Bombay High Court
Ipca Laboratories Ltd. vs Savita Pharmaceuticals Pvt. Ltd. on 26 July, 2002
Equivalent citations: 2002(6)BOMCR696, 2002(4)MHLJ407
ORDER S.J. Vaziftdar, J.
1. The Plaintiff filed this suit to restrain the Defendant from infringing its copyright in respect of its cartons, passing off its goods as the goods of the Plaintiff and for damages. The Plaintiff has also sought to restrain the Defendant from using, in relation to any medicinal preparation, the label and/or cartons so as to pass off its goods as the goods of the Plaintiff. The Notice of Motion seeks interim reliefs in terms of the aforesaid reliefs.
2. The Plaintiffs case is that the Defendant manufactured, sold and distributed pharmaceutical products under the trade mark "APPETONE" with a label and in packing and cartons with art work identical to that of the Plaintiff. Exhibits "A1" "A2" and "A3" to the plaint are copies of the Plaintiffs label and packing. On the said label is the Plaintiffs trade mark "APPETONE". The trade mark and the packing used by the Defendant are at Exhibits "C1" "C2" and "C3" of the plaint. It is not necessary to describe the same as the trade mark and the packing used by the Plaintiff and the Defendant are identical. A finding as to whether one is deceptively similar to the other is therefore not necessary. The question before me is whether the Plaintiff is entitled to the injunctions prayed for.
3. The facts are disputed in almost every other material aspect by the parties. Mr. Birendra Saraf, the learned counsel appearing on behalf of the Plaintiff however submitted that even assuming that the Plaintiff was not the proprietor of the mark and the artistic work and had pirated the same from the third party it was nevertheless entitled to interlocutory reliefs against the Defendant as it was a prior user thereof in India.
4.It is necessary therefore to first set out the rival cases.
The Plaintiffs case is that in or about August, 1994 the Plaintiff coined, conceived and adopted and thereafter started using the trade mark consisting of the word "APPETONE" for use in respect of medicinal and pharmaceutical preparations. In September, 1994 the Plaintiff got prepared a label, carton, open packet (mono) and a bigger carton for bigger packing containing artistic works, design, layout and getup. The cartons contained the original artistic works, designs, layouts and a peculiar schematic arrangement of various features, colour schemes and getup. By virtue of the originality contained in the artistic works of the labels and cartons, a copyright exists and vests in the Plaintiff, who got the same prepared by an artist one Avinash Anant Raje under a contract of employment with the Plaintiff. The Plaintiffs are therefore the owners of the copyright, exclusively entitled to use and reproduce the same.
It would be convenient at this stage to refer to a one page affidavit of Avinash Anant Raje, filed on 21st June, 2002. Only one of the paragraphs is relevant and it reads as under :
"In or about September 1994, I prepared the art works of label, monocarton and bigger carton for multiple packing of product bearing the name APPETONE. Copies (reprinted) of the photograph of the said APPETONE label, mono carton and multiple packing carton are annexed hereto and collectively marked as Exhibit "A"
hereto. I say and submit that the said cartons and labels were originally designed and created by me for the Plaintiffs and contains the original artistic works, lay out, color scheme and get up and the copyright of the same exclusively vest with the Plaintiffs."
I will comment on this affidavit later. At this stage, it is sufficient to notice that the affidavit is dated 21st July, 2002 i.e. only three days before the Notice of motion was heard. There is no dispute that the Plaintiff commenced use of the trade mark and the labels/cartons in September/October, 1994.
5. The Plaintiff applied for and obtained a licence from the Licensing Authority to manufacture for sale multi vitamins. The licence was originally in force from 18th July, 1996 to 31st December, 1997 and has thereafter been renewed from time to time, at least till 31st December, 1999.
6. On 29th June, 1996 two "Loan Licence Agreements" were entered into by the Plaintiff - one with Gelsules Medicap Pvt. Ltd. and the other with the Defendant. The agreement with Gelsules Medicap Pvt. Ltd. was referred to on the basis that the Company is a sister-concern of the Defendant. The Defendant denies this. As the same is not relevant to the disputes between the parties, it is not necessary for me to consider this aspect.
