Kerala High Court
T.Beena vs Seematti on 20 March, 2020
Author: Devan Ramachandran
Bench: Devan Ramachandran
IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE DEVAN RAMACHANDRAN
FRIDAY, THE 20TH DAY OF MARCH 2020 / 30TH PHALGUNA, 1941
FAO.No.34 OF 2020
AGAINST THE ORDER IN I.A.No.7312 of 2018 IN O.S.No.42/2018
DATED 07-12-2019 OF ADDITIONAL DISTRICT COURT - VII,
ERNAKULAM
APPELLANT/PLAINTIFF:
T.BEENA,
AGED 58 YEARS,
DAUGHTER OF SRI.V.THRUVENKITAM, PROPRIETRIX,
M/S.SEEMATTI, M.G.ROAD, ERNAKULAM-682 035.
BY ADVS.
SRI.JOHN MATHEW
DR.THUSHARA JAMES
SRI.MATHEW JOHN (JMA)
SRI.VINU SASIDHARAN
RESPONDENT/DEFENDANT:
SEEMATTI,
1/10, PANAGAL ROAD, TIRUVARUR-610 001,
TAMIL NADU.
SRI. BENOY K.KADAVAN FOR RESPONDENT
THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR
ADMISSION ON 20.03.2020, THE COURT ON THE SAME DAY DELIVERED
THE FOLLOWING:
FAO.No.34 OF 2020 2
CR
JUDGMENT
As is well recognised, Trademarks are brand identifiers and axiomatically, a very valuable asset for the registrant business. It is, therefore, without any surprise that a registrant would fiercely invoke every remedy available in law, when a trademark registered in his/its favour is suspected to be infringed or violated by another.
2. This case, at the instance of the owner of a Trademark, presents the classic tussle between a registrant and the one who is alleged to have infringed it.
3. The plaintiff in O.S.No.42/2018, on the files of the District Court, Ernakulam, has appealed herein, impugning the unfavourable order in I.A.No.7312/2018, which was filed by her seeking prohibitory FAO.No.34 OF 2020 3 injunction against the respondent-Firm from infringing her registered trademark or in any manner using the same deceptively in their business.
4. The appellant/plaintiff claims to be the proprietrix of two registered Trademarks
- bearing Nos.1839635 and 1839637 - under the name 'SEEMATTI', which is stated to be used in the retail business of textiles and such other products. According to her, even though she had obtained the registrations as early as in the year 2009, the respondent has made an attempt to infringe the same, by starting a showroom at Thiruvarur, Tamil Nadu, under the name and style 'SEEMATTI' and therefore, that she has been constrained to file the suit, seeking the following prayers:
"(i) a decree of permanent prohibitory injunction restraining the defendant, its partners, servants, agents, successors, assigns in business and representatives from using the FAO.No.34 OF 2020 4 trademark/trade name SEEMATTI or any name deceptively similar to it as a trademark, trade name or corporate name in business amounting to infringement of the plaintiff's registered trademark Nos.1839635 and 1839637.
*(ii) a decree of permanent prohibitory injunction restraining the defendant, his servants and agents from passing off his services/goods under the name/mark SEEMATTI or under any other mark deceptively similar thereto.
*(Amended (deleted) as per order dated 30.10.2019 in I.A.No.7175/2019) *(iii) a decree of mandatory injunction directing the defendant, its directors, partners, servants, agents, successors, assigns in business and representatives to destroy all the goods, packaging/promotional material, cartons, stationery, unfinished products, sign boards etc, bearing the impugned name/mark SEEMATTI under intimation to the duly authorized representative of the plaintiff;
(iv) a n order for full and faithful disclosure by the defendant to this Hon'ble Court, as to the accounts and profits earned by it under the name/mark SEEMATTI and a decree for the amount so found due, be passed in favour of the plaintiff as damages;
(v) costs of the suit be awarded to the plaintiff; and
(vi) any other relief which this Hon'ble Court thinks fit and proper in the circumstances of the case be allowed in favour of the plaintiff and against the defendant."
