Madras High Court
Quality Chef Agro Foods Pvt.Ltd vs /5 on 15 July, 1985
Civil Suit (Comm.Div.) No.286 of 2018
IN THE HIGH COURT OF JUDICATURE AT MADRAS
JUDGMENT RESERVED ON : 21.12.2024
JUDGMENT DELIVERED ON : 03.01.2025
CORAM
THE HONOURABLE MR. JUSTICE P.VELMURUGAN
Civil Suit (Comm.Div.) No. 286 of 2018
1. Quality Chef Agro Foods Pvt.Ltd.
12, Alagiri Street (ground floor)
Thenpalani Nagar, Kolathur
Chennai
PIN Code – 600 099
rep.by its Director
Mr.A.S.Moorthy.
2. Ranjith Agro Foods
12, Alagiri Street (ground floor)
Thenpalani Nagar, Kolathur
Chennai
PIN Code – 600 099
rep.by its Managing Partner
Mr.A.S.Moorthy.
3. A.S.Moorthy
No. F73/F3, Krish Villa
F Block 2nd Street
Anna Nagar East
Chennai – 600 102. .. Plaintiffs
Vs.
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Civil Suit (Comm.Div.) No.286 of 2018
1. ADF Trading Private Limited
15, Lake Area, 6th Cross Street
Nungambakkam, Chennai – 600 034
rep.by its Managing Director
Mr.M.M.Sheik Dawood.
2. Alia Mohammed Trading Co LLC
PO Box 24770, Dubai
United Arab Emirates.
3. Five Group Trading & Contracting Co.,
PO Box 31075
Doha – Qatar.
4. M.M.Sheik Dawood
S/o.Mr.Mohidin Abdul Kadar
# 15, Lake Area, 6th Cross Street
Nungambakkam, Chennai – 600 034.
5. Mr.Ashik Mohamed
S/o.Mr.M.M.Sheik Dawood
# 15, Lake Area, 6th Cross Street
Nungambakkam, Chennai – 600 034.
6. Mr.Javid Mohamed
S/o.Mr.Mohamed Iqbal
# 15, Lake Area, 6th Cross Street
Nungambakkam, Chennai – 600 034. .. Defendants
Prayer:-
Civil Suit has been filed under Order IV, Rule 1 of O.S. Rules and
Order VII Rule 1 CPC, 1908 read with Sections 27 and 134 of the Trade
Marks Act, 1999 and Section 7 of the Commercial Courts Commercial
Division and Commercial Appellate Division of High Courts Act, 2015,
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Civil Suit (Comm.Div.) No.286 of 2018
prays for a judgment and decree against the defendants on the following
terms :
i) a permanent injunction restraining the defendants by
themselves, their Directors, partners, principal officers, successors-in-
business, affiliates, assigns, servants, agents, distributors, retailers,
stockists, advertisers or any one claiming through them from in any
manner using the mark ROYAL CHEF for export of rice from India to
Qatar or in any manner whatsoever so as to misrepresent and to cause
deception in the minds of public leading to passing off;
ii) directing the defendants to surrender to the plaintiffs the entire
products with the offending labels, stocks with offending labels together
with the blocks and dies, name boards, sign boards etc., for destruction;
iii) directing the defendants to render true and faithful accounts of
the profits earned by them through the sale of the offending milk
products bearing the offending trademark label and directing payment of
such profits to the plaintiffs;
iv) the defendants be directed to pay to the plaintiffs as
compensatory and punitive damages a sum of Rs.1,00,00,000/- for
unauthorized use of the mark ROYAL CHEF in export of rice from India
to Qatar;
v) for costs of the suit.
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Civil Suit (Comm.Div.) No.286 of 2018
For Plaintiffs : Mr.A.Prabhakara Reddy
For Defendants : Mr.Akhil Akbar Ali
for D1, D2, D4 to D6
D3 set ex-parte on 25.09.2018
JUDGMENT
The suit is instituted by the plaintiffs against the defendants seeking for permanent injunction restraining the defendants from violating their exclusive rights in the use of the mark ''ROYALCHEF'' in the territory of Qatar by exporting their rice and other food products from India under the mark ''ROYALCHEF'' or any other mark which is identical or deceptively similar to the mark ''ROYALCHEF'', so as to result in passing-off and acts of unfair competition along with delivery up of offending goods and materials, rendition of accounts/damages etc.
2. The averments made in the plaint are as follows:-
2.1. The first plaintiff is a Company incorporated under Part IX of the Companies Act, 1956 and is a continuation of its erstwhile 4/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 partnership firm, viz., M/s. Asian Exports. The plaintiffs have been in the business of processing, manufacturing, packing, marketing and exporting food products since the year 1979. One A.S.Moorthy/third plaintiff herein through its company/affiliates, is currently engaged in the export of Basmati and Non-Basmati Rice, spices, curry powder, edible oil, cereal products, etc., and had established a factory at Southpakkam Village, Red Hills, Chennai. All these products are exported to various countries under the brand name ''QUALITY CHEF'', ''MATHANGI'' ''KISHO'', ''CHITTI'' etc. The plaintiffs have built up a good reputation and goodwill for all their products over the years under the said distinctive trademarks.
2.2. Subsequently, the third plaintiff, along with the fourth defendant viz., M.M.Sheik Dawood formed a partnership firm, vide Deed of Partnership dated 15.07.1985 in the name and style of M/s.Asian Exports [1st plaintiff's predecessor-in-title]. During the course of business, the third plaintiff, honestly conceived and adopted the mark 5/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 ''ROYALCHEF'' and the same was put to use through the partnership firm M/s.Asian exports since 1985. The fourth defendant was in-charge of operating the said business from Dubai under the name of Alia Mohammed Trading Co. (L.L.C) - the second defendant herein. In the year 2006, the fourth defendant retired from the partnership firm on 30.09.2006 and the said partnership firm was re-constituted by inducting Mrs.Sakthivinayaga Lakshmi, wife of third plaintiff, as a partner, by a deed of partnership dated 01.10.2006 and the business of the said partnership firm M/s. Asian Exports was continued by the new partners.
Upon retirement from the partnership firm, the fourth defendant made several attempts to infringe the trademark of the erstwhile partnership firm M/s.Asian Exports. Hence, the erstwhile partnership firm, M/s. Asian Exports was constrained to file a suit in C.S.No.135 of 2007 before this Court and this Court granted an order of injunction on 22.02.2017, which was also made absolute, thereby, restraining the fourth defendant and his allies therein from carrying on business under the trademark ''ROYALCHEF''. Even when the suit for infringement was pending before this Court, the fourth defendant had violated the orders 6/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 passed in C.S.No.135 of 2007 and still continued to interfere with the business of the partnership firm M/s. Asian Exports with a view to cause hardship and prejudice to the partners of the said firm.
