Bombay High Court
M/S.Bade Miya vs Mubin Ahmed Zahurislam on 25 March, 2011
Author: S.J.Kathawalla
Bench: S.J.Kathawalla
1
mst
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.386 OF 2011
IN
SUIT NO.292 OF 2011
M/s.Bade Miya, Mumbai and others Plaintiffs
VERSUS
Mubin Ahmed Zahurislam Defendant
Mr.Virendra Tulzapurkar, Sr.Counsel a/w H.J.Engineer i/by Gordhandas &
Fozdar for plaintiffs.
Mr.Asok Sraogi a/w Mr.Mehul Rathod i/by Neeraj Gupta for defendant.
CORAM : S.J.KATHAWALLA, J.
Date of reserving the judgment : 11th March 2011
Date of pronouncing the judgment : 25th March 2011
JUDGMENT :
1. In the present Notice of Motion the plaintiffs have prayed for an order and injunction restraining the defendant from in any manner using in relation to any business of manufacturing and selling or dealing in eatables the trading name "BADEMIYAN" or any other trading name consisting of the word "BADEMIYA" written in any script or the impugned trademark and the impugned logo mark as appearing in the photograph Exhibit-H to the plaint, or any other deceptively similar mark so as to infringe the plaintiffs registered trademark bearing number 641759 in Class-29 and the plaintiffs' registered trademark bearing number 1738175 in Class-42 and to further restrain the defendant from passing off their goods and/or services as those of the plaintiffs. By consent of the parties ::: Downloaded on - 09/06/2013 17:08:36 ::: 2 the Notice of Motion is at the ad-interim stage taken up for final hearing.
2. The plaintiff no.1 is a partnership firm of which the plaintiff nos.2 to 5 are partners. In the year 1947 Mohamed Yasin Nane Miyan, the father of the plaintiff nos.2 to 5 commenced the business of making and selling preparations of `Seekh Kababs' The Seekh Kababs were sold at a stall behind Hotel Taj Mahal at Coloba, Mumbai. The business is carried on under the name `Bademiya'' written within a band of parallel lines and a device of a structure with a logo consisting of the words `bsk' written in a circle with the two downward strokes of the letter `b' and `k' showing minarets. The photograph of the sign board of the plaintiffs' food stall is annexed as Exhibit-A at page 23 of the plaint.
3. The plaintiffs are the registered proprietors of the trademark "BADEMIYA'S" bearing registration number 641759 in Class-29 registered as of 3rd October 1994. The trademark is registered in respect of Meat, Fish, Meat Extracts, Dried and Cooked Fruits and Vegetable Kababs. The registration is renewed for a period of ten years from 3rd October 2008.
The trademark certificate and renewal certificates are annexed as Exhibits-G-1 and G-2 to the plaint at pages 43-A and 43-B.
4. The plaintiffs are also the registered proprietors of the trademark "BADEMIYA" bearing registration number 1738175 in Class-42 registered as of 29th September 2008. The trademark is registered in respect of providing Food and Drink, Temporary Accommodation, Medical, Hygienic and Beauty Care, Veterinary and Agricultural Services, Scientific and Industrial Research, Computer Programming, Services that cannot be classified in other classes. The trademark certificate is annexed as Exhibit-G-3 at page 43-D to the plaint.
5. According to the plaintiffs, over the years the plaintiffs' business has acquired tremendous goodwill and reputation amongst the members of Indian Public and Foreign Tourists. Several articles are published in ::: Downloaded on - 09/06/2013 17:08:36 ::: 3 newspapers, magazines and travel related journals. Some of the said articles are annexed as Exhibits-B-1 to B-10 at pages 24 to 37 of the plaint where the father of the plaintiff nos.2 to 5 and their business are prominently featured. The sales figures/turn over of the plaintiffs' business are annexed as Exhibits-D and D-1 at pages 39 and 39-A to the plaint which shows that the sales figures/turn over of the plaintiffs' business is increased from Rs.3,68,945/- (Rs.Three lakh sixty eight thousand nine hundred forty five only) in the year 1986 to Rs. 1,67,24,100/- (Rs.One crore sixty seven thousand twenty four thousand one hundred only) for the year 2009-2010.
