Madras High Court
Mehta Unani Pharmacy & Co vs Amrutanjan Limited on 16 April, 2002
Author: R.Jayasimha Babu
Bench: R.Jayasimha Babu, A.Kulasekaran
In the High Court of Judicature at Madras
Dated: 16/04/2002
Coram
The Honourable Mr.Justice R.Jayasimha Babu
and
The Honourable Mr.Justice A.Kulasekaran
Original Side Appeal No.364 of 1997 and OSA.No.373 of 1997
1. Mehta Unani Pharmacy & Co.,
Amrutamanthan House,
Chhatralaya Road,
Sadar, Rajkot 1.
2. Mehta Unani Pharmacy & Co.
(P) Ltd.,
Amrutamanthan House,
Chhatralaya Road,
Sadar, Rajkot 1. Appellants in OSA
No.364 of 1997 and
Respondents in OSA
No.373 of 1997
vs.
Amrutanjan Limited,
42-45, Luz Church Road,
Mylapore, Madras 4. Respondent in OSA
No.364 of 1996 and
Appellant in OSA
No.373 of 1997.
Appeals filed under Order XXXVI Rule 1 of the Original Side
Rules read with Clause 15 of the Letters Patent Act against the judgment of a
learned single Judge of this Court in C.S. No.42 of 1987 dated 28.0 7.1997.
!For appellants in
OSA.364 of 1997 &
respondents in OSA
No.373 of 1997 : Mr.C.S.Gopalakrishnan,
for M/s.Mohan Associates.
^For Respondent in
OSA.364 of 1997 &
appellant in OSA.
No.373 of 1997. : Ms.Gladys Daniel, for
Mr.C.Daniel.
:Judgment
(Judgment of the Court was delivered by
R.Jayasimha Babu, J.)
The appeals filed are against the judgment of the learned single Judge
who has given the declaration that had been sought by the plaintiff Amrutanjan
Limited against the appellants in O.S.A. No.364 of 1997 - Mehta Unani
Pharmacy & Company and Mehta Unani Pharmacy & Company Private Limited, who
were the defendants in that suit, that the claim made by the defendants that
they are exclusive owners of the expression 'Cold Rub' is unjustifiable and
has injuncted them permanently from threatening the plaintiff by issuing
memos, circulars, advertisements or notices, directly or indirectly declaring
that the expression 'Cold Rub' shall not be used by anyone.
2. The threat which the plaintiff had alleged to be groundless has
been held out in the advertisement issued in 'Times of India' dated 06.09.1986
by the defendants in the suit. That notice titled ` CAUTION NOTICE', after
referring to the fact that the defendants in the suit who were the owners of
the registered trade mark 'COLDRUB' in respect of vapourising ointment have
obtained ad interim injunction against M/s.Warner Hindustan Limited of UPPAL,
Waraneal Road, Hyderabad and M/s. Akin Laboratories Private Limited at
Hyderabad, from the District Judge, Rajkot; went on to state -- 'anybody
manufactures or sells or markets the said vapourising ointment under the trade
mark ' COLDRUB' shall be liable for breach of injunction and/or in contempt of
Court. TAKE NOTICE."
3. It was the case of the plaintiff before the trial Court that the
plaintiff is the owner of the trade mark 'Amrutanjan and Anoleum; that
`Anoleum' had been advertised by it along with descriptive expression
'COLDRUB', such advertisements have been effected from 1969 onwards; that the
plaintiff had obtained a decree in C.S. No.269 of 1977 against the same
defendants against infringing the plaintiff's mark on account of the use by
the defendants by name 'AMRUTMANTHAN'; that the defendants had applied for
registration of the mark `ATMAMANTHAN' in the year 1977 and had on 10.07.1978
undertaken to disclaim the descriptive expression 'COLD RUB' which had
appeared in it's Trademark Application No.329747; that in a suit filed by the
manufacturers of Vicks Vaporub in the year 1982, the defendant had filed an
affidavit stating that 'COLDRUB' is a descriptive expression and that after
having taken that stand the defendants had on 07.07.1983 applied to register
the term 'COLDRUB'. The application for registering the same name was also
filed by the defendants on 02.01.1986 and that the advertisement issued by the
defendants in the `Times of India' on 06.09.1986 threatened all persons with
an action of proceedings for breach of injunction and for contempt of court
and that the plaintiff being aggrieved by the threat, had instituted the suit
seeking reliefs under Section 120 of the Trade and Merchandise Marks Act,
1958.
