Kerala High Court
M/S.Kalpaka Group vs Kalpaka Builders Private Limited on 18 December, 2010
IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT:
THE HONOURABLE MR. JUSTICE A.HARIPRASAD
WEDNESDAY, THE 30TH DAY OF NOVEMBER 2016/9TH AGRAHAYANA, 1938
RFA.No. 118 of 2011 ( )
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AGAINST THE JUDGMENT & DECREE IN OS 2/2009 of DISTRICT COURT,
THRISSUR DATED 18-12-2010
APPELLANTS/PLAINTIFFS:
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1. M/S.KALPAKA GROUP,BUILDERS AND
DEVELOPERS,SREEHARI COMPLEX ,
NEAR PRARTHANA INN,, EAST NADA,
GURUVAYOOR 680 101,REP.BY ITS MANAGING PARTNER
SRI.R.V.ABDUL MAJEED,S/O.MOHAMMED,
PUTHANPURAYIL, KARAKKAD PO. GURUVAYOOR,
THRISSUR DISTRICT
2. R.V.ABDUL MAJEED,S/O.MOHAMMED,
PUTHANPURAYIL, KARAKKAD,
PO GURUVAYOOR, THRISSUR DISTRICT.
3. R.V.ABDUL RAHIMAN,S/O.K.K.KUNJIMOIDU,
PUTHENPURAYIL HOUSE, PANACHARAMUKKU,
NEAR AYURVEDA HOSPITAL, CHAVAKKAD,
THRISSUR DISTRICT.
4. A.V.ALIKUTTY,S/O.MOHAMMED HAJI,
AMBALATH VEETTIL, PALAYOOR POST,
CHAVAKKAD.
BY ADVS.SRI.P.B.KRISHNAN
SMT.GEETHA P.MENON
SRI.P.K.SAJEEV
RESPONDENTS/DEFENDANTS:
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1. KALPAKA BUILDERS PRIVATE LIMITED,
FIRST FLOOR, CASAGRANTE BUILDING,
DESHABHIMANI JUNCTION, KALOOR, COCHIN-17
REPRESENTED BY ITS MANAGING DIRECTOR M.V.SUNIT
PIN - 682 017
BY ADVS. SRI.P.N.RAMAKRISHNAN NAIR
SRI.P.VISWANATHAN
SUNIL SHENOY
THIS REGULAR FIRST APPEAL HAVING BEEN FINALLY HEARD ON 16-11-2016,
THE COURT ON 30.11.2016 DELIVERED THE FOLLOWING:
A. HARIPRASAD, J.
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R.F.A.No.118 of 2011
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Dated this the 30th day of November, 2016
JUDGMENT
Appellants/plaintiffs preferred a suit for injunction and other reliefs under Section 134 of the Trade marks Act, 1999 (in short, the Act). The trial court found that the appellants did not make out any legal grounds to get the reliefs claimed and therefore, the suit was dismissed.
2. Heard the learned counsel for the appellants and the respondent.
3. Short facts:
Second appellant, alongwith others, floated a private limited company by name, 'Kalpaka Construction and Engineering Company Private Limited'. It was incorporated under the Indian Companies Act on 14.11.1977. Later, another company, by name 'Kalpaka Metal House Private Limited' was also incorporated on 14.11.1986. Appellants were trading under the above said trade names. Trade name RFA 118/2011 2 'Kalpaka' is an inseparable part of the appellants' business. Appellants were in the business of construction of buildings, contract works, developing the sites for construction of flats and villas, export of heavy machineries, etc. They had worked for Indian Railways under the banner 'Kalpaka'. By the continuous use of the trade name 'Kalpaka', the 2nd appellant is popularly known as 'Kalpaka Majeed'. The goodwill and reputation of the company got attached to the 2nd appellant as owner of the trade name 'Kalpaka'. Subsequently in 2006, the appellants 2 and 3, alongwith others, formed a partnership under the name and style 'Kalpaka Constructions'. An apartment project was also started at Guruvayur. Later, in 2008, another partnership was formed between appellants 2 to 4 under the name and style 'Kalpaka Group'. The appellants announced next apartment project as 'Kalpaka Amritham Apartments'. The trade name 'Kalpaka' in its connotation and invention had a permanent impact in the minds of the public and formed an integral part in the name RFA 118/2011 3 and style of the appellants' business. The trade mark has attained popularity and publicity all over the State of Kerala. Adoption of the trade name 'Kalpaka' by the appellants was an honest act in tune with the commercial ethics.
4. On 18.03.2009, the appellants received a registered lawyer notice from the respondent, alleging passing off and infringement of their trade mark. Appellants then got information about the dishonest use of their trade name by the respondent. An advertisement in a Malayalam newspaper on 20.03.2009 that the respondent had started a company for rendering service to the public in the construction field by name 'Kalpaka', was known to the appellants. According to the appellants, the respondent floating a company under the name 'Kalpaka Builders Private Limited' itself was dishonest. They dishonestly adopted a deceptively similar and identical mark, to pass off the products / services of the appellants and to make a misrepresentation to the prospective purchasers. Therefore, the appellants sought for a prohibitory injunction RFA 118/2011 4 and other reliefs.