5. The appellant/plaintiff says that along with the suit, the afore mentioned FAO.No.34 OF 2020 5 I.A.No.7312/2018 had been filed on 20.12.2018, seeking an order of injunction against the respondent from infringing her Trademarks and that same had been granted by the Court below, which was later confirmed on 16.02.2019. She says that, nearly four months later, on 04.06.2019, the respondent filed a review application, which was allowed; and that the afore I.A was heard afresh, leading to the impugned order, declining the injunction for various reasons, which, she says, are untenable and unsustainable in law.
6. The appellant/plaintiff vehemently asserts that once it has been conceded that she is the owner of the Trademark 'SEEMATTI', the respondent could not have been allowed to operate their business in the same name at Thiruvarur, since there are no special conditions attached to the registration of the said Trademark to the FAO.No.34 OF 2020 6 effect that it will be applicable only to a particular area or State and that it, thus, operates pan - India. The appellant/plaintiff consequently prays that the impugned order be set aside.
7. In answer to the afore assertions made by the appellant/plaintiff through her learned counsel Sri.John Mathew, the learned counsel appearing for the respondent - Sri.Benoy Kadavan, began his submissions by saying that, as has been rightly found by the Trial Court, the respondent had commenced their business as a partnership firm under the name 'Seematti Silks' as early as in the year 1986 at Kumbakonam in Tamil Nadu and that they have been running their showrooms under the name 'Seematti' ever since. He says that his client had commenced their business in the year 1986 without any knowledge of the business of the appellant/plaintiff in Kerala and that the FAO.No.34 OF 2020 7 name 'Seematti' in Tamil Nadu is associated only with them and no one else. He predicates that, therefore, even if the appellant/plaintiff asserts that there is a registered Trademark in her favour, his client - having started a business as early as in the year 1986; which is nearly 23 years before such Trademark had been obtained by the appellant/plaintiff - can only be construed to be a concurrent and honest user of the same without any intention to use such name deceptively since, as seen stated above, the name 'Seematti' in Tamil Nadu is exclusively associated with his client and no one else.
8. Sri.Benoy Kadavan relies on the judgment of the Hon'ble Supreme Court in Amridhara Pharmacy v. Satya Deo Gupta [AIR 1963 SCC 449] and that of the Hon'ble High Court of Delhi in Vrajlal Manilal & Co v. Bansal Tobacco Co. [2001 PTC 98 (del)] in FAO.No.34 OF 2020 8 substantiation of his contentions.
9. When I assess the afore submissions, it is without doubt that the fact that the appellant/plaintiff has obtained registered Trademarks in her name are not disputed. The primary defence put up by the respondent is that they have started their business much earlier at Kumbakonam in the year 1986, much before the appellant/plaintiff had obtained the registration of her Trademarks; and therefore, that they are entitled to use the same uninterruptedly in future also, under the provisions of Section 12 of the Trademark Act, which allow concurrent and honest uses.
10. I have examined the materials available on record, as also the documents presented, which clearly show that the respondent asserts that they have been in business at Kumbakonam, running a textile FAO.No.34 OF 2020 9 showroom under the name 'Seematti', from the year 1986. The large amount of documents produced by the respondent, which have been marked as Exts.B1 to B171, would certainly indicate this without much of a doubt; and therefore, their argument that they are entitled to run the Kumbakonam business under the protection of Section 12(3) of the Trademark Act, being "concurrent and honest" use, may perhaps be worthy of favour.
11. However, the real question in this appeal is not whether the functioning of the showroom at Kumbakonam is protected by the provisions of the Trademark Act, but whether the new showroom started by the respondent at Thiruvarur would also obtain the said benefit.
12. In support of the contention that the showroom at Thiruvarur is entitled to be operated under the statutory protection of FAO.No.34 OF 2020 10 'concurrent and honest use', Sri.Benoy Kadavan, vehemently submits that the same is only a branch of the one at Kumbakonam and that this has been started for the purpose of expansion of the respondent's existing business. He says that the declaration made by his client on record regarding the names and addresses of the partners of the firm, which is running both these showrooms, would clearly demonstrate that Thiruvarur shop is nothing but an extension of the Kumbakonam business and therefore, that the respondent is entitled to use the name 'Seematti' even for the said showroom.