6. According to the plaintiffs, in the first week of January 2011, the plaintiffs noticed an eating house situate at 7 Bungalows, Andheri, Mumbai bearing the name "Wah Bademiyan" (impugned trademark). The plaintiffs made inquiries and learnt that the defendant had recently started this eating house and adopted the impugned trademark. A photograph of the sign board and the menu card of the defendant's eating house are annexed as Exhibits-H and I at pages 44 to 46 of the plaint.
7. The plaintiffs through their advocate addressed a notice dated 12th January 2011 to the defendant and called upon the defendant to forthwith seize and desist from using the impugned trademark. The defendant by their advocate's reply dated 15th January 2011 did not dispute the plaintiffs' assertion of prior user and proprietorship of the registered trademarks. The defendant contended that he is carrying on the restaurant business after acquiring the relevant licenses and permission and that the defendant cannot be prevented from serving the said food items. It was further alleged that the defendant's impugned trademark is distinct and different from that of the plaintiffs' trademarks. Due to the defendant's refusal to stop the user of the impugned trademark, the plaintiffs' have filed the present suit restraining the defendant from infringing the plaintiffs' registered trademarks and to further restrain the defendant from passing off their goods and/or services as those of the ::: Downloaded on - 09/06/2013 17:08:36 ::: 4 plaintiffs' and for damages and has taken out a Notice of Motion therein for seeking the aforestated reliefs.
8. The defendant filed an affidavit-in-reply dated 15th February 2011 contending as follows :-
(a) that the plaintiffs' partnership firm is unregistered and hence the suit is not maintainable;
(b) that the plaintiffs' trademark is registered under Class-29 for goods and not under Class-42 for rendering services and as the defendant is rendering the services by providing food items, the plaintiffs' trademark is not infringed by using the impugned trademark;
(c) that the plaintiffs are carrying on an illegal business without any licenses;
(d) that the defendant's impugned mark is distinct and different from the plaintiffs' trademark;
9. At the time of arguments the defendant further contended that pursuant to the Notification No.G.S.R.428(E), dated 20th May 2010 published in the Gazette of India (`said Notification'), the 4th Schedule of the Trademark Rules, 2002 and more particularly Class-42 is amended and substituted by adding Class-42 to Class-45. It was contended that the plaintiffs have not applied for the purpose of reclassification of plaintiffs' existing registration under Class-42 and hence the plaintiffs cannot claim any benefit in respect of the existing registration.
10. Mr.Tulzapurkar, learned senior advocate appearing for the plaintiffs in response to the contention of the defendant that the plaintiffs' firm is unregistered and hence the suit is not maintainable, has submitted that the present suit is maintainable as the plaintiffs have filed this suit for ::: Downloaded on - 09/06/2013 17:08:36 ::: 5 enforcement of their statutory rights as enacted by the Trade Marks Act, 1999, and for protection of their common law rights. In support of this contention he has relied on the decision of the Apex Court in Haldiram Bhujiwala and another Vs. Anand Kumar Deepak Kumar (2003)3- SCC-250 wherein it is held that an unregistered partnership firm can maintain a suit for permanent injunction and damages and seek reliefs against infringement of a registered trademark and for passing off.
11. Mr.Tulzapurkar has further pointed out that the plaintiffs have obtained registration of their trademarks both for the goods under Class-29 and for providing services under Class-42. He has submitted that the services provided by the defendant are identical to the services provided by the plaintiffs namely serving food preparations and hence the defendant has committed infringement of the plaintiffs' registered trademarks by adopting the impugned trademark for carrying on the business of an eating house.
