Madras High Court
Vinod K.Sharma.J vs Allergan Inc on 29 December, 1994
O.A.No.835 of 2008 and A.No.5318 of 2011 in C.S.No.724 of 2008 VINOD K.SHARMA.J., The applicant Physique India Ltd., a company registered under the Companies Act, has filed this application under Order 14 Rule 8 of the Original Side Rules r/w Order 39 and Rules 1 & 2 of the Code of Civil Procedure, for grant of interim injunction, restraining the respondent, by itself, its servants, agents, distributors or anyone claiming through it from manufacturing, selling, advertising and offering for sports and playthings, gymnastics and sporting articles for personal use using same or similar trade mark Physique or any other visually similar mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way, visually or deceptively or phonetically similar to the applicant's registered trade mark Physique in relation to any for sports and playthings, gymnastics and sporting articles for personal use and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually or phonetically similar to the applicant's registered trade mark No.804328 in class 26 or in any manner infringe the applicant's registered trade mark pending disposal of the suit. 2. The applicant is a company, registered under the companies Act with its registered office at B-2A, Gem Plaza, 66, Infantry Road, Bangalore. Whereas the respondent is a proprietary concern of Rajiv Oberoi with its office at 518, Sector-37, Pace City-2, Gurgaon, which do not deal with its product within jurisdiction of this Court. 3. It is case of the applicant that the applicant's parent company (though the word coined by the applicant, which is not recognized under the Company law), is said to be engaged in the manufacture and sale of various kinds of equipment to be used in the gym. It is further case of the applicant that the Trade Mark Physique was used by the parent company in United Kingdom, since 1982. 4. The plaintiff / applicant was incorporated with the name Physique Training Equipment India Ltd in joint venture with 50% share holding of Physique Training Equipment Plc. The name of the plaintiff / applicant was changed to Physique India Ltd, by following the provisions of Companies Act. The holdings of Physique Training Equipment Plc in the applicant company is 40%. 5. It is the case of the applicant that it has been using the Trade Mark Physique with all goods, manufactured by it, which are said to be well received in the market and have acquired tremendous goodwill and reputation. 6. It is also case of the applicant that the Trade Mark Physique is associated with the applicant / plaintiff alone and none else. The turn over of the applicant company for the year 2006-2007 is shown to be Rs.9,97,13,282/- (Rupees Nine Crores Ninety Seven Lakhs Thirteen Thousand Two Hundred Eighty Two only). Whereas expenses incurred to popularize the goods in market, is claimed to be Rs.1,58,85,625/- (Rupees One Crore Fifty Eight Lakhs Eighty Five Thousand Six Hundred and Twenty Five only). 7. The case of the applicant is that on being authorized by the parent company, the Trade Mark was got registered at Chennai. This is the ground for filing the suit in this Court. (The respondent is neither manufacturing nor dealing in the State of Tamil Nadu nor has Office within the jurisdiction of this Court.) 8. The applicant claims that the Trade Mark of the applicant enjoys substantial goodwill and reputation in the market of India, and abroad, because of the quality product, manufactured under this Trade Mark. The applicant, being a registered proprietor of the Trade Mark, enjoys exclusive right to the Trade Mark, and no one can use the Trade Mark Physique without permission of the applicant. The use by any other person without permission amounts to infringement of Trade Mark. 9. It is the case of the applicant that it was in December 2007, that the applicant came to know that respondent was manufacturing and marketing gym equipment, treadmill, recumbent cycle, cross train, single station, all in one multi gym, steam bath, jacuzzi and sauna bath under the Trade Mark Physique. The respondent is said to have slavishly imitated the applicant's Trade Mark in respect of identical goods. 10. It is further case of the applicant that respondent is knowingly violating the applicant's trade mark Physique, which, on account of prior use and registration, the respondent is not entitled to use. 11. The applicant / plaintiff issued a legal notice to the respondent, calling upon, it to cease and desist from using the Trade Mark. But despite receipt of notice, respondent has not bothered to send reply till date. 12. The applicant claims that respondent is passing off his product as that of the applicant, because of deceptively similar Trade Mark. The applicant also claims that it has been using the Trade Mark Physique since 1982 (this statement in affidavit would amount to misstatement, as admittedly, the applicant company, which is a company, registered under the Companies Act, was only incorporated in the year 1997). 13. It is case of the applicant that because of the goodwill earned by the applicant / plaintiff, respondent has no valid reason to use the Trade Mark Physique, which is visually identical as that of applicant. The use of the Trade Mark is said to be malafide and amounts to falsification of Trade Mark, which is an offence punishable under the Trade Marks Act, 1999. 14. On the pleadings referred to above, the applicant claims prima facie case, balance of convenience and that it is likely to suffer irreparable loss and injury, if the injunction is not granted. 