Bombay High Court
Brihan Karan Sugar Syndicate ... vs Chitali Botting Limited on 6 June, 2022
Bench: A.S. Gadkari
ssm 1 ia897.20-in-comip309.20.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO.897 OF 2020
IN
COMIP SUIT NO.309 OF 2020
Brihan Karan Sugar Syndicate
Private Limited ...Applicant
IN THE MATTER BETWEEN-
Brihan Karan Sugar Syndicate
Private Limited,
A company incorporated under the
Companies Act, 1956 having its
Registered office at B-102,
Daffodils, Wing-B, Hiranandani Gardens,
A. S. Road, Powai, Mumbai - 400 076,
Maharashtra. ....Plaintiff.
Vs.
Chitali Bottling Limited,
A company incorporated under the
Companies Act, 1956 having its
Registered office at
D-1/4, Liberty Society, Phase-II,
North Main Road, Koregaon Park,
Pune - 411 001, Maharashtra. ....Defendant
Mr. Ravi Kadam, Senior Counsel and Mr.Hinashu W. Kane a/w. Mr. Rashmin
Khandekar, Mr. Rohan Kadam, Mr. Ashutosh Kane, Mr. Nikhil Sharma and
Mr. Ajaraj Bagwe i/by W.S. Kane & Co. for Applicant/Plaintiff.
Dr. Abhinav D. Chandrachud a/w. Mr. Bernardo Reis Mr. Lalit K.
Jhunjhunwala and Mr. Pavan S. Patil for Defendant.
CORAM : A.S. GADKARI, J.
RESERVED ON : 27th OCTOBER, 2021
PRONOUNCED ON : 6th JUNE, 2022.
ssm 2 ia897.20-in-comip309.20.doc
ORDER:-
1 Applicant/Plaintiff has filed present Application under Order
39 Rules 1 and 2 of the Code of Civil Procedure, 1908 for temporary
injunction against the Defendant by itself, its Directors, servants,
employees, agents, stockist, dealers, distributors and all persons claiming
under it, from infringing plaintiff's copyright in its artistic work for its logo
'Tango' and from restraining it by an Order of temporary injunction from
infringing Plaintiff's trademarks namely 'Sakhu Santra Tango' and 'Tango
Punch' and for other consequential reliefs, more specifically mentioned in
the prayer clauses of para No.35 herein.
2 Heard Mr. Ravi Kadam, learned Senior counsel and Mr.
Himanshu Kane for Applicant/Plaintiff and Dr. Abhinav Chandrachud,
learned counsel for the Defendant. Perused record.
3 Plaintiff is the registered owner of the trade marks and
copyrights of labels 'Sakhu Santra Tango'; 'Tango Punch' and logo 'Tango'.
Since the year 1996 till the date of filing of the present Suit i.e. on 1 st
February, 2020, Plaintiff's use of the said trade marks/labels is open,
continuous and extensive. The Plaintiff and Defendant executed a License
Agreement on 6th December, 2014 under which the Plaintiff granted
Defendant a license to use Plaintiff's said relevant trade marks/labels and
copyrights for two years on the terms and conditions more specifically
mentioned in the said License Agreement.
ssm 3 ia897.20-in-comip309.20.doc
4 It was agreed by and between the parties that, the Defendant
would use the said trade marks/labels/copyrights in conformity with the
agreement. That, the goods manufactured by Defendant under the said
trade marks/labels would be of superior quality. The Defendant specifically
agreed that, it would not use the said trade marks/labels after
expiry/termination of the said Agreement. That, any failure to insist upon
strict performance would not be treated or deemed to constitute a
modification of the Agreement or waiver of contractual rights. That,
notwithstanding anything contained in the said Agreement, the Plaintiff as
Licensor could terminate the Agreement without assigning any reason and
without being liable in any way for payment of damages or other
compensations whatsoever to terminate the said agreement upon giving not
less than 30 days prior notice in writing in that behalf to the Defendant.
That, upon termination/expiry of the said License Agreement, the
Defendant would forthwith discontinue use of the said trade
marks/labels/copyrights licensed thereunder. That, the said License
Agreement constituted as a whole agreement and superseded any prior
understandings and instruments on the subject. That, the Agreement could
only be modified by a written instrument duly executed by the parties
herein.