2.3. Subsequently, M/s.Asian Exports was constrained to approach this Court in C.S.No.170 of 2007, inter alia, seeking an order of permanent injunction restraining the fourth defendant herein from in any manner interfering with the peaceful conduct of the business of the partnership firm. It is stated that the third plaintiff had to undergo severe mental agony due to the betrayal and back stabbing at the hands of the fourth defendant and in order to bring quietus to the said issue, the third plaintiff entered into a settlement with the fourth defendant in C.S.No.170 of 2007 under the following terms and conditions :
i) That M/s. Asian Exports consents that the trademarks and copyrights in the trademarks ROYALCHEF and BABY wherever registered and applied for including India, Singapore, London, Australia and any other country in the name of M/s. Asian Exports shall stand irrevocably transferred to and in favour of the fourth defendant i.e., Mr.Sheik Dawood, however, the fourth defendant undertakes to permit M/s.Asian Exports to 7/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 use the trademark ROYALCHEF in respect of goods exported only from India to Qatar and Qatar alone.
ii) M/s. Asian Exports retained the trademark ROYALCHEF with respect to Qatar and the fourth defendant would be assigned the trademark ROYALCHEF for other places and other trademarks.
iii) That M/s. Asian exports was entitled to use the trademark ROYACHEF in respect of goods exported from India to Qatar and Qatar alone.
2.4. It is stated that as per Clause 2 of Memorandum of Compromise dated 13.06.2007, the third plaintiff has been permitted to use the trademark ROYALCHEF in respect of goods exported only from India to Qatar and Qatar alone. Further, the licence granted to the third plaintiff to use the trademark ROYALCHEF in Qatar is irrevocable and perpetual licence. The third plaintiff is using the mark ROYALCHEF through plaintiffs 1 and 2 herein. Pursuant to the Compromise Decree, a Deed of Assignment of trademark dated 22.06.2007 was also executed, in and by which, the plaintiffs' erstwhile partnership firm assigned their right in the trademark in favour of the fourth defendant herein. The Deed 8/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 of Assignment also has a clause confirming the fact about granting of irrevocable and perpetual licence by the fourth defendant to the third plaintiff for use of the trademark ROYALCHEF in respect of the goods exported by them only from India to Qatar and Qatar alone. Subsequent to the assignment of the trademark, the said partnership firm was converted into a private limited company on 07.03.2008 with the third plaintiff and his wife Mrs.Sakthivinayaga Lakshmi as the Promoters/ Directors of the first plaintiff/Company. It is stated that the business of the erstwhile partnership firm, M/s.Asian Exports, was completely transferred to Quality Chef Agro Foods Pvt.Ltd./first plaintiff herein and the first plaintiff has been carrying on business ever since then. The first plaintiff, in order to protect the rights vested on it by virtue of the compromise entered into between the parties, had applied for registration of the trademark ROYALCHEF with respect to export of goods from India to Qatar and Qatar alone.
2.5. It is stated that in order to popularize the mark ROYALCHEF, the plaintiffs have been advertising the mark in all forms 9/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 of print and electronic media in Qatar and has spent several Lakhs of Rupees in order to familiarize the mark and due to such strategic and tactful moves of the plaintiffs, the mark ROYALCHEF has become a well known mark in the land of Qatar. The sales turnover of the plaintiffs run into several Crores of Rupees. The defendants, after having come to know about the flourishing business of the plaintiffs in Qatar, are now exporting rice from India to Qatar under the identical trademark ROYALCHEF with a view to cause hardship to the plaintiffs and in complete contravention of the understanding between the parties. It is stated that even during the settlement talks were going on between the parties, the fourth defendant has brazenly gone ahead and applied for and obtained registration of the trademark ROYALCHEF in Qatar, however, he did not disclose the same neither to the third plaintiff, nor to this Court.
2.6. The entire dispute that arose between the parties, which led to filing of the present suit. When the fourth defendant's entity in United Arab Emirates, M/s.Alia Mohammed trading Co. LLC - the second 10/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 defendant herein, had caused to issue a cautionary notice in the form of paper publication, claiming as though the said entity is the sole and exclusive proprietor of the trademark ROYALCHEF in Qatar, and also across GCC countries and India which is in complete contravention of the compromise decree passed in C.S.No.170 of 2007. Moreover, the defendants had also issued a legal notice dated 22.06.2011 to M/s.Al Ansari Trading Company, which was appointed as sole importer and distributor of the first plaintiff-Company in the State of Qatar with respect to the trademark ROYALCHEF. While the facts being so, in the month of March 2018, it came to the knowledge of the plaintiffs that the fourth defendant is exporting rice from India to the territory of Qatar under the brand name ROYALCHEF through the first defendant/ Company herein and the same is being imported and marketed in Qatar by M/s.Five Group Trading & Contracting Co., the third defendant herein. The fourth defendant is the Managing Director and defendants 5 and 6 are the Directors of the first defendant/Company. It is stated that exporting rice under the mark ROYALCHEF to Qatar by the defendants is in complete violation to the compromise decree and arrangement 11/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 between the parties. Hence, the present suit has been filed seeking to restrain the defendants herein from using the mark ROYALCHEF for exporting rice from India to Qatar, so as to mis-represent and to cause deception in the minds of public leading to passing-off.
3. Defendants 1 and 3 to 6 have forfeited their right to file written statement. The second defendant/Company only filed the written statement and they deny the various allegations made in the plaint stating that, originally one M.M.Sheik Dawood/fourth defendant herein was independently carrying on business of rice and other food products in Dubai. At the request of the third plaintiff, the fourth defendant agreed to establish a partnership firm in the name and style of M/s.Asian Exports, which was registered under the Indian Partnership Act and involved in the business of export of agricultural and other products since 1985 in the name of ''ROYALCHEF'' and ''BABY''. The fourth defendant was in-charge of Dubai operations and was doing business through the second defendant/Company. The third plaintiff was in-charge of the Indian operations of the business. The fourth defendant being the 12/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 operations in-charge in Dubai, had undertaken various efforts to solidify the goodwill of the brand and the said trademarks. Since the third plaintiff started acting against the interest of the other partners, the fourth defendant desired to retire from the partnership firm by notice dated 07.09.2006 and he had retired by 01.10.2006. It is stated that, though a dispute had arisen between the erstwhile partners, the third plaintiff in his capacity as the Managing Partner of the partnership firm, with false averments and by suppressing true facts, had instituted two suits in C.S.Nos.135 of 2007 and 170 of 2007, alleging that the fourth defendant had infringed their trademark.
