWALA" at Bikaner. The tradename Haldiram Bhujiawala is presently being used by me....
XXX XXXX XXX
14. Rameshwar Lal Aggarwal ( Predecessor-in-interest of the defendants) in Opposition Proceedings against his Application No. 330375 for registration of the trademark in his name, in para 3 of his affidavit dated 19.6.1978 has been admitted the use of this trademark by his father, as under :
3. .....Haldiram form the essential part of the trademark of the firm of my father who was trading in the name and style of "Haldiram Bhujiawala" since his young age".
15. This admission made by the predecessor-in-interest of the defendants would bind the latter. It shows that this tradename and trademark was not invented/adopted first by Shri Rameshwar Lal as now claimed by defendants, but by his father late Shri Ganga Bash an since his childhood using the tradename of Haldiram Bhujiawala in the course of his business. Shri Ganga Bishan died in the year 1980 at the age of over 75 years. He must have been using this tradename for over 40 years before his death as claimed by the plaintiffs.
16. Plaintiffs have placed on record copy of Certificate No. 137011 dated 27.1.1981 whereby this trademark " Haldiram Bhujiawala" (with the logo HRB in a particulars design) has been registered as No. 285062 w.e.f. 29.12.1972 in Class 30 for India except the State of West Bengal in the name of (1) Ganga Bishan @ Haldiram, (2) Mool Chand, (3) Shiv Krishan and (4) Kamla Devi trading under the name of "Haldiram Bhujiawala" and "Chand Mal Ganga Bishan", Bhujia Bazar, Bikaner. They as parners were using this trademark and their partnership firm was dissolved on the terms agreed in dissolution deed dated 16.11.1974. In its Clauses 3,7, and 8 already reproduced, Shri Ganga Bishan, Shiv Krishan and Smt. Kamla Devi had eliquished/assigned their right and claim in this trade mark in favour of Mool Chand exclusively for the whole of India except the State of West Bengal.
17. Shri Rameshwar Lal, husband of Kamla Devi had also bound himself to this effect in his declaration dated 16.11.1974 given simutaneously, Smt. Kamla Devi and her husband and for that matter their heirs and successors are bound by this and they can use the trademark only within the State of West Bengal and not beyond that. On the death of Mool Chand on 30.7.1985, on the application made on 22.11.1985 by his four sons, namely, Shiv Krishan, Shiv Rattan, Manohar Lal and Madhu Sudan to the registration of the trademark was transferred in their names vide certificate dated 28.2.1989 issued by the Registrar of Trademarks inter alia recognising their claim/right on the basis of the said dissolution deed dated 16.11.1974 and as successors in interest of Mool Chand nad trademark was renewed in their names and later this trade mark has been transferred in the name of the aforesaid company formed by them.
18. Plaintiff No. 1 a partnership firm constituted by three of the sons of Mool Chand, namely, Madhusudan, Shiv Rattan and Manohar Lal, had started their business at 1454, Chandni Chowk, Delhi on the year 1983 doing the same business under the same trademark. The fact of their doing this business since 1983 at Delhi is not disputed by the defendants in their written statement. Plaintiff No. 2 is the fourth son of Mool Chand who has been registered as joint user with them. The Plaintiffs who are the successors in interest of late Ganga Bishan as well as of Mool Chand are thus the registered proprietors of this trademark having registration as from 29.12.1972. They are also prior user of the tradename and the trade mark in question in Territory other than Calcutta. Use or adoption of this trade mark by Rameshwar Lal as alleged even if it is from the year 1958 has been in Calcutta only as they have not been using the tradename or trademark in Delhi or rather beyond West Bengal. And by virtue of dissolution deed dated 16.11.1974, this trademark has been assigned exclusively to Shri Mool Chand for use in India except the State of West Bengal. Parties to this settlement and their successors in interest are bound by it. The defendant are thus bound by this settlement dated 16.11.1974 and as such they cannot claim any right contrary to its terms. The material placed on record also shows that the defendants have been using this trade mark in relation to their business primarily in Calcutta. In any case it is not their case that they had been doing business in Delhi before this suit was filed on 10.12.1991 nor sale figures in Delhi have been made available.
