Madras High Court
71 (1998) Dlt 1 (Satish Khosla vs M/S.Eli Lilly Ranbaxy Limited And ... on 18 August, 2011
Author: S.Rajeswaran
Bench: S.Rajeswaran
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 18.08.2011 CORAM THE HON'BLE MR. JUSTICE S.RAJESWARAN A.No.4304 of 2010 in C.S.No.117 of 2010 ORDER
Application No.4304 of 2010 has been filed to reject the plaint in C.S.No.117 of 2010.
2. This application has been filed by the 5th defendant in the above suit in C.S.No.117 of 2010.
3. C.S.No.117 of 2010 has been filed by the first respondent/plaintiff for a decree of permanent injunction against the defendants for infringment of the plaintiff's registered trade mark "MARDIA CABLES"; against the infringment of copy rights; passing off of their goods as the goods of the plaintiff; and a decree of delivery of all the infringed goods, materials, wrappers, dyes, blocks, etc., bearing the trade mark "MARDIA CABLES"; and for a decree of damages to the tune of Rs.20 lakhs and the suit is pending.
4. Pending suit, the 5th defendant in the suit filed the above application to reject the plaint on the following grounds:
a) that there is a suppression of material facts and the order of the Delhi High Court in I.A.No.7308 of 2006 in C.S.No.1352 of 2006, dated 06.03.2009, dismissing the application filed by the plaintiff for an order of injunction restraining the 5th defendant/the applicant herein from using the mark "MARDIA CABLES";
b) in view of that order, the present suit filed before this Court for permanent injunction is not maintainable; earlier, the plaintiff filed Criminal Complaint agianst this defendant and his dealers before the Commissioner of Police, at Chennai, suppressing the order of the Delhi High Court and got three of his dealers arrested. Later, the said Criminal Complaint was quashed by this Court as an abuse of process of law;
c) that the issue of ownership of the trade mark "MARDIA CABLES" is pending adjudication before the High Court, Delhi, in C.S.No.328 of 2006 filed by this defendant and the subsequent suit C.S.No.1352 of 2006, in the High Court, Delhi filed by the plaintiff/first respondent herein.
5. The case of the defendant is that the original trade mark "MARDIA CABLES" was registered only in the name of the plaintiff who was trading as 'M/s.MARDIA CABLES'. Thereafter, the plaintiff duly assigned the Trade Mark along with its good will to this defendant vide Assignment Deed dated 01.03.2002. Thereafter the plaintiff and this defendant filed an Application (TM-23) in the Trade Mark Registry and changed the name of the Registered owner to this defendant's name. Consequently, the trade mark 'MARDIA CABLES' was assigned to this defendant's favour, which was duly advertised in the Trade Marks Journal also on 01.04.2004. This defendant has also obtained registration of the trade mark 'MARDIA CABLES' in Class 7, 11 and 35 as they have plans of starting new products under the said brand name.
6. Whileso, the plaintiff trading through his sole Proprietorship concern 'MARDIA CABLES', started using the trademark/label 'MARDIA CABLES' bearing the same artistic features as used by this defendant, during September and October 2005. This is a clear infringment of the trade mark 'MARDIA CABLES' of this defendant. Hence, the suit C.S.No.328 of2006 was filed by this defendant before the Delhi High Court for permanent injunction against the first respondent/plaintiff herein. An application in I.A.No.1941 of 2006 for an interim injunction against the plaintiff was also filed.
7. As a counterblast, the first respondent/plaintiff herein filed C.S.No.1352 of 2006 for similar reliefs before High Court, Delhi. The first respondent/plaintiff had fabricated the Assignment Deed and made an application before the Trade Mark Registrar under TM-23 for entering his name as the Registered Proprietor for the mark 'MARDIA CABLES'. This defendant issued a lawyer's notice to the trade mark Registry stating that the mark 'MARDIA CABLES' has not been assigned to by this defendant to the plaintiff and the documents filed by the plaintiff are all fabricated and requested the Registry not to proceed with the registration under TM-23 filed by the plaintiff. The said application was filed under TM-23 under Section 45 of the Trade Marks Act, 1999. But despite the objections raised by the defendant the said application filed by the plaintiff was allowed ex-parte on 14.06.2007. The said order passed by the Trade Mark Registrar is in gross violation of Section 45 and without jurisdiction. No notice was served on this defendant about the hearing date and the order was passed without hearing this defendant. Thus, there is a clear violation of Principles of Natural Justice by the Registrar of Trade Marks in passing orders on 14.06.2007.