5. The respondent/defendant opposed the suit contending that the 2nd appellant has no locus standi to represent Kalpaka Group. There is no legal entity as 'Kalpaka Group'. Kalpaka Constructions and Engineering Company Private Limited is a company in default. 'Kalpaka Metal House Private Limited' is not doing any kind of business. The allegation that the appellants are trading under the said trade names and the trade name 'Kalpaka' is an inseparable part of the appellants' business are incorrect. 'Kalpaka' is a common word and synonymous to coconut tree in Malayalam. It is a generic term. There are more than 30 companies registered under the Act with word 'Kalpaka'. That apart, several partnership firms and proprietary concerns are using that name. According to the respondent, the 2nd appellant was known as a railway petty contractor from Guruvayur and he is not having any goodwill and reputation as claimed. The respondent company is in existence since 1996 and their RFA 118/2011 5 formation as a corporate body was in the year 2005. The appellants cannot claim any right of prior user of the trade mark 'Kalpaka'. It is true that on 18.03.2009, the respondent sent a notice to the appellants. On 27.07.2005, the respondent obtained trade mark registration as 'Kalpaka Builders Private Limited' in class 37 in respect of building construction and contracts etc. By suppressing material facts about the trade mark registration in favour of the respondent company, the appellants have approached the court for injunction. Actually, the appellants have now encroached on the rights conferred on the respondent by registration of the trade mark. Appellants adopted identical and deceptively similar trade mark 'Kalpaka' for their alleged business without any substantive right. The word 'Kalpaka' is associated with the respondent's business since 1984 and they have family concerns by names Kalpaka Wines, Ernkaulam, Kalpaka Chits & Finance, Thrissur, Kalpaka Medicals, Thrissur and Kalpaka Wines & Beverages, Ernakulam. Hence, the suit is liable to RFA 118/2011 6 be dismissed.
6. The trial court framed necessary issues. It examined three witnesses on the side of the appellants and one witness on the side of the respondent. Exts.A1 to A84 are the appellants' documents and Exts.B1 to B73 are the respondent's documents.
7. Learned counsel for the appellants contended that the trial court failed in appreciating the evidence. According to him, finding of the trial court that there is no evidence to prove prior user of the trade name 'Kalpaka' in respect of construction activity by the appellants is incorrect. It is also contended that the trial court should have decreed the suit for the reason that there is overwhelming evidence to uphold the contentions of the appellants.
8. Per contra, learned counsel for the respondent contended that the court below correctly appreciated the evidence and found that the appellants have not made out any ground to secure the reliefs claimed.
RFA 118/2011 7
9. It is come out in evidence that the respondent has secured registration of their trade name 'Kalpaka Builders Private Limited' under the provisions of the Act.
10. Learned counsel for the appellants contended that even though the respondent has a trade mark registration in his favour comprising the word 'Kalpaka', an action in passing off is maintainable as per Section 27 (2) of the Act. It reads as follows:
"Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."
11. Reliance is placed on N.R.Dongre and Others v. Whirlpool Corporation and Another [1996 (5) SCC 714] to contend the following proposition of law:
"On the above conclusion reached on the facts of this case, it is unnecessary to refer to the several decisions cited at the Bar to indicate the settled principles of law regulating grant or refusal of RFA 118/2011 8 interlocutory injunctions and the scope for grant of such an injunction in a passing-off action even against the proprietor of a registered trade mark. None of those decisions lay down that in a passing-off action based on the right in common law distinct from the statutory right based on a registered mark, an injunction cannot be granted even against an owner of the trade mark in an appropriate case."
It has been made clear that a suit against a registered trade mark holder is maintainable complaining passing off.
12. PW-1 is the 2nd appellant. He is the managing partner of Kalpaka Group, Builders and Developers. According to him, he alongwith others, floated Kalpaka Constructions and Engineering Company Private Limited on 14.11.1977. Yet another company, by name Kalpaka Metal House Private Limited was also incorporated on 04.11.1986. It is admitted by PW-1, when cross examined, that he did not produce any income tax assessment order in respect of the business ventures referred to in his affidavit filed in lieu of chief examination. He has not produced any auditor's report RFA 118/2011 9 for the period from 1977 to 2010. Likewise, he failed to produce any balance sheet to show that he was in the construction business from 1977 onwards. PW-1 admitted that the construction company has become defunct from 1977 and Kalpaka Metal has also become non-functional. There is no evidence to show that Kalpaka Constructions and Engineering Company was engaged in the construction of buildings by acquiring properties. PW-1 plainly admitted that no material could be produced to show that any of the companies were engaged in the construction activities up to 2005. Registered office of the first company incorporated in 1977 was at Madras. Location of business was in Guruvayur. PW-1's evidence is that he entered into construction activity, as revealed from Ext.A23, only in the year 2008.
