Calcutta High Court (Appellete Side)
Amalesh Mondal vs Ratna Mondal & Ors on 21 June, 2019
Author: Bibek Chaudhuri
Bench: Bibek Chaudhuri
Form No.J(1) IN THE HIGH COURT AT CALCUTTA CIVIL REVISIONAL APPLICATION APPELLATE SIDE.
Present:
The Hon'ble Justice Bibek Chaudhuri.
C.O.1121 of 2019 Amalesh Mondal
-Vs-
Ratna Mondal & Ors.
For the Petitioner : Mr. Sukanta Chakraborty,
Mr. Anirban Pal,
Mr. Intikhab Alam Mina.
For the Opp. Parties : Mr. Jaydip Kar, Sr. Adv.,
Mr. Sourav Sengupta,
Mr. Alok Mohan Saha,
Mr. Aman Baid.
Heard on : 20.06.2019 & 21.6.2019.
Judgement on: 21.06.2019
Bibek Chaudhuri, J. :-
Defendant No.1 of Title Suit No.5659 of 2009 pending before the 10th Bench of the learned Judge, City Civil Court, Calcutta has invoked the jurisdiction of Article 227 of the Constitution of India to challenge the legality, validity and propriety of order No.109 dated 6th February, 2019 passed by the learned trial judge in the said suit.
By passing the impugned order, the learned trial judge allowed an application filed by the legal heirs and representatives of deceased plaintiff No.1 under Order XXII Rule 4 of the Code of Civil Procedure (hereafter CPC) and substituted them in place of plaintiff No.1, since deceased.
For the purpose of proper adjudication of the instant revision, following facts are required to be narrated:-
Animesh Mondal in his personal capacity along with Bichitra Prakashani and the Calcutta Publishers, being partnership firms filed Title Suit No.5659 of 2009 praying for declaration and permanent injunction and other consequential reliefs against the petitioner and M/s. Ray & Martin. It is pleaded by the plaintiffs that the plaintiff No.1 is the registered proprietor of trade mark, inter alia, Ray and Martin (both in Bengali and English), Prashna Bichitra (both in Bengali and English), Uttar Bichitra (both in Bengali and English) and Bichitra. One Nilanjan Mondal and Debanjan Mondal, both sons of plaintiff No.1 are partners of plaintiff No.2 and 3. They carry on business of printing and publishing various books pertaining to academics. The defendant no.1 is the younger brother of plaintiff No.1. He is also involved in publishing business. Defendant no.2 M/s. Ray and Martin is a proprietorship concerned of defendant no.1. It is alleged that the defendant no.1 has infringed the trade mark of plaintiff No.1 causing serious adverse effect on the good will of the business of the plaintiffs. So is the suit.
The defendants have been contesting the suit by filing written statement wherein and whereunder they denied the specific case of the plaintiff. It is specifically pleaded that the plaintiff No.1, defendant no.1 and others formed Private Limited Companies under the name and style of M/s. Calcutta Publishers Private Limited, M/s. Bichitra Prakashani Private Limited and M/s. Mondal Printing Enterprise Private Limited. The said three companies were using the name Ray and Martin as brand name of their publications. However, it is admitted in paragraph 7(k) of the written statement that the plaintiff no.1 got the trade mark registered in his name. In this regard, it is alleged that the said plaintiff no.1 became the owner of the trade mark in question behind the back of the defendant no.1 who is one of the Directors of the said companies and other Directors.
It is a matter of record that after institution of the suit, the trial court granted temporary injunction against the defendants which is still subsisting.
During pendency of the suit, plaintiff no.1, Animesh Mondal died on 30th March, 2018. The widow and two sons of the deceased plaintiff no.1 filed an application for substitution under Order XXII Rule 3 of the CPC. The defendants filed written objection against the said application.
By passing the impugned order, the learned trial judge allowed the application under Order XXII Rule 3 of the CPC and substituted the applicants in place and stead of plaintiff no.1, since deceased.
The aforesaid order dated 6th February, 2019 is under challenge in the instant revision petition.
Mr. Sukanta Chakraborty, learned Advocate appearing on behalf of the defendant no.1/petitioner at the outset draws my attention to paragraph 47 of the plaint where it is specifically pleaded as hereunder:-
" That under the specific provision of Section 134 of the Trade Marks Act, 1999, the plaintiffs are entitled to institute the present suit for infringement of its registered trade marks in this Ld. Court within the local limits of whose jurisdiction, the Plaintiffs, particularly the Plaintiff No.1 actually and voluntarily carries on business having its place at 9/7B, Ramanath Mazumder Street, Kolkata-700 009, P.S. Amherst Street (Raja Rammohan Sarani). And as such this Ld. Court has jurisdiction, both pecuniary and territorial to try the suit." He also refers to Section 134 of the Trade Marks Act which confers jurisdiction to the learned District Judge to try suits for infringements etc. under the Trade Marks Act, 1999 (hereafter the said Act).
