Bangalore District Court
Pasuparthy Polymers Pvt vs Krishna Marketing on 2 January, 2023
KABC010186752020
Form
No.9
(Civil)
Title
Sheet
for PRESENT: SRI PADMA PRASAD
Judgme
B.A.(Law) LL.B.,
XVIII Additional City Civil Judge.
Dated this the 2 nd day of January 2023
PLAINTIFF: PASUPARTHY POLYMERS PVT
LTD., Having its Registered Office at
No. C6, Industrial Estate,
Renigunta Road,
Tirupathi - 571 506
CIN:U51496AP2000PTC034108
Having its Branch Office at:
Chamundeshwari Towers No. 39,
Govardhana Garden,
J.C. Industrial Layout,
Yelchanahalli, Bangalore -560 062.
Represented by its Director
Shri Pasuparthy Venkta Prasanna
Kumar, s/o Pasuparthy
Dwarkanath.
[By Sri Saket Bisani, Advocate]
/v e r s u s/
DEFENDANTS: 1. KRISHNA MARKETING
No. 16, 1st Main Road,
2nd Cross, BDA Layout,
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Patagarapalya, Vijayanagar,
Bangalore-560 079.
Represented by its Proprietor
Mrs. Manju Devi
W/o Mr Parithosh Kumar
Choudhary.
2. BALAJI POLYCEM
#9, Sy.No. 100/100/2,
Shivashakthi Layout,
3 Gurukula Road,
Channenehalli, Yelachaguppe
Village, Tavarekere Hobli,
Bangalore-562130.
Representd by is Proprietor,
Mr. Parithosh Kumar
Choudhary.
3. MR. PARITHOSH KUMAR
CHOUDHARY,
#9, Sy.No.100/100/2,
Shivashakthi Layout, 3
Gurukula Road, Channenehalli,
Yelachaguppe Village,
Tavarekere Hobli,
Bangalore-562130.
Mob: +91 9738382727.
[By Sri/Smt. PV, Advocate]
Date of institution of the : 22/10/2020
suit
Nature of the suit : For INJUNCTION.
Date of commencement of : 18/04/2022
recording of the evidence
Date on which the : 2/1/2023
Judgment was
pronounced.
3 O.S.5201_2020_Judgment_.doc
: Year/s Month/s Day/s
Total duration
2 2 11
(PADMA PRASAD)
XVIII ACCJ: B'LURU.
This is a suit for permanent injunction.
2. The plaint case in nutshell is that, plaintiff
is a private limited company incorporated under the
Companies Act, on 29/3/2000. The plaintiff is into
the manufacturing of adhesives and emulsions since
two decades in the name of VIJAYCOL and INDOCOL.
However, while filing the application for trade mark,
the plaintiff has produced the bills from 12/12/2003
showing the usage of VIJAYCOL and INDOCOL from
12/12/2003. The plaintiffs claims that they are using
the said trade name for long time and thereby
acquired considerable reputation in the market and
goodwill, and it is known for its quality and trust. The
plaintiff also claimed that it has acquired the trade
mark as per application no. 4563260 in class 1 and
the application no. 4563261 in class 16. The plaintiff
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further claimed that the defendant no.1 filed trade
mark application no. 3370709 claiming trade mark
VIJAYCOL that they are using the said mark since
22/9/2006. The said application opposed by Vision
Stationary Private Limited. However, Vision Stationary
did not defend their claim due to which the opposition
is treated as abandon under Rule 45(2) as per Order
dated 11/6/2018. Thereafter, the plaintiff filed a
rectification of the said mark before the Trademark
Registry under class 1 and 16 to claim their brand
name against the word mark of defendant VIJAYCOL
dated 7/4/2017 and 9/7/2020. The defendant filed
another trade mark application in class 16 under
trade mark application no. 3370710 for which the
plaintiff filed rectification application no. 268803. It is
further claimed that defendant no.3 executed a deed
of assignment assigning the brand name of
VIJAYCOL on behalf of defendant no.1 to defendant
no.2 for a meager sum of Rs.200/- and both are
operated and controlled by defendant no.3.
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The defendant no.3 was purchasing the material
from plaintiff's sister concern M/s Vijaya Chemical
Agencies from 25/10/2013 to 12/3/2016. The
defendant no.3 opened defendant no.1 in the name of
his wife and opened defendant no.2 in his name. It is
also claimed that after filing a rectification of the
impugned mark, defendant no.1 to cover up his unfair
and dishonest adoption of the mark issued a one page
simplicitor legal notice dated 18/8/2020 calling upon
the plaintiff to cease and desist from using the said
mark in 10 days. The plaintiff has given a proper
reply to the said notice. After the receipt of legal
notice, defendant no.3 came for negotiations and
offered the plaintiff said mark for a sum of
Rs.1,50,00,000/- and after negotiating came to sell
the mark for a sum of Rs.10,00,000/- that include the
brand name along with packing material printed by
the defendant. It is also claimed that defendant no.3
fraudulently with the dishonest interest filed two trade
mark application under class 16 as a word mark and
device mark for the brand name VIJAYCOL under
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Trade Mark application no. 3370709, 3370710 under
class 16. The plaintiff and defendants are doing the
identical business. As such, the act of the defendant
caused loss to the business of the plaintiff and also
confused the customers. Accordingly prayed for the
relief claimed in the suit.