15. On notice, counter affidavit has been filed, wherein, preliminary objection has been taken, with regard to maintainability of suit, on the ground that no cause of action actually arose within the jurisdiction of this Court to maintain the present suit. This plea of respondent stands rejected, by this Court in A.No.4885 of 2011 of the even date. 16. It is the stand of the respondent that the applicant has approached this Court with unclean hand by suppressing material facts. In support of this stand, it is pleaded that though the stand of the applicant / plaintiff is that it was incorporated in the year 1997, but has claimed use of Trade Mark since 1982. This averment is said to be totally false, and made with ulterior motive to mislead this Court. 17. It is also case of the respondent that the Trade Mark application was filed by the plaintiff in June 1998. Whereas it is claimed to be used by the plaintiff / applicant since 1997, but documents on record only show its usage in July 1998. It is further case of the respondent that use of the Trade Mark Physique by the respondent, is known to the plaintiff since March / April 2003. 18. It is case of the respondent that objection to registration of the Trade Mark was raised by the applicant / plaintiff, on the ground that the application for registration of Trade Mark of defendant was pending registration, as the application was made by father of the respondent on 02.01.1998. The case of the respondent is that defendant has been using the Trade Mark since 1992, which is the property of the respondent. The turn over generated by the respondent is said to be Rs.6,47,51,688/- (Rupees Six Crores Forty Seven Lakhs Fifty One Thousand Six Hundred and Eighty Eight only). 19. It is submitted that respondent is prior user of the Trade Mark since 1992. The stand of the respondent is that use of Trade Mark Physique by the applicant / plaintiff is in fact infringement of the Trade Mark of the respondent. The stand of the respondent is that the respondent is prior user of the Trade Mark since 1992. Whereas the applicant / plaintiff started using the Trade Mark for the first time in 1998. The respondent also relied on the provisions of Section 34 of the Trade Marks Act, in defence to the plea of the plaintiff / applicant. 20. Section 34 of the Trade Marks Act reads as under: "34. Saving for vested rights Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior - (a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his, whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark." 21. Learned counsel for the applicant / plaintiff vehemently contended that the applicant is the registered user of the Trade Mark, which was being used since 1982. The applicant company, being registered owner, is entitled to the injunction prayed for. 22. The contention of the learned counsel for the applicant was that mere fact that the applicant was not using the Mark in India, is totally irrelevant, as it was being used in the world market prior in time. 23. In support of this contention, learned counsel for the applicant / plaintiff placed reliance on a judgment of the Hon'ble Supreme Court in the case of Milment Oftho Industries & Ors vs. Allergan Inc, 2004 (28) PTC 585 (SC), wherein the Hon'ble Supreme Court was pleased to lay down as under: "9. The respondents have challenged the initiation of the proceeding on the ground that the plaint was not verified by a person authorised to do so. On the merits it has been contended that there was no reliable evidence to show that the appellant had commenced business under the mark OCUFLOX in 1993 when the respondent for the first time used the name in connection with its goods. It is contended that there was nothing to show that in 1993 when the respondents commenced marketing their products under the mark OCUFLOX, that the appellant had any goodwill in India in respect of the mark or that the respondents had any knowledge of the user of the mark OCUFLOX by the appellant. On the question of balance of convenience it was submitted that the suil was instituted more than 2 years after the appellant became aware of the user of the mark OCUFLOX by the respondents during which period the respondent No. 1 had built up its sales of its product under the mark OCUFLOX. The respondents have relied on copies of several invoices showing sales of OCUFLOX and have claimed to have spent Rs. 1,98,9671 between 1993 December, 1996 on publicity. During this period, the respondents manufactured about 4 lakh units of OCUFLOX of which about I lakh units were physicians samples. Although the value of the units manufactured have been given as about Rs. 5 lakhs (out of which the value of the promotional sample is Rs. 3 lakhs), no figure of the sales of OCUFLOX effected by the respondents been given. It is submitted by the respondents that the appellant had never marketed any product by the name of OCUFLOX in India and was in fact marketing similar products elsewhere in the world under the mark OCUFLOX. 10. The respondents' objection to the filing of the suit is without substance. The plaint has been affirmed by Mr. A.K. Ghosh of Robson, Black & Ghosh. The appellant has produced copies of a power of attorney dated 29th December, 1994 in the form prescribed under the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act) authorising inter alia Mr. A. K. Ghosh of Robson, Black & Ghosh to act on behalf of the appellant in all proceedings under the Act. In addition a form of authorisation dated 27th January, 1997 authorising Mr. A. K. Ghosh of Robson, Black & Ghosh not only to file proceedings under the Act in Court but also ratifying and confirming actions already taken in this respect was produced. These are adequate to remove any doubt as to the filing of the suit. Besides, the issue is not one which can be raised in appeal particularly when the Learned single Judge did not record any finding in favour of the respondents on the point and no cross appeal has been preferred therefrom." 