12. As regards the contention of the defendant that Class-42 is amended and substituted by adding Class-42 to Class-45 and the plaintiffs having not applied for reclassification of their goods and services cannot claim any benefit in respect of the existing registrations, Mr.Tulzapurkar submitted that the said Notification has merely shifted the description "services for providing food and drink ..." from Class-42 to Class-43. The plaintiffs rights as proprietor of a registered trademark (word mark) "BADEMIYA" in Class-42 for services for providing food and drink are not nullified by reason of the re-classification in the said Notification. The plaintiffs continue to be the registered proprietor of a registered trademark (word mark) "BADEMIYA" for services for providing food and drink. The plaintiffs are in the process of taking appropriate steps to bring their registered trademarks in conformity with the amended classification. In any event, the contention of the defendant regarding reclassification is totally irrelevant as far as the plaintiffs' claim for passing off is concerned and in any event the defendant is infringing the plaintiffs' ::: Downloaded on - 09/06/2013 17:08:36 ::: 6 registered trademark (label mark) "BADEMIYA" bearing registration no. 641759 in Class-29 as they are using the impugned trademark in respect of the goods covered by the registration in Class-29.
13. Mr.Tulzapurkar has further submitted that the contention of the defendant that the plaintiffs do not possess any license to carry on the business at their food stall situate at Coloba is false. He has submitted a compilation containing copies of the following licenses issued by different authorities to the plaintiffs under various provisions of law to carry on their business :-
(a) Registration Certificate of Shop and Establishment No.A00680/ Shop I since 30.4.1993;
(b) Health Licence No.761448370 and old licence No.A 63886 isssued by the Health Department of MCGB;
(c) Stall Licence Certificate No.1614, Old No.779, Code No.PR/V/190 issued by the MCGB;
(d) Certificate of Eating House dated 6.8.1996 issued by the Assistant Police Commissioner, Colaba Division;
(e) Rolling Shutter Licence No.761383859 and old licence no.A95877 issued under section 313 by the MCGB;
(f) MPFA Licence No.761524695 and Old No.A136627 issued by MCGB.
Mr.Tulzapurkar therefore submitted that the defendant has wrongly alleged that the plaintiffs are carrying on an illegal or unlawful business.
14. Mr.Tulzapurkar next submitted that it cannot be contended by the ::: Downloaded on - 09/06/2013 17:08:36 ::: 7 defendant that the impugned trademark is distinct and different from the plaintiffs' trademark. He submitted that the defendant has copied the entire registered trademark of the plaintiffs. The impugned trademark is visually and phonetically identical and/or deceptively similar to the plaintiffs registered trademark. The addition of the word "WAH" is of no significance as the same is indistinct and not easily noticeable. Further addition of the alphabet "N" to the word "Bademiya" is also of no significance. Relying on the decision of the Apex Court in case of Ruston & Hornsby Ltd. Vs. The Zamindara Engineering Co. 1969(2)-SCC-727 he submitted that the so called addition of the word "WAH" is no defence in an infringement action. He submitted that as regards the passing off action, the addition of word "WAH" is totally insignificant apart from same being not easily noticeable at all. The essential features of both the marks is the word "BADEMIYA" and since the same are identical and/or deceptively similar, there is every likelihood of confusion and suspicion in the minds of public at large considering the triple identity i.e. identity of the marks, goods and customers.
15. Mr.Tulzapurkar further submitted that since the plaintiffs' marks are registered, the defendant is deemed to have notice of the same and therefore, adoption of the impugned trademark by the defendant is dishonest and hence no equities lie in his favour. In support of his submission he relied on a decision of a Division Bench of this Court in case of Bal Pharma Ltd. Vs. Centaur Laboratories Pvt. Ltd. 2002(24)- PTC-226. He further submitted that the defendant in his reply affidavit dated 15th February 2011 has not disputed the plaintiffs' assertion of prior user and proprietorship of the registered trademarks. There is no explanation given by the defendant justifying the adoption of the impugned trademark. No mention is made of the date of user or the turn over of the defendant.
16. Mr.Tulzapurkar submitted that the plaintiffs have made out more than a prima facie case for grant of interim reliefs. The refusal of grant of ::: Downloaded on - 09/06/2013 17:08:36 ::: 8 interim relief will cause irreparable loss, harm and injury to the plaintiffs which will be incapable of being compensated monetarily. The balance of convenience entirely lies in favour of the plaintiffs and no equities exist in favour of the defendant. It is therefore submitted that the ad-interim orders be passed in terms of prayer clauses (a) and (b) of the Notice of Motion.
