Bangalore District Court
Indo Arab Chamber Of Commerce And vs M/S. Indo Arab Chamber Of Commerce on 12 February, 2018
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE,
AT BENGALURU CITY [CCH.NO.10]
Dated this day the 12th February 2018
PRESENT
Smt. M.PANCHAKSHARI, M.Com., LL.B.,
XVIII Addl.City Civil Judge.
OS.No.7050/2013
Plaintiff Indo Arab Chamber of Commerce and
Industries,
A company incorporated under section
25 of the Companies Act,1956,
Having its registered office at 81/82,
Mittal Court, 'C' Wing, 8th Floor,
Nariman Point, Mumbai - 400 021.
(By Sri.S.N., Advocate)
/VS/
Defendant: M/s. Indo Arab Chamber of Commerce,
A Firm, having its registered office
at Golden Square,
20, Eden Park, Vittal Mallya Road,
Bangalore - 560 001.
Reptd. by its Executive Director,
Asif Iqbal
(By Sri.V.H.M., Advocate)
Date of institution of 24.9.2013
suit
2 O.S.No.7050/2013
Nature of the suit Perpetual & Mandatory Injunctions
(Suit on pronote, suit and damages
for declaration and
possession suit for
injunction, etc.
Date of the 08.03.2017
commencement of
recording of the
evidence.
Date on which the 12.02.2018
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 04 04 18
(M.PANCHAKSHARI)
XVIII Addl.City Civil Judge, Bangalore.
JUDGMENT
The plaintiff has filed the suit against the defendant for the relief of perpetual injunction to restrain the defendant No.1, by itself, its servants, agents, and directors from in any manner using the trade name 'Indo Arab Chamber of Commerce' by itself or along with any other word of mark or impugned logo mark 'Indo Arab Chamber of Commerce' as shown in Exhibit 'D' to the plaint in respect of any publications, books, directories or website so as to pass off or enable others to pass of the defendant's publications, books, 3 O.S.No.7050/2013 directories or website as that of the plaintiff or to show that the defendants is in any way connected with the plaintiff;
2. For direction to the defendant by itself, its servants, agents, and directors by an order of mandatory injunction to forthwith change its impugned website http://indoarabchamber.org/ by deleting there from the word "Indo Arab Chamber of Commerce" and for the purpose, to take all steps as may be necessary;
3. For damages quantified at Rs.10 Crores or in the alternative the defendants be ordered to render a true and faithful accounts of all profits earned by them using the impugned word/mark "Indo Arab Chamber of Commerce' as part of the defendants trading name or style of the publications, magazines, directories and or websites otherwise what so ever and the defendants be ordered and decreed to pay to the plaintiff such amount as may be found due and payable on such account with interest thereon at the rate of 21% pa., till payment or realization;
4. To deliver up to the plaintiff's for destruction, all the defendant No.1 magazines, publications, directories, websites, books, invoices, literatures, materials, advertisements, logos, etc., bearing or containing any reference in any manner 4 O.S.No.7050/2013 whatsoever to the word/mark Indo Arab Chamber of Commerce and for costs.
5. The brief and relevant facts as alleged in the plaint are as follows:
The plaintiff has alleged that it is a company incorporated under Sec.25 of Companies Act, 1956 and it is a chamber for promotion of commercial and economic relations between India and Arab Nations. Plaintiff is an active forum for Indian businessmen who have close contacts with the Arab World, the plaintiff constantly strives to identify new areas of mutual co-operations and ensures the smooth flow of trade, investments, joint ventures and technology. It is further contended that the 1st defendant is a firm claims having established in 1980, 2nd defendant claims to be the executive director of 1st defendant. The defendant No.1 claimed to be the registered firm in the UAE having its offices at Emiroles Towers, Levels 41, Sheikh Zayed Road, Dubai UAE and claims to have liaison officers all over India in different cities. Plaintiff are using the mark INDO ARAB CHAMBER OF COMMERCE AND INDUSTRIES together with logo since January 1980 and registered in the year 2007 in class 42 and it is subsisting.5 O.S.No.7050/2013
The plaintiff is carrying on its activities since 1.1.1980 and as such has been in existence for over 30 years. Defendant is operation a website http://indoarabchamver.org/ as against the website of plaintiff viz, www,iacci.org. Plaintiff is the proprietor of the trade mark 'INDO-ARAB CHAMBER OF COMMRCE & INDUSTRIES' since 1980. They have enjoyed the goodwill and reputation in the market having participated in over 681 International Trade Fairs and 10,000 seminars and conferences. They are also facilitator in the business visa, certificate of origin and such formalities for its members. It is further contended that plaintiff also offers range of services, including circulation of list of importers, global tenders, organizing visit visa, issuance of recommendation letter for business visa, arbitration guidelines assistance in opening an overseas office, legalization of documents, facility of attestation and assisting with essential clauses in a contrast / memorandum of understanding. They plays pivotal role in strengthening the bilateral relations between India and the Arab World. Plaintiff company is also included in the list of agencies authorized to issue certificate of Origin (Non- preferential) in the handbook of procedure, Exim policy. The trade mark application No.1343865 made by the plaintiff also 6 O.S.No.7050/2013 mentions that the said mark has been used by the plaintiff since 1.1.1980 and the certificate is valid till 11.3.2015.