3. The defendants filed written statement
wherein they have totally denied the plaint case
claiming that the defendant no.2 is the registered
proprietor of the trade mark VIJAYCOL in view of the
trade mark registration subsisting in the name of
defendant no.2 and the defendant no.2 solely holds
the exclusive right to use the trade mark VIJAYCOL.
The plaintiff did not oppose the registration of
defendant's trade mark before the trade mark registry,
Chennai, as such the plaintiff is estopped from raising
objections claimed in the suit to the trade mark of
plaintiff. The defendant no.1 adopted the trade mark
in September 2016. The defendant no.1 sought
professional services of company, Peacock Group to
design the device and logo for its business and also
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filed two applications before the Trade Mark Registry
vide a application no. 3370709 to register the trade
mark in the word mark category under class 16 and
application no. 3370710 to register the trade mark in
the device mark under class 16. Accordingly, the trade
mark registry issued the trade mark in the word mark
and device mark in class 16 vide a certificate no.
1581395 dated 20/6/2017 and certificate no.
1894049 dated 21/06/2018 respectively. Accordingly,
the defendant claimed that they are the registered
trade mark owners of the word mark VIJAYCOL.
Accordingly, claimed that their right over the trade
mark to be protected under law. It is also stated that
the word and device mark VIJAYCOL has attained
distinctiveness and becomes synonymous to the goods
sold by the defendant no.2, and also claimed that it
has produced various documents in support of its
case.
The defendants also put forth the counterclaim
in the suit claiming that it has absolute right over the
trade name VIJAYCOL as it is the registered owner of
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the trade mark in word mark and device mark in
class 16. The defendants specifically made allegation
that plaintiff has dishonestly and deceptively used the
defendants trade mark VIJAYCOL for identical
business. Accordingly, prayed to dismiss the suit of
the plaintiff and decree the counterclaim of the
defendant that the defendants have absolute right
over the trade mark VIJAYCOL and the plaintiff to be
restrained from using the trade name VIJAYCOL for
its products.
4. The plaintiff denied the counterclaim
averments by filing a rejoinder to the counterclaim
wherein more or less the plaintiff re-iterated the facts
stated in the plaint.
5. On the basis of above pleading the court
framed following issues:
(1) Whether the plaintiff proves that they
are the prior user and owner of the
trade mark VIJAYACOL as pleaded in
the plaint?
(2) Whether the plaintiff proves that the
defendants are selling the goods with
the description bearing VIJAYACOL
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which is deceptively similar to that of
the plaintiff as pleaded in the plaint?
(3) Whether the defendant no.2 proves
that they are the registered owner of
the trade mark VIJAYCOL as
contended in the written statement?
(4) Whether the defendants prove that the
plaintiff has infringed and passed off
their trade mark VIJAYCOL by using
identical and deceptively similar trade
mark VIJAYACOL as contended in the
counterclaim?
(5) Whether the defendants proves that
the suit is bad for misjoinder of parties
as contended in the counter claim?
(6) Whether the defendants prove that the
suit of the plaintiff is barred by law of
limitation?
(7) Whether the plaintiff is entitled for the
decree of permanent injunction as
sought for?
(8) Whether the plaintiff is entitled for the
reliefs as sought for?
(9) Whether the defendants are entitled
for the relief as sought for?
(10) What order or decree?
6. Plaintiff in order to prove its case, examined
its Director as PW.1 and got marked documents as per
Ex.P1 to Ex.P51. On the other hand, defendants
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neither examined any witnesses nor produced any
documents.
7. Heard the arguments and perused entire
records of the case
8. My findings on the above issues are as
under:
Issue No. 1) ............In the negative;
Issue No. 2) ............In the negative;
Issue No. 3) ............In the negative;
Issue No. 4) ............In the negative;
Issue No. 5) ............In the negative;
Issue No. 6) ............In the negative;
Issue No. 7) ............In the negative;
Issue No. 8) ............In the negative;
Issue No. 9) ............In the negative;
Issue No. 10) ............ As per final order for
the following:
9. ISSUE NO.1 TO 6: In this case, the
plaintiff filed the suit for permanent injunction to
restrain the defendant from using the trade mark
VIJAYCOL. Similarly, the defendant put forth the
counterclaim stating that it is the plaintiff deceptively
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using the trade mark of defendant and prayed to
restrain the plaintiff from using the trade mark. In
view of the respective contentions of the parties, the
court framed issues. The first issue is regarding the
proving of the case of plaintiff that the plaintiff is the
prior user and owner of the trade mark VIJAYCOL, the
issue no.2 is framed on the contention of plaintiff that
the defendant is deceptively using the plaintiff's trade
mark. Issue No.3 and 4 are framed on the contention
of the defendant that the defendant no.2 is the
registered trade mark and the plaintiff is using the
deceptively identical trade mark of defendant. Issue
No.5 is regarding the contention taken by defendant
that the suit is bad for misjoinder of the parties and
issue No.6 is framed on the contention that the suit of
the plaintiff is barred by limitation. All these issues
are interlinked with each other. Hence they are taken
up together.