13. PW-2 stated that PW-1 had constructed two houses about 22 years back. Oral testimony of PW-2 was rightly repelled by the trial court as it failed to derive support from the oral evidence of the other witnesses. PW-3 admitted the RFA 118/2011 10 existence of many companies with name 'Kalpaka' as an integral part of their trade name.
14. DW-1 deposed that 'Kalpaka Builders Private Limited' was incorporated in the year 2005. Ext.B6 is the certified copy of the trade mark registration certificate dated 07.05.2009. On a scrutiny, it can be seen that the certificate related back to 27.07.2005. The court below rightly found that from 2005 onwards, the respondent was in the business of construction of buildings and they got a trade name registered as revealed from Ext.B6.
15. Learned counsel for the respondent contended that Exts.B16 to B21 are the original contract agreements starting from 12.01.2005 to 12.03.2007 to show that the respondent company was engaged in construction activity. Similarly, reliance is also placed on Ext.B28 series to Ext.B36 series, which are the original builders' agreements with various customers to show that from 2005 onwards, the respondent company used to undertake building construction activity. RFA 118/2011 11 Learned counsel for the respondent placed reliance on Exts.B3 and B13 to contend that various companies used the term 'Kalpaka' as a component in their trade names.
16. Learned counsel for the respondent contended that the word 'Kalpaka' is a generic expression and the appellants cannot claim any exclusive right to use it. Reliance is placed on Skyline Education Institute (India) Private Ltd. v. S.L.Vaswani and Another [2010 KHC 4009] to contend that the appellants' claim for exclusive user of the trademark 'Kalpaka' cannot be legally sustained in the light of the following observations:
"It has not been disputed on behalf of the appellant that the word 'Skyline' is being used as trade name by various companies / organizations / business concerns and also for describing different types of institute / institutions. The voluminous record produced by the respondents before this Court shows that in India as many as 117 companies including computer and software companies and institutions are operating by using word 'Skyline' as part of their name / nomenclature. In United States of America, at least RFA 118/2011 12 10 educational / training institutions are operating with different names using 'Skyline' as the first word. In United Kingdom also two such institutions are operating. In view of this, it is not possible to agree with the learned counsel for the appellant that the Skyline is not a generic word but is a specific word and his client has right to use that word to the exclusion of others."
This contention of the respondent deserves approval and acceptance.
17. Learned counsel for the appellants contended that there may be other users of the word 'Kalpaka' as part of their trade names. But, the appellants have acquired a reputation not only at Guruvayur, but also elsewhere in the State and the respondent's appropriation of the name 'Kalpaka' will amount to passing off. Reliance is placed on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd [2001 (5) SCC 73] to contend that even in respect of unregistered trade marks, a passing off action is maintainable and the passing off action depends upon the principle that nobody has a right to sell his RFA 118/2011 13 goods or services under the pretext that they are those of another person. In the said decision, reliance is placed on the principles in Corn Products Refining Co. v. Shangrila Foods Products Ltd [AIR 1960 SC 142] which is considered to be a leading decision on subject. Appellants' contention is mainly on the fact that they are the first user of the trade name 'Kalpaka' and therefore, people associate the name 'Kalpaka' with the appellants. The lower court found that the appellants failed to prove that they are the prior user of the trade name 'Kalpaka' as alleged in the plaint. This finding is seriously challenged in this appeal. As mentioned above, testimony of the witnesses on the side of the appellants and the documents do not show that they entered the construction activity prior to the respondent's entry. Learned counsel for the appellants, relying on Ext.A1, contended that the first company was incorporated on 14.11.1977 and various letters like Exts.A5 to A9 would show that they were in the business. It is true that a lot of documents have been RFA 118/2011 14 produced by the appellants to show that they were doing business in certain fields. But the evidence in the case revealed that some of the business ventures named by the appellants had become defunct and non-functional. It is also not established by evidence that the appellants' sphere of activity was outside Guruvayur. In other words, the appellants failed to establish by reliable evidence that they have earned reputation elsewhere in the State as claimed. On these aspects, the findings entered by court below should be upheld, as they derive support from the evidence. The court below found that even though it is avered in the plaint that 'Kalpaka Construction' was floated in the year 2006, in the affidavit (in paragraph 3) it is mentioned that it was floated in the year 2005. As per the plaint averments, Kalpaka Group came into existence in 2008. Area of operation of that concern is different. The court below took note of the fact that the respondent's activity is mainly at Ernakulam and the appellants failed to establish the fact that their reputation was RFA 118/2011 15 also felt in Ernakulam District. This finding is completely agreeable. On a re-appreciation of the entire evidence, I find no reason to take a different view in the light of the settled principle that if the view taken by the trial court is a probable view, the appellate court shall be loathe in taking a different view or substituting its own view. I am of the view that the lower court has correctly analyzed the facts and applied the correct principles of law. I find no reason to disturb the findings of the trial court.
In the result, the appeal is dismissed. No order as to costs.
All pending interlocutory applications will stand dismissed.
Sd/-
A. HARIPRASAD
JV JUDGE