6. It is further contended that taking advantage of the good will of the plaintiff, the defendant adopted the name and mark closely and deceptively similar to that of them. The name and logo used by the defendants is not even registered that the defendants have not even applied for registration. The defendant has also copied the contents from the website of the plaintiff on its website and stated that defendant is established recently in the year 2012 and has been carrying on activities to deceive the general public. The defendant has been advertising and representing themselves as the South India Chapter of the plaintiff company, when in fact there has been no such talk or agreement to that effect. Defendant to various print media, during 2012 have unscrupulously represented that they are an active forum, participating in the economic development of Arab world by exploiting manpower and taking up various infrastructure project in the Gulf Region. Defendants have been infringing the trade mark of the plaintiff only to cause confusion and with a view to bring about an association with the services offered by the plaintiff. The infringement of the trade mark of the plaintiff is evident from 7 O.S.No.7050/2013 an article dated 5.8.2012, titled 'Asif Iqbal head South India Chapter of Indo-Arab Chamber of Commerce and Industries.
7. Immediately pursuant to the said newspaper article, plaintiff have sent legal notice to the defendant on 12.9.2012, in turn defendant unconditionally apologized over the phone and informed that they will not carry on the activities. Recently the plaintiff came to know that the defendants are hosting conference in Bangalore in the name TAB 2013 on 23.8.2014. The defendant by deceitfully advertising that they issue certificate of origin as a part of their services. The certificate of Origin is an extremely sensitive documents, which certifies that the products exported are wholly obtained, produced or manufactured in India. The obligation to issue a certificate of origin stems from the fact tat India is signatory to World Trade Organisation. The consequences of falsely issuing certificates of origin by hookwinking themselves as a part of the plaintiff company will be dire for the Indian exporters and India's reputation in international trade and bilateral relations. Thus the defendant has infringed their trade mark Indo Arab Chamber of Commerce and Industries by passing of impugned trade mark Indo Arab Chambers of Commerce. The Act of infringement and passing off, the defendants have 8 O.S.No.7050/2013 caused loss or damage to the plaintiff which the plaintiff quantifies at Rs.10 Crores. Hence the suit.
8. The defendants 1 & 2 have appeared through their counsel and resisted the suit by filing its written statement.
In the written statement the defendants have denied the plaint allegations and contended that the suit filed against them is a sheer misuse and abuse of the process of the court and there is no factual or legal base to file the present suit. The cause title of the plaintiff company without there being any representative for the plaintiff to represent and instituted the suit as such it is not maintainable. In the verification it is mentioned Shashikala Shanti Prasad Jain representing as president of M/s.Indo Arab Chamber of Commerce and Industries and her name is not found either as a director or atleast as a subscriber of the memorandum of association and hence she has no right to institute the suit and she has no competency or authorization to file the suit. The suit framed and filed by Shashikala Shantiprasad Jain on behalf of the plaintiff company is not maintainable, the question of seeking discretionary equitable relief of injunction by a person unconnected and not authorized by the plaintiff company. There is no cause of action for the institution of the suit. The letter pad dated 27.5.2008, it was mentioned the Embassy of 9 O.S.No.7050/2013 Arab Republic of Egypt, Commercial bureau, New Delhi, India which logo would not be there in the letter pad of the plaintiff and it clearly demonstrate before this court and the plaintiff had even resorted to forgery in illegally using the emblem and address of a country in the letter pad of the respondent / defendant thereby the said document cannot be looked into. It is further contended that the so called designation as president is not authorized by the board resolution of the plaintiff even in the so called resolution number filed on 10.1.2013 putting ante date 8.8.2013. Plaintiff have approached the court with unclean hands falsity and fraudulent claim and not entitled to seek the injunctive relief against them.
