Indian Kanoon - Search engine for Indian Law

The order of temporary injunction passed ex parte was sought to be vacated at the behest of the defendant/respondent on an application under Order 39 Rule 4 of the Code of Civil Procedure alleging not only that the APOT 44 of 2024 application for temporary injunction contained misleading statements but also on the ground of suppression of material facts. The plaintiffs/appellants filed the instant suit seeking a decree for permanent injunction restraining the defendant/respondent from in any manner infringing the plaintiffs/appellants‟ registered label mark "MAJDUR BIRI" by using the mark which is identical and deceptively similar thereto and also decree for perpetual injunction restraining the defendants from manufacturing, selling, stocking, offering for sale Bidis under the mark "MAZDOOR" or any other trademark which is identical or deceptively similar to the appellant‟s mark "MAJDUR".

It is arduously submitted that the moment the trademark registry disbelieved the case of the defendant/respondent and rejected the application for registration it implies that the said tribunal of limited jurisdiction has disbelieved the claim of prior user and place d reliance upon the judgment of Apex Court in case of Sulachona Amma vs. Narayanan Nair, reported in (1994) 2 SCC 14:

"6. The words "competent to try such subsequent suit" have been interpreted that it must refer to the pecuniary jurisdiction of the earlier court to try the subsequent suit at the time when the first suit was brought. Mere competency to try the issue raised in the subsequent suit is not enough. A decree in a previous suit will not operate as res judicata, unless the Judge by whom it APOT 44 of 2024 was made, had jurisdiction to try and decide, not that particular suit, but also the subsequent suit itself in which the issue is subsequently raised. This interpretation had consi stently been adopted before the introduction of Explanation VIII. So the earlier decree of the court of a limited p ecuniary jurisdiction would not operate as res judicata when the same issue is directly and substantially in issue in a later suit filed in a court of unlimited jurisdiction, vide P .M. Kavade V. A.B. Bo kil. It had, therefore, become necessary to bring in the statute Explanation VIII. To cull out its scop e and ambit, it must be read along with Section 11, to find the purpose it seeks to serve. The Law Commission in its report recommended to remove the anomaly and bring within its fold the conclusiveness of an issue in a for mer suit decided by any court, be it either of limited pecuniary jurisdiction or of special jurisdiction, like insolvency court, probate court, land acquisition court, Rent Controller, Revenue Tribunal, etc. No doubt main body of Section 11 was not amended, yet the expression "the court of limited jurisdiction" in Explanation VIII is wide enough to include a court whose jurisdiction is subject to pecuniary limitation and other cognate expressions analogous thereto. Therefore, section 11 is to be read in combination and harmony with Explanation VIII. The result that would flow is that an order or an issue which had arisen directly and substantially between the parties or their privies and decided finally by a comp etent court or tribunal, though of limited or special jurisdiction, which includes pecuniary jurisdiction, will operate as res judicata in a subsequent suit or proceeding, notwithstanding the fact that such court of limited or special jurisdiction was not a competent court to try the subsequent suit. The issue must directly and substantially arise in a later suit between the same parties or their privies. This question is no longer res integra. In Rai Bajrang Bahadur Singh v. Rai Beni Madho Rakesh Singh the facts were that under U.P. Land Revenue Act 3 of 1901, the APOT 44 of 2024 consolidation and partition of the lands were effected and became final. Thereafter , one of the landowners claimed title in a civil suit for a declaration that he was the superior landholder. In view of Section 233(k) of the Land Revenue Act, on a divergence of opinion among Oudh Chief Court and Allahabad High Court, the judicial committee held at p. 214 that if a question of title affecting the partition, which might have been raised in the partition proceedings, was not raised and the partition was completed, Section 233(k) debars parties to the partition fro m raising the question of title subsequently in a civil court. The revenue court is a court of special jurisdiction. In Daryao v. State of U.P. this Court held that the doctrine of res judicata is in the interest of public at large and a finality sh ould be attached to the binding decisions pronounced by courts of competent jurisdiction, and it is also in the public interest that individuals should not be vexed twice over with the same kind of litigation. In Gula m Abbas v. State of U.P. this Court held that the principle of res judicata though technical in nature, is founded on considerations of public policy. The technical asp ect, for instance, pecuniary or subject-wise comp etence of the earlier forum to adjudicate the subject- matter or to grant reliefs sought in the subsequent litigation, should be immaterial when the general doctrine of res judicata is to be invoked. Explanation VIII , inserted by the Amending Act of 1976, was intended to serve this purpose and to clarify this position. It, therefore, has to be held that the decree of the District Munsif, though of limited p ecuniary jurisdiction, would operate as res judicata in the subsequent suit between the same parties.