17. Mr.Saraogi, learned advocate appearing for the defendant has advanced the submissions which are set out in paragraphs 8 and 9 above. He also laid great stress on his submission that the word "BADEMIYA" is a word which is being used as a respect to a person in the Muslim community and that the word "BADEMIYA" is a very common word used in every Muslim family and as such, the same cannot be recognized only on the basis of the registration for a particular product as it is being used generally. He also submitted that various press cuttings relied upon by the plaintiff show that the appreciation is not in respect of any particular trademark or a name but the same is addressed as a matter of respect to a particular person i.e. to Mr.Mohamed Yasin Nane Miyan who had landed in the City of Mumbai and had started the said business. He submitted that the said articles also talk about the items being sold by the said Mr.Mohamed Yasin Nane Miyan and it has nothing to do with the reputation of the trademarks or the logo in respect of the business so carried. As regards the decision of the Apex Court in case of Ruston & Hornsby Ltd. (supra) cited by Mr.Tulzapurkar, Mr.Saraogi submitted that careful perusal of the said decision shows that the defendants therein had only added the word "India" and all other pattern etc. have been kept similar to the trademark registered. He submitted that in the present case, there is not only difference in the name but also difference in the activities, the logo and the design in respect of the sign board and the name in the trademarks of the plaintiffs and in view thereof the said decision of the Apex Court would not support the case of the plaintiffs in any manner whatsoever.
::: Downloaded on - 09/06/2013 17:08:36 ::: 918. I have considered the submissions advanced by the learned advocates appearing for the parties. As regards the first contention of the defendant that the plaintiff no.1 firm is unregistered and hence the suit is not maintainable, there is no doubt that the plaintiffs have filed the present suit for enforcement of their statutory rights as enacted by the Trademarks Act, 1999 and for protection of their common law rights. The said issue was specifically raised before the Hon'ble Supreme Court in the case of Haldiram Bhujiwala and another (supra) and was in detail explained and answered by the Supreme Court as follows :-
"8. The points that arise for consideration are :
(i) Whether Section 69(2) bars a suit by a firm not registered on the date of suit where permanent injunction and damages are claimed in respect of a trademark as a statutory right or by invoking common law principles applicable to a passing-off action?
(ii) ... ... ...
9. The question whether Section 69(2) is a bar to a suit filed by an unregistered firm even if a statutory right is being enforced or even if only a Common Law right is being enforce came up directly for consideration in this Court in M/s. Raptokas Brett Co. Ltd. v. Ganesh Property, [1998] 7 SCC 184. In that case, Majmudar, J. speaking for the Bench clearly expressed the view that Section 69(2) cannot bar the enforcement by way of suit by an unregistered firm in respect of a statutory right or a common law right. On the facts of that case, it was held that the right to evict a tenant upon expiry of the lease was not a right 'arising from a contract' but was a common law right or a statutory right under the Transfer of Property Act.
The fact that the plaint in that case referred to a lease and to its expiry, made no difference. Hence, the said suit was held not barred. It appears to us that in that case the reference to the lease in the plaint was obviously treated as a historical fact. That case is therefore directly in point. Following the said judgment, it must be held in the present case too that a suit is not barred by Section 69(2) if a statutory right or a common law right is being enforced.
10. The next question is as to the nature of the right that is being enforced in this suit. It is well settled that a passing off action is a common law action based on tort (vide) ::: Downloaded on - 09/06/2013 17:08:36 ::: 10 Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company and Anr., [1997] 1 SCC99.
Therefore, in our opinion, a suit for perpetual injunction to restrain the defendant not to pass-off the defendant's goods as those of plaints by using the plaintiffs' trade mark and for damages is an action at common law and is not barred by Section 69(2). The decision in M/s. Virendra Dresses Delhi v. M/s. Varinder Garments, AIR (1983) Delhi 482 and the decision of the Division Bench of the Delhi High Court in M/s. Bestochem Formulation v. M/s. Dinesh Ayurvedic Agencies and Ors., RFA (OS) 17/99 dt. 12.7.99) state that Section 69(2) does not apply to a passing-off action as the suit is based on tort and not on contract. In our opinion, the above decisions were correctly decided. (The special leave petition No. 18418 of 1999 against the latter was in fact dismissed by this Court on 28.1.2000.) The learned senior counsel for the appellants no doubt relied upon Ruby General Insurance Co. Ltd. v. Pearey Lal Kumar and Anr., [1952] SCR 501. That was an arbitration case in which the words "arising out of a contract" were widely interpreted but that decision, in our view, has no relevance in interpreting the words "arising from a contract"
in section 69(2) of the Partnership Act.