5 The License Agreement dated 6th December, 2014 expired on
5th December, 2016 by efflux of time. However, the Defendant continued to
ssm 4 ia897.20-in-comip309.20.doc
use Plaintiff's said trade marks/labels without seeking an extension of
License/permission in that behalf. On 9 th January, 2018, the
Superintendent, State Excise Department informed the Sub-Inspector in-
charge, State Excise at Defendant's premises, about a complaint forwarded
by Divisional Deputy Commissioner, State Excise, highlighting impurities
contained in the country liquor manufactured by Defendant under
Plaintiff's said relevant trade marks. It is contended by the Plaintiff that,
this was in breach of Clause No.5 of the License Agreement, as finding of
impurities in the product manufactured by Defendant under the Plaintiff's
relevant trade marks/labels was injurious to public health. Plaintiff
therefore by its notice dated 3 rd May, 2018 called upon the Defendant to
forthwith cease and desist from using the Plaintiff's relevant trade
marks/labels. Upon receipt of the said notice/letter dated 3 rd May, 2018,
between May 2018 to November, 2018, the Defendant stopped using
Plaintiff's said trade marks/labels. Due to mediation by the other
businessmen in the liquor industry, Plaintiff by its communication dated 30 th
November, 2018 extended License Agreement dated 6 th December, 2014 for
a period from 1st November, 2018 to 30th November, 2021 on the same
terms and conditions as mentioned in the said License Agreement.
6 Plaintiff received various complaints between 1 st December,
2018 and 1st November, 2019 from consumers/traders regarding quality of
country liquor manufactured and sold by the Defendant under plaintiff's
ssm 5 ia897.20-in-comip309.20.doc
said relevant trade marks/labels. It is contended by the Plaintiff that the
Defendant was once again in breach of its lawful obligation as agreed in
Clause No.5 of License Agreement. By its notice/letter dated 3 rd November,
2019, Plaintiff called upon Defendant to suspend production and/or
dispatch of (i) Deshi Daru Tango Punch, (ii) Deshi Daru Tango Punch
Santra and (iii) Deshi Daru Sakhu Santra Tango Premium, which were
being sold under the Plaintiff's trademarks/labels.
7 After receiving Plaintiff's notice/letter dated 3 rd November,
2019, Defendant in fact stopped using Plaintiff's said relevant
trademarks/labels upto December, 2019. That, the Plaintiff received a
letter on 24th January, 2020 from Defendant, informing it about an ex-parte
ad-interim order obtained by it in Special Civil Suit No.95 of 2020 by the
Civil Judge, Senior Division, Pune on 21st January, 2020, injuncting Plaintiff
from disturbing/interfering with production of country liquor under the
Plaintiff's said trade marks/labels. The Defendant in the said Suit has
contended that, there was an 'oral assignment' of the said trade marks in its
favour. It is contended by the Plaintiff that the said stand was contrary to
the License Agreement which expressly stipulated that, it constituted the
entire agreement between the parties.
8 By a letter dated 30 th January, 2020, addressed to the
Commissioner of the State Excise, the Defendant submitted a photocopy of
the said License Agreement executed between the Plaintiff and Defendant
ssm 6 ia897.20-in-comip309.20.doc
and renewal letter of license (Lease) issued by the Plaintiff.
In this brief premise, Plaintiff filed present Suit for
infringement of its trade marks/labels/copyrights and has filed present
Application for temporary injunction against the Defendant.
During the course of arguments of the present Application, it is
contended by the Plaintiff that, between 9 th March, 2020 and 1st February,
2021, the Defendant did not manufacture, vend or sale goods bearing
Plaintiff's said relevant trade marks. That, as per the record maintained by
Excise Department, the Defendant once again started manufacturing and
selling country liquor bearing Plaintiff's relevant trade marks/labels from
February, 2022.
9 The authorized representative of Defendant has filed Affidavit-
in-Reply dated 17th February, 2020 to the present Application.
It is the defence of the Defendant that, the License Agreement
dated 6th December, 2014 was and is a 'sham document' as it was never
acted upon. That, the intention of the parties herein for executing the said
document can be gathered from the 'Share Purchase and Share Holders
Agreement' dated 2nd August, 2014. The Plaintiff had given perpetual 'Oral
License/Verbal License' to use the said trade marks/labels/copyright of said
logo to the Defendant. That, as per the oral agreement/understanding
between the parties, the said oral license was to remain in force for
perpetuity as it was co-extensive with the Share Purchase Agreement dated
ssm 7 ia897.20-in-comip309.20.doc
2nd August, 2014. It is contended by the Defendant that, there is no
material on record to show that the goods which were manufactured by the
Defendant were of inferior quality. The bone of contention in defence by
the Defendant is that, an oral license of trade marks is permissible under
the common law even after the enactment of Trademarks Act, 1999 and
such a defence adopted by it, is permissible under the existing law.
Defendant has therefore prayed that the present Application may be
dismissed.
10 I have heard extensive and elaborate arguments of the learned
counsel for the respective parties and have also perused Written
Submissions filed by them. This Court feels that, with a view to avoid
verbiage, it is not necessary to reproduce all the arguments advanced by
both the learned counsel for the respective parties and the catena of the
decisions cited by them.
11 As noted earlier, the entire thrust of the contention of the
Defendant is that, the Plaintiff has granted oral/verbal license to it for use
of said trade marks/labels for perpetuity and the same is permissible under
the general law.
It is important to note here that, the Defendant herein had
preferred an Appeal from Order (Stamp) No.3938 of 2020 against the