4. The suit was resisted by the defendants who did not specifically
deny that the advertisement had indeed been issued by the defendants in the
'Times of India' and that `Times of India' did have all India circulation.
The defendants raised various r pleas with regard to that mark having been
registered in their favour under the trade mark name 'ATMAMANTHAN' Cold Rub as
Trademark No.329747. They also raised other pleas which resulted in the
learned single Judge having had to frame as many as nine issues. The
advertisement issued by the defendants in Times of India on 06.09.1986 was
marked as Ex.P.22 at the trial. The four advertisements which the plaintiff
had issued in ' Kumudam' issues dated 09.10.1969, 30.10.1969, 20.11.1969 and
11.12.1969 were together marked as Ex.P.37. The letter of the defendants
through their Attorney dated 10.07.1978 disclaiming the descriptive expression
'COLDRUB' appearing in the trade mark Application No.329747 was marked as
Ex.P.20. A copy of the affidavit filed by the defendants in the case against
them by Vicks Vaporub and in which affidavit it had been stated by the
defendants that 'Cold Rub' is a descriptive expression, was marked as Ex.P.23.
5. The learned single Judge framed the following issues:
1.Whether part of the cause of action for filing this suit has arisen within
the jurisdiction of this Court or not?
2. Whether the defendants have not been using the expression 'COLD RUB' since
1970 along with the Trade Mark 'ATHMAMANTHAN'?
3.Who has adopted the expression 'COLD RUB' earlier, whether the plaintiff or
defendants to sell their respective product along with their trade names
namely 'ANOLEUM' and 'ATHMAMANTHAN'?
4.Whether the expression 'COLD RUB' found in the label mark registered under
No.329747 dated 13.10.1977 in Class 5 in favour of the defendants is a Trade
Mark by itself as defined in Section 2(V) or mere mark as defined in Section
2(J) of the Trade and Merchandise Marks Act, 1958?
5.Is it not lawful for the defendants to claim exclusive right over the
expression 'COLD RUB'?
6.Is the plaintiff entitled for declaration and for injunction as prayed for?
7.Whether the suit is maintainable under Section 120 of the Trade Marks Act as
the word 'COLD RUB' is an exclusive coined word belonging to the defendant?
8.Whether there is a disclaimer of the word 'COLD RUB' as contemplated under
Section 17 of the Trade Marks Act?
9.To what other relief?
The documents which had been marked before the learned single Judge were
Exs.P.1 to P.59 and Exs.D.1 to D.14 all of which were marked by consent. No
oral evidence was let in by the parties.
6. All the issues framed were framed on the basis of the pleadings
filed by the parties. On issue No.1 as to whether the Court has jurisdiction
to entertain the suit, the learned single Judge held that a part of the cause
of action did arise within the jurisdiction of this Court and while holding so
observed that the counsel for the defendants had not raised any objections
regarding jurisdiction, in the course of the trial. On issue No.2 he has held
that the defendants had been using the expression 'COLDRUB' since 1970 along
with trade mark Atmamanthan. On issue No.3 he held that the mark 'COLDRUB'
was used by the defendants from 1970. While so holding he did not advert to
Ex.P.37 'Kumudam' advertisements to which there is no reference at all in the
judgment. On issue No.4 as also issue No.8 he did not record any finding as,
in his view, he did not consider it necessary to do so. On issue No.5 as also
on issue No.6 he held that 'COLDRUB' is a descriptive word; that neither party
to the suit had coined the word; that the plaintiff is entitled to use the
term as a bona fide description of it's products in terms of Section 34 of the
Act and held that the plaintiff was entitled to declaration and injunction as
prayed for. On issue No.7 he held that the suit was maintainable.
7. In the appeal filed by the defendants it was submitted that the
Court did not have jurisdiction to maintain the suit. Having omitted to even
argue that point before the learned single Judge, it is not open to the
appellants now to contend that the single Judge ought to have held that the
Court had no jurisdiction to try the suit. Even otherwise there is no
substance in this contention. In the written statement filed, there is no
denial of the fact that the advertisement had been issued in the 'Times of
India' and 'Times of India' had wide circulation in different parts of India
including Chennai. The appearance of an advertisement in a newspaper which
has circulation in the area is sufficient to enable the aggrieved plaintiff to
invoke the jurisdiction of this Court as, a part of the cause of action can be
said to arise by reason of such circulation within the jurisdiction of the
Court.