11. Likewise, if the reliefs of permanent injunction or damages are being claimed on the basis of a registered trade mark and its infringement, the suit is to be treated as one based on a statutory right under the Trade Marks Act and is, in our view, not barred by Section 69(2).
12. For the aforesaid reasons. In both these situations, the unregistered partnership in the case before us cannot be said to be enforcing any right "arising from a contract".
Point 1 is therefore decided in favour of the plaintiffs- respondents."
Thus, the Apex Court has held that an unregistered partnership firm can maintain a suit for permanent injunction and damages and seek relief against infringement of a registered trademark and for passing off and section 69(2) of the Partnership Act, 1932 does not bar such a suit. In view of the above, the contention of the defendant that the present suit filed by the unregistered firm is not maintainable cannot be accepted and the said contention is rejected.
19. As regards the contention of the defendant that the plaintiffs do not ::: Downloaded on - 09/06/2013 17:08:36 ::: 11 possess any licences or the permissions to carry on the business at the food stall situate at Colaba, Mumbai, the plaintiffs have tendered a compilation of licenses set out in paragraph 13 above. The said licences show that the plaintiffs are not carrying on the business unlawfully or illegally. An attempt has been made on behalf of the defendant to contend that the plaintiffs are not operating within the scope of the said licences. However, the said issues cannot be decided in this suit and it would be open to the defendant to raise the same before the appropriate authorities/forums.
20. As regards the contention of the defendant that Class-42 is amended, it is true that pursuant to the said Notification, the description "services for providing food and drink ..." is shifted from Class-42 to Class-43. However, prima facie I am of the view that until the plaintiffs apply for the purpose of re-classification of the plaintiffs existing registration in Class-42 and the same is considered and dealt with, the plaintiffs cannot be deprived of any benefit in respect of the existing registration. Mr.Tulzapurkar is correct in his submission that the plaintiffs rights as proprietor of a registered trademark (word mark) "BADEMIYA" in Class-42 for services for providing food and drink are not nullified by reason of re-classification in the said Notification. The plaintiffs continue to be registered proprietors of a registered trademark (word mark) "BADEMIYA" for services for providing food and drink until the plaintiffs take appropriate steps to bring their registration in conformity with the amended classification. In any event as submitted by Mr.Tulzapurkar the contention of the defendant regarding reclassification is fully irrelevant as far as plaintiffs claim for passing off is concerned. Again the said argument would not be of any assistance to the defendant if the Court is of the view that the defendant is infringing the plaintiffs' registered trademark (label mark) "BADIMIYA" bearing registration no.641759 in Class-29.
21. Mr.Saraogi, learned advocate appearing for the defendant ::: Downloaded on - 09/06/2013 17:08:36 ::: 12 submitted that the word "BADEMIYA" is a common word used by every Muslim family and as such the same cannot be recognized only on the basis of registration as a trademark. By this contention the defendant has sought to question the validity of the registration of the plaintiffs' trademark "BADEMIYA". The answer to this contention is contained in the judgment of this Court in Hindustan Embroidery Mills Pvt. Ltd. Vs. K.Ravindra and Co. (1974)76-Bom LR-146 wherein the learned Single Judge (Vimadalal, J.) pointed out that it is not the practice of this Court to consider the validity of the registration of a trademark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While the mark remains on the register (even wrongly), it is not desirable that others should imitate it. The decision in the case of Hindustan Embroidery Mills Pvt. Ltd. (supra) is followed by another Single Judge of this Court (B.N.Srikrishna, J.) in Poddar Tyres Limited Vs. Bedrock Sales Corporation Limited AIR-1993- Bombay-237 (paragraph 41). It will also not be out of place to mention here that on 12th March 2010 the defendant has also applied for registration of the trademark "WAH BADEMIYAN" in Class-42. I therefore see no substance in the above submission advanced on behalf of the defendant.