9. It is further contended by the defendant that defendant are having the necessary registration from the Government of India, Central Board of Excise and Customs, Ministry of Finance, Department of Revenue with their service code registration AAEF13091BSD001 as per certificate in form ST2 issued by the Superintendent Service Tax Bangalore. The League of Arab States Mission who is the sole authority of combined Arab States in New Delhi has also sent compliments 10 O.S.No.7050/2013 to them while appreciating their role in promoting economic and commercial relationship between India and Arab world.
10. The defendants firm name INDO ARAB CHAMBER OF COMMERCE was also recognized by the Secretary, Chamber of Indian Trade & Industries, New Delhi and Joint Secretary, Ministry of External Affairs, Government of India, and the Embassy of the United Arab Emirates New Delhi dated 16.8.2013 which clearly demonstrates that the defendant is having the absolute and exclusive rights to carry on its activities. They have also applied for TM registration under class 35 & 41 and the plaintiff obtained the trade mark under class 42. The activities under class 35 & 41 are entirely different with class 42. Defendants have not at all adopted the name and a mark closely and deceptively and similar to that of the plaintiff company. The defendant concern is M/s.INDO ARAB CHAMBER OF COMMERCE and the plaintiff is that of INDO ARAB CHAMBER OF COMMERCE AND INDUSTRIES as such there is no similarities. The website of the defendant is http://222.indoarabchamber.org and that of the plaintiff is http://www.iacci.org and the logo and homepage of the defendant is different in visual aspect of other 11 O.S.No.7050/2013 aspects including the style, design and colour scheme and it cannot be contended that there is infringement.
11. The preferential certificate of origin is only to be issued by the Government of India and no private concern though registered under the trade mark registry is having right authority or competency to issue such certificates. The services, facilities and the activities that are being carried out by the plaintiff company in class 42 and the defendant in class 35 & 41 are very sophisticated and being dealt with educated and learned clients and there is no scope for any confusion in the two different services offered by the plaintiff and the defendant. The defendant has hosted a conference by the name Transcending Arabian Borders "TAB 2013" on 23.8.2013 which conference was widely appreciated in which conference several participants, delegates had attended and participated by Minister of State of Industries, Government of India, Ex- Central Board of Direct Taxes Chairman, Ex.Central Vigilance Commissioner and that the defendant or its agents or any body through the defendant are entitled to carry on its activities under class 35 & 41. It is further contended by the defendant that the word used in the defendant firm name is al the common public utility usage words and nobody has 12 O.S.No.7050/2013 exclusive rights to use the same leave alone the monopoly on such usage of words. The word INDO ARAB is common for any business relating to India and 22 Arab speaking countries. The plaintiff has filed the suit to harass them. On the above grounds prays to dismiss the suit.
12. On the basis of the rival pleadings and contentions, my learned predecessor has framed the following issues:
1. Whether the plaintiff proves that it is the registered owner of trademark Indo Arab Chamber of Commerce and Industries?
2. Whether plaintiff proves that the defendant infringed the plaintiff's well established trademark Indo Arab Chamber of Commerce and Industries by using offending trade mark Indo Arab Chamber of Commerce?
3. Whether the plaintiff proves that the defendant has passed off their trade mark Indo Arab Chamber of Commerce and Industries?
4. Whether the plaintiff is entitled for the decree of permanent & mandatory injunctions as sought for?
5. Whether the plaintiff is entitled for the damages as sought for?
6. What order or decree?13 O.S.No.7050/2013
13. Plaintiff got examined its authorized person as PW1 and got marked documents at Ex.P1 to 7 and closed its side. Despite granting sufficient opportunity the defendants have not crossexamined PW1 nor adduced oral and documentary evidence on their behalf.