19. It is also seen that the application for registration of this trademark was filed with the Registrar (Trademarks) on 2.11.1977 in the names of Shri Rameshwar Lal Aggarwal and Shri Prabhu Shankar Aggarwal trading at 9, Jagmohan Mullick Lane, Calcutta-7 (which was later on registered as No. 330375 in Class 30 on 11.9.1980) was advertised in the Trademark Journal No. 734 dated January 19,1980 wherein its use was claimed only in Calcutta. Before this application was advertised, the Office of the Registrar had raised an objection in their letter No. U-3/996 dated 14.4.1978, inter alia, to the effect that the trademark " Haldiram" was already pending consideration in application No. 285062. To this, a reply dated 18.7.1978 was filed on behalf of the applicants by Shri R. N. Prabhakar as their Advocate/Attorney, and in para 5 of which he has stated as under :
5. As regards the cited pending trademark under Application No. 285062, it is to submit that applicants are the only firm trading under the name Haldiram Bhujiawala at Calcutta and no application is pending in the name of the applicants.
20. Obviously, it was intended and was so represented on behalf of the applicants (No. 330375) that the registration was sought for use of the trade mark only in Calcutta. That was obviously in consonance with the right reserved to them under the dissolution deed dated 16.11.1974 and otherwise available to them.
21. Further in support of his Application No. 330375 by way of evidence,Rameshwar Lal had filed his affidavit dated 19.6.1978 wherein also he has not alleged or claimed that he was using this trademark outside Calcutta or beyond the State of West Bengal.
22. Shri R.N. Prabhakar, Advocate had acted for and represented the (plaintiffs)/applicant in Trade Mark No. 285062 made for registration of the trademark on 29.12.1972 and it was he who had pursued and got the registration transferred in the names of four sons of Mool Chand vide certificate dated 27.1.1981 from the office of the Registrar, Trade Marks, Shri R.N. Prabhakar, Advocate, had also made the other Application (No. 330375) for registration of the trademark on behalf of Rameshwar Lal and Prabhu Shankar Aggarwal on 2.11.1977 it was within his knowledge about the respective rights of the parties in his trademark though in this application or even in reply dated 18.7.1978 he has not categorically disclosed and declared that the applicants were entitled to the use of the trademark and tradename in and not beyond the State of West Bengal, however , he intention obviously was to get the trademark registered for use in Calcutta only. Otherwise it would be a deliberate attempt on his part to have cancealed a material fact to obtain registration in the latter's name . The registrar has not appreciated it and has overlooked that Shri Rameshwar Lal and Prabhu Shankar had claimed registration for use in Calcutta only obviously ignored the application No. 285062 filed on 29.12.1972 for registration of this trade mark for India in names of four other persons already pending consideration and the trademark was registered (330375) vide certificate issued on 11.9.1980. Registration of trade mark on the basis of application (No. 285062) filed on 29.12.1972 is intriguing. There could not be two similar registered trademarks in respect of same goods operating simultaneously. Either the Registrar has been misled or the said Registration No. 330375 has been granted fraudulently and in collusion with the applicants. In respect of a registered trademark , the rights of the parties are to be determined as at the date of application. And Sec. 12(1) of the Act is bar against registered of an identical trademark which is already registered in the name of a different proprietor. Concurrent use by two or more persons of the same trademark for the same goods is completely contrary to the whole essence of trademark jurisprudence for a trademark is intended to denote that the goods come from one source and one source only.
23. It appears that after the plaintiff came to know about the registration of this trademark in the name of the defendants/their predecessor, they lodged an opposition with the Registrar, Trade Mark. Though that was disallowed but appeal is admittedly pending before the High Court Calcutta. The registration of the trademark in the name of defendants/their predeceassor in interest having effect beyond the State of West Bengal thus is under dispute. Fraud vitiates all transactions. Registration of the trademark obtained by fraud would not acquire finally/immunity from challenge under Section 32(a) of the Trade and Merchandise Marks Act, 1958 (for short "the Act") Which provides as under :-
32. Registration to be conclusive as to validity after seven years. - Subject to the provisions of Section 35 and Section 46, in all legal proceedings relating to a trademark registered in Part A of the register including applications undersection 56 (,the original registration of the trademark shall, after the expiry of seven years from the date of such registration, be taken to be avoid in all respect unless it is proved-
(a) that the original registration was obtained by fraud ; or
(b) xx xx xxx
(c) xx xx xx
24. A party would not be allowed to take advantage of its own fraud and as such prima facie this trademark could not be availed by the defendants beyond the State of West Bengal.