13. When I hear Sri.Benoy Kadavan on the afore lines, I certainly see that there is a clear problem presented, which the Trial Court has not seen.
14. As I have indicated above, the Trial Court went extensively into the FAO.No.34 OF 2020 11 question whether the business at Kumbakonam would be protected - being a concurrent honest user of the Trademark 'SEEMATTI" - by assessing the various documents produced by the respondent to show that the said business commenced in the year 1986. However, there is nothing on record to show that Thiruvarur business commenced in the year 1986; and on the contrary, it is expressly conceded that the said showroom was inaugurated only on 14.10.2018. I notice that the suit was filed on 18.12.2018 and hence, there cannot be any question of delay in the appellant/plaintiff having approached the Court.
15. That said, the documents produced by the respondent before the Trial Court would certainly show, at least prima facie, that their business at Kumbakonam has been running from the year 1986; but this would be of no consequence in this case, unless FAO.No.34 OF 2020 12 the respondent is able to unequivocally establish that the business at Thiruvarur is only a branch, which is run through a stock transfer or such other method, of the Kumbakonam business.
16. However, the available evidence on record speaks to the contrary and indicates that the showroom at Thiruvarur is a new one, which is bing run as an independent establishment, though allegedly under the same management, which is operating the showroom at Kumbakonam. Of course, when I say this, I am also cognizant of the submissions of Shri.John Mathew, learned counsel for the appellant/plaintiff, that his client will be able to establish that these two businesses have been run by two different entities and not by the respondent and that these issues will also have to be considered by the Trial Court.
17. However, even without entering into FAO.No.34 OF 2020 13 the said consideration, I am certain that, as matters now stand, based on the available evidence, it is not possible for this Court to conclude affirmatively that the Kumbakonam and the Thiruvarur businesses are being run by the same entity, even though it is so asserted by Shri.Binoy K.Kadayan.
18. Before confirming my conclusions, I must also record that Shri.Binoy K.Kadavan has raised an issue regarding acquiescence and laches on the part of the appellant/plaintiff, stating that she was fully aware that the Kumbakonam business was being run from the year 1986 but took no action to stop the same; and thus that she has acquiesced the said business to flourish to the present level.
19. Be that so, I do not deem it necessary or requisite to consider this issue at all because, even if as regards the Kumbakonam business these contentions FAO.No.34 OF 2020 14 may be applicable; coming to the Thiruvarur business, it cannot be automatically held that the principles of acquiescence will apply, unless it is shown that this showroom is a constituent of the Kumbakonam business and merely its branch or such other, but not an independent entity. These issues have never been considered by the Trial Court, but it has concluded that since the appellant/plaintiff was aware of the Kumbakonam business being run by the respondent from the year 1986, the principles of acquiescence would apply against her and therefore, that she cannot seek any injunction against the new showroom at Thiruvarur. These conclusions, I am afraid, cannot be found to be worthy of the imprimatur of this Court at this stage, without a further evaluation and assessment.
20. The sum total of my observations FAO.No.34 OF 2020 15 above is that even though Shri.Binoy K.Kadavan would be completely justified in seeking that no injunction be granted against the respondent with respect to the business at Kumbakonam on the principles of acquiescence and such other, the same argument cannot lie against the business being run at Thiruvarur without further enquiry.
21. I am persuaded to the afore opinion, being guided by the various judgments of the Hon'ble Supreme Court with respect to the sanctity of Trademarks, including Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company and Another [(1997) 1 SCC 99]; Midas Hygiene Industries P. Ltd. and Others v. Sudhir Bhatia and Others [(2004) 3 SCC 90]; Ramdev Foods Products (P) Ltd. v. Arvindbhai Rambhai Patel and Others [(2006) 8 SCC 726]; M/s.Power Control Appliances and Others v. Sumeet FAO.No.34 OF 2020 16 Machines Pvt. Ltd. [(1994) 2 SCC 448]. These judgments have apodictically spoken about the various concepts and aspects involved in the Trademark Act, including acquiescence, laches and the sanctity of a Trademark and it has been the consistent opinion of the Hon'ble Supreme Court that when a person holds a Trademark and another person attempts to infringe it, grant of an injunction is the normal order and its denial must be the exception.