3.1. Subsequently, both the parties entered into a Memorandum of Compromise dated 13.06.2007 and this Court, vide order dated 13.06.2007 had dismissed both the suits as not pressed, in terms of the settlement so arrived at between the parties. After disposal of the earlier suits, the third plaintiff had defaulted on their dues, and as such the properties mortgaged by the third plaintiff for due payment of the amount to the fourth defendant, were transferred in favour of the fourth 13/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 defendant, in lieu of the payment by Document No.1192/2010. Subsequently, a Deed of Assignment, dated 22.06.2007 was executed in favour of the fourth defendant by the third plaintiff, in his capacity as a Managing Director of M/s.Asian Exports, by which the trademarks ''ROYALCHEF'' were registered. As per the Deed of Assignment of trademark, dated 22.06.2007, M/s.Asian Exports/assignor, represented by the third plaintiff (A.S.Moorthy) assigned the absolute proprietorship of the trademarks ''ROYALCHEF'' and ''BABY'' in favour of the fourth defendant/assignee, without any interruption whatsoever from the partnership firm/assignor or anyone claiming under or through them. As such, the fourth defendant/assignee had, under the same deed of assignment, agreed to give an irrevocable perpetual licence to the assignor-M/s.Asian Exports to use the trademark ''ROYALCHEF'' in respect of the goods exported from India to Qatar and Qatar alone. The execution of Deed of Assignment is followed by execution Deed of Irrevocable Licence, dated 22.06.2007 by the fourth defendant /licensor to and in favour of M/s.Asian Exports represented by Mr.A.S.Moorthy/licensee, thereby giving irrevocable perpetual licence to 14/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 the licensee to use the said trademark ''ROYALCHEF'' alone in respect of the goods exported from India to Qatar and Qatar alone.
3.2. The claim of the plaintiffs that the proprietorship and usage of trademark ''ROYALCHEF'' for export of the goods from India to Qatar exclusively vest with them, which is totally baseless and is contrary to the terms of the settlement. Under the Licence Deed dated 22.06.2007, the fourth defendant/licensor had given licence in favour of M/s. Asian Exports to use the trademark ''ROYALCHEF'' for the goods to be exported only from India to Qatar. However, the fourth defendant has, under the licence deed never foregone his right as an exclusive owner of the trademark ''ROYALCHEF'' and to use the trademark in any manner whatsoever within or outside Qatar. Hence, the plaintiffs' allegation of passing-off against the defendants is not sustainable. It is further stated that the fourth defendant has given licence only in favour of M/s.Asian Exports, however, the fourth defendant has neither given licence in favour of A.S.Moorthy/third plaintiff in his individual capacity, nor in favour of any other company promoted by him. Therefore, the allegation 15/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 that the third plaintiff is using the mark ''ROYALCHEF'' through the first and second plaintiffs is illegal and void. Further, the licence granted to erstwhile partnership firm M/s.Asian Exports cannot be transferred or re-delegated to the first plaintiff. As stated earlier, the plaintiffs are only licensees of the trademark and therefore, the defendants are totally within their right to apply and register the trademark i.e., ''ROYALCHEF''. Therefore, the plaintiffs being mere licensees are not entitled to question the true owner of the trademark and their use in anywhere. Therefore, the allegations of passing-off cannot be sustained due to the fact that the plaintiffs' can claim only restricted right as mere licensees. It is stated that whatever the precautionary or cautionary measures taken by the fourth defendant or defendants 1 and 2, the entities promoted by him either in the form of paper publication or notice, are only for protecting the right of the registered owner to use the trademark and the same is only in consonance with the settlement arrived at between the parties.
3.3. It is further stated that the case of the plaintiffs is that they are offended by the actions of the second and third defendants in 16/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 specifically trading of the products between Dubai and Qatar. If the plaintiffs have any grievance in that regard, they ought to have approached the Courts in Qatar to have a fair chance of resolution. Hence, the suit is liable to be dismissed at the outset for want of jurisdiction.
3.4. Further, the second defendant being registered owner of the trademark ''ROYALCHEF'' in their respective country of operation, that is, Dubai and Qatar, is entitled to do business as it deems fit. In fact, the plaintiffs were in knowledge of the same from the year 2009, as evidenced in plaint document No.13. Further, the second defendant denied the allegations raised in Paragraph No.4 of the plaint that the first plaintiff is a Company incorporated under part IX of the Companies Act and is in continuation of the erstwhile partnership firm i.e., M/s.Asian Exports, as not supported by any documents. The plaintiffs have conveniently failed to produce Memorandum of Articles of Association in respect of the plaintiffs 1 and 2/Companies in support of their contentions as stated above. The first and second plaintiff/Companies 17/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 and the third plaintiff, in his individual capacity, have no manner of right to avail the benefit under the licence granted to different partnership firm and the licence so granted, stood cancelled with the closure of the erstwhile partnership firm. The plaintiffs do not have any sole exclusive right over ''ROYALCHEF'' and the statement itself amounts to perjury and misrepresentation. As such the plaintiffs have no locus standi to file the present suit for the reliefs claimed herein.
4. Upon considering the pleadings and documents annexed with, the following issues have been framed by this Court on 26.10.2021 :
(i) Whether the settlement arrived between the parties pursuant to the compromise decree in C.S.Nos.135 and 170 of 2007 dated 13.06.2007 confers to plaintiffs exclusive proprietorship and usage of trademark ''ROYALCHEF'' for the export of rice from India to Qatar ?
(ii) Whether the subsequent deed of assignment of trademark dated 22.06.2007 entered between M/s. Asian Exports in respect of trademark ''ROYALCHEF'' purported to assign the absolute proprietorship in favour of Mr. M.M.Sheik 18/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 Dawood, the fourth defendant herein is valid ?
(iii) Whether the deed of irrevocable licence dated 22.06.2007 by the fourth defendant in favour of M/s. Asian Exports protect the right of the second defendant from using the trademark ''ROYALCHEF'' for export of goods from India to Qatar ?
(iv) Whether the plaintiffs, as individual or as a company have any right to avail the benefit under the licence granted to different partnership firm ?
(v) Whether the plaintiff is entitled for any injunction restraining the defendants from using the trademark ''ROYALCHEF'' for export of rice from India to Qatar or in any manner ?
