Delhi High Court
M/S Cico Technologies Ltd & Anr vs M/S Tapcrete Marketing P Ltd & Ors on 23 October, 2008
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2503/2001
% Date of decision: 23.10.2008
M/S CICO TECHNOLOGIES LTD & ANR ....... Plaintiffs
Through: Mr Ashok Chhabra, Advocate
Versus
M/S TAPCRETE MARKETING P LTD & ORS
......Defendant
Through: Ex parte.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? No
2. To be referred to the reporter or not? No
3. Whether the judgment should be reported No
in the Digest?
RAJIV SAHAI ENDLAW, J.
1. This suit has been filed to restrain the infringement and passing off of the mark TAPECRETE in relation to Polymer Modified Cementatious Materials / goods. The defendant No.1 is a private limited company incorporated on 8th February, 2001 with the Registrar of Companies, Delhi and Haryana impleaded as the defendant No.10. A relief is also claimed in the suit for cancellation of the incorporation of the defendant No.1 with the name TAPECRETE in which the plaintiffs claim rights. The defendants 4, 5 and 6, of which the defendant No.6 is a Canadian citizen, are stated to be the persons who have got the defendant No.1 incorporated. The defendants 4 and 5 are also stated to be the Directors of the defendant No.1. The defendant No.3 M/s Maruti Traders is stated to be an authorized dealer of the plaintiff with respect to goods manufactured by the plaintiffs, inter alia, under the mark CS(OS) 2503/2001 Page of 1 of 8 TAPECRETE. The defendant No.3 is stated to have connived with the other defendants to sell and market goods under the mark TAPECRETE not manufactured by the plaintiffs. The defendants 1 to 7 are generally stated as persons who are marketing the goods under the mark TAPECRETE.
2. Vide ex parte order dated 6th December, 2001 the defendants 1 to 9 and their agents etc were restrained from manufacturing, selling, offering for sale etc and dealing in Polymer Modified Cementatious Materials or any other cognate and allied goods under the trademark TAPECRETE; the defendant No.1 was also restrained from importing, selling or offering for sale any material in the name of the defendant No.1 company from outside India and the Directorate of Revenue Intelligence was also directed to confiscate any material of the defendants entering into India from any port of India under the trademark TAPECRETE in the name of the defendants 1 to 9. However, subsequently, on 29th April, 2003, on application of the Directorate of Revenue Intelligence, the order against them was vacated.
3. The defendant No.1 and the defendants 2 to 6 appeared through their respective counsel. On some dates presence was also noted of the counsel on behalf of defendants 7 and 9.
4. The defendants 2 and 6 filed their written statement, application for vacation of the ex parte order, application for rejection of the plaint, alongwith some documents. However, the CS(OS) 2503/2001 Page of 2 of 8 said defendants also failed to file the written statement to the plaint as allowed to be amended on 16th January, 2006 and ultimately vide order dated 9th November, 2006 all the defendants were proceeded against ex parte and the plaintiffs were directed to lead ex parte evidence. The plaintiffs in their ex parte evidence have tendered the affidavits of Mr D Bhattacharya, Deputy General Manager of the plaintiff and of Mr Amit Gupta, Managing Director of the plaintiff. The defendants remain ex parte and the said witnesses of the plaintiff were not cross examined.
5. The case of the plaintiffs in the plaint is that the plaintiff No.2 M/s FRC Composites (India) Private Limited was set up in technical collaboration with FRC Composites Limited, a corporation continued under laws of Canada and having its principal office at Canada; that the plaintiff No.2 is the registered owner of the trademark TAPECRETE which is duly registered at No.471218 in class I in the register of trademarks. In the same paragraph 2 of the amendmed plaint, it is also stated that the plaintiff No.2 is the permitted user of the trademark in India under Section 49 of the Trade and Merchandise Mark Act, 1958. It is further the case in the plaint that the father of Shri Amit Gupta (supra) was carrying on business, inter alia, in the aforesaid goods and upon the demise of the father of the said Amit Gupta, under a settlement within the family of Shri Amit Gupta, Shri Amit Gupta got the right to carry on business, inter alia, under the brand TAPECRETE. It is further pleaded that pursuant to the aforesaid family settlement Form TM-23 under the Act was filed for transfer of the mark TAPECRETE from the plaintiff No.2 to the plaintiff No.1. Again in para 10 of the plaint the plaintiff No.2 is described, on the one hand as the absolute owner of the registered CS(OS) 2503/2001 Page of 3 of 8 trademark TAPECRETE, and on the other hand it is pleaded that the plaintiff No.2 is the permitted user of the trademark.