Mr. Chakraborty next refers to specific averment in the written statement wherein the defendants specifically pleaded that the abovementioned three Private Limited Companies were established sometimes in the year 1996-97. The plaintiff No.1, defendant no.1, one Indranil Mondal and one Kamalesh Mondal were Directors of the said Companies. All along the said Companies have been carrying on business of publication of various academic books and guides under the brand name Ray and Martin. The trade mark was registered in the name of deceased plaintiff no.1 alone, but such registration did not make him the sole proprietor of the said trade mark and the business. Taking advantage of such registration, the plaintiff no.1, since deceased, tried to assign the trade mark in favour of his two sons in deprivation of the defendant. According to Mr. Chakraborty such an attempt of assignment is absolutely illegal and against statutory provision of the said Act. In support of his contention, he refers to Section 45 of the said Act and submits that an assignee of a trade mark cannot be treated to be the holder of the trade mark unless and until it is registered in the name of the assignee by the competent registering authority. He also refers to Sub Section (4) of Section 45 which states that until an application under Sub- section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission. It is also submitted by Mr. Chakraborty that the assignment deed allegedly executed by plaintiff No.1, since deceased, in favour of his two sons is prima facie forged and manufactured one in view of the fact that the said assignment deed was notarised on 18th April, 2018, while original plaintiff no.1 died on 30th March, 2018.
According to Mr. Chakraborty, provisions of Order XXII Rule 3 or even Order XXII Rule 10 of the CPC are not applicable under the facts and circumstances of the instant case. In support of his contention, he draws my attention to the provisions of Order XXII Rule 3 of the CPC. Sub-Rule (1) of Rule 3 of Order XXII runs thus:-
"3. Procedure in case of death of one of several plaintiffs or of sole plaintiff.- (1) Where one of two or more plaintiffs dies and the right to sue does not survive to the surviving plaintiff or plaintiffs alone, or a sole plaintiff or sole surviving plaintiff dies and the right to the sue survives, the Court, on an application made in that behalf, shall cause the legal representative of the deceased plaintiff to be made a party and shall proceed with the suit."
It is submitted by Mr. Chakraborty that when there are more than one plaintiff and one of them dies and right to sue does not survive to the surviving plaintiff or plaintiffs alone or a sole plaintiff or sole surviving plaintiff dies and the right to sue survive, the legal heirs and representatives of the deceased plaintiff shall be substituted. However, in the case of trade mark, ownership of trade mark only passes from one person to another through assignment or transmission. Such assignment takes into effect in terms of Section 45(1) of the said Act only after registration. Therefore, the legal heirs and representatives of the proprietor of a trade mark, since deceased, cannot be substituted under Order XXII Rule 3 of the CPC and, therefore, the impugned order is illegal and perverse.
Mr. Joydip Kar, learned Senior Counsel appearing on behalf of the opposite party no.1 submits that the original plaintiff no.1, since deceased, and two partnership firms as plaintiff Nos.2 and 3 respectively instituted the suit in the year 2009. After institution of the suit, the Court granted an order of temporary injunction against the defendants on being satisfied prima facie that the plaintiffs were able to make out a triable case. The said order of temporary injunction is still pending.
Mr. Kar next submits that the legal heirs and representatives of the original plaintiff no.1, since deceased, filed an application simplicitor under Order XXII Rule 3 of the CPC praying for substitution of their names in place and stead of original plaintiff no.1, since deceaseed.
The defendant no.1 raised objection against the prayer of the applicants for substitution mainly on the following grounds:-
"a) Trade mark of a business cannot be considered as the corpus property of deceased plaintiff no.1 and it cannot be inherited under the Law of Succession. The proprietor of the trade mark can only assign his rights through a proper procedure delineated in the said Act and there is no scope of succession of trade mark in the said Act;
b) Since the ownership of the trade mark of deceased plaintiff no.1 is in dispute, there cannot be assignment of trade mark in favour of the sons of the deceased plaintiff no.1 during the pendency of the suit;
c) The purported deed of assignment of trade mark is forged and manufactured one and has not been registered as yet. So, the legal heirs and representatives of the deceased plaintiff no.1 cannot be substituted on the basis of such deed of assignment.
d) Right to sue does not survive upon the legal heirs of the deceased plaintiff on the ground that the assignment of trade mark in question has not been registered as yet.
In reply to objection 'a', learned Senior Counsel for the opposite party refers to the definition of assignment contained in Section 2(1)(b) of the said Act. It says, "Section 2(1)(b), the 'assignment' means an assignment in writing by act of the parties concerned.
Next he draws my attention to Section 37 of the said Act. Section 37 recognises the right of registered proprietor to assign the trade mark for any consideration and to give respects, subject to the provisions of the Act.
Section 38 of the said Act stipulates, "notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all goods or services in respect of which the trade mark is registered or of some only of those goods or services."
Referring to the above provisions, it is contended by Mr. Kar that a proprietor of a trade mark has the right and authority to assign the trade mark and on the basis of such assignment and transmission, such trade mark can be used along with the goodwill of the business by the assignee.