(vi) Whether the plaintiff is entitled for a relief of direction to surrender the entire products with the infringed labels and stocks together with blocks and dies, name boards, sign boards etc., for destruction ?
(vii) Whether the plaintiff is entitled for a direction to the defendant to render true and faithful accounts of the profits ? 19/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018
(viii) Whether the use of the mark ''ROYALCHEF'' for the rice for export by the defendant from India to Qatar is an unauthorised use and if so, whether the defendant is liable to pay compensation as punitive damages ?
(ix) What other relief ?
5. After framing of issues, during trial, on the side of the plaintiffs, one A.S.Moorthy was examined as P.W.1 and 16 documents were marked as Exs.P1 to P16. On the side of the defendants, one M.M.Sheik Dawood was examined as D.W.1 and 4 documents were marked as Exs.D1 to D4.
6. Learned counsel for the plaintiffs submitted that the first plaintiff is a Company incorporated under Part IX of the Companies Act, 1956 and is a continuation of its erstwhile partnership firm, viz., M/s. Asian Exports, which was established by the third plaintiff and the fourth defendant, vide Deed of Partnership dated 15.07.1985. The mark ''ROYALCHEF'' was put to use through the partnership firm M/s. Asian 20/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 Exports since 1985. One M.M.Sheik Dawood/fourth defendant herein was in-charge of operating the said business from Dubai under the name of Alia Mohammed Trading Co. (L.L.C)/ second defendant herein. In the year 2006, the fourth defendant retired from the partnership firm and the said partnership firm was re-constituted by inducting Mrs.Sakthivinayaga Lakshmi, wife of A.S.Moorthy/third plaintiff herein, as a partner, by a Deed of Partnership dated 01.10.2006 and the business of the said partnership firm M/s.Asian Exports was continued by new partners. Subsequent to the retirement from the partnership firm, the fourth defendant made several attempts to infringe the trademark of the erstwhile partnership firm M/s. Asian Exports and hence, they filed a suit in C.S.No.135 of 2007 against the fourth defendant and this Court granted an order of absolute injunction on 22.07.2017. As the fourth defendant with a mala fide intention started to interfere with the business of M/s. Asian Exports, yet another suit in C.S.No.170 of 2007 was filed. In order to bring quietus to the issues between the parties, the third plaintiff entered into a settlement with the fourth defendant in C.S.No.170 of 2007 and the Division Bench of this Court, vide order 21/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 dated 13.06.2007, dismissed both the suits filed by the plaintiffs as not pressed, in terms of the settlement so arrived at between the parties.
7. Learned counsel for the plaintiffs further submitted that as per Clause 2 of Memorandum of Compromise, M/s. Asian Exports was entitled to use the trademark ''ROYALCHEF'' in respect of goods exported from India to Qatar and Qatar alone, whereas, the fourth defendant would be assigned the trademark ''ROYALCHEF'' for other places and other trademarks and the same was admitted by the defendants in their written statement and Clause 3 of the Deed of Assignment dated 22.06.2007. The licence so granted to the third plaintiff was permitted to use the said trademark in Qatar, which is irrevocable and perpetual. As per the said settlement, the third plaintiff has acquired exclusive right to conduct his business in Qatar. Subsequent to the assignment of the trademark, M/s.Asian Exports was converted to a Private Limited Company on 07.03.2008 and the first plaintiff has been carrying on business of the said partnership firm. In violation of the terms of the settlement, the fourth defendant's entity in United Arab Emirates, 22/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 M/s.Alia Mohammed Trading Co. LLC/second defendant herein, had caused to issue a cautionary notice in the form of paper publication, claiming as though the said entity is the sole and exclusive proprietor of the trademark ''ROYALCHEF'' in Qatar and also issued a legal notice. He further submitted that in the month of March 2018, the plaintiffs have come to know that the fourth defendant is exporting rice from India to Qatar under the brand name ''ROYALCHEF'', through the first defendant/ Company herein and the same is being imported and marketed in Qatar by the third defendant/Company. The other defendants, i.e., fourth defendant is the Managing Director and defendants 5 and 6 are the Directors of the first defendant/Company. The very act of the defendants in exporting rice under the mark ''ROYALCHEF'' to Qatar is in complete violation of the understanding and arrangement between the parties. He further submitted that the third plaintiff had strived very hard to expand his business in Qatar, which is evident from the sales turnover of the plaintiffs since 2007. The defendants only with a mala-fide intention, had caused severe hardship to the business of the first plaintiff and exported rice and other products under the trademark 23/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 ''ROYALCHEF'' from India to Qatar.
8. In support of their contentions, the learned counsel for the plaintiffs relied upon the following judgments :
(i) Padia Timber Company Private Limited Vs. Board of Trustees of Visakhapatnam Port reported in [(2021) 3 SCC 24];
(ii) Union of India and Others Vs. Messrs.Bhim Sen Walaiti Ram reported in [1969(3) SCC 146];
(iii) Katikara Chintamani Dora and Others Vs. Guntreddi Annamanaidu and others reported in [ (1974) 1 SCC 567];
(iv) Vali Pattabhirama Rao and another Vs. Sri Ramanuja Ginning and Rice Factory (P) Ltd., and others reported in [1986 60 Comp Cas 568]; and
(v) Commissioner of Income Tax, Mumbai Vs. Texspin Engg.
And MFG.Works, Mumbai reported in [2003(5) Mh.L.J.507].
9. Learned counsel for the defendants 1, 2 and 4 to 6 submitted that, as per Section 134 of the Trademarks Act, 1999, the cause of action must have arisen within the territorial jurisdiction of this Court. In the 24/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 present suit, the defendants are exporters of agricultural products to Arab countries, and the defendants do not undertake business within India and therefore, they cannot be subjected to passing-off in this jurisdiction. Even as per the plaintiffs' own admittance, it is submitted that both the plaintiffs and the defendants do not undertake business in India and as per its own averments, the cause of action arose in Qatar, as the goods were allegedly sold there. It is also stated that the first and fourth defendants are ordinarily residents and undertakes business in Dubai. Therefore, the plaintiffs' allegations of passing-off, if at all are not sustainable and in any case, any legal remedy on these grounds can only be initiated in Qatar. He further submitted that the present suit is barred by limitation. In paragraph No.34 of the plaint, the plaintiffs submit that the cause of action for preferring the suit arose only in the year 2017, but they have conveniently omitted that the third plaintiff had knowledge of the sale of goods by the third defendant way back in the year 2009. Hence, the third plaintiff had issued notices to the third defendant, vide emails dated 04.06.2009 and 08.06.2009, claiming that the first defendant had violated the compromise deed and exported goods to 25/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 Qatar. Therefore, it is seen from the plaintiffs' own documents that the cause of action arose way back in 04.06.2009. After a decade of acquiescence, the plaintiffs cannot now blow hot and cold and claim damages from the defendants and hence, the present suit is barred by limitation.