6. It is further the case in the plaint that the defendant No.6 Ms Linda Karauks is the daughter of Mr Ergo Karauks who was the President of FRC Composites (Canada) Ltd (supra), collaborators of plaintiff No.2; that the said FRC Composites (Canada) Ltd is 40% shareholder in the plaintiff No.2; that the defendant No.6 was actively involved in the business and was aware of the transfer of the trademark by the plaintiff No.2 to the plaintiff No.1; that the Defendant No.6 in collusion with the other defendants had hatched plans to infringe / violate the trademark TAPECRETE without any authorization whatsoever.
7. PW2 Amit Gupta examined by the plaintiffs in their ex parte evidence has not advanced the case further than as pleaded in the plaint, save for proving certain documents in support of the family settlement. PW1 Mr D Bhattacharya in his affidavit sought to prove the orders dated 11th March, 2005 and 3rd March, 2006 of the Intellectual Property Appellate Tribunal in a proceeding under Sections 56 and 107 of the 1958 Act filed by FRC Composites Limited, Canada against the plaintiffs herein and the Registrar of the Trademarks. Even though at the time of tender of the affidavit of PW1, the said orders being merely the computer print out, were given a mark but the same being judicial orders and there be nothing to suggest that the same are not a correct copy of the original, can be read. A perusal of the order dated 11th March, 2005 discloses that it was not disputed by the plaintiffs herein in the said proceedings that FRC Composites Limited, Canada is the owner of CS(OS) 2503/2001 Page of 4 of 8 the mark TAPECRETE registered in Canada and other countries. It was further not disputed that FRC Composites Limited, Canada had entered into a collaboration for incorporation of plaintiff No.2 M/s FRC Composites (India) Private Limited as a joint venture. Disputes appear to have arisen in relation to the said joint venture company. It was the case of the Canadian Company that the plaintiff no.2 had fraudulently got the said mark TAPECRETE registered in its name in India without any authorization of the Canadian company. On the contrary, it was the case of the plaintiffs herein before the Intellectual Property Appellate Board that the mark was got registered in India in the name of the plaintiff No.2 with the active participation of the Canadian Company. The Intellectual Property Appellate Board, however, held that the Canadian company had failed to explain the circumstances under which the application for registration of the mark was made as far back as in 1987 and which remained pending till registration in 1995 and further held that the application by the Canadian Company for rectification had been filed belatedly and the Canadian company had failed to explain as to why the registration was allowed and hence dismissed the rectification petition. PW1 had also proved a copy of the order dated 3 rd March, 2006 of the Appellate Board dismissing the review sought by the Canadian company of the aforesaid order. The defendants being ex parte, there is nothing on record to show that the aforesaid orders were challenged further.
8. As noticed above there is an ambiguity in the language in the plaint in paras 2 and 10. The plaintiff No.2 is, in the same breath, described as the registered owner as well as the permitted user of the trademark. The plaintiff No.2 as a permitted user cannot be the CS(OS) 2503/2001 Page of 5 of 8 registered owner of the trademark. The plaintiff No.2 as the permitted user of the mark, is also not entitled under Section 52 of the 1999 Act to institute any proceeding for infringement of the said trademark without impleading the registered owner of the said trademark i.e., the Canadian Company. As aforesaid, the Canadian company is not a party to the present suit.