25. The following result emerges from the above discussion:-
1. Late Shri Ganga Bishan who was also known as Haldiram Bhjiawala was the inventor/first adopter and first user of the tradename "Haldiram Bhujiawala" which he had adopted since his childhood in or before 1941 and he has been doing business in this tradename.
2. He had adopted and used this trademark "Haldiram Bhujiawala" with the logo of "HRB" in a particular shape and design since 1965 while doing business in a partnership under the names and style of: (1) Chand Mal Ganga Bishan and (2) Haldiram Bhujiawala with four partners, namely, Ganga Bishan (himself), Mool Chand, Shiv Kishan and Smt. Kamla Devi.
3. By means of dissolution deed dated 16.11.1974, the trademark was exclusively assigned to Shri Mool Chand for use in India except the State of West Bengal.
4. Smt. Kamla Devi who was a party to the dissolution deed as a partner us bound by the terms of this issolution deed.
5. Rameshwar Lal, predecessor-in-interest of the defendants has also bound himself in his simultaneous declaration made on 16.11.1974 confirming/accepting the same.
6. After the dissolution of the firm 16.11.1974 Shri Mool Chand exclusively became entitled to the use of this trademark in India except in the State of West Bengal.
7. After the death of Shri Mool Chand, this trademark was transferred to his four sons, namely, Shiv Kishan Aggarwal, Shiv Rattan Aggarwal, Manohar Lal Aggarwal and Madhu Sudan Aggarwal w.e.f. July 30, 1985.
And they became the registered subsequent proprietor of this trademark.
8. Subsequently, this trademark was assigned/transferred in the name of the company Haldiram (India) Pvt. Ltd. in 1995.
9. Defendants or their predecessor-in-interest - Ramashwar Lal was doing his business only in Calcutta.
10. The plaintiff No.,1 M/s. Anand Kumar, comprising of three sons of Mool Chand had started a shop in Chandni Chowk in the year 1983 and using the said trademark. They are prior used of this trademark in Delhi. They thus are both registered proprietors as well as prior used of this trademark.
26. The defendants prima facie are not entitled to its use. They have started a shop in ?Delhi in February, 1992 after this suit was filed, using the tradename trademark of "Haldiram Bhujiawala" which is infringement of the registered trade mark of plaintiff, or in any case passing off.
27. Plaintiff have thus prima facie case in their favour.
28. Defendants had no business in Delhi when the suit was filed. As such the question of their suffering any legal injury, damage or loss does arise. The balance of convenience is also in favour of the plaintiff as if the defendants are allowed to use indentical trademark concurrently, this will create confusion among the public and loss, harm and injury to the plaintiff. Plaintiff have thus made out a strong case of grant of temporary injunction.
29. This application is accordingly allowed and it is hereby ordered as under:
1. Defendants, their agents/representatives/servants or successors-in-interest are hereby restrained by means of interim injunction from using the tradename and or/trademark "Haldiram Bhujiawala" with or without the logo, as registered vide Registration No. 285062 or any other trade mark identical or deceptively similar thereto, in India except the State of West Bengal;
2. The defendants shall submit within two months, statement of accounts showing the details of the sales made by them in Delhi since 10.12.1991 using this tradename and /or trademark verifying its correctness on affidavit;
3. The defendants shall make discovery on affidavit within one month of all the documents, account books, papers etc. relating to such business since 10.12.1991 and shall filed an undertaking that they shall not destroy or part with such documents till further orders of this Court; and
4. They shall make available for inspection by the plaintiffs all such documents, account books, papers, etc. pertaining to the said business, if so required.
30. Application allowed.