14. Heard the arguments on learned counsel of the plaintiff and he had also filed written arguments. Perused the materials placed on record. My findings on the above issues are as under:
Issue No.1 : In the affirmative
Issue No.2 : In the affirmative
Issue No.3 : In the affirmative
Issue No.4 : In the affirmative
Issue No.5 : In the negative
Issue No.6 : As per final order,
for the following:
REASONS
15. Issue No.1 to 3:. The plaintiff has filed the
present suit for the relief of perpetual injunction to restrain the defendant, its servants, agents, and directors from using the trade name 'Indo Arab Chamber of Commerce' in connection to any publications, books, directories or website and also for a relief of mandatory injunction to direct the 14 O.S.No.7050/2013 defendants its servants, agents, and directors to change its website http://indoarabchamber.org/ and also for damages.
16. Plaintiff is a company registered under the Companies Act. It is the contention of the plaintiff that it is a chamber for promotion of commercial and economic relations between India and Arab nations. It is an active forum for Indian businessmen who have close contacts with the Arab World. The defendant is a firm. Where plaintiff had contended that 2nd defendant is the executive director of the 1st defendant firm. But on perusal of the cause title it makes out that there is only one defendant M/s. Indio Arab Chamber of Commerce represented by its executive director Sri.Asif Iqbal. It is also the contention of the plaintiff that the 1st defendant claims to be registered firm in UAE and also offices all over India in different cities. Defendant firm is established in the year 2012 and it carries on activities to deceive the general public as being part of plaintiff concern.
17. It is the contention of the plaintiff that plaintiff is using the mark "INDO-ARAB CHAMBER OF COMMERCE AND INDUSTRIES" together with logo since 1980 and having applied for registration of trade mark with logo in the year 15 O.S.No.7050/2013 2005 was granted registration on 15.10.2007 which is valid upto 11.3.2015. Defendant had infringed and passing off activities of the plaintiff by operating the website http://indoarabchamber.org as against he website of plaintiff viz., www.iacci.org . Plaintiff company offers a range of service including but not limited to, circulation of list of importers, global tenders, organizing visit visa, issuance of recommendation letter for business visa, arbitration guidelines assistance in opening an overseas office, legalization of documents, facility of attestation and assisting with essential clauses in a contrast / memorandum of understanding. It plays pivotal role in strengthening the bilateral relations between India and the Arab World. Defendant by taking advantage of the good will of the plaintiff had adopted the name and mark closely and deceptively similar to that of plaintiff. The name and logo used by the defendant is not even registered and not even applied for registration. It had also copied the contents from the website of the plaintiff. Defendants advertising and representing themselves as the South India Chapter of the plaintiff company, whereby there has been no such talk or agreement to that effect.
16 O.S.No.7050/201318. It is further contended by the plaintiff that some what in the year 2012 defendant along with Mr.Lucky Ali who claims to be the cultural director of 1st defendant had approached the plaintiff asking whether they could represent the plaintiff by putting up a branch of the plaintiff in Bangalore. Plaintiff had outrightly refused and denied permission to the defendants. Inspite of it on several occasion defendants falsely representing that it is South Indian Chapter. Defendants having infringed the trade mark of the plaintiff only to cause confusion and with a view to bring about an association with the services offered by the plaintiff since the plaintiff had achieved a repute not only in India but also globally. Plaintiff in pursuant to the news article of the defendant had sent a legal notice on 12.9.2012 to the defendant for which defendants unconditionally apologized over the phone and informed the plaintiff that they will not carry on with the activities and said trade mark owned by the plaintiff. But inspite of defendants apologized, later continued with their act of infringement.
19. Plaintiff in order to prove its contention had examined president of the plaintiff company as PW1 and in his affidavit filed for examination in chief, he had reiterated the 17 O.S.No.7050/2013 plaint averments. In support of his oral evidence he had produced the documents which are marked as Ex.P1 to P7. To make out that plaintiff had been properly represented board resolution is produced and same is marked as Ex.P1. To make out trade mark registration of plaintiff, they have produced attested copy of the trade mark certificate which is marked as Ex.P2. Copy of memorandum and articles of association is marked as Ex.p3. To make out cause of action, plaintiff had also produced the legal notice which is marked as Ex.P4. The paper publication in Times of India to make out the act of infringement by the defendant is produced and marked as Ex.P7. The defendant though appeared through its advocate and having filed the written statement had not opted to cross examine PW1.