8. Counsel further submitted that Section 120 of the Trade and
Merchandise Marks Act could not have been invoked by the plaintiff as the
notice Ex.P.22 was not addressed to the plaintiff. It was urged that in
Section 120 of the Act a reference is made to `a person' and therefore, it is
only persons to whom the threat is directed individually who can seek relief
under Section 120 of the Act. It is useful at this point to set out Section
120 of the Act which reads thus:
120. Groundless threats of legal proceedings:
(1) Where a person, by means of circulars, advertisements or otherwise,
threatens a person with an action or proceedings for infringement of a trade
mark which is registered, or alleged by the firstmentioned person to be
registered, or with some other like proceeding, a person aggrieved may,
whether the person making the threats is or is not registered proprietor or
the registered user of the trade mark, bring a suit against the
first-mentioned person and may obtain a declaration to the effect that the
threats are unjustifiable, and an injunction against the continuance of the
threats, and may recover such damages (if any) as he has sustained, unless the
first mentioned person satisfies the Court that the trade mark is registered
and that the acts in respect of which the proceedings were threatened to
constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered
proprietor of the trade mark, or a registered user acting in pursuance of
sub-section (1) of Section 51, with due diligence commences and prosecutes an
action against the person threatened for infringement of the trade mark.
(3) Nothing in this section shall render a legal practitioner or a
registered trade mark's agent liable to an action under this section in
respect of an act done by him in his professional capacity on behalf of a
client.
(4) A suit under sub-section (1) shall not be instituted in any Court
inferior to a District Court.
9. The opening part of Section refers to 'a person' who by means of
circulars, advertisements or otherwise threatens a person with an action or
proceedings for infringement of trade mark. The means employed to pose such
threats referred to in the section are circulars, advertisements or otherwise.
What is sought to be emphasised by the section by use of those terms is that
the threat need not be contained merely in a letter addressed to the
individual concerned, but that threat could be held out in circulars which are
made available to a large number of persons as also in advertisements put up
in newspapers which have large circulation. The scope of expression of 'a
person' used in the section must, therefore, be ascertained in the context of
the reference to circulars and advertisements. 'Person' referred to in
Section 120 of the Act is the person who feels threatened by the action of the
person who has issued the circulars, advertisements or otherwise, the threat
being an action or proceedings for infringement of a trademark which is
registered or alleged to be registered or with some other like proceedings.
The right given under the section to invoke the jurisdiction of the Court is
to `a person aggrieved'. There is nothing in the section which would support
the interpretation sought to be placed on it by the learned counsel for the
defendants who seeks to confine the scope of the term `threatens a person to a
named individual. The threat can be made to a `body of persons' of whom the
person who invoked the jurisdiction under Section 120 of the Act may be one,
if he is aggrieved by the threat held out.
10. The threat held out in this case in the notice that was issued in
the newspapers is to `anybody, who manufactures or sells or markets the
vapourising ointment under the trade mark 'COLDRUB'. The threat held out in
that notice to anybody is in fact a threat to everybody who manufactures,
sells or markets the vapourising ointment in the name 'COLDRUB'. The
plaintiff admittedly being such a manufacturer, who used the word 'COLDRUB'
was certainly a person who had been threatened with an action by reason of an
advertisement and was entitled to invoke the protection of Section 120 by
initiating the proceedings thereunder. The proceedings initiated by the
plaintiff was maintainable under Section 120 of the Act.
11. Learned counsel for the defendants then submitted that the whole
proceedings was rendered infructuous by reason of the defendant having filed a
suit in the High court of Delhi on 13.08.1989 in C.S. No.158 of 1989 alleging
infringement of their trademark, that suit having been filed against the
plaintiff in the suit from and out of which this appeal had arisen. In that
suit there is no interim order in favour of the plaintiff in that suit who is
the defendant in the suit from which this appeal had arisen.
12. Sub-section (2) to Section 120 of the Act on which reliance is
placed by counsel provides that sub-section (1) of Section 120 will not apply
if the registered properietor of the mark, or a registered user acting in
pursuant to sub-section (1) of Section 51 'with due diligence' commences and
prosecutes an action against the person threatened for the infringement of the
trademark. The facts of the case show that the suit in C.S. No.42 of 1987
was filed in this Court on 15.12.1986 within three months from the date of the
advertisement issued in 'Times of India' on 06.09.1986. It is only some 2-1/2
years after the institution of the suit that the defendants filed the suit in
C.S. No.158 of 1989 in the High Court at Delhi. This long interval cannot be
regarded as evidence of 'due diligence' referred to in section 120(2) of the
Act. The fact that the suit came to be filed by the defendants after this
Court had in an interim order held that the institution of such a suit was
permissible even after a proceeding under Section 120 of the Act was
initiated, cannot be of any assistance to the defendants when they seek to
contend that the belated institution of the suit should still be regarded as
amounting to due diligence on their part. It cannot, therefore, be said that
the filing of the suit by the defendants about 2-1/2 years later in the High
Court at Delhi would have the effect of rendering the earlier suit filed by
the plaintiff here, infructuous.