Under the Loan Licence Agreement, the Defendant agreed to process raw-material and packing material supplied by the Plaintiff, into the products of the standard and specifications given to it by the Plaintiff and pack them in bulk or in packs as directed by the Plaintiff. The Plaintiff was to send the raw-material, bottles, containers and other packing materials, cartons, labels, indication slips, inserts and other literatures required for the purpose of manufacturing and packing the products. Clauses 4(xii) and 6(c) read as under :
4(xii)"Not to claim any right to or under any of the trade marks, patents or processes connected with any of the Products or manufacture and/or sell any Products under a trade mark connected with the Products or under a name phonetically or otherwise similar to trade names connected with the Products "
6(c)"GELSULES shall have the right to use and emboss the trade marks on the said Products solely for the purpose of processing/packing the Products pursuant to this Agreement. This Agreement does not give GELSULES any right to the said trade marks and the property in any of the material whatsoever on which the said trade marks shall be used and the said right shall vest and always deemed to be vested with IPCA."
At this stage it would be sufficient only to notice that neither of the clauses mentions that the trade marks, patents or processes belonged to the Plaintiff.
Schedule II to the agreement with "GELSULES" sets out "APPETONE"...Multivitamin Capsules", as one of the products to be manufactured. Schedule II to the agreement with the Defendant does not mention "APPETONE" as one of the products to be manufactured. However, in addition to the products mentioned are to be found in Schedule II, the words, "Such other products as may be communicated by "IPCA" (Plaintiff) and agreed by "SAVITA" (Defendant) from time to time". I mentioned this aspect only to complete the narration as apparently the Defendant did manufacture "APPETONE" multivitamins for the Plaintiff under the agreement.
Mr. Saraf further stated that the Plaintiff enjoyed the trust and confidence of the trade and the public in respect of the quality of its goods and that the cartons and labels thereof exclusively connote the products to be those of the Plaintiff. The Plaintiff had sold the said goods under the mark "APPETONE" aggregating to over Rs.75 lacs.
7. In May,1998 the Plaintiff came across similar products sold by the Defendant under the identical trade mark viz. "APPETONE" with the same labels and in the same carton. I have said earlier that the artistic work, design, layout, colour scheme and trade mark used by the Plaintiff and the Defendant are almost identical. The only question is, whether the Plaintiff is entitled to the reliefs claimed by it despite the same.
8. The Plaintiff served a notice dated 4th June, 1998 through its advocate on the Defendant. The Defendant, by its advocates letter dated 1st July, 1998 called for certain information and stated that on receipt thereof, a detailed reply would be sent. The Plaintiff, by its advocates letter dated 27th July, 1998 furnished the requisite information. The Plaintiffs advocate sent a reminder dated 19th July, 1999 in response to which, the Defendants advocate by their letter dated 9th August, 1999 stated that they had not received any reply to their letter dated 1st July, 1998. The Plaintiffs advocates, under cover of their letter dated 19th August, 1999 forwarded a copy of the said letter dated 27th July, 1998. On 21st October, 1999 the Plaintiff filed this suit. Mr. Shah, the learned counsel appearing on behalf of the Defendant did not deny that the artistic work, design, layout, and trade mark used by the Defendant on its products and containers was almost identical that of the Plaintiff.
9. The Defendants case however is that the trade mark containing the word "APPETONE" was coined and adopted by JUSTEEN PHARMACEUTICALS LTD. (hereinafter referred to as JUSTEEN ) a Nigerian Company and not by the Defendant. The Plaintiff had also copied in its entirety the artistic work created by "JUSTEEN". The Defendants case is that the Plaintiff never sold or marketed its goods in India but only exported them under an agreement with "JUSTEEN". The Plaintiff manufactured and exported the products for and on behalf of the "JUSTEEN" under an agreement between "JUSTEEN" and the Plaintiff dated 4th October, 1994. The agreement recites that the Plaintiff had agreed to manufacture the product for "JUSTEEN" under the brand name of "APPETONE" which belonged to "JUSTEEN" and that "JUSTEEN" had agreed to provide the art work for its products to the Plaintiff under the following conditions :-
"1. IPCA WILL NOT AND EXPORT APPETONE MULTIVITAMIN CAPSULES TO ANY OTHER IMPORTER OTHER THAN JUSTEEN PHARMA.
