Calcutta High Court
Shambhu Nath & Brothers & Ors vs Paras Nath Sharraf on 15 March, 2021
Equivalent citations: AIRONLINE 2021 CAL 202
Author: Debangsu Basak
Bench: Debangsu Basak
1 IA No. GA 1 of 2018 ( Old No.GA 1518 of 2018) In CS 114 of 2018 IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction Commercial Division SHAMBHU NATH & BROTHERS & ORS.
Vs. PARAS NATH SHARRAF For the Petitioners : Mr. Ranjan Bachawat, Sr. Advocate Mr. Debnath Ghosh, Advocate Mr. Gautam Kr. Ray, Advocate Mr. T.K. Jana, Advocate Mr. Gopal Das, Advocate Mr. Prithwiraj Sinha, Advocate Mr. Sourav Jana, Advocate For the Defendant : Mr. Subhashish Sengupta, Advocate Mr. Asif Hussain, Advocate Mr. Dhiraj Gupta, Advocate Mr. Ranjit Singh, Advocate Hearing concluded on : March 15, 2021 Judgment on : March 15, 2021 DEBANGSU BASAK, J. :-
The interlocutory application is taken up for final hearing. In a suit for infringement of a registered mark and copyright the plaintiffs seek interim protection.2
Learned senior advocate appearing for the plaintiffs submits that, the marks 'tooFAN' and 'SNB' registered under class 11 of the Act of 1999. He submits that, the plaintiffs are manufacturing electrical fans and marketing the same under the trademark 'tooFAN' and 'SNB'. The defendant is guilty of infringing such mark and copyright. The defendant is also trying to sell its products using the word 'tooFAN'. The defendant should be restrained from doing so.
Learned senior advocate appearing for the plaintiffs submits that the defendant raise primarily two defences. One of such defence is of prior user. He refers to the documents annexed to the affidavit in opposition and submits that, in order to substantiate at least at the prima facie stage, of a defence of prior use the defendant is required to show a date of commencement of use and establish continuous user of the same through cogent documents. In the facts of the present case the defendant apart from disclosing only one document claimed to be issued by a government official, did not disclose any document to establish its sale or the continuous user of the mark registered in favour of the plaintiffs. The other defence of the defendant that, there was a prior suit between the parties and that such suit was decreed, according 3 to him, without any substance. He draws the attention of the Court to the documents obtained by the plaintiffs. He submits that the plaintiffs obtained certified copy of the suit registrar of the Court in which, the suit was claimed to be filed and the decree passed to the effect that such a suit was not filed. He refers to the number of suit. It is with numericals and an alphabet in the capital. He submits that, since the defendant is not in a position to disprove such suit registrar, the claim of the defendant that there was prior suit in which a decree was passed is without any basis.
Referring to the certified copies produced by the defendant claiming that there was a decree in the suit, he submits that such certified copies were obtained not from the Civil Court but from a Consumer forum. It is inconceivable, according to him that, a decree passed by a Civil Court will be certified and a certified copy issued by a Consumer forum. Therefore, he submits that, the plaintiffs should be granted orders in terms of prayers (a), (b) and (c) of the petition.
Learned advocate appearing for the defendant submits that, there was a prior suit between the parties in which the defendant obtained a decree as against the plaintiffs from using the mark 'tooFAN'. He relies 4 upon two certified copies of the judgment and decree. He submits that the original of the certified copies are in Court. The Court can evolve any mechanism to find out the truth of the certified copies on which the defendant is relying upon. He relies upon Section 79 of the Indian Evidence Act, 1872 and submits that, the Court should presume the validity and legality of the certified copy produced by the defendant.
Referring to the prior suit, learned advocate appearing for the defendant submits that the suit was filed before a competent Civil Court. In support of such contention, he relies upon 2018 (75) Patent and Trademarks Cases 169 (Cal.) (Hindustan Unilever Ltd. Versus Emami Ltd. & Ors.). Referring to the merits of the matter, learned advocate appearing for the defendant submits that, the defendant is a prior user of the registered trademark. In an action for infringement of a trademark, the defence of prior use is a complete defence. In the facts of the present case, according to him, at best there is a dispute as to who is the prior user given the nature of the document disclosed by the rival parties. In such circumstances, relying upon (2001) 5 Supreme Court Cases 95 (Uniply Industries Ltd. Versus Unicorn Plywood Pvt. Ltd. and Ors.); 2014 (59) PTC 467 [Cal.] (B.S. Progressive Pvt. Ltd. versus S.G. Sales 5 Corporation and Ors.); ILR (1977) II Delhi 709 (Century Traders versus Roshan Lal Duggar & Co.); (1996) 5 SCC 714 (N.R. Dongre and Ors. versus Whirlpool Corporation and Anr.); 2011 (3) CHN (CAL) 444 (Orient Papers Industries Ltd. versus Jayanta Lamp Industries Pve. Ltd.) he submits that, the plaintiffs are not entitled to any relief at this stage.
Learned senior advocate appearing for the plaintiffs in reply submits that, in view of the ratio laid down in (2002) 3 SCC 65 (Laxmikant V. Patel versus Chetanbhai Shah and Anr.) that the plaintiffs are entitled to an order of injunction and appointment of a local Commissioner once a prima facie case is made out by the plaintiffs, interim reliefs as prayed for should be granted.
In the facts of the present case, the plaintiffs claim that they have the registered mark of 'tooFAN' and 'SNB' in their favour. The plaintiffs disclosed documents to establish such claim. The plaintiffs are manufacturing electrical appliances particularly electrical fans and are marketing the same with using the trademark and design mark 'tooFAN' and 'SNB'. The defendant is also in the business of manufacturing and selling electrical fans. The defendant is also using 'tooFan' to market its 6 electrical fans. The defendant claims prior user. In support of the claim of prior user, the defendant relies upon a document dated February 13, 1974 annexed to the affidavit-in-opposition. The defendant does not disclose any other document to establish user of the mark 'tooFAN' from February 13, 1974 till date of the affidavit-in-opposition. The defendant is required to establish that it is a prior or concurrent user and is continuously using such mark so as to stall an order of injunction in a suit for infringement of a mark. In the facts of the present case, I am unable to return a finding that the defendant was continuously using the mark from February 13, 1974 in absence of any document of sale being disclosed. The document dated February 13, 1974 again at its highest claims that the defendant is marketing a product using word 'tooFAN' but again as noted above, the continuous user subsequent to February 13, 1974 by documentary evidence are absent.
The other defence of the defendant is one of the existence of a decree in favour of the defendant as against the plaintiffs in respect of the mark 'tooFAN'. The defendant claims that a decree dated March 8, 1983 was passed in Title Suit No.56(A) of 1983 by the Subordinate Judge, Sitamarhi. In support of such contention, certified copy of the 7 judgment and decree dated March 8, 1989 is relied upon by the defendant. The plaintiffs rely upon an application for information. Such application for information is one issued by the relevant Court where the suit was allegedly filed and the decree passed. Such Court through the applications for information states that no suit bearing Title Suit No.56(A) of 1983 was ever filed before the Subordinate Judge, Sitamarhi Court in the cause title as claimed by the defendant. This piece of document relied upon by the plaintiffs remains unchallenged by the defendant in the sense that the defendant did not produce any material to establish that the Title Suit No.56(A) of 1983 was in the suit register of the Court by which such decree was claimed to be passed by the defendant on March 8, 1989. In absence of any cogent document establishing that, such suit as claimed by the defendant was in the suit register of the Court passing the decree dated March 8, 1989, I am afraid, at this stage of the suit, I am unable to accept the contentions of the defendants of the existence of the decree dated March 8, 1989. The certified copy of the decree dated March 8, 1989 which the defendant relies upon is one issued by a Consumer forum. It is claimed by the defendant that the records of the suit was called for by the Consumer 8 forum from where the certified copy of the judgment and the decree was obtained by the defendant. There is no explanation why the records of a Title Suit of a Civil Court be called for the Consumer forum and the proceeding in which it was so done. The order of the Consumer forum doing so is also not on record. The plaintiffs deny the existence of the suit or the decree passed therein. Even taking such a claim at the highest the defendant is nonetheless required to establish that Title Suit No.56(A) of 1983 was filed before the learned Subordinate Judge, Sitamarhi and a decree was passed therein. The defendant as noted above, did not disprove the application for information as obtained by the plaintiffs with regard to the suit registered.
In Hindustan Unilever Limited (supra), the Calcutta High Court expressed the view that a suit ought to be filed in the lowest pecuniary value. Hindustan Unilever Limited (supra) is of no assistance for the defendant since the defendant is yet to establish that, the suit was actually filed before the Sitamarhi Court for such Court to pass a decree.
In Uniply Industries Ltd. (supra) the Supreme Court considered two rival suits and the orders passed therein. In the facts of that case, the Court found that it was not appropriate to pass an order of 9 injunction and expedited the hearing of the suit. The fact scenarios obtaining in the present case are different.
In B.S. Progressive Pvt. Ltd. (supra), the Calcutta High Court found in the facts of that case that, the parties were in different classes in the matter of registration. In the facts of that case, the Court found it was too early to conclude finally who was in the business of plywood earlier than the other. In the facts of the present case, apart from the claim of user from February 13, 1974, the defendant is yet to produce any document to establish sales of any volume subsequent thereto.
In Century Traders (supra), the Delhi High Court is of the view that in order to succeed at the interim stage, the plaintiffs are required to establish user of the mark prior in point of time than the impugned user by the defendant. Again in the facts of the present case, the mark stands registered in favour of the plaintiffs. The plaintiffs are using the mark prior to the defendant. The defendant is in a position to establish its user from February 13, 1974 as claimed in the affidavit-in-opposition.
In N.R. Dongre (supra), the Supreme Court found in the facts of that case, the mark used by the plaintiffs was much prior to the application of the defendant.10
In the case of Orient Papers Industries Limited (Supra), the Calcutta High Court is of the view that, the law relating to passing off enable a prior user of trademark to get an order of injunction restraining the subsequent user of the same name in respect of the different types of business in certain circumstances, but it does not approve grant of injunction against the prior user of the same name at the instance of subsequent user in respect of the different business when apart from trade name, no other distinctive features of the product of the subsequent user is alleged to have been adopted by the prior user.
In Laxmikant V. Patel (Supra), the Supreme Court is of the view that in an action for infringement of passing off, the Court must see whether the business of the plaintiff came into existence prior to that of the defendant and whether, the part of the trade name adopted by the defendant acquired a goodwill. When, the Court finds that, the name of the defendant company or its intended name is calculated to deceive and divert business from the plaintiff or to cause confusion between two businesses, the Court ought to grant an order of injunction.
In the facts of the present case, as noted above, there exists a registered trademark and registered copy right in the device of the 11 plaintiff. The defendant could not establish prior user. The defendant also could not establish the existence of the decree spoken of by it at the prima facie level.
In such circumstances, there will be an order in terms of prayers
(a), (b) and (c) of the petition.
IA No. GA 1 of 2018 (Old No. GA 1518 of 2018) in CS No.114 of 2018 is disposed of accordingly.
(DEBANGSU BASAK, J.) B.Pal/sp3