22. As can be seen from the photograph of the sign board of the food stall annexed as Exhibit-A to the plaint, the business of the plaintiffs is carried on under the name "BADEMIYA" written within a band of parallel lines and a device of a structure with a logo consisting of the words `bsk' written in a circle with the two downward strokes of the letter `b' and `k' showing minarets. As against this, the defendant is using the trademark by using the sign board at his eating house which prominently shows the name "BADEMIYA". The essential feature of both the marks i.e. of the plaintiffs and the defendant is the word "BADEMIYA". The addition of the alphabet `N' to the word "BADEMIYA" is of no significance. The word "Wah" allegedly written above the word "BADEMIYA" would also make no difference. Though the word "Wah" is indistinct and not easily noticeable ::: Downloaded on - 09/06/2013 17:08:36 ::: 13 as submitted by Mr.Tulzapurkar, the addition of that word is no defence in an infringement action. The Apex Court in Ruston & Hornsby Ltd.
(supra) has held that "there is a deceptive resemblance between the word "RUSTON" and the word "RUSTAM" and therefore the use of the bare word "RUSTAM" constituted infringement of the plaintiff's trademark "RUSTON" ...... If the respondent's trademark is deceptively similar to that of the appellant the fact that the word "INDIA" is added to the respondent's trademark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trademark."
The impugned trademark of the defendant is thus visually and phonetically identical or deceptively similar to the plaintiffs registered trademarks. The defendant is, therefore, guilty of infringing the plaintiffs' trademarks registered under Clauses-29 and 42 of the Trademarks Act, 1999.
23. Mr.Tulzapurkar relying on the decision of Bal Pharma Ltd. (supra) is correct in his submission that since the plaintiffs' marks are registered, the defendant is deemed to have notice of the same and therefore adoption of the impugned trademark by the defendant is dishonest and hence no equities lies in his favour. It is also true that the defendant has not disputed the plaintiffs assertion of prior user and proprietorship of the registered trademark.
24. From the material placed before this Court including the sales and turn over figures pertaining to the plaintiffs' business, there is no doubt that the plaintiffs' trade name and/or firm name and/or trademark "BADEMIYA" and/or the said logo mark have acquired distinctiveness and have come to be associated with the traders and the members of public exclusively. The defendant is using the trade name and/or firm name and/or trademark which is identical and/or deceptively similar to the plaintiffs trade name and/or firm name and/or trademark "BADEMIYA". Addition of the word "WAH" above the word "BADEMIYA" is totally ::: Downloaded on - 09/06/2013 17:08:36 ::: 14 insignificant apart from the same being not noticeable at all. Adding of an alphabet "N" to th word "BADEMIYA" is equally insignificant. The showing of some camels on the sign board under name "BADEMIYA" would also make no difference. As stated above the essential feature of both the marks is the word "BADEMIYA" and since the same are identical and/or deceptively similar there is every likelihood of confusion and deception considering the identify of the marks, goods and customers. The arguments sought to be made by the learned advocate for the defendant that the plaintiffs are operating from a stall and the defendant is operating from a restaurant and the food items sold by the plaintiffs and the defendant are allegedly not identical/similar would lend no assistance to the defendant.
The denials on the part of the defendant and his assertions to the contrary are baseless and completely lacks in substance.
25. In view of the above facts and circumstances I am of the view that the plaintiffs have made out more than a prima facie case for grant of interim reliefs. The refusal of interim reliefs will cause irreparable harm, loss and injury to the plaintiffs which are incapable of being compensated monetarily. The defendant has admittedly started his business by using the impugned names/marks in January 2011. The defendant has not disputed the plaintiffs assertion of prior user and proprietorship of the registered trademark. No equities exist in favour of the defendant. The balance of convenience lies entirely in favour of the plaintiffs. The Notice of Motion is therefore disposed of in terms of prayer clauses (a) and (b).
However, to enable the defendants to change its present trade name, the order passed herein shall come into operation after a period of two weeks from today.
(S.J.KATHAWALLA, J.) ::: Downloaded on - 09/06/2013 17:08:36 :::