8. In fact, he states that the application under TM-23 has to be signed by the assignor and the assignee or their authorised agent. Whereas in this case, TM-23 filed by the plaintiff does not bear the Signature of this defendant. However, this defendant has challenged the order dated 14.06.2007 before the Intellectual Property Appellate Board in OA/21/2009/TM/CH and the same is pending adjudication.
9. In the meantime, the suits pending in the Delhi High Court were clubbed together and the interim applications filed in both the suits were taken up for hearing and a common order was passed on 06.03.2009 dismissing both the applications with an observation that both the parties have not made out a case for grant of an interim order. Hence, both the parties were not injuncted from using the mark until the suits are finally decreed after trial.
10. Whileso, disregarding this order passed by the Delhi High Court, the first respondent/plaintiff has filed the above suit before this Court, only to cause an apprehension in the minds of the dealers in the market. Thus, the present suit is a frivolous one and it is an abuse of process of law. The plaintiff has not even challenged the orders of the Delhi High Court, but, chosen to file the present suit which is actuated by malafides. In fact the suit has been filed after five years after the dispute on the ownership of trademark 'MARDIA CABLES' arose, which clearly exhibits their malafide intention. Hence, the suit is liable to be rejected, as one barred by law.
11. The learned counsel appearing for this defendant/applicant herein would rely upon the following judgments in support of his contentions:
1.71 (1998) DLT 1 (Satish Khosla vs. M/s.Eli Lilly Ranbaxy Limited and another)
2.AIR 1997 SC 2421 (T.Arivandandam vs. T.V.Satyapal and another)
3.AIR 2000 BOM 34 (SNP Shipping Services Private Limited and others vs. World Tanker Carrier Corporation and another)
4.AIR 1998 SC 1297 (K.K.Modi vs. K.N.Modi and others)
5.AIR 2000 BOM 161 (M/s.Crescent Petroleum Limited vs. M.V."MONCHEGORSK" and another)
12. The first respondent/plaintiff has filed a counter affidavit opposing this application. The case of the first respondent/plaintiff is as follows:
That the plaintiff/first respondent is the owner of the trade mark 'MARDIA CABLES'. There is no suppression of any material facts. In fact, the application filed by this defendant/applicant before the Delhi High Court is also dismissed on 06.03.2009 along with the plaintiff's application. But even after that, the 5th defendant started selling the products in Chennai to the other defendants. Therefore, a Criminal Complaint was given before the Police in Madras and a case in Cr.OP.No.569 of 2009 was registered. Challenging the Criminal action, this defendant preferred a Criminal Original Petition No.27528 of 2009 before this Court and the same was allowed by the order dated 08.07.2010. As against that order, the respondent/plaintiff filed SLP in Criminal No.6211 of 2010 before the Hon'ble Supreme Court and by order dated 09.08.2010, all the proceedings of this Criminal Court have been stayed. Thus, the matter is pending before the Hon'ble Supreme Court at that stage.
13. It is further stated that the two suits pending before the Delhi High Court, one filed by the 5th defendant/the applicant herein and the other filed by the first respondent/plaintiff are different from the present suit filed before this Court. It is the specific case of the plaintiff that in the year 2006, there was re-assignment in his favour by this defendant and by the order dated 14.06.2007, the Trade mark Registry has re-assigned the trade mark in his favour. That order passed by the Trade Mark Registry has been challenged by the applicant herein by way of an Appeal before the Intellectual Property Appellate Board in OA/21/2009/TM/CH. While denying the allegation that the suit in C.S.No.1352 of 2006 filed by this plaintiff before the Delhi High Court is a counterblast to C.S.No.328 of 2006 filed by the applicant/5th defendant, the plaintiff would submit that only when he got the summons and notice in A.No.1941 of 2006, he realised that the applicant/5th defendant, after re-assigning the trade mark to the plaintiff, has filed the suit in C.S.No.328 of 2006 before Delhi High Court. Therefore, the contentions made by the applicant/5th defendant to the contrary are false and misleading. Further, it is stated by the plaintiff that when the Trade Mark Registry has passed an order in favour of the plaintiff re-assigning the trade mark in his favour, which is pending adjudication before the Appellate Authority, it is not open to the applicant/5th defendant to re-agitate the same before this Court. The applicant/5th defendant should address his grievance, if any, only before the Appellate Forum, wherein the appeal is pending and not before this Court. Therefore, as on 18.06.2010, the trade mark is in favour of the applicant/plaintiff and therefore, the same cannot be interfered with by any one, much less, the 5th defendant/the applicant herein.