10. Learned counsel for the defendants further submitted that the claim of the plaintiffs that the third plaintiff through the first plaintiff/Company is entitled to exclusive and irrevocable, perpetual right over the mark ''ROYALCHEF'' and that the fourth defendant is in breach of the terms of settlement and thereof, the Deed of Assignment is not valid or subsisting. However, the allegations of the plaintiffs are far- fetched and cannot be sustained for the reason that neither the Deed of Assignment nor the Deed of Licence restrict the defendants from exporting the goods to Qatar. Further, the plaintiffs have not pleaded the specific terms which the defendants have allegedly breach, nor pleaded the specific instances of the alleged breach, to give rise to the present suit. The defendants have not breached any terms of Deed of Assignment 26/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 or Licence Deed as alleged by the plaintiffs, whereas the third plaintiff himself admitted, vide email dated 04.06.2009 that he has not made payments to the fourth defendant. He further submitted that it is an admitted fact that the defendants are the registered trademark owner of the trademark ''ROYALCHEF'', as evidenced by the Assignment Deed dated 22.06.2007 and the Search Report and Trademark Registration in Dubai. Further, M/s.Asian Exports had, through the Assignment Deed, assigned the use of the trademarks therein to the fourth defendant, pursuant to which the fourth defendant had registered trademarks in other countries and in India, and hence alleging passing-off of the defendants' own trademark, itself is absurd. The plaintiffs have not proved their case of passing-off in any manner, as the ingredients for action of passing-off, such as goodwill and prior usage, misrepresentation and damage to good will are not made out. The plaintiffs have not proved that they have garnered any goodwill in the market in Qatar. In fact, when the plaintiffs approached the third defendant, vide its email dated 08.06.2009, the third defendant sent a reply stating that there was lack of follow-up and non- availability of stock with the plaintiffs alleged importers in Qatar. He 27/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 further submitted that the defendants do not undertake business in Qatar and are selling its goods only in Dubai and other countries. However, the plaintiffs have not proved that the defendants are guilty of mis-representing to the public that the goods alleged to have been sold by the defendants to be the goods of the plaintiffs. He further submitted that the plaintiffs' reliance upon Invoice dated 23.03.2018, cannot be sustained, as the same does not prove that the defendants mis-represented to the public. The said invoice does not specify the importer of the product and the outer packaging is tampered with by attaching a sticker of the third defendant. Further, the plaintiffs have not proved that the defendants have deceived any class of persons that the goods sold by it are that of the plaintiffs, and in fact, the defendants have not sold any goods in Qatar, even though, the first defendant is the registered owner of the trademark in Qatar. The plaintiffs alleged that the defendants had contravened the contract between the parties and that through their action of issuing caution and cease and desist notices, are usurping the trademark. He further submitted that the first plaintiff is not the licensee as per the Licence Deed dated 22.06.2007 and as the owner of trademark 28/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 in Qatar, the first defendant is entitled to safeguard its reputation in any market. Therefore, the plaintiffs' statement cannot be sustained, as they have failed to prove that the first plaintiff/Company is entitled to use the trademark ''ROYALCHEF'' as per the Licence Deed and they have also failed to prove the same by oral and documentary evidence that M/s.Ansari Trading Company is the authorised importer of M/s.Asian Exports, which is the firm licensed to use the trademark. The plaintiffs have not proved goodwill or misrepresentation and have absolutely not proved that any damage was caused to them by the actions of the defendants. Further, the plaintiffs have not proved that their claim of passing-off and hence, the suit is liable to be dismissed with exemplary costs.
11. In support of his contentions, the learned counsel for the defendants relied upon the following judgments :
(i) M/s.Hilton Roulunds Ltd., Vs. Commissioner of Income Tax reported in [2018 SCC Online Del 8556];
(ii) S.Syed Mohideen Vs. P.Sulochana Bai reported in [ (2016) 2 SCC 683];
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(iii) Prema A.S. Vs. K.K.Ambujakshan reported in [2005 SCC Onine Ker 506];
(iv) Rajasthan State Industrial Development and Investment Corporation and Another Vs. Diamond & Gem Development Corporation Limited and Another reported in [(2013) 5 SCC 470];
(v) Satya Jain (Dead) through Lrs. And Others Vs. Anis Ahmed Rushdie (Dead) through Lrs. And Others reported in [(2013) 8 SCC 131]; and
(vi) Transmission Corporation of Andhra Pradesh Limited and Others Vs. GMR Vemagiri Power Generation Limited and Another reported in [(2018) 3 SCC 716].
12. Heard the learned counsel for the plaintiffs and the learned counsel for the defendants 1, 2 and 4 to 6 and perused the materials available on record.
13. Since there was no representation on behalf of the third defendant, the third defendant was set ex-parte on 25.09.2018.
14. The specific case of the plaintiffs is that as per Clause 2 of Memorandum of Compromise, the third plaintiff has been permitted to 30/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 use the trademark ''ROYALCHEF'' in respect of the goods exported only from India to Qatar and Qatar alone. The licence granted to the third plaintiff to use the said trademark in Qatar, is irrevocable and perpetual. The third plaintiff is using the said trademark through plaintiffs 1 and 2 herein. Pursuant to Compromise Decree, dated 13.6.2007 under Ex.P.8, Deed of Assignment of trademark dated 22.06.2007/Ex.P.9 was also executed, in and by which, the plaintiffs' erstwhile partnership firm assigned their right in the trademark in favour of the fourth defendant herein. The Deed of Assignment also have a clause confirming the fact about granting of irrevocable and perpetual licence by the fourth defendant to the third plaintiff for use of the trademark ''ROYALCHEF'' in respect of the goods exported by them only from India to Qatar and Qatar alone. Subsequent to the assignment of the trademark, the said partnership firm was converted into a private limited company on 07.03.2008 with the third plaintiff and his wife as the Promoters/Directors of the first plaintiff/Company. Therefore, the business of the erstwhile partnership firm M/s.Asian Exports was completely transferred to the first plaintiff/Company and the first 31/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 plaintiff/Company had been carrying on business ever since then. The first plaintiff, in order to protect the rights vested on it by virtue of the compromise entered into between the parties, had applied for registration of the trademark ''ROYALCHEF'' with respect to export of goods from India to Qatar and Qatar alone. In order to popularize the mark ''ROYALCHEF'', the plaintiffs have been advertising the mark in all forms of print and electronic media in Qatar and has spent several Lakhs of Rupees in order to familiarize the mark and due to such strategic and tactful moves of the plaintiffs, the mark ''ROYALCHEF'' has become a well-known mark in the land of Qatar. The sales turnover of the plaintiffs run into several Crores of Rupees. The defendants, after having come to know about the flourishing business of the plaintiffs in Qatar, are now exporting rice from India to Qatar under the identical trademark ''ROYALCHEF'', with a view to cause hardship to the plaintiffs and in complete contravention of the undertaking between the parties. Even during the settlement talks were going on, the fourth defendant has brazenly gone ahead and applied for and obtained registration of the trademark ROYALCHEF in Qatar, however, he did not disclose the same 32/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 either to the third plaintiff or to this Court. As the fourth defendant violated the Compromise Decree dated 13.06.2007, made in C.S.No.170 of 2007, the plaintiffs have filed the present suit.
