Delhi High Court
Smt. Raj Rani Aggarwal Trading As M/S ... vs M/S Parul Homoeo Laboratory & Anr. on 4 July, 2011
Author: Manmohan Singh
Bench: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
Judgment pronounced on: 4th July, 2011
+ IA Nos. 1592/2009, 5967/2009, 5968/2009 & 9518/2009
in CS (OS) No. 239/2009
Smt. Raj Rani Aggarwal Trading as M/s Bios Laboratory ... Plaintiff
Through: Mr. S.K. Bansal, Adv. with Mr Vikas
Khera, Adv.
Versus
M/s Parul Homoeo Laboratory & Anr. ... Defendants
Through: Mr. Sanjeev Singh, Adv.
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment?
2. To be referred to Reporter or not?
3. Whether the judgment should be reported
in the Digest?
MANMOHAN SINGH, J.
1. By this order, I shall dispose of the following applications filed by the parties:
a) IA No.1592/2009 under Order XXXIX Rules 1 & 2
of the Code of Civil Procedure, 1908 (hereinafter
referred to as the CPC) filed by the plaintiff.
b) IA No.5967/2009 under Order XXXIX Rules 1 & 2
CPC filed by the defendant No.1.
CS(OS) No. 239/2009 Page No.1 of 9
c) IA No.5968/2009 under Order XXXIX Rule 4 CPC
filed by defendant No.1.
d) IA No.9518/2009 under Section 151 CPC filed by
the defendant No.1.
2. In view of the fact that the defendant No.1 has already filed the documents, as prayed, the application, being IA No.9518/2009, is allowed.
3. The plaintiff has filed the suit under Sections 134 & 135 read with Section 27(2) of the Trade Marks Act, 1999 as well as under
Section 51 of the Copyright Act, 1957 for permanent injunction restraining passing off, infringement of copyright, rendition of accounts, damages and delivery up against the defendants, namely, M/s Parul Homoeo Laboratory and M/s New Delhi Homoeo Pharmacy.
3. The brief facts are that the plaintiff Smt. Raj Rani Aggarwal, the sole proprietor of M/s Bios Laboratory, is engaged in the business of manufacturing and marketing of medicinal and pharmaceutical prepartions under the trade mark HEIGHTEX LABEL from the year 1992. The plaintiff filed an application for registration of the trade mark bearing No.744887 as on 22.10.1996 in class 5 which is still pending for registration. It is also stated in the plaint that the trade mark HEIGHTEX LABEL which plaintiff is using on its products is original artistic work within the meaning of Section 2 (c) of the Copyright Act, 1957 and the CS(OS) No. 239/2009 Page No.2 of 9 plaintiff is the owner of the same. The said copyright is duly registered bearing No.A-76798/2006 in its favour. The said product is sold in a distinctive packing having a unique and distinctive colour scheme, design, get up and layout. The said packing consists of red, blue and yellow colour represented in a special and particular manner. The plaintiff has widely advertised the label/trade mark HEIGHTEX LABEL through different medias and the said trade mark/label is a well known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
4. The allegations made by the plaintiff against the defendant No.1 are that defendant No.1 is also engaged in the business of manufacturing and marketing the pharmaceutical and medicinal preparations. The defendant No.1 is at Kanpur and the defendant No.2 is the dealer/agent of defendant No.1 who is acting in connivance with the defendant No.1 and selling the infringing goods bearing the similar trade mark/label HEIGHTEX LABEL in order to trade upon the tremendous goodwill and reputation of the plaintiff. The trade mark/label used by the defendants is identical to the trade mark/label of the plaintiff and the defendants were aware about the reputation of the plaintiff's trade mark from the very beginning. Therefore, the plaintiff has established a case against the defendants for infringing of copyright and passing off their goods as that of the plaintiff.
CS(OS) No. 239/2009 Page No.3 of 9
5. The plaintiff has stated that cause of action of this case arose on 17.12.2008 when the IPAB stayed the registration of the impugned trade mark of the defendants. It further arose in the first week of January, 2009 when the plaintiff for the first time laid hands on the goods of the defendants and it continued from day to day till the filing of the present suit.
6. Both the defendants have filed separate written statements.
The defendant No.2 has filed the written statement stating that the defendant No.2 is an independent homeopathic medicines retail shop and has nothing to do with the business of defendant No.1. The defendant No.2 is just a stranger and is not an agent of the defendant No.1 and was not even aware about the subject matter of the dispute prior to receiving the documents in the present suit.
7. On the other hand, the defendant No.1 has filed the written statement as well as the counter claim against the plaintiff for permanent injunction restraining the plaintiff from using the said trade mark HEIGHTEX. The defendant No.1 has also filed an appliation under Order 39 Rule 4 CPC as well as an application for injunction under Order 39 Rules 1 and 2 CPC restraining the plaintiff from using the trade mark in question.