14. Further, from the applicant's own document, it is seen that from the month of November 2009, he has been infringing the trade mark within the territorial jurisdiction of this Court. Hence, as a owner of the trade mark, the above suit has been filed by the plaintiff as each infringement gives rise to a new cause of action. Further, the details about the suits pending in the Delhi High Court have been stated in the plaint and there is no suppression of any material facts as alleged. Therefore, the suit is not barred by any law and it does not suffer from want of cause of action. The plaintiff has made out a case of infringement and there is a cause of action to file the suit. Hence the application filed by the applicant/5th defendant for rejecting the plaint has no merits and the same is to be dismissed.
15. I have heard the learned counsel appearing for the applicant and the learned counsel appearing for the respondents. I have also gone through the documents available on record.
16. After going through the entire records and after hearing the arguments of the learned counsel on either side, I am of the considered view that the suit filed by the plaintiff in C.S.No.117 of 2010 before this Court is certainly an abuse of process of law, being indulged in by the plaintiff and therefore, the same is to be dealt with ironhand.
17. It is settled law that to reject a plaint, only the plaint averments alone are to be considered and at the same time to reject a plaint or to dismiss the suit on the ground of abuse of process of law, then, the Court can consider the undisputed materials even if they do not find a place in the plaint or in the plaint documents.
18. It is true that the plaint in the present case refers to both the previous suits filed by the parties in the Delhi High Court, namely C.S.No.328 of 2006 and 1352 of 2006. In paragraph 19 of the plaint it is stated that they filed C.S.No.1352 of 2006 before the Delhi High Court, but, the same came to be dismissed for non-prosecution and an application for restoration has been filed and the same is pending before the Delhi High Court. It is further mentioned in paragraph 27 of the plaint that the proceedings in C.S.No.328 of 2006, which is a false and frivolous suit filed by the defendant against the plaintiff and C.S.No.1352 of 2006 filed by the plaintiff before the same High Court are based on different set of cause of action between the parties as it stood at the time of filing the said suits. It is stated that the instant suit is based on different set of cause of action i.e., the infringement and violation of plaintiff's rights by all the defendants.
19. With these averments with regard to the previous suits, the present suit has been filed by the plaintiff. However, it is silent on the Interlocutory Applications filed by both the parties and the common order dated 06.03.2009 passed by the Delhi High Court, dismissing the Injunction Applications filed by both the parties.
20. When the present application has been filed by the 5th defendant, under Order VII Rule 11 CPC, the plaintiff filed a counter stating that 'much water has flown under the bridge after filing the previous suit and therefore, nothing could be held against them in maintaining the present suit which was filed on the basis of a different set of facts and a new cause of action.
21. It is stated that as the owner of the Trade Mark, he is entitled to take action against each and every infringement separately or jointly before the different courts since each infringement gives rise to a new cause of action.
22. The explanation given by the plaintiff in the counter affidavit for filing the present suit without disclosing the earlier common order passed by the Delhi High Court is hardly sufficient and in fact after going through the order passed by the Delhi High Court, I have no hesitation in holding that this litigation is nothing but a sheer abuse of process of law, a typical example of forum shopping and it also amounts to re-litigating the very same issue.
23. At this stage, it is useful to refer to the common order passed by the Delhi High Court in interim application on 06.03.2009.