20. Defendant in its written statement had denied the plaint averments and also competency of representative of the plaintiff company to file the present suit. Much of the averments of the written statement is in respect of the authority of the Shashkala Shantiprasad Jain to represent the plaintiff suit as President of M/s. Indo Arab Chamber of Commerce and Industries. It is their contention that the resolution itself fabricated.
18 O.S.No.7050/201321. It is the contention of defendant that it is having the necessary registration from the Government of India, Central Board of Ministry of Finance, Department of Revenue with their service code registration AAEF13091BSD001 as per certificate in form ST2 issued by the Superintendent Service Tax Bangalore. Further it is contended that the League of Arab States Mission who is the sole authority of combined Arab States in New Delhi has also sent compliments to them while appreciating their role in promoting economic and commercial relationship between India and Arab world and in the charge of mission had also expressed his willingness and readiness to co-operate with IACC for strengthening and facilitating the continuity of the Indo Arab Co-operation in trade, investment and technology. It is further contended that the defendant firm name INDO ARAB CHAMBER OF COMMERCE was also recognized by the Secretary, Chamber of Indian Trade & Industries, New Delhi and Joint Secretary, Ministry of External Affairs, Government of India, and the Embassy of the United Arab Emirates New Delhi dated 16.8.2013 which clearly demonstrates that the defendant is having the absolute and exclusive rights to carry on its activities for which defendant had also applied for TM registration under class 35 with application No.2606158 19 O.S.No.7050/2013 dtd.3.10.2013 and another trade mark application under class 41 in No.2606159. So the activities under class 35 & 41 are quite different with activities specified in Class 42. So defendant cannot be restrained from carrying out their specified activities
22. Though the defendant by denying entire plaint averments had filed written statement with pleading of 70 paragraphs and it had not opted to cross examine PW1 nor challenged the document by crossexamining PW1 or by leading any contra evidence. Hence oral and documentary evidence placed before court on behalf of the plaintiff had remained unchallenged and unrebutted. So the unrebutted testimony of plaintiff has to be accepted.
23. Ex.P1 document clearly makes out that PW1 is properly authorized to represent the plaintiff. The memorandum and articles of association of the plaintiff company having produced which is marked as Ex.P3 it also proves the existence of the plaintiff company and its activities. Ex.P2 is the material document ie., trade mark registration certificate of the plaintiff in the name of Indo Arab Chamber of Commerce and Industries issued on 15.10.2007 which was 20 O.S.No.7050/2013 valid as on the date of suit. The said certificate is obtained under class 42 and date of application is 21.3.2005. Defendant had not produced any documents to make out that it had filed any application for registration of its trade mark and its trade mark is being used prior to that of the plaintiff. User detail of the plaintiff makes out that it is being used from 1980. In the legal notice issued on behalf of the plaintiff a clear clarification is made out that defendant had adopted the very same trade mark of the plaintiff which being published in the news paper is only to intend and harm the reputation of the plaintiff. On the contrary defendant had not placed any documents nor placed any materials on record to make out there is no infringement of the plaintiff trade mark. So in the circumstances, the unrebutted and unchallenged testimony of plaintiff has to be taken in to consideration. Hence I answer issue No.1 to 3 in the affirmative.
24.Issue No.4 & 5: So plaintiff by means of oral and documentary evidence had substantially proved that it is the registered trade mark owner of the trade mark Indo Arab Chamber of Commerce and Industries. So it is carrying out its activities under the said trade mark. Now defendant by using the very same trade mark is encashing the goodwill of the 21 O.S.No.7050/2013 plaintiff though defendant is in no way connected to the company of the plaintiff. So in the circumstances the activities of the defendant has to be restrained by an order of permanent injunction. As the defendant had not placed any material to make out that any trade mark certificate having issued in their favour they are not entitled to use the website which is deceptively similar to the trade mark of the plaintiff as http: http://www.indoarabchamber.org.