8. The main case of the defendant No.1 is that the suit filed by the plaintiff is false and frivolous as the said trade mark HEIGHTEX CS(OS) No. 239/2009 Page No.4 of 9 belongs to defendant No.1 which is being used since 1994 continuously, regularly and extensively. The defendant No.1 has also obtained drug licence, sales tax registration and all requisite licences from the government authorities to run the said business. It is also stated by the defendant No.1 that the suit filed by the plaintiff is totally misconceived and the plaintiff has concealed various material facts from this Court. The knowledge of filing of the present suit by the plaintiff is also denied by the defendant No.1 on the ground that in September 2003, the defendant No.1 received information from its dealer that the plaintiff is involved in the marketing of inferior quality homeopathic medicines beairng identical trade mark/lable HEIGHTEX and immediately defendant No.1 served a legal notice dated 26.09.2003 calling upon the plaintif to desist forthwith using the said trade mark. The said notice was replied by the plaintiff through its counsel wherein the plaintiff claimed to be prior user of the trade mark/label HEIGHTEX. After receiving the notice dated 26.09.2003, the plaintiff filed rectification petition of the registered trade mark of the defendant No.1 which was dismissed vide order dated 05.11.2004 being pre-mature petition. Thereafter, the trade mark of the defendant No.1 was registered bearing No.812628 and the plaintiff filed the rectification petition again on the similar grounds. Not only that, the plaintiff also filed a caveat petition before this Court and obtained an ex-parte order in the month of December, 2008 and the CS(OS) No. 239/2009 Page No.5 of 9 caveat petition was knowingly concealed by the plaintiff from this Court in order to obtain inequitable relief.
9. According to the defendant No.1, the defendnt No.1 is the prior adopter and user of the said trade mark. The plaintiff on the other hand has no goodwill and reputation and in fact has never used the said lable in respect of the goods as claimed by the plaintiff. Since the plaintiff has approached this Court suppressing the material vital facts with a view to override and to obtain undue advantage by seeking the interim order against the defendant No.1, the suit is, therefore, bad and is not maintainable.
10. The contention of the defendnat No.1 is that it has been done by the plaintiff willfully just to obtain the ad-interim order. Otherwise, the plaintiff in the cause of action ought not to have made an incorrect statement about its knowledge about the year 2008 when there was a legal notice and litigation pending between the parties in the year 2003- 2004. It is also contended by the defendant No.1 that the claim of the plaintiff is totally false and frivolous as the plaintiff has never used the trade mark in the year 1992 or 1999 as alleged as no drugs licence has been obtained by the plaintiff for manufacturing of drugs/medicines bearing the trade mark HEIGHTEX LABEL and without drug licence no medicine can be manufactured.
CS(OS) No. 239/2009 Page No.6 of 9
11. As regard the copyright and registration, it is stated by the defendant No.1 that the rectification proceedings are being initiated and same registration is to be rectified. The learned counsel for the defendant No.1 has also referred to the order passed in the appeal filed by the defendant No.1 beween the parties passed by the Division Bench in FAO (OS) No.379/2009 which was filed against the ex-parte order dated 04.02.2009 and the ex-parte order was vacated by the Division Bench of this Court.
12. It is a matter of fact that when the pending applications were listed from time to time, both the parties had made an oral statement before the Court that they have mutually settled all their disputes. Even a copy of draft application was handed over to the Court which indicates that the parties had intention to enter into an agreement of co-existence in relation to the impugned trade mark. But, it is not understood why the said application was not filed by the parties despite of taking many adjournments from the Court in this regard.
13. After having considered the pleadings on merit, coupled with documents placed on record by the parties, I am not inclined to pass interim order either in favour of the plaintiff or the defendants because of the reason that it appears from the documents that the said trade mark HEIGHTEX LABEL is being claimed to have been used for more than 17 years. The defendant had issued a legal notice on 26.09.2003, the CS(OS) No. 239/2009 Page No.7 of 9 parties have had various litigations prior to the filing of the present suit in paragraph of cause of action. The full details of the said litigations have not been disclosed by the plaintiff. Even in paragraph of cause of action, the plaintiff has failed to disclose having received the legal notice received by her in the year 2003. The plaintiff has also not disclosed as to whether she had obtained any licence issued in her favour for the year 1992, 1993 and 1994. Therefore, this Court finds that at this stage, there is a force in the submission of the defendant No.1 that the plaintiff had not obtained the drug licence in the year 1992 or 1994 as the pharmaceutical goods cannot be sold without obtaining the drug licence from the authority. Since both the parties are claiming prior user against each other and the defendant No.1's counter claim against the plaintiff is also pending, it is not appropriate at this stage to pass an interim order sought by the plaintiff against the defendant No.1 or by the defendants. Even the defendant No.1 is also able to prove his clear case of prior user claimed by way of documents produced. Unless the pleas raised by the parties are tested in trial, this Court is not inclined to issue any interim order in favour of either party due to peculiar circumstances. Thus, all the applications are disposed of without any interim orders. CS (OS) No. 239/2009
The parties have already filed the original documents. Issues in the matter were framed on 03.12.2009 and the time was CS(OS) No. 239/2009 Page No.8 of 9 granted to the parties to file list of witnesses and direction was also issued to produce the evidence by way of affidavits. The plaintiff has already filed two affidavits in this regard along with the list of witnesses. Despite the said direction, the parties were trying to resolve the matter since 03.012.2009 as appears from the orders sheet. In fact, both the parties have prolonged the matter for one and half years without any progress. Since now they are not inclined to resolve their disputes, therefore, the matter must be sent for trial. List the matter before the Joint Registrar on 12th October, 2011 for fixing the date of cross-examination of the plaintiff's witnesses.
MANMOHAN SINGH, J.
JULY 04, 2011 jk CS(OS) No. 239/2009 Page No.9 of 9