22. In fact, in Bengal Waterproof Ltd. (Supra), the Hon'ble Supreme Court has unequivocally declared as under as to how cause of action arises recurrently in the case of every alleged breach of trademark:
"Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of FAO.No.34 OF 2020 17 infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved."
23. Thus, an order of injunction can be denied only in exceptional circumstances - if the same so warrants - but otherwise, going by the strict provisions of the Trademark Act, any and every attempt to infringe a registered Trademark ought to be seen seriously by Courts and injunctions will normally have to be granted, so as to protect the sanctity of the Trademark.
24. In the case at hand, Shri.Binoy Kadavan concedes that the appellant/ plaintiff is in possession of the Trademarks as asserted by her; but his submission on this is that these have been obtained by the appellant illegally and incorrectly and therefore, that his client reserves the right to challenge the same appropriately.
FAO.No.34 OF 2020 18
25. However, this submission itself shows that the appellant/plaintiff is conceded to be in possession of the Trademark - whether it is legally sustainable or otherwise being uncontested as of now - and therefore, when the respondent started a new showroom at Thiruvarur, they certainly must be construed to be aware of the fact that the Trademark "SEEMATTI" is in the ownership of the appellant/plaintiff. No doubt, Shri.Binoy Kadavan submits that no document is produced on record to show that his client was aware of the Trademark in favour of the appellant/plaintiff at the time when the Thiruvarur showroom was opened, but the fact that such a Trademark was in existence from the year 2009 would, ipso facto, prima facie entitle the appellant/plaintiff to an order of injunction against its infringement by any person subsequent to FAO.No.34 OF 2020 19 it.
26. Even though I have recorded my tentative views in this matter as afore, I do not propose to make it final or affirmative, since I am firmly of the opinion that the Trial Court ought to have looked into all these aspects-particularly the difference in the nature of the available statutory protection, if any, between the Kumbakonam and the Thiruvarur businesses, from the angle of the admitted factum of the registration of the Trademark in favour of the appellant/plaintiff in the year 2009 - before it could have denied the injunctive relief as sought by the appellant/ plaintiff.
27. I am, consequently, of the view that the impugned order requires to be intervened with and I.A.No.7312 of 2018 in O.S.No.42 of 2018 to be reconsidered by the District Court, Ernakulam, taking into FAO.No.34 OF 2020 20 account the above factual and legal aspects; until which time, certainly, the respondent will require to be injuncted from using the name "SEEMATTI" in their new businesses or in their new showrooms, as had been in effect until the impugned order was issued.
Resultantly, this appeal is allowed and the impugned order of the District Court, Ernakulam, is set aside; with a consequential direction to the said Court to reconsider I.A.No.7312 of 2018 in O.S.No.42 of 2018, after affording necessary opportunity to both sides - including to adduce additional evidence and to produce additional documents - thus, leading to a final order thereon as expeditiously as is possible, but not later than four months from the date of receipt/production of a copy of this judgment.
FAO.No.34 OF 2020 21
In the meanwhile, until the I.A. is finally disposed of, the respondent is hereby injuncted from using the name "SEEMATTI", which is protected by the Trademark/s obtained by the appellant/ plaintiff, in their showroom at Thiruvarur, Tamil Nadu; however, clarifying that these directions will not apply to their business being run at Kumbakonam, which, in any case, is not a subject matter of this appeal.
In the nature of the singular
circumstances and facts noticed above, I
deem it appropriate not to make any order as to costs and to consequently, direct the parties to suffer their respective costs.
Before leaving, I reiteratingly clarify that my observations in this judgment are to be only taken as being tentative and prima facie and that the Trial Court will, therefore, reconsider I.A.No.7312 of 2018 FAO.No.34 OF 2020 22 in O.S.No.42 of 2018 untrammeled by it and based on the evidence to be led by the parties.
Sd/-
DEVAN RAMACHANDRAN JUDGE RP/MC