Bombay High Court
Sau. Pritikiran Rajendra Katole vs Sau. Harsha Ravindra Katole on 6 December, 2013
Bench: Anoop V. Mohta
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.
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
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
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
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.
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.
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.)