With regard to the objection on ownership issue of the trade mark in question, Mr. Kar brings my attention to page 106 of the instant application wherefrom it is ascertained that the plaintiff no.1, since deceased, was the proprietor of trade mark Ray and Marticn (label). It was issued on 21st March, 2007 and is valid upto 24th August, 2025. Calcutta Publishers Private Limited, who is not a party to the suit filed objection against registration of trade mark in the name of original plaintiff, since deceased on 20th October, 2009. The petitioner tried to mislead the Court by referring to a certificate dated 24th November, 1998 and a letter dated 26th November, 1998 regarding registration in respect of a label in the name of M/s. Calcutta Publishers Private Limited under Copy Right Act, 1957. According to Mr. Kar, registration of label under Copy Right Act in the name of a Private Limited Company does not have any implication in respect of trade mark registered under the said Act in the name of the original plaintiff no.1, since deceased.
It is urged by Mr. Kar that Section 2(1)(b) of the said Act is absolutely clear that for 'assignment', no registration is required. The original plaintiff no.1, since deceased, was the 'registered proprietor' within the meaning of Section 2(1)(b) of the said Act. The registered proprietor of trade mark can also transmit the trade mark to another person. The term transmission is defined in Section 2(1)(zc) of the Act. The definition runs thus:-
"Transmission means transmission by operation of law, devolution on the personal representative of a deceased person and any other code of transfer, not being assignment."
Thus, it is submitted by Mr. Kar that even if there is no lawful assignment, the ownership of trade mark is transmitted to the legal heirs and representatives of the original plaintiff no.1 on his death by devolution of interest.
Mr. Kar also refers to Section 28 and Section 29 of the said Act. Section 28 confers exclusive right upon the registered proprietor of the trade mark to use the same in relation to the goods and services in respect of which the trade mark is registered. Section 29 details out the circumstances where a registered trade mark is infringed.
Next he draws my attention to Section 45 of the said Act and submits that registration trade mark in favour of the assignee can only be effected after a after a person becomes entitled by assignment or transmission to a registered trade mark. Therefore, according to Mr. Kar, contention of the petitioner that there was no assignment by the original plaintiff no.1, since deceased, by way of deed of assignment has no leg to stand. It is also misconceived to submit that an assignee of a trade mark cannot be substituted until and unless the trade mark is registered in the name/names of the assignee/assignees under Section 45 of the said Act.
In support of his contention Mr. Kar relies upon a decision of the High Court of Delhi in the case of Cinni Foundation Vs. Raj Kumar Sah & Sons & Anr., reported in 2009 (41)PTC 320(Del.). It is held in the said report that acquisition of title to the trade mark is not dependent upon the assignment being registered. Registration is only to place on record of the fact that the title has been created, but registration by itself does not create any title which already stands created on the execution of the assignment deed. On the same point, he also refers to another judgement of Delhi High Court in the case of Sun Pharmaceuticals Industries Limited Vs. Cipla Limited, reported in 2009 (39) PTC (Del.).
Mr. Kar then draws my attention to the deed of assignment which has been strongly criticised by the learned Counsel for the petitioner. It is found from the deed of assignment that it was executed on 16th November, 2017. However, it was notarised on 18th April, 2018. From the sealed certificate of the notary, it is ascertained that the notary attested the signature of the executants on identification of the learned advocate. The deed of assignment was not executed in front of the notary. There is no requirement of any statute that such deed of assignment under the said Act is required to be executed in presence of notary. The said deed was executed in presence of two witnesses who put their signatures on the said deed. Moreover, according to Mr. Kar the deed of assignment cannot be challenged in the instant proceeding by the petitioner and he will have enough scope to challenge the said deed of assignment during the trial of the suit.
Thus, Mr. Kar concludes that the instant revision is absolutely misconceived. There is no reason to interfere with the impugned order passed by the learned trial judge on 6th February, 2019.
Having heard the submissions made by the learned Counsels for the parties and on perusal of the entire materials on record and having regard to various statutory provisions contained in the Trade Marks Act, 1999, it is ascertained that the plaintiff no.1 was the registered proprietor of the trade mark in question. Even assuming that the trade marks were used by some Private Limited Company, they were also permissive users of such trade marks and they did not acquire any right of ownership over the said trade mark. As registered proprietor, the plaintiff no.1 had every authority to assign and/or transmit the ownership of trade mark in favour of others in writing. There is no requirement of law that such deed of assignment must be registered. Transmission of trade mark can be made, according to the statute by devolution of interest on the death of the proprietor.
The legal heirs and representatives of deceased plaintiff no.1 filed the application for substitution on the ground that the right to sue survives upon them on the death of original plaintiff no.1 on the grounds of both assignment and transmission. I do not find any illegality in the order impugned.
In view of the above discussions, I have no other alternative but to hold that the instant revision is devoid of any merit and liable to be dismissed.
Accordingly, the instant revision be and the same is dismissed is contest, however, without cost. The impugned order dated 6th February, 2019 passed by the learned 13th Judge, City Civil Court at Calcutta in Title Suit No.5659 of 2009 is affirmed.
As the suit is pending since 2009, the learned trial judge is directed to dispose of the suit at the earliest and preferably within six months from the date of communication of this order.
Urgent photostat certified copy of the order, if applied for, be given to the parties on priority basis.
(Bibek Chaudhuri, J.)