15. The case of the defendants is that, earlier the third plaintiff and the fourth defendant were partners. Though dispute arose between the erstwhile partners, the third plaintiff falsely stated that the fourth defendant had infringed their trademark and instituted two suits in C.S.Nos.135 of 2007 and 170 of 2007. Subsequently, both suits were dismissed as not pressed on 13.06.2007 in terms of settlement arrived at between the parties, vide Ex.P.8/ Compromise Decree dated 13.06.2007. Thereafter, on 22.06.2007, Deed of Assignment/Ex.P.9 was executed between the third plaintiff and fourth defendant and Deed of irrevocable licence/Ex.P10 was executed between the fourth defendant and the third plaintiff. As per the Deed of Assignment and Deed of Licence, the fourth defendant gave irrevocable perpetual licence to use the said trademark ''ROYALCHEF'' in respect of the goods exported from India to Qatar and Qatar alone. The specific case of the defendants is that, as per 33/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 Memorandum of Compromise/Ex.P8, Deed of Assignment/Ex.P9 and Deed of Licence/Ex.P10, the fourth defendant merely permitted M/s.Asian Exports represented by the third plaintiff to export goods under the trademark ''ROYALCHEF'' only from India to Qatar and Qatar alone, however, at no point, during the settlement or after the settlement, the parties had discussed that the fourth defendant will be restricted from exporting goods under the said trademark to Qatar. When the Memorandum of Compromise, Licence Deed and Assignment Deed is read as a whole, it can be inferred that the fourth defendant will merely permit and allow M/s.Asian Exports to exports goods to Qatar under the trademark ''ROYALCHEF'' and not be restricted from not exporting to Qatar themselves. At no stretch of imagination, can there be exclusivity attached to the Licence Deed. There cannot be two owners for one registered trademark. A licence is only a grant or permission and not conferring any exclusive proprietorship to the said Asian Exports. As there is no ambiguity in the terms of the Memorandum of Compromise, Deed of Assignment and Licence Deed, the plaintiffs' claim that they had retained exclusive right of use of the trademark, cannot be sustained. 34/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 The plaintiffs have not undertaken any action to cancel or challenge the registration of the trademark of the fourth defendant in Qatar, which was made as early as in 2011. Therefore, Sections 91 and 92 of Indian Evidence Act, when terms of a contract or of a grant has been reduced to the form of a document, no evidence shall be given to prove such contract except the contract itself. Therefore, only the fourth defendant permitted M/s.Asian Exports to export goods India to Qatar and Qatar alone under the trademark ''ROYALCHEF'' and defendants themselves have not restricted from exporting the goods under the said trademark. Therefore, the suit is liable to be dismissed.
16. Issue No.1 : Whether the settlement arrived between the parties pursuant to the compromise decree in C.S.Nos.135 and 170 of 2007 dated 13.06.2007 confers to plaintiff exclusive proprietorship and usage of trademark ''ROYALCHEF'' for the export of rice from India to Qatar ?
16.1. Admittedly, on the dispute between the third plaintiff and the fourth defendant in the erstwhile partnership firm, named M/s.Asian 35/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 Exports, the parties therein entered into a Memorandum of Compromise/Ex.P8 in C.S.Nos.135 and 170 of 2007, dated 13.06.2007, which set forth several terms between the parties M/s.Asian Exports consents that the trademarks and copyrights in the trademarks ''ROYALCHEF'' and ''BABY'' wherever registered and applied for including India, Singapore, London, Australia and any other country in the name of M/s. Asian Exports shall stand irrevocably transferred to and in favour of the fourth defendant i.e., Mr.Sheik Dawood, however, the fourth defendant undertakes to permit M/s.Asian Exports to use the trademark ''ROYALCHEF'' in respect of goods exported only from India to Qatar and Qatar alone. Thus, as per Ex.P8, the plaintiffs claim exclusive proprietorship and usage of trademark ''ROYALCHEF'' for export of rice from India to Qatar.
16.2. In pursuant to the said compromise deed, the partners of the said M/s.Asian Exports and the fourth defendant executed an Assignment Deed/Ex.P.9 and Licence Deed/Ex.P.10 dated 22.06.2007 agreeing that Asian Exports assigns the absolute proprietorship of trademarks 36/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 ''ROYALCHEF'' and ''BABY'' to the fourth defendant, however, the fourth defendant undertook to permit M/s.Asian Exports to use the trademark ''ROYALCHEF'' only in respect of goods exported from India to Qatar and Qatar alone. Even as per Deed of Assignment and Licence deed, irrevocable perpetual licence has been given to M/s.Asian Exports to use the said trademark ROYALCHEF in respect of the goods exported from India to Qatar and Qatar alone, however, in the said deeds, no where it is mentioned that the fourth defendant will be restricted from exporting goods to Qatar. Admittedly, the business under the trademark ''ROYALCHEF'' had been done not only in Qatar and other places including India, Singapore, London, Australia and other countries. Therefore, it is clear that as per Ex.P8, the fourth defendant permitted M/s.Asian Exports to export goods from India to Qatar and Qatar alone under the trademark ''ROYALCHEF'' and the same is irrevocable. However, neither the Deed of Assignment nor the Deed of Licence restrict the defendants from exporting the goods to Qatar.