2. IPCA HAVE NO RIGHT ON THE BRAND NAME OF APPETONE AND ON THE ABOVE MENTIONED ARTWORK.
3. IPCA WILL NOT REGISTER THE BRAND NAME APPETONE FOR THEIR MULTIVITAMIN PRODUCT OR REGISTER THE COPYRIGHT FOR THE SID ARTWORK OF APPETONE IN INDIA OR ANY OTHER COUNTRY.
4. IPCA WILL NOT OBJECT, IF JUSTEEN PHARMA GET THE MULTI-VITAMIN CAPSULES UNDER THE BRAND OF APPETONE AND WITH THE SAID ARTWORK IN FUTURE OR SIMULTANEOUSLY FROM ANY OTHER SUPPLIERS. HOWEVER JUSTEEN PHARMA HAVE AGREED TO TAKE THE DELIVERY OF ALL THE ORDERS WHICH HAVE BEEN ALREADY PLACED WITH IPCA BEFORE GETTING APPETONE WITH THE SAID ARTWORK FROM OTHER SUPPLIERS, PROVIDED IPCA INFORM JUSTEEN PHARMA ABOUT THE PENDING ORDER IF ANY WELL ADVANCE."
The Defendant therefore denied that the Plaintiff was the proprietor of the trade mark and the copyright in the said work. Mr. Shah therefore submitted that the Plaintiff was not entitled to any reliefs against the Defendant. The Defendant therefore denies that the Plaintiff is the owner of the copyright in the artistic work of the labels and cartons manufactured by the Defendant. The Defendant denies that the Plaintiff was exclusively entitled to use and/or cause to be used and reproduced the same and that no other person can use or reproduce the same without the Plaintiffs licence or consent or permission. Mr. Saraf submitted in the alternative that even assuming that "JUSTEEN" and not the Plaintiff was the proprietor of the trade mark and the artistic work, the Plaintiff being a prior user qua the Defendant was entitled to the reliefs claimed.
10. Thus, two questions arise for my consideration
- one on facts and the other on law.
11. The Plaintiff has come to the Court with the specific case that it conceived and adopted the trade mark "APPETONE" and that it got prepared a label, carton (mono) and a bigger carton for multiple packing, containing original artistic work, design, layout and getup.
In the plaint, there was no material to substantiate this claim. There is no plausible explanation for the manner in which the word "APPETONE" was devised. There is however a statement that the Plaintiff got the same prepared by an artist, one Avinash Anant Raje, who was under a contract of employment with the Plaintiff. On this basis, it is averred that the Plaintiff is the owner of the copyright. In the Notice of Motion, which was filed on 21st October, 1999, the Plaintiff did not file the affidavit of Avinash Anant Raje. I did find it surprising that the affidavit in reply was filed only on 21st March, 2002. However, that is explained by the Defendant in paragraph 3 of the affidavit in reply. I shall deal with this aspect later in a different context. The Defendant in its reply made a point that no affidavit of Avinash Anant Raje has been filed by the Plaintiff. It was only thereafter that the Plaintiff filed the affidavit of Avinash Anant Raje dated 21st June, 2002. This, by itself, I am not inclined to hold against the Plaintiff. However, it is important to note that in the affidavit, the relevant part of which I have extracted earlier, apart from the bare averments and annexing thereto copies of the label and cartons, there is nothing. The affidavit in reply raises a serious dispute about the Plaintiff being the proprietor of the copyright. The Defendant has denied that the Plaintiff conceived and created the artistic work. The affidavit in reply contains various details to substantiate the Defendants case. In these circumstances, I would have expected the artists affidavit to contain details to substantiate his statement. There is no material in the form of even a reference to the original material or working drawings or drafts. There is not even a statement that he does not possess that today. What is even more important is that there is no explanation from the Plaintiff as to how it conceived the trade mark consisting of the word "APPETONE". It is for the Plaintiff to prove at least prima facie, that it is the proprietor of the trade mark and the owner of the said copyright.
12. In support of its contention that the Plaintiff is not the proprietor of the trade mark or the said copyright, the Defendant placed reliance on the agreement dated 4th October, 1994 extracted earlier. The agreement inter-alia provides that the Plaintiff has no right in the brand name and the art work ; that the Plaintiff will not register the same in any country, including India and that the Plaintiff would also not object to "JUSTEEN" having the products manufactured by other suppliers under the same brand name and with the same art work in future or simultaneously.