10. The definite case of the plaintiff is that, the
plaintiff is the prior user and owner of the trade mark
VIJAYCOL and the plaintiff started to use the trade
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mark VIJAYCOL for adhesive products since
29/3/2000. In support of the said contention, the
plaintiff has produced certificate of incorporation at
Ex.P1. GST certificate at Ex.P2, price list of the
plaintiff's product at Ex.P3, original affidavit of
plaintiff company at Ex.P4, online printout of status of
the trade mark application no. 4563260, and trade
mark application for VIJAYCOL in class 1 at Ex.P6,
tax invoices at Ex.P7 to Ex.P15, office copy of the legal
notice at Ex.P16, reply notice at Ex.P17, Ex.P18 is the
postal tracking consignment for having been served
the notice, Ex.P19 is the packaging material used by
defendant, Ex.P20 is the packaging material of the
plaintiff, Ex.P21 is the online print out of trade mark
registration certificate of plaintiff, Ex.P22 to Ex.P25
stock transfer bills, Ex.P26 to Ex.P38 tax invoices,
Ex.P39 to Ex.P43 letters from the distributors of the
plaintiff, Ex.P44 to Ex.P51 are the VAT tax returns. It
is true that all these documents shows that the
plaintiff is using the product by name VIJAYCOL.
Prima facie material produced by the plaintiff shows
13 O.S.5201_2020_Judgment_.doc
that the plaintiff is using the trade name VIJAYCOL.
It is relevant to note the relief claimed by the plaintiff
in plaint para no.41 (a) wherein it is stated that the
defendants to be restrained from using the trade
name VIJAYACOL. Even in the plaint many times, the
plaintiff used that the trade name of plaintiff is
VIJAYACOL. There is a difference between VIJAYCOL
and VIJAYACOL which is the actual trade mark used
by the plaintiff is not properly explained. If at all, the
plaintiff's trade mark is VIJAYCOL, the plaintiff would
not have sought the relief in the name of VIJAYACOL.
11. In this case, the definite defence of the
defendant is that, the defendant no.2 is the registered
trade mark owner of the name VIJAYCOL, and they
are using the trade name since 2016. The said fact is
not in dispute and according to the plaint averments
at paragraph 13 and paragraph 12 of the evidence
affidavit of PW.1 wherein it is stated that the plaintiff
filed a copy of opposition / rectification against the
device mark of VIJAYACOL of the defendant on
9/7/2020. If it were so, the plaintiff is aware that the
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defendant no.2 is the registered trade mark holder of
VIJAYACOL as a device mark in class 16. Accordingly,
the plaintiff filed the rectification of said trade mark.
What happened to the said rectification application is
not at all explained by the plaintiff. Whether the
rectification or opposition filed by the plaintiff has
been accepted by the trade mark registry and whether
the trade mark of defendant no.2 has been cancelled
or not is without any explanation.
12. It is true that, the plaintiff has produced
the document at Ex.P21 claiming that it is the online
printout of trade mark registration certificate. The
said document in the third line from the bottom
disclose that "This certificate is not for use in legal
proceedings or for obtaining registration abroad."
Therefore, the said document at Ex.P21 cannot be
used in the legal proceedings by the plaintiff, as such
the plaintiff ought to have produced some documents
before the court to show that opposition or
rectification application filed by the plaintiff has been
allowed and thereby trade mark of the defendant in
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class 16 in word mark and device mark has been
cancelled. In the absence of any such documents, the
claim of the plaintiff cannot be accepted.
13. Once the trade mark has been registered,
then it is in force unless and until the said trade mark
has been abandoned or assigned to some others or
cancellation of the said trade mark by competent
authorities as per Section 50 the Trade Marks Act. As
such, the registered trade mark holder has every right
to use his registered trade mark for his products as
contemplated under Section 48 of Trade Marks Act.
Therefore, it is clear that the plaintiff has not
produced any material to show that the trade name or
trade mark of the defendants has been cancelled by
the competent authority as on this date. Admittedly,
the defendant no.2 is the registered trade mark holder
of word VIJAYACOL and the plaintiff has filed the
application for trade mark registration only in the year
2020 and the plaintiff has not produced any
satisfactory material to show that the trade mark
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registry has registered the trade mark VIJAYCOL in
the name of plaintiff.