16.3. From a combined reading of Ex.P.8, Ex.P.9 and Ex.P.10 it is 37/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 clear that the fourth defendant has given licence to M/s.Asian Exports to use the trademark ''ROYALCHEF'' in respect of the goods exported only from India to Qatar and Qatar alone and not from any other places or not any other trademarks. The fourth defendant has not transferred or confers any proprietorship in favour of M/s.Asian Exports to export goods from India to Qatar. Therefore, there are no restrictions on the fourth defendant from exporting the products in the Deed of Assignment and Deed of Licence. Therefore, it is clear that as per the Memorandum of Compromise dated 13.06.2007, the plaintiffs were never conferred with any exclusive proprietorship, but the erstwhile firm M/s.Asian Exports was granted licence of usage of trademark ''ROYALCHEF'' for the export of rice from India to Qatar. Therefore, this issue is answered accordingly against the plaintiffs.
17. Issue No.2 : Whether the subsequent deed of assignment of trademark dated 22.06.2007 entered into between M/s. Asian Exports in respect of trademark ''ROYALCHEF'' purported to assign the absolute proprietorship in favour of Mr. M.M.Sheik Dawood, the fourth defendant 38/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 herein is valid ?
17.1. In pursuance to the Memorandum of Compromise/Ex.P.8, the Deed of Assignment of Trademark/Ex.P9 and Deed of Irrevocable Licence/Ex.P10 have been executed between the fourth defendant and M/s.Asian Exports. As per Clause 3 of the Deed of Assignment, the Assignee - fourth defendant undertook to give irrevocable perpetual licence to use the trademark ''ROYALCHEF'' alone, in respect of the goods exported from India to Qatar and Qatar alone to the Assignor- M/s.Asian Exports.
17.2. On a reading of Ex.P.9/Deed of Assignment, it reveals that M/s.Asian Exports assigns the absolute proprietorship and copyright of trademarks ''ROYALCHEF'' and ''BABY'' in favour of the fourth defendant, and therefore, the fourth defendant had become the absolute owner of the registered said trademarks wherever registered and pending registration including India, Singapore, London, Australia and any other countries. However the fourth defendant herein undertook to permit 39/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 M/s.Asian Exports to use the trademark ''ROYALCHEF'' in respect of goods exported only from India to Qatar and Qatar alone. Therefore, the assignee/fourth defendant transferred the irrevocable perpetual licence in favour of the assignor-M/s.Asian Exports to use the said trademark in respect of goods from India to Qatar and Qatar alone. However, no absolute right has been conferred on the plaintiffs' erstwhile partnership firm M/s.Asian Exports by the fourth defendant. Further, the plaintiffs shall execute all the required documents by the trademarks Registry from time to time in respect of the trademarks ''ROYALCHEF'' and ''BABY'' for assignment of the trademark fully and effectively in favour of the defendants. Therefore, this Court is of the view that the subsequent deed of assignment of trademark dated 22.06.2007 entered into between M/s. Asian Exports and the fourth defendant in respect of the trademark ''ROYALCHEF'' purported to assign the absolute proprietorship in favour of Mr.M.M.Sheik Dawood, the fourth defendant herein, is a valid one. Hence, this issue is also answered accordingly against the plaintiffs and in favour of the defendants.
18. Issue No.3 : Whether the deed of irrevocable licence dated 40/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 22.06.2007 by the fourth defendant in favour of M/s. Asian Exports protect the right of the second defendant from using the trademark ''ROYALCHEF'' for export of goods from India to Qatar ?
18.1. As per Deed of Irrevocable Licence/Ex.P.10, the Licencor/fourth defendant was hereby given irrevocable perpetual licence in favour of the Licensee - M/s.Asian Exports to use the said trademark ''ROYALCHEF'' alone in respect of goods exported from India to Qatar and Qatar alone. On a reading of Ex.P.10, it is seen that there is no absolute right or proprietorship conferred by the fourth defendant to the plaintiffs' erstwhile partnership firm M/s.Asian Exports to export goods from India to Qatar and Qatar alone and they have given only licence to export the goods from India to Qatar.
18.2. It is an admitted fact that the second defendant/Company was in existence even from 1985, through which, the fourth defendant was taking care of the export business of M/s.Asian Exports, and as and when the fourth defendant was assigned the trademark, who is a partner in the 41/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 second defendant, in whose name the trademark was registered in the year 2011, its rights are protected to sell the products ''ROYALCHEF'' brand in Dubai. It is the contention of the defendants that the defendants 2 and 4 never admitted that they exported ''ROYALCHEF'' from India to Qatar and the plaintiffs have not proved that the defendants have exported as alleged by them.
18.3. On a reading of Ex.P.10/Deed of Irrevocable Licence/Ex.P.10, it is clear that the fourth defendant had given perpetual licence to use the said trademark in respect of the goods exported from India to Qatar and Qatar alone. However, there are no restrictions for the fourth defendant to export goods to Qatar. Further, the fourth defendant has not transferred its proprietorship to use the said trademark from India to Qatar and they had given only permission to export the goods from India to Qatar. Therefore, the plaintiffs being mere licensees are not entitled to question the true owner of the trademark and their use in anywhere. Therefore, the deed of irrevocable licence dated 22.06.2007 by the fourth defendant in favour of M/s. Asian Exports, protects the 42/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 right of the second defendant from using the trademark ''ROYALCHEF'' for export of goods from India to Qatar. This issue is accordingly answered against the plaintiffs.
19. Issue No.4 : Whether the plaintiffs, as individual or as a company have any right to avail the benefit under the licence granted to different partnership firm ?
Since issue Nos.1 to 3 have been answered against the plaintiffs and as there is no absolute right conferred on the plaintiffs' erstwhile partnership firm, there is no question of availing the benefits under the licence granted to different partnership firm. Hence, this issue is also answered against the plaintiffs.
20. Issue No.5 : Whether the plaintiff is entitled for any injunction restraining the defendants from using the trademark ''ROYALCHEF'' for export of rice from India to Qatar or in any manner ?
Issue No.6 : Whether the plaintiff is entitled for a relief of direction to surrender the entire products with the infringed labels and 43/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 stocks together with blocks and dies, name boards, sign boards etc., for destruction ?
Since the entire right of the trademark ''ROYALCHEF'' had not been given up by the fourth defendant to the plaintiffs' erstwhile partnership firm M/s.Asian Exports, the fourth defendant only permitted them to use the same from India to Qatar and Qatar alone. Therefore, the plaintiffs have no absolute right to restrain the fourth defendant to do the same and thereby, the plaintiffs are not entitled for injunction or any other connected reliefs. Hence, these two issues are answered against the plaintiffs.