13. The Plaintiff denied having entered into this agreement. According to the Plaintiff the signatory on its behalf one Jos Mathew, Manager Market Development did not have any authority to execute the agreement and that the agreement was fraudulently created after he left the Plaintiffs employment.
14. Prima-facie I find that the agreement is genuine. The surrounding circumstances indicate that it was entered into and acted upon.
15. There is nothing to suggest that Jos Mathew did not have the authority to execute the agreement nothing other than a bare averment. It is not suggested that there was any animosity between the Plaintiff and Jos Mathew. If by the pleading the Plaintiff meant that the signature of Jos Mathew was forged, it is pertinent to note that there is no affidavit from Jos Mathew saying so. His not being in the Plaintiffs employment does not prevent the Plaintiff from obtaining his affidavit.
16. The Defendant has relied upon JUSTEENS Application dated 18th October, 1994 for registration of the trade mark as "APPETONE SUPER MULTIVITAMIN CAPS" in Nigeria. (The words Multivitamin Caps are below the words "APPETONE" in a smaller and lighter font along with the logo consisting of the letters "J" and "P" overlapping each other in respect of all goods in clause 5). The Federal Ministry of Commerce and Tourism, Commercial, Law Division, Trade Mark Section, Nigeria, acknowledged receipt of the JUSTEENS application by its acknowledgment form dated 26th October, 1994. "JUSTEEN" was informed that its application was receiving attention. The Revenue Collector issued a receipt dated 26th October, 1994 acknowledging receipt of the fees for registration from "JUSTEEN". By an acceptance form, also dated 26th October, 1994, the Federal Ministry informed "JUSTEEN" the acceptance number and stated that its application would in due course be advertised in the Trade Mark Journal in Nigeria. Lastly, the Defendant relied upon a certificate of a Notary of Nigeria one Eddie Onyeka, a Solicitor and Notary Public, certifying that he had seen the originals of the documents and confirmed that the above application and the acceptance thereof was in accordance with Nigerian Law. He also certified that the said documents were true, correct and in accordance with the official record with the Trade Mark Registry in Nigeria.
17. I have no reason to disbelieve the fact that the above applications were made. Nor do I have reason to believe, at least at this stage, that the documents are not genuine. That being the case, I must accept that "JUSTEEN" was the owner of the trade mark sometime prior to 1984. It would be noticed at this stage that the Plaintiffs artists affidavit was filed on 21st June, 2002 i.e. after the Plaintiff was served a copy of the affidavit in reply dated 21st March, 2002. It is not without significance that the artist in paragraph 2 of his affidavit states that he prepared the art work in September, 1994. In view of these circumstances, and specially in view of the fact that the artist has disclosed no particular whatever, I am not inclined to believe the affidavit of the artist.
18. The Defendant has also annexed to its affidavit in reply, a copy of a carton containing the product "APPETONE" sold by "JUSTEEN". The carton states that the same was "manufactured for JUSTEEN PHARMACEUTICALS LTD., Levas, Nigeria" and that it was manufactured in September, 1992. Mr. Saraf submitted that there is nothing to suggest that the carton was genuine. On the contrary, the surrounding circumstances indicate that the same is genuine. I find nothing to suggest that the carton is not genuine.
19. The invoices produced by the Plaintiff indicate that it sold the products only to "JUSTEEN". The invoices further indicate that even the products manufactured and packed by the Defendant under the Loan and Licence Agreement dated 30th August, 1996 were exported by the Plaintiff to "JUSTEEN". Though the Plaintiff has stated that it also sold the products to another customer viz. Tavon International, U.K. Ltd., there is not a single invoice to prove the same. Mr. Saraf stated that it was not necessary for the Plaintiff to sell the said products to anyone else as in "JUSTEEN" the Plaintiff had a captive market.
20. The fact that the Plaintiff sold its products only to "JUSTEEN" is in consonance with clause 1 of the agreement dated 4th October, 1994 under which the Plaintiff agreed that it would not manufacture and/or export the said products to any importer other than "JUSTEEN". This, in fact, indicates that the agreement dated 4th October, 1994 was entered into between "JUSTEEN" and the Plaintiff.