24. A perusal of the common order makes it very clear that both the applications namely I.A.No.1941 of 2006 in C.S.No.328 of 2006 and I.A.No.7308 of 2006 in C.S.No.1352 of 2006 were taken up together and a common order was passed dismissing both the applications. For better appreciation, Paragraphs 15 and 16 of the order dated 06.03.2009 are reproduced below:
"15. On examining the pleas raised on both sides, I find that neither party has been able to set up a clear prima facie case in its favour. The nature of the disputes raised indicate that the same can only be resolved after evidence is led in the course of trial. For the moment, all that can be said is that the trademark/label 'MARDIA CABLES' had initially been assigned in favour of Mr.Kamlesh Jain. The assignment had been recorded in the registers of the Trademarks Registry and therefore, as long as that assignment holds, Mr.Kamlesh Jain would be entitled to use the said trademark/label. To decide as to whether the registration stands in favour of Mr.Kamlesh Jain even after the re-assignment deed of May, 2005 would require the leading of evidence, in particular because Mr.Kamlesh Jain has denied that the said document bears his signaure. Of course, Mr.Ramesh Mardia has obtained the opinion of a handwriting expert, but, at this stage, that opinion cannot be relied upon without such expert having been subjected to cross-examination. It may also be noted that the order dated 14.06.2007 passed by the Deputy Registrar of Trademarks is an ex parte order and is also the subject matter of an appeal. At the same time, one has also to notice the fact that Mr.Ramesh Mardia does have another registration in his name in respect of the word mark 'MARDIA CABLES' under registration No.1161248 in Class-9 in respect of electrical cables, electrical wires and accessories w.e.f. 24.12.2002. The registration certificate in respect thereof was granted on 17.03.2005.
16. In view of the above, it is clear that at this prima facie stage, neither Mr.Kamlesh Jain nor his partnership concern Koxan India on the one hand nor Mr.Ramesh Mardia on the other have been able to establish a case for claiming exclusivity over the use of the trademark/label 'MARDIA CABLES'. In these circumstances, I feel that neither party is entitled to an ad interim injunction. Consequently, both the applications are dismissed. There shall be no order as to costs."
25. From the above, it is very clear that the Delhi High Court took a prima facie view that Mr.Kamlesh Jain, the applicant in the above application i.e., A.No.4304 of 2010 and the 5th defendant in the present suit is entitled to use the said Trade Mark/Label. To decide as to whether the registration stands in favour of Mr.Kamlesh Jain/the applicant herein even after the re-assignment deed of May 2005 would require the leading of evidence, in particular, because Mr.Kamlesh Jain/the applicant herein denied that the document bears his signature. The Delhi High Court referred to the opinion obtained by Mr.Ramesh Madia, the plaintiff in the present suit and held that at this stage that opinion could not be relied upon when such Experts have been subjected to cross-examination. Consequently, the injunction applications of both the parties were dismissed by the Delhi High Court on 06.03.2009.
26. It is not in dispute that this order has not at all been challenged by the plaintiff herein and without doing so, the present suit was filed by the plaintiff on 04.02.2010 with a similar interim order of injunction which was already rejected by the Delhi High Court on 06.03.2009. The conduct of the plaintiff is undoubtedly amounts to a case of abuse of process of law and if such frivolous and dangerous litigations are not nipped in the bud, people like the plaintiffs would be encouraged to file one suit one after another in different states before different High Courts contending that each infringement gives rise to a new cause of action.
27. Hence, I have no hesitation in holding that the plaintiff is guilty of abuse of process of law and he is also guilty of suppressing the vital and material facts which are very relevant for the purpose of admitting a case or granting an interim order in that case. The plaintiff cannot take umbrage in stating that a reference was made about the previous litigation in the plaint. Such a passing reference in a plaint without actually disclosing the real facts, which accompanied the earlier filing of the cases, will amount to selective suppression of facts, which in my opinion, is as bad as suppression of the entire facts, if not worse.
28. From the materials available and the facts narrated, it is abundantly clear that having suffered an adverse order before the Delhi High Court and instead of challenging the same in a higher forum in a manner known to law, the plaintiff ventured into filing a vexatious suit before this Court and sought for a similar injunction which was earlier rejected by the Delhi High Court.
29. Hence, I have no hesitation in holding that the present suit is an abuse of process of law and the same is to be struck off. Accordingly, the plaint in C.S.No.117 of 2006 is rejected with cost.
30. Even though a number of decisions have been relied on by both the learned counsel appearing for the parties, I am not referring to any one of them as in this case the abuse of process of law is writ-large on the facts themselves and therefore, I have not referred to any one of those decisions.
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