25. Though plaintiff had claimed the damages quantifying at the rate of Rs.10 Crores or in the alternative, defendant to render true and faithful accounts of all profits earned by defendant by using the impugned word/ mark Indo Arab Chamber of Commerce as part of the defendant's trading name and / or style of the publications, magazines, directories, and or websites what so ever. Though plaintiff had claimed for damages it had not given any particulars with regard to its turnover per year and the break up turn over from the date of adoption of the trade mark of the defendant. So in such circumstances as the plaintiff had failed to prove its turn over, there is no material to assess the damages as claimed by the plaintiff. The only averments of the plaintiff that the adoption by the defendant in its business that the act 22 O.S.No.7050/2013 of infringement and passing off on the part of defendant are causing grave harm, injury and prejudice to the plaintiff company and prejudice to the plaintiff company and damaging the goodwill and reputation of the plaintiff company. So the infringement and passing off the defendant had caused loss and damages quantifying at Rs.10 Crores. In the circumstances, as there is no material documents produced on behalf of the plaintiff to assess its loss or damages on the basis of its turn over it is not entitled for the damages as claimed. So inview of the above reasons I hold issue No.4 in the affirmative and issue No.5 in the negative.
26. Issue No.6: In the result I pass the following:
ORDER Suit of the plaintiff is hereby decreed in part with costs as follows:
Plaintiff is entitled for the relief of permanent and mandatory injunctions as prayed.
The defendant, its servants, agents, and directors are hereby permanently restrained from using the trade name 'Indo Arab Chamber of Commerce' with logo in respect of any publications, books, directories or website so as to pass off or 23 O.S.No.7050/2013 enable others to pass of the defendant's publications, books, directories or website as that of the plaintiff or to show that the defendants is in any way connected with the plaintiff The defendant, its servants, agents, and directors are hereby directed by way of mandatory injunction to forthwith change its website http://indoarabchamber.org/ by deleting there from the word Indo Arab Chamber of Commerce and further directed to deliver up to the plaintiff's for destruction, all the defendant No.1 magazines, publications, directories, websites, books, invoices, literatures, materials, advertisements, logos, etc., bearing or containing any reference in any manner whatsoever to the word/mark Indo Arab Chamber of Commerce.
The suit of the plaintiff for the relief of damages is hereby dismissed.
Draw decree accordingly.
[Dictated to the Judgment Writer, computerised, and print out taken by him, corrected and then pronounced by me in open court, this day the 12th February 2018].
(M.PANCHAKSHARI) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BENGALURU 24 O.S.No.7050/2013 ANNEXURE
1. No.of witnesses examined on behalf of plaintiff/s:
PW1 : M.Z. Rehman
2. No. of documents marked on behalf of plaintiff/s:
Ex.P1 : Board Resolution
Ex.P2 : Attested copy of certificate of registration of
trade mark dtd.11.3.2005
Ex.P3 : Copy of Memorandum & Articles of Association
Ex.P4 : Office copy of legal notice
Ex.P5 & 6 : Postal receipts
Ex.P7 : Copy of paper publication in Times of India
dtd.21.8.2013 along with receipt
3. No. of witnesses examined on behalf of defendant/s:
- Nil -
4. No. of documents marked on behalf of defendant/s:
- Nil -
XVIII Addl. City Civil Judge Bangalore City.25 O.S.No.7050/2013
Judgment pronounced in the open court vide separate judgment. The operative portion of judgment reads thus:
ORDER Suit of the plaintiff is hereby decreed in part with costs as follows:
Plaintiff is entitled for the relief of permanent and mandatory injunctions as prayed.
The defendant, its servants, agents, and directors are hereby permanently restrained from using the trade name 'Indo Arab Chamber of Commerce' with logo in respect of any publications, books, directories or website so as to pass off or enable others to pass of the defendant's publications, books, directories or website as that of the plaintiff or to show that the defendants is in any way connected with the plaintiff The defendant, its servants, agents, and directors are hereby directed by way of mandatory injunction to forthwith change its website http://indoarabchamber.org/ by deleting there from the word Indo Arab Chamber of Commerce and further directed to deliver up to the plaintiff's for destruction, all the defendant No.1 magazines, publications, directories, websites, books, invoices, literatures, materials, advertisements, logos, etc., bearing or containing any reference in any manner whatsoever to the word/mark Indo Arab Chamber of Commerce.
Draw decree accordingly.
XVIII Addl.C.C. & S.J., Bangalore