9. Even though the plaintiff has not placed any document on record to show itself as the registered owner of the mark and has only placed documents to show the filing of the form TM-23 under Section 45 of the 1999 Act for registration of assignment of the mark from plaintiff No.2 to the plaintiff No.1, however, the registered ownership of the plaintiff No.2 of the said mark stands established from the orders aforesaid of the Appellate Board.
10. On the basis of the ex parte evidence before this court, the position which emerges today is that the plaintiff No.2 is the registered owner of the trademark even though it had in the plaint claimed itself to be the permitted user also. At the time of the institution of the suit in 2001, it was stated that registration of the assignment of the mark from plaintiff No.2 to the plaintiff No.1 was pending. At the time of leading ex parte evidence in 2007, it was not said that the said assignment had been registered. However, it has been held by this court in M/s. Modi Threads Limited v. M/s. Som Soot Gola Factory and another AIR 1992 (Delhi) 4, Grandlay Electricals (India) Ltd v Vidya Batra 1998 PTC (18) Delhi and Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and Pharmaceuticals Ltd. (2006) PTC 733 DELHI that rights in the trademark accrue on the basis of assignment deeds and such rights CS(OS) 2503/2001 Page of 6 of 8 cannot be denied on the ground that in the records of the Registrar of Trademark, the mark is still shown in the name of the assignor and that the assignee is entitled to protect the violation of the trademark at the hands of unscrupulous persons. Also, in the present case the registered owner of the mark TAPECRETE is also the plaintiff No.2.
11. The written statement filed by the defendants 2 and 6 to the plaint as originally filed also discloses that OMP376/2001 had been preferred by the Canadian Company aforesaid against the plaintiff No.1 and Mr Amit Gupta under Section 9 of the Arbitration Act for restraining them from using the brand name TAPECRETE. However, the outcome of the said OMP has not been explained. At this stage, it is necessary to state that the parties even while leading ex parte evidence, in cases where the opposite party had earlier appeared and filed pleadings and documents are required to still explain/deal with the said defence/documents. The plaintiff in the present case has failed to do so. However, notwithstanding the above, since the Canadian Company which was the adversary of the plaintiffs before the Intellectual Property Appellate Board and in the OMP aforesaid is not a party to the present suit and as such its rights are not to be affected by anything held in the present proceedings and further since the restrain is sought against others who appeared to be exploiting the trademark TAPECRETE, perhaps taking advantage of the disputes between the plaintiffs and the Canadian Company, I conclude that the said persons i.e., the defendants 1 to 9 in the present case, in any case, do not have any rights to the mark TAPECRETE and the plaintiffs have become entitled to the relief of injunction against them.
CS(OS) 2503/2001 Page of 7 of 8
12. The defendants 1 to 9 are thus restrained by a decree of permanent injunction from either themselves or through their agents, servants, from manufacturing, selling, offering for sale, advertising directly or indirectly or dealing in Polymer Modified Cementatious Materials under the trademark TAPECRETE or any other trademark similar or deceptively similar to the said mark. The defendant No.10 Registrar of Companies, Delhi and Haryana is also directed by a decree of mandatory injunction to take appropriate steps for striking off of the incorporation of the defendant No.1 M/s Tapecrete Marketing Pvt Ltd registered at No.U00000DL2001PTC 109580 on 8th February, 2001, unless the defendant No.1 opts to change its name. However, in the facts and circumstances of the case, I do not find the plaintiffs entitled to the relief of restraining import into India of the goods under the mark TAPECRETE or the relief of rendition of accounts and delivery in favour of the plaintiffs. I may notice that during the pendency of the proceedings, the defendants had offered the materials worth Rs 10 lacs which the defendants claimed to have been supplied by the plaintiffs to them and order was made for inspection of the said material by the plaintiffs but the record does not reveal anything having been done in pursuance thereto. In the facts of the case, I do not find the plaintiffs entitled to costs also.
The decree sheet be prepared accordingly.
RAJIV SAHAI ENDLAW
(JUDGE)
October 23, 2008
M
CS(OS) 2503/2001 Page of 8 of 8