13. Counsel also contended that the learned trial Judge should not
have framed the issues that he has, as the scope of the suit under Section 120
is limited to deciding as to whether the threat held out was justified or
unjustified, and to grant or refuse an injunction against the continuance of
those threats.
14. As noticed earlier, the issues framed were issues which arise out
of the pleadings in the suit. The defendants having sought to justify the
threats held out, the tenability or otherwise of the justification so offered
had necessarily to be examined by the Court and to facilitate such
examination, the framing of the issues with reference to the pleas raised was
required and it cannot, therefore, be said that the matters dealt with by the
learned single Judge are outside the purview of Section 120 of the Act. In
respect of those issues which were not necessary, i.e., issues 4 and 8, the
learned Judge has not recorded any finding. The validity of the trade mark
which was raised in issue No.4 was rightly not considered as, it was not
necessary to consider and pronounce on the validity of the registration in
this proceedings. The learned trial Judge had also not recorded any finding
on the question as to whether there was a disclaimer as contemplated by
Section 17 of the Trademarks Act. All the issues on which he has entered
decision are issues which are relevant for the purpose of findings the extent
of reliefs to be granted under Section 120 of the Act.
15. One more argument that was raised for the defendants needs to be
noticed. It was submitted for them that notice had been issued bona fide and
that therefore such a notice should not be regarded as amounting to a threat.
In this context, attention was invited to Narayanan's book on the Law of
Trademarks and Passing Off, 4th Edition, wherein at page 671 it is stated that
'a general warning or cautionary notice to the public regarding infringement
of the rights of the owner of patent, trademarks or copyright published in
good faith may not amount to a libel'. In support of that proposition three
old English cases are referred to. Those cases have not been placed before us
nor have the provisions of the statute considered therein been placed before
us. The question here also is not libel. The question here is one of
protecting the person entitled to such a protection against groundless threats
or action, where a threat which is found to be groundless cannot be regarded
as having been made bona fide. The plea of bona fide now raised is also
without any substance. The defendants themselves had filed an affidavit in
another proceedings saying that 'COLD RUB' is a descriptive expression which
prima facie, indeed, it is. It is also the case of the plaintiff that the
defendants had specifically undertaken to disclaim the descriptive expression
' COLDRUB' appearing in the trademark application. Having taken that stand,
it can hardly be said that the defendants were acting bona fide when they
asserted a claim and on such assertion held out a threat of action against
anyone-else using the words 'Cold Rub' which two words clearly are words of
common use and are indeed descriptive.
16. We find no merit in the appeal filed by the defendants in O.S.A.
No.364 of 1997 and the same is dismissed.
17. In so far as the appeal filed by the plaintiff with regard to the
finding on issue No.3 is concerned, even the defendants did not dispute and
rightly so, the fact that the relevant material evidence which had been placed
before the Court, namely Ex.P.37 had not been looked into by the learned
single Judge. These advertisements are part of the documents produced by the
plaintiff which had been admitted by consent as documents in the case and
marked. The authenticity of the documents are not in issue. The
advertisement effected for the product Anoleum combined with the words 'Cold
Rub' in the year 1969 which is prior to the year 1970 when even, according to
the defendants, they had not used those words prior to that year, would
clearly show that the plaintiff had used those words at a time when the
defendants had not commenced it's user. The finding recorded by the learned
single Judge on issue No.3 is erroneous and is set aside. In it's place shall
be recorded a finding that the expression 'Cold Rub' had been adopted by the
plaintiff prior to it's adoption by the defendants. The plaintiff's appeal in
O.S.A. No.373 of 1997 shall stand allowed.
(R.J.B.,J.) (A.K.,J.)
16.04.2002
Index:- Yes
Website:- Yes
Copy to
The Sub Assistant Registrar,
Original Side,
High Court,
Madras.
mf
R.Jayasimha Babu, J.
And A.Kulasekaran, J. O.S.As. No.364 and 373 of 1997 16.04.2002