14. The plaintiff along with the plaint put forth
a counterclaim and claimed that it is using the trade
mark since 2016 and claimed that the defendant filed
a trade mark application on 22/9/2016 and the trade
mark registry has issued the trade mark in work mark
and device respectively on 20/6/2017 and 21/6/2018
respectively as per the trade mark application of
defendant bearing no. 3370709 and 3370710. The
trade mark application of defendant is bearing no.
4563260, 4563261 dated 9/7/2020 which is
subsequent to the trade mark application of
defendants bearing no. 3370709 and 3370710.
Further, as per Ex.P5, the trade mark application filed
by the plaintiff has been objected. Of course, it is
stated that the objector namely Intepat IP Services
Private Limited has not pressed the said objection but
that itself is not a ground to accept the plaint case
particularly when there is no material before the court
to show that the registered trade mark of the plaintiff
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in word mark and device mark in class 16 has been
cancelled by the competent trade mark register
authority as per Section 50 of the Trade Marks Act.
15. The defendants though put forth a
counterclaim not chosen to give any oral evidence by
stepping into the witness box and thereby denied the
opportunity of cross-examination to the plaintiff and
also not produced any authenticated documents in
support of its claim. As such, certainly the claim of
the defendants cannot be accepted.
16. There is also no material before the court to
show that how the suit is bad for non-joinder of
necessary parties and how the suit is barred by
limitation. Therefore, for the aforesaid reasons, this
court is of the humble opinion that the plaintiff and
defendants are failed to prove respective issues
framed on the respective claims. Accordingly, the
Issue No.1 to 6 are answered in negative.
17. ISSUE NO.7 TO 9: These issues are
framed regarding the entitlement of respective relief
18 O.S.5201_2020_Judgment_.doc
claimed in the suit and counterclaim. In view of the
finding on Issue No.1 to 6, certainly the plaintiff is not
entitled for the relief claimed in the suit and the
defendants are not entitled for the relief claimed in the
counterclaim. Accordingly, these issues are answered
in negative.
18. ISSUE NO.5: In view of my finding on the
above issues, I proceed to pass the following:
The suit of the plaintiff is hereby
dismissed.
The counterclaim of the defendant is
hereby dismissed.
Considering the peculiar facts of this
case, no order as to costs.
Draw decree accordingly.
***
[Dictated to the Judgment Writer directly on computer, Script corrected, signed and then pronounced by me, in the Open Court on this the 2 nd day of January 2023.] [PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
19 O.S.5201_2020_Judgment_.doc
1. List of witnesses examined on behalf of the Plaintiff/s:
PW.1 Pasuparthy Venkata Prasanna Kumar
2. List of witnesses examined on behalf of the Defendant/s:
NIL.
3. List of documents marked on behalf of the Plaintiff/s:
Ex.P1 True copy of Certificate of Incorporation.
Ex.P2 Downloaded copy of GST Certificate of plaintiff.
Ex.P3 Price List of the plaintiff's products. Ex.P4 Original affidavit of plaintiff company. Ex.P5 Downloaded copyof Status of TM application No. 4563260. Ex.P6 TM application for VIJAYACOL in class 1 (downloaded copy).
Ex.P7 to Original tax invoices (9 in nos.) Ex.P15 Ex.P16 Office copy of legal notice dated 18/8/2020.
Ex.P17 Copy of Reply notice dated 11/9/2020.
Ex.P18 Postal tracking consignment report. 20 O.S.5201_2020_Judgment_.doc Ex.P19 Packaging material used by defendant no.2.
Ex.P20 Packaging material of the plaintiff. Ex.P21 Online printout of Trademark registration Certificate.
Ex.P22 to Stock transfer bill books (4 in nos.) Ex.P25 Ex.P26 to Tax Invoices (13 in nos.).
Ex.P38
Ex.P39 Letters from Distributors of the
to plaintiff.
Ex.P43
Ex.P44
to Vat Tax returns.
Ex.P51
4. List of the documents marked for the
defendants:
NIL.
[PADMA PRASAD]
Digitally signed XVIII Additional City Civil Judge.
by PADMA
PADMA PRASAD BENGALURU.
Date:
PRASAD 2023.01.02
16:00:44
+0530
21 O.S.5201_2020_Judgment_.doc 2/1/2023 P-SB D1 to D3 - P.V. For Judgment...
...Judgment pronounced in the Open Court....
(Vide separate detailed judgment) The suit of the plaintiff is hereby dismissed.
The counterclaim of the defendant is hereby dismissed.
Considering the peculiar facts of this case, no order as to costs. Draw decree accordingly.
[PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
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