Calcutta High Court
M/S.Purulia Cement Private Limited vs Lafarge India Private Limited on 30 November, 2009
Author: Kalyan Jyoti Sengupta
Bench: Kalyan Jyoti Sengupta
GA No. 471 OF 2009
GA No. 560 of 2009
CS No. 34 OF 2009
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
M/S.PURULIA CEMENT PRIVATE LIMITED
Versus
LAFARGE INDIA PRIVATE LIMITED
BEFORE:
The Hon'ble JUSTICE KALYAN JYOTI SENGUPTA
Date : 30th November, 2009.
The Court :- This is an interlocutory application taken out in connection with
the suit setting out the ground of Section 142 of the Trade Marks Act, 1999. Before I deal
with the matter I need to state the position of law for institution of this kind of suit. It
appears that Legislature with its wisdom has given a protection to the registered owner of
the Trade Mark against a groundless threat of legal proceedings. Sometime a trader
without any justification or basis whatsoever issued a desist notice threatening to take
action without any real intention of taking action. In order to curve this unnecessary
harassment, Legislature has made aforesaid provision. According to me in order to initiate
a proceeding including a Civil Suit under the provision of Section 142 there must be a
concrete case of threats of legal proceedings in grounds. Such threat can be given by
various means namely by issuing circulars, publishing advertisements or otherwise
meaning or making a false complaint to the police to activate them for search, seizure and
arrest etc. Under those circumstances, such an action can be brought.
2
It is alleged in the petition which is the reproduction of the allegation in the
plaint, in its paragraphs 21 etc. there was a raid on 6/2/2009 which was carried out by
West Bengal Enforcement Branch and police authorities accompanied by respondent's
personnel at the petitioner's factory premises in course of which a search and seizure was carried out. The police personnel also served a notice dated 6.2.2009 signed by Sub Inspector, Enforcement Branch, West Bengal on one of the petitioner's directors Mr. Anup Sarawgi and took him into custody alleging that he has allegedly been held guilty of the various offences under Sections 101, 103, 104 of the Trade Marks Act, 1999 and also under the relevant provision of Copyright Act, 1963. Thereafter the said Mr. Sarawgi was released on bail. This averments go to show that police was activated by the officials of the respondent for taking action. Thereafter it is alleged that respondent held press briefings informing various sections of the media including print and television about said raid and arrest. In paragraph 23 it has been alleged that various dealers, distributors, stockist and customers of the petitioner were informed. In answer to the aforesaid statement and averment in affidavit-in-opposition the respondent/defendant has not denied and disputed the aforesaid fact. Obviously it appears prima facie that there has been a threat and on the date of institution of the suit no civil action was initiated. But after filing of the suit and taking out the instant application regular criminal proceeding has been instituted. Learned Counsel for the respondent says that there is no threat in real sense to bring action under the said Section i.e. 141. I am unable to accept his submission prima facie that there has been no threat. Threat does not necessarily mean issuance of threat notice or desist notice or caution notice. It can be done by various means, activating the police authority groundlessly. The seizure of the police on a complaint made cannot be said to be a fruitful action. Search and seizure become a fruitful and meaningful threat when any regular criminal action is taken. It appears at the ad interim stage injunction as prayed for was passed by this Court and thereafter it was modified giving liberty to the respondent to initiate proceedings. Therefore, interim order passed as modified earlier will continue and such injunction will not debar the plaintiff/petitioner from taking any further action in addition to the action taken before the Criminal Court. I, therefore, do not find any other facts and circumstances to hold otherwise than what has been held prima facie earlier when the interim order was modified.
3Thus both the applications are disposed of.
All parties are to act on a xerox signed copy of this order on the usual undertakings.
(KALYAN JYOTI SENGUPTA, J.) GH.