21. The Plaintiff made an application for registration of the trade mark "APPETONE" on 31st March, 1998. The application is pending. Mr. Saraf submitted that no reliance can be placed on the Defendants case that it is manufacturing the goods under a licence from "JUSTEEN". Nor can any reliance be placed, he submitted, on the alleged agreement dated 4th October, 1994 as "JUSTEEN" has not filed any affidavit in these proceedings. That by itself proves nothing. "JUSTEEN" has forwarded to the Defendant, the copies of its application duly notarised, which I have already held to be reliable at least at this stage. The occasion for "JUSTEEN" to enter the field in its own right would arise when the Plaintiffs application for registration is advertised. For that is when JUSTEENS right would be significantly affected. Though JUSTEENS rights would also be affected indirectly if the Plaintiff were to succeed in the present litigation, JUSTEENS not having filed an affidavit in these proceedings would not be sufficient to disbelieve the Defendants case. The Defendant cannot in any event suffer for "JUSTEEN" not adopting legal proceedings. "JUSTEEN" may be reluctant to do so for a variety of reasons. Moreover it is the Plaintiff who has come to Court and the burden is on the Plaintiff therefore to prove its case.
22. I have accepted as genuine, JUSTEENS application for the registration of its trade mark in Nigeria. We have seen that the Plaintiff has been exporting its product exclusively to "JUSTEEN". Now, if the agreement dated 4th October, 1994 had not, in fact, been entered into, what would JUSTEENS reaction have been on receipt of the products with the trade mark "APPETONE" prominently displayed on them and packed in cartons with its art-work ? It would have been one of surprise followed by a protest to the Plaintiff for using the same. The Plaintiff does not state that he received any such notice from "JUSTEEN". The only explanation is the agreement dated 4th October, 1994. I must confess that when I first read the Loan Licence agreement and, specially clauses 4 (xii) and 6 (c) thereof extracted above, I did form an impression against the Defendant. However, now, that all the facts have been placed before me, I am persuade to accept Mr. Shahs submission.
23. In view of the above discussion, it is clear that it was under and in terms of the agreement dated 4th October, 1994 that the Plaintiff undertook to manufacture the products under the brand name "APPETONE" with the art work provided by "JUSTEEN" and exported the same only to "JUSTEEN". For this purpose, the Plaintiff inter-alia entered into the Loan Licence agreement with other manufacturers on what I may term as a back-to-back contract or a sub-contract to have its products manufactured by them. The loan licence agreement does not state that the brand name "APPETONE" and the art work belongs to the Plaintiff. The aforesaid clauses in the loan licence agreement were pursuant to the agreement dated 4th October, 1994 which provides that the Plaintiff will not register the brand name "APPETONE" or register the copyright for the said art work in India or any other country. This is the only explanation for clauses 4 (xii) and 6 (c).
24. There is another circumstance which militates against the Plaintiffs case. The Plaintiff admittedly was aware of the Defendants activities prior to May/June, 1998. The suit was filed fifteen months thereafter i.e. on 21st October, 1999. The Plaintiff took out the above Notice of Motion on 21st October, 1999 but had it registered year later on 31st October, 2000. In the mean time the Plaintiff applied for and was granted leave under clause XIV of the Letters Patent in August 2000 and on 29th September, 2000 respectively. The Notice of Motion was served on the Defendant after considerable delay on 5th February, 2002. On 6th of February, 2002 when the Notice of Motion reached hearing, it was discovered that the returnable date had expired. Therefore on 8th February, 2002, the returnable date was extended.
25. Mere delay at a given stage would in most cases not indicate anything. The Plaintiffs delay in this case has been enormous at every given stage. Add thereto the fact that the Plaintiff never made an application for ad-interim reliefs. It is difficult to resist the submission that the Plaintiff was less than enthusiastic about its case.
26. Counsel addressed me and cited various authorities on the question of the effect of this delay on the Plaintiffs part. Considering the view I have taken, it is unnecessary to go into this aspect of the matter. I do not intend refusing relief to the Plaintiff merely on the ground of delay. However, the nature of the delay and the lack of enthusiasm exhibited by the Plaintiff in protecting what it now contends to be a valuable right indicates its confidence or rather the lack of it in its case. Surely, had the Plaintiff been serious about the genuineness of its case, it would at least have made an application for ad-interim reliefs. It is rather unusual that in an action for infringement and passing off the Plaintiff did not even make an application for ad-interim reliefs. I find that the delay strongly militates against the Plaintiffs case on facts.
