Calcutta High Court
B. S. Progressive Pvt. Ltd vs M/S. S. G. Sales Corporation & Ors on 20 December, 2013
Author: I. P. Mukerji
Bench: I. P. Mukerji
TA No. 130 of 2013 T. No. 325 of 2013 GA No. of 2013 CS No. of 2013 IN THE HIGH COURT AT CALCUTTA ORDIANRY ORIGINAL CIVIL JURISDICTION B. S. Progressive Pvt. Ltd.
Versus M/s. S. G. Sales Corporation & Ors.
Before:
The Hon'ble Justice I. P. MUKERJI Date: 20th December 2013 Appearance:
Mr. Pratap Chatterjee, Sr. Advocate Mr. S. N. Mookherjee, Advocate for the plaintiff Mr. Siddhartha Mitra, Advocate for the defendants The Court: After hearing Mr. Pratap Chatterjee and Mr. S. N. Mookherjee, learned Senior Counsel for the plaintiff and Mr. Siddhartha Mitra, learned Senior Advocate for the defendants the following facts, prima facie, come to light:
The trademark "Austin" is registered in favour of the plaintiff for manufacture of plywood which falls in Class 19. The said trademark has also been registered in favour of the defendant-corporation for manufacture of furniture in Class 20.
The defendant-corporation instituted a suit (Plaint No. 136 of 2008) against the plaintiff before the Additional District and Sessions Judge, No.
4. Jaipur City, Rajasthan asking for a decree restraining the plaintiff from using the mark "Austin". The Court did not pass an interim order. An appeal was preferred before the Rajasthan High Court which did not interfere with the refusal of the Trial Court below to pass an interim order. 2
In 2010 the plaintiff instituted a suit in the learned City Civil Court at Calcutta against inter alia the defendant Corporation asking for a decree restraining them from using the trademark "Austin".
It appears that on 21st June 2010 the learned the City Civil Court refused to pass an interim order of injunction. From that order an appeal was preferred by the plaintiff before this Court (FMAT No. 1072 of 2010). On 26th August 2010 this Court passed an order directing the defendant Corporation to keep a separate account of their sale and to furnish a copy of the statement of accounts on a month to month basis to the plaintiff. This appeal was disposed of on 7th December 2010 by a Division Bench of this Court. It was inter alia ordered that the statement of accounts as ordered to be furnished by the interim order were to be done punctually. If they were not so done there would be an order of injunction restraining the defendant Corporation from using the mark "Austin".
It was submitted on behalf of the plaintiff that the statements of accounts were never furnished by the defendant Corporation to them.
For whatever reason the injunction application was dismissed for default by the learned City Civil Court on 8th April 2011. An application was made by the plaintiff for restoration which was also dismissed on a technical ground in August, 2012. However, the plaintiff obtained leave from the learned City Civil Court to withdraw from the suit on 3rd February 2013 and to institute a fresh suit, if they so desired on the self-same cause of action.
Meanwhile, on 6th August 2012 the defendant Corporation had filed an application for rectification in the Trademarks Registry for deletion of the plaintiff's mark. Just prior to that on 28th July 2012 they had applied for registration of the mark "Austin" in their favour, in Class 19 claiming user from 31st December 2003.
3
Pursuant to the said liberty granted by the learned City Civil Court this suit was instituted in 2013. This interim application was filed on 18th December 2013.
Mr. Mookherjee submitted that the only change in the cause of action in this suit compared to that of the suit of 2010 before the learned City Civil Court is that whilst earlier, the defendant had been using the mark "Austin' in the packaging of plywood, very recently it had started writing the mark with the accompanying designs on the plywood.
Whatever may have been the reason, there is a time gap of three years after disposal of the High Court Appeal till institution of this suit and interim application.
Although Mr. Mookherjee took me through the impressive sales figures of the plaintiff between 2007-08 to 2012-13 as mentioned in paragraph 6 of the petition and the advertisement expenses for the same period as stated in paragraph 7 of the petition, at least the data upto 2010 was before the learned City Civil Court and the Hon'ble Division Bench of this Court. But they refused to pass an interim order of injunction and only passed an order directing the defendant Corporation to furnish month to month sales figures to the plaintiff.
What has become most important, in the consideration of passing an interim order in this case, is that, in the affidavit filed before the Additional District and Sessions Judge, No. 4 Jaipur City, the plaintiff admitted in paragraph 9 that "Austin" was the name of the capital of Texas, USA and hence no proprietary right could be claimed over it. The said paragraph 9 is inserted hereinbelow:
"That it is pertinent to state that "Austin" is capital and surname of Texas State of U.S.A. In above facts and circumstances, plaintiff cannot hold his sole right over the word 4 "Austin". "Austin" is surname and geographical name and it is being used generally in form of trademark for sale and buy of different merchandise goods. Many goods are sold in the name of "Austin" and "Austin" is not the sole property under the plaintiff's right."
Hence, the prayer for injunction is refused. However, on the case made out by the plaintiff they would be entitled to the same order passed by the Division Bench of this Court i.e. a direction upon the defendant Corporation to furnish statements of accounts on a month to month basis beginning from January, 2014. These accounts are to be furnished to the plaintiff's Advocate-on-Record. In default the plaintiff would be at liberty to ask for an order of injunction as provided by the said Division Bench order.
I am not closing the case of the plaintiff to ask for an interim order of injunction. But such case can be considered upon exchange of affidavits.
Affidavit-in-opposition be filed by 20th January 2014. List this application on 5th February 2014. Affidavit-in-reply may be filed in the meantime.
All parties are to act on a signed photocopy of this order on the usual undertakings.
(I. P. MUKERJI, J.) R. Bose AR(CR)