21. Issue No.7 : Whether the plaintiff is entitled for a direction to the defendants to render true and faithful accounts of the profits ?
Once the plaintiff is not granted permanent injunction, he is also not entitled for true and faithful accounts of the profits from the defendants. This issue is accordingly answered against the plaintiffs. 44/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018
22. Issue No.8 : Whether the use of the mark ''ROYALCHEF'' for the rice for export by the defendants from India to Qatar is an unauthorised use and if so, whether the defendant is liable to pay compensation as punitive damages ?
22.1. As already issues 1 to 3 are answered against the plaintiffs, the plaintiffs have no absolute right to use the trademark in Qatar and the fourth defendant only undertook to give permission to export goods under the said trademark from India to Qatar and Qatar alone and licence is also given for that, but no absolute right has been given to the plaintiffs under Ex.P8 to Ex.10. The fourth defendant is the absolute owner of the said trademark and that there is no restrictive covenant on him, which was admitted by the plaintiffs. Further, the plaintiffs have not proved their goodwill and any damage suffered by the actions of the defendants. Based on Memorandum of Compromise, dated 13.06.2007, Deed of Assignment and Licence Deed dated 22.06.2007 entered into between the fourth defendant and plaintiffs' erstwhile partnership firm, M/s.Asian Exports, the fourth defendant permitted M/s.Asian Export to 45/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 use the said trademark and export the goods from India to Qatar and Qatar alone. Therefore, the defendants are not liable to pay compensation as punitive damages to the plaintiffs. This issue is accordingly answered against the plaintiffs.
23. Issue No.9 : What other relief ?
Since all the other issues are answered against the plaintiffs, the plaintiffs are not entitled for any other relief as sought for in the suit.
24. The decisions/citations relied on by the learned counsel appearing for the plaintiffs are not applicable to the facts of the case on hand and the citations relied on by the learned counsel for the defendants are squarely applicable to the facts of the present case.
25. This Court comes to an irresistible conclusion that the plaintiffs have no absolute right to export goods from India to Qatar and Qatar alone, based on Exs.P.8, P.9 and P.10. Further, this Court is of the view that the fourth defendant has not transferred the entire right to the 46/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 plaintiffs and right of trading the goods from India to Qatar like any other country and no oral and documentary evidence had been let in by the plaintiffs in that regard and therefore, the plaintiffs are not entitled for any decree as sought for in this suit.
26. In the result, the suit is dismissed. There shall be no order as to costs. Consequently, pending applications, if any, are closed.
03.01.2025 (1/2) Index:Yes/No Speaking order : Yes/No Neutral Citation : Yes/No ms 47/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 List of Witness examined on the side of the plaintiffs A.S.Moorthy - PW1 List of documents marked on the side of the plaintiffs SL. Exhibits DESCRIPTION OF DOCUMENTS DATED No
1. P1 Photocopy of the Certificate of 07.03.2008 incorporation of the 1st plaintiff
2. P2 Photocopy of the Partnership Deed 15.07.1985 between 3rd plaintiff and 4th defendant
3. P3 Photocopy of the Notice of Retirement by 07.09.2006 3rd and 4th defendants
4. P4 Photocopy of the Letter to Bank 07.09.2006 intimating about reconstitution of partnership by 3rd plaintiff
5. P5 Photocopy of the Reconstituted 01.10.2006 partnership deed erstwhile 1st plaintiff Company
6. P6 Photocopy of the plaint in C.S.No.135 of 19.02.2007 2007 between 3rd plaintiff & 4th defendant
7. P7 Photocopy of the plaint in C.S.No.170 of March 2007 2007 between 3rd plaintiff & 4th defendant
8. P8 Photocopy of the Division Bench Order 13.06.2007 passed recording settlement along with memorandum of compromise
9. P9 Photocopy of the Deed of Assignment 22.06.2007 executed by 3rd plaintiff & 4th defendant
10. P10 Photocopy of the Deed of Assignment 22.06.2007 executed by 4th defendant by to 3rd plaintiff
11. P11 Office copy of the Invoices of plaintiff 2001-2018
12. P12 Original Caution Notices issued by plaintiff
13. P13 Printout of the Various correspondence 2009-2017 48/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 and notice between the plaintiff and defendant and agents/dealers/distributors of the plaintiff and defendant Printout of the several email correspondence between me and the defendant is taken from the computer for which certificate under Section 65B of Indian Evidence Act is filed The counsel for the defendant objected for marking of the document on the ground that original legal notice of the translation which is the part of Ex.P13 not produced.
Ex.P13 is marked with objection subject to proof, admissibility and relevancy
14. P14 Printout of the MCA-Master Data of the 1st defendant Print out of the Ministry of Corporate affairs is taken from the computer for which Certificate Under Section 65B of Indian Evidence Act is filed
15. P15 Office copy of the Invoice for purchase of the defendants' products sold in Qatar
16. P16 Scanned copy of the ROYALCHEF Pouch/packaging of the 1st defendant Printout of the photographs of the label of my product ROYALCHEF is taken form my phone for which certificate under Section 65B of Indian Evidence Act is filed.
List of Witness examined on the side of the defendants M.M.Sheik Dawood - DW1 49/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 List of documents marked on the side of the defendants SL. Exhibits DESCRIPTION OF DOCUMENTS DATED No
1. D1 Original Company Registration of the 1st 10.02.2009 defendant
2. D2 Printout of the Company Registration of 24.12.1981 the 2nd defendant The counsel for the plaintiff objected for marking of document No.2 on the ground that in the Section 65B certificate the source is not mentioned hence it is not in accordance with law. Ex.D2 is marked with objection subject to Proof, Relevancy and Admissibility.
3. D3 Original Trademark Registration 24.07.2016 nd Certificate of the 2 defendant The counsel for the plaintiff objected for marking of document No.3 on the ground that it is not the legal user certificate.
Ex.D3 is marked with objection subject to Proof, Relevancy and Admissibility
4. D4 Printout of the TM-Search Report of 1st 28.09.2018 defendant The counsel for the plaintiff objected for marking of document No.4 on the ground that in the Section 65B certificate the source is not mentioned hence it is not in accordance with law. Ex.D4 is marked with objection subject to Proof, Relevancy and Admissibility.
03.01.2025 (2/2) 50/51 https://www.mhc.tn.gov.in/judis Civil Suit (Comm.Div.) No.286 of 2018 P.VELMURUGAN, J ms C.S.(Comm.Div.)No.286 of 2018 03.01.2025 51/51 https://www.mhc.tn.gov.in/judis