27. Mr. Saraf contended in the alternative, that even assuming that the Plaintiff was not the proprietor of the mark or the copyright, it was entitled to an injunction against the Defendant on the basis that the Defendant itself did not claim to be the owner or the proprietor of the mark or the artistic work and that the Defendant did not deny that the Plaintiff was using the same prior to the Defendant. In other words according to Mr. Saraf even assuming that the Plaintiff pirated the trade mark and the artistic work from "JUSTEEN", it was entitled to an injunction against the Defendants. This is the point of law which calls for my consideration.
28. Mr. Saraf fairly invited my attention to a judgment of the Full Bench of this Court in the case of - Abdul .V. Mahomedaly, reported in 3 Bom. L.R.
220. The full bench accepted the evidence of a witness of the Plaintiff who deposed thus :-
"I first collected the bottles of the European makers who had the largest sales. Waterlow and Sons, Lyons and Co., Stephens and Hollidge were four of the principal ones ..... The label designed was by combination of all four labels".
The evidence of the Plaintiff himself differed from that of his witness. The Full Bench accepted the evidence of the Plaintiffs witness and proceeded on that basis. Thus the original label was a deliberate combination of the four labels of the leading ink manufacturers Waterlow & Sons, Lyons & co., Stephens & Sons and Hollidge. On behalf of the Appellant (Defendant) it was submitted that the labels or trade marks were so tainted in their conception and origin that it could not form the basis of any relief; and in any case not of an injunction. The Court came to the conclusion that the label was calculated to mislead the public. The question before the Full Bench was whether the use of the mark by the Respondent/Plaintiff itself being tainted, the Respondent/Plaintiff was entitled to an injunction against the third party. Chief Justice Jenkins held as under :-
"Still confining myself to the original label I will first consider whether if it were the subject of this suit an injunction in respect of it could be granted. The principles on which an injunction can be claimed in a case of this class are thus stated by Lord Westbury in the Leather Cloth Company Ld. v. The American Leather Cloth Company Ld. (1) :
"These conclusions seem to follow immediately from the very principle to which a plaintiff seeking protection for a trade-mark appeals. He desires to restrain the defendant from selling his own goods as the goods of another person : but if by the use of the trade-mark in question the plaintiff himself is representing and selling his goods as the goods of another, or if his trade-mark gives a false description of the article, he is violating the rule on which he seeks relief from the defendant." This is after all but a particular application of the more general rule that a plaintiff must come into a Court of Equity with clean hands, and by parity of reasoning a plaintiff who seeks the relief of an injunction in this Court (and it is with that form of relief alone that we are concerned in this case) must answer the same description...."
It was further contended on behalf of the Respondent that the four ink Companies had not taken any proceedings against the Respondent/Plaintiff and therefore, that to which they might have objected had become public juris. The contention was rejected on the ground that what is public juris for the Plaintiff is also such for the Defendant. The result, it was held, was that the marks of the Plaintiff was not such as to entitle it to the relief of an injunction.
29. Again Mr. Saraf fairly invited my attention to a judgment of the Delhi High Court in the case of Prem Singh .v. M/s. Ceeam Auto Industries, . The Delhi High Court followed the judgment in the case of - Abdul .V. Mahomedaly, reported in 3 Bom.L.R. 220. On behalf of the Defendant, it was submitted that Walpole Industries and not the Plaintiff was the original owner of the impugned design and therefore the Plaintiff was not entitled to an injunction against the Defendant. The counsel for the Plaintiff, however submitted that this had no bearing insofar as the disputes between the parties to the suit inter-se were concerned. In paragraphs 19, 21 and 23 it was held as under :-
"19. The principle to guide in such cases where both contending parties before the Court are shown to be pirators of a third persons property in trade mark or copyright has been very succinctly, but pointedly outlined in Kerlys Law of Trade Marks and Trade Names, 12th Edn. at page 314 by laying down that the Court may refuse to interfere to protect the use of a deceptive trade mark, on the basis of the maxim : ex turpi causa non oritur actio, i.e. an action does not arise from a base case. According to him, it can be a defence to an action for an infringement, that the mark sued upon is invalid, and that one of the grounds of invalidity is that the mark is "disentitled to protection in a Court of justice ...."
