This Order is modified/corrected by Speaking to Minutes Order
1 907-ao-1302-13 with caa-1551-13.sxw
dgm
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
APPEAL FROM ORDER NO. 1302 OF 2013
WITH
CAA/1551/2013
Sau. Pritikiran Rajendra Katole .... Appellant
vs
Sau. Harsha Ravindra Katole .... Respondents
Mr. Alankar Kirpekar with Mr. Raghunandan Janjire i/by MAG Legal
for the Appellant / Applicant.
Mr. B. S. Phad for the respondent.
CORAM: ANOOP V. MOHTA, J.
DATE : December 06, 2013 ORAL JUDGMENT:
Rule, returnable forthwith. By consent, heard finally.
2 The Appellant Defendant has challenged order dated 27.09.2013 passed by the District Judge-5, Pune, whereby the Respondent's/Plaintiff's Application is allowed in a suit for perpetual injunction filed against them.
::: Downloaded on - 23/12/2013 20:33:00 :::This Order is modified/corrected by Speaking to Minutes Order 2 907-ao-1302-13 with caa-1551-13.sxw 3 The operative part of the order is as under :
"1) Application is allowed.
2) The respondent no. 1 to 3, their agents, servants, representatives and others claiming through them, are hereby temporarily restrained from using the registered trademark of Godwa Krushi Prakashan and Godwa publication, along with other literature and label, till the decision of the suit, in breach of registered trademark of the applicant.
3) Costs in cause."
4 Admittedly both the parties have registered the trademark
by using the first word "Godwa". The word "Godwa" is a common parlance dictionary word in Marathi which means "sweetness". The following is the chart which shows the respective registration and the dates on which the trademark is registered :
Sr.No Appellant's registered Respondent's registered trademark trademark 1 "GODWA PRAKASHAN" bearing "GODWA PRAKASHAN" -
no.1658859 in Class 16 dt. Device of other language 28.2.2008 bearing no.1604144 in Class 16 dt. 21.09.2007 2 "GODWA DUDH UDYOG "GODWA" bearing DIARY" bearing no.1658860 in no.1468820 in Class 16 dt.
Class 16 dt. 28.02.2008 11.07.2006
3 "GODWA KRUSHI "GODWA PRAKASHAN" -
PRAKASHAN" bearing no. Device of Flowers and Sun 1658845 in Class 16 28.02.2008 bearing no.1515700 in Class 41 dt. 21.12.2006 ::: Downloaded on - 23/12/2013 20:33:00 ::: This Order is modified/corrected by Speaking to Minutes Order 3 907-ao-1302-13 with caa-1551-13.sxw 5 The main objection with regard to the word "Godwa" even though both the parties got registration under the provisions of The Trademarks Act 1999 ("the Act") just cannot be the issue to pass such injunction order against the registered trademark owner. The effect of registration of trademark is well settled and recognized. Under what circumstances both two similarly named trademarks got registered is a matter of trial. However, unless it is set aside, the effect of registration gives an entitlement/ the right to the registered owner to use the same against the whole world being the honest concurrent user.
6 Section 12 of the Act contemplates and recognizes honest concurrent user. Sections 28(3) and Section 30(2) (e) of the Act, which are necessary are reproduced as under:
"28(3) Where two or more persons are registered proprietors of Trade Marks which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other those persons merely by registration of Trade Marks but each of those person has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the ::: Downloaded on - 23/12/2013 20:33:00 ::: This Order is modified/corrected by Speaking to Minutes Order 4 907-ao-1302-13 with caa-1551-13.sxw sole registered proprietor".
30(2)(e) A registered trade mark is not infringed where
(e) the use of registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other in exercise of the right to the use of that trade mark given by registration under this Act"
The above provisions itself makes position clear that two or more persons, if are registered proprietor of trademark which are identical with and/or nearly resemble each other, the exclusive use of the same trademark is not permissible. Both can use those trademarks for all the purposes. Such two persons cannot prevent each other from using the same registered trademark. The section itself contemplates that such registered trademark need to be treated as in their individual capacity "the Sole registered proprietor". Section 30 (2)(e) of the Act also permits and contemplates that use of such registered trade marks by other registered owner cannot be treated as "infringement".
7 There may be various issues and the background under which these two trademarks using the word "Godwa" got registered by using other suffix as recorded above, but at this stage, in my view, there is no question of preventing and/or ::: Downloaded on - 23/12/2013 20:33:00 ::: This Order is modified/corrected by Speaking to Minutes Order 5 907-ao-1302-13 with caa-1551-13.sxw restraining any registered trade mark owner to use the registered trade mark int he market.
8 The prior and/or earlier use and/or long use in the background also looses its importance. There are factual background which shows that parties were fully aware of the use of the word "Godwa" since long. The Appellant is using the word "Godwa" since February 2008, though the Respondent/plaintiff is using the same word from 2006, no such steps whatsoever taken by the Respondent/plaintiff. Both the parties have been using this word in their respective publication/production without inference of each other. The delay may not be the reason not to consider the case of infringement and/or cannot be the reason not to grant the reason if case is made out, but in a situation like this, where the issue of 'honest concurrent user" itself require consideration and unless the registration of applicant is quashed and set aside, at the instance of other side, the effect of registration of trademark just cannot be taken away by the Court in such fashion. This, in my view, also against the provisions of law apart from the established interest so created in favour of the owner in view of the registration of the trademark.
::: Downloaded on - 23/12/2013 20:33:00 :::This Order is modified/corrected by Speaking to Minutes Order 6 907-ao-1302-13 with caa-1551-13.sxw 9 The basic ingredients of principle of injunction prima facie case, irreparable loss and equity are no way can be used and utilised against the Statute. The concurrent long use itself is additional factor goes against the Plaintiff. The irreparable loss/injury and equity also lies in favour of the Appellant who has been using the trademarks since long which was well within the knowledge of the Respondent/plaintiff. The aspect of conduct also goes against the Respondent/plaintiff. This, however, in no way, sufficient to decide the claim and/or prayer so made in the main Suit.
10 The learned counsel appearing for the Appellant also makes statement that the Appellant will not use the word "Godwa" in the style and/or the design of the words which they have been using and also the manner of writing. They will also not use the emblem which the Respondent/plaintiff got registered. They will also maintain the proper account of sale and shall file in the Court as and when directed.
11 In view of above, the impugned order is quashed and set aside by accepting the statement so made by the learned counsel for the Appellant.
::: Downloaded on - 23/12/2013 20:33:00 :::This Order is modified/corrected by Speaking to Minutes Order 7 907-ao-1302-13 with caa-1551-13.sxw 12 The Appeal from Order is allowed, with liberty. All points kept open. Civil Application No.1551 of 2013 is also disposed of. No costs.
Parties to act on an authenticated copy of this order.
(ANOOP V. MOHTA, J.) ::: Downloaded on - 23/12/2013 20:33:00 :::