Per contra, the counsel for the defendant/respondent submits that even if the mark is registered that cannot ipso facto, invite an injunction to be passed against a person who is using such mark much prior in time than the first user by the person in whose favour the trademark was granted. It is further submitted the rejection of an application for rectification or an APOT 44 of 2024 application for registration of a trademark filed by the defendant/respondent cannot stand in the way of getting an advantage under Section 34 of the Act but in fact, the said mark is used by the defendant/respondent since 1972. It is further submitted that all other applications for registration of the mark and the label "MAJDUR BIRI" with the small variation were granted by the competent authority, to the plaintiff as an associated trademark which leads to an inescapable conclusion that any restrictions imposed while granting first mark would also be applicable to a subsequent registration of the associated marks. It is thus, submitted that while registering the trademark in favour of the plaintiffs/appellants the restriction was imposed that the sale would only be effected within the State of West Bengal and therefore, the plaintiff cannot take advantage of infringement of the trademark in relation to a product sold outside the State of West Bengal. It is submitted that the defendant/respondent is selling its product mainly in the State of UP and Uttarakhand and has not sold any product within the State of West Bengal and therefore, the injunction in a blanket form cannot be granted. It is further submitted that there is no document produced before the Court or disclosed in the pleading that the defendant/respondent sold its product within the State of West Bengal and in absence thereof, the order of injunction that the defendant/respondent cannot sell its product in such mark and label anywhere in any part of the country cannot be granted. It is submitted that in a subsequent suit instituted against a third party for the identical relief the plaintiffs/appellants have disclosed the user of the marks APOT 44 of 2024 since 1979 whereas all such applications filed in connection with the instant case, the plaintiffs/appellants has asserted the user of the said mark since 1997 and therefore, the injunction granted in the said proceeding cannot have any bearing in the instant case. It is thus, submitted that the plaintiffs/appellants is prevaricating its stands at the different stages of proceedings or in other proceedings and, therefore, cannot be said to be a trustworthy. Lastly, it is submitted that there is no error in the order impugned in the instant appeal on the ground that the plaintiffs/appellants has grossly suppressed the material fact and/or made a misleading statement in relation to a material particulars and therefore, no interference is called for.

APOT 44 of 2024 A plea has been taken that all further marks which were registered in favour of the plaintiff/appellant were in the association with the first mark which contains the conditions and/or the restrictions and therefore, subsequent registration as associated trademark shall be deemed to contain such conditions and/or restrictions. The associated trademark is defined in Section 2(1)(C) to mean a trademark deemed to be or required to be registered as associated trademarks under the Act. Section 16 contained an exhaustive provision relating to the registration of a trademark as associated trademark. The meaningful reading of the provisions contained in Section 16 of the Act postulates that where the proprietor of a trademark which is already registered applies for a registration of identical or similar trademark in respect of same or similar goods, such trademark may be registered as associated trademarks. The legislative intent behind the incorporation of the said fact is to protect the public from being confused or misled in to the thinking that the goods so traded with the identical or similar trademarks originate from a different source. Presumably for such reason, Section 44 creates a restriction in assignment and/or transmission of the associated trademark in disjunction with the parent trademark. The aforesaid section provides that associated trademark can only be assigned or transmit as a whole and not separately. However, the safeguard is also provided under Section 16(5) for disassociating the associated trademark with the other trademarks on a satisfaction that there is no likelihood of deception or confusion being caused in relation to the goods and such services into the APOT 44 of 2024 mind of a common man having imperfect recollection. We do not find any justification in the stand of the appellant that the associated trademark which is so associated with the other trademark wherein the conditions and restrictions are imposed, shall stand alone until the same is dissolved from the association under Section 16(5) so as not to contain the same conditions and restrictions. We do not find any other object in associating a trademark which is identical or deceptively similar to the other trademarks as a series of trademark. Therefore, the contention of the appellant that the other marks subsequently registered acquired distinctiveness without any conditions or restrictions, is not applicable.