21. The instances of cases of concurrent right which are given at pages 418/419 inter-alia, are that both the parties are equally unmeritorious, in the sense that the impugned mark or design is neither distinctive of the plaintiff nor of the defendant i.e. not distinctive of either party or that the goodwill which the plaintiff seeks to protect is vested in neither of them.
23. When therefore in a given case it becomes apparent, that plaintiffs own conduct is tainted and he himself is prima facie an imitator of another persons design; then the Court would not normally at the pre-trial stage, afford him protection, on the mere asertion or averments in the plaint, which the defendant has succeeded in showing to be prima facie unfounded or even false."
In the case before me of course the Defendant says it is manufacturing the products under a License from JUSTEEN and that it is not a pirator. Added to that in the fact that the Plaintiffs agreement with JUSTEEN permits such an agreement between JUSTEEN and others.
30. The judgment in 3 Bom.L.R. 220 is binding on me. I would, therefore reject the submission.
31.Mr.Saraf, relied upon the judgments of the Delhi High Court in the case of - (i) Coolways India v. Princo Air Conditions and Refrigeration, reported in 1993 (1) Arbn.L.R. 401, and (ii) Jai Prakash Gupta .v. Vishal Aluminium Mfg. Co., reported in 1996 PTC (16), 575.
The judgments do support the abstract proposition that a Plaintiff cannot be denied relief on the ground that the Plaintiff is himself using and infringing a third parties registered trade mark. However, the same are contrary to the judgment of the Full Bench of this Court in 3 Bom.L.R. 220.
32. Moreover on the facts of the present case, both the judgments are distinguishable. I have found that "JUSTEEN" had permitted the Plaintiff to manufacture and export the goods inter-alia on the condition that the Plaintiff would not object to "JUSTEEN" simultaneously getting the same manufactured under the brand name and with the said art work from any other supplier. Having agreed to that condition the Plaintiff cannot be permitted to object to the Defendant having been permitted by "JUSTEEN" to manufacture the goods under the said brand name and with the said art work. The judgments of the Delhi High Court are therefore clearly inapplicable to the facts of the present case. The judgments would be relevant only if I had come to the conclusion that the agreement between "JUSTEEN" and the Plaintiff had never been entered into.
33.Prem Singhs case was distinguished in 1993 (1) Arbn.L.R. 401 on the ground that in Prem Singhs case the Plaintiff was aware that a third party had got the trade mark registered in 1962 prior to the Plaintiff who had its mark registered in 1981 and it had also taken legal recourse against the Plaintiff. In view of the above finding, in the present case also the Plaintiff knew of "JUSTEENS" rights and interests inter-alia in the brand name and art work. Thus Prem Singhs case would apply to the facts of the present case.
34. Mr. Saraf also relied upon a judgment of the Delhi High Court in the case of Sharp L.P.G. Pvt. Ltd. versus Seiko Engineers reported in 1988 (1) Arbn.L.R. 72. Mr. Saraf relied upon paragraphs 9 and 10 of the judgment in support of his case. The Delhi High Court did not consider the Defendants submission on the ground that the third party was not before it. He also relied upon an unreported judgment of this Court delivered by N.D. Vyas, J., dated 22nd August,1995 in Omega Ag-Seeds (India) Ltd. V. Ag-Sun Sees (India) Pvt. Ltd, in an ad-interim application in Suit No.2177 of 1995.
Mr. Saraf submitted that both the judgments support his submission sub-silentio.
35. Firstly the judgment in Omega Ag-Seeds is per-incuriam. It has not considered the decision of the Full Bench in 3 B.L.R. 220. Secondly the decision in 3 B.L.R. 220 is binding on this Court. The aforesaid judgments of the Delhi High Court and another judgment of the Delhi High Court in Jai Prakash Gupta versus Vishal Aluminium Mfg. Co. (1996) 16 PTC 575 being contrary to the Full Bench decision of this Court, are of no assistance to the Plaintiff. Lastly a judgment sub-silentio cannot be relied upon as a precedent.
I may however mention that subsequently in Baldev Singh versus Godran Rubber Plastic Industries (1999) 79 Delhi Law Times 517, a Learned Single Judge of the Delhi High Court held that a pirator is not entitled to protection of a trade mark or design.
36. In the circumstances, the Notice of Motion is dismissed. Costs costs in the cause.
Parties to act on an ordinary copy of this order duly authenticated by the Associate of this Court.