24. Reliance on this judgment is misplaced. In the case before the Hon'ble Supreme Court, it was a party using the Mark in the world market, but before this Court, the plaintiff is a company registered under the Companies Act, which was incorporated only in the year 1997. 25. There is no material placed on record, showing the assignment of the Trade Mark in favour of the applicant / plaintiff by M/s.Physique Training Equipment Plc, which is an independent company from that of plaintiff. 26. Though it is mentioned that the applicant is a subsidiary company of a company incorporated in United Kingdom, this averment again is factually incorrect, as the applicant cannot be said to be subsidiary company, as it is pleaded that share holding of UK company is only 40%. 27. According to the settled law, even the subsidiary company is independent of its holding company, having its distinct legal entity. The averment of the applicant, that they are prior users of the Trade Mark, is itself contrary to pleaded case of the applicant. 28. It was next contended by the learned counsel for the applicant / plaintiff, that there can only be one Trade Mark with one source and proprietor. It cannot have two origins, therefore, whether the respondent claims itself as rival of the plaintiff or as joint owner, it is impermissible under law. As the joint proprietor himself uses the Trade Mark jointly for benefit of all, it cannot be used as rivalry and in competition with each other. 29. The contention of the learned counsel for the applicant was that the applicant / plaintiff, being the registered owner of the Trade Mark, is entitled to exclusive use of Trade Mark, and that the respondent have no right to use it. 30. Learned counsel for the applicant / plaintiff, in support, placed reliance on the judgment of the Hon'ble Supreme Court in the case of Power Control Appliances and others vs. Sumeet Machines Pvt. Ltd. 31. Reliance on this judgment is again misconceived, as in the said case, the Hon'ble Supreme Court merely held that joint owner of the Trade Mark can use the Trade Mark jointly and cannot claim separate distinct use of same Trade Mark by claiming joint ownership. There is no such claim in the present case. 32. The respondent / defendant, in support of their defence, relied on Section 34 of the Trade Marks Act, 1999, which projects a person, who has been using the Trade Mark continuously prior to the person getting the Trade Mark registered. 33. The stand of the respondent is that it was using since the year 1992, though this fact was disputed by learned counsel for the applicant / plaintiff, the use of this Trade Mark by respondent in the year 1995, is not disputed. The stand of the plaintiff / applicant was based on the ground that the applicant was using this Trade Mark since 1982, which cannot be accepted, for the reasons already recorded. 34. Once it is not disputed that respondent has been using the Trade Mark even prior to incorporation of plaintiff, no case is made out for grant of temporary injunction as prayed for, as the applicant / plaintiff failed to prove prima facie case. The balance of convenience is also not in favour of the applicant / plaintiff for grant of discretionary relief of injunction. The plaintiff / applicant have not come to this Court with clean hand, as deliberate and intentional misstatement has been made with regard to use of the Trade Mark since 1982, though the applicant / plaintiff company came in existence only on its incorporation. In absence of clear proof of assignment of Trade Mark by UK company, it cannot be said that the applicant / plaintiff, is prior user of the Trade Mark Physique as projected in the plaint. 35. Learned counsel for the respondent also challenged grant of injunction on the ground of forum conveniens, by pleading that the applicant's registered office is situated at Bangalore. Whereas the defendant's is in Gurgaon. Admittedly, the respondent is not carrying on any business in the State of Tamil Nadu, therefore, filing of suit in this Court is with the ulterior motive to harass the respondent / non applicant, knowing fully well that the respondent is prior user of the Trade Mark Physique for its product, i.e. even prior to birth of plaintiff / applicant. 36. In view of the fact that this Court had already granted leave to sue, the ground of forum conveniens is not available for rejecting of plaint, as admittedly, this Court has jurisdiction, but at the same time, it cannot be lost sight that the applicant / plaintiff cannot be said to have approached this Court with clean hand in filing the suit in this VINOD K. SHARMA,J.
ar Court merely on the ground of registration of Trade Mark at Chennai, though the applicant / plaintiff is carrying on business at Bangalore, and no cause of action with regard to use of Trade Mark has arisen within the jurisdiction of this Court.
37. The plaintiff / applicant is not entitled to discretionary relief of injunction on this ground also.
38. Consequently, finding no merit in this application, it is ordered to be dismissed. No costs.
39. In view of the detailed order passed in the above application, A.No.5318 of 2011 is dismissed as having been rendered infructuous. 25.11.2011 Index: Yes Internet: Yes ar O.A.No.835 of 2008 and A.No.5318 of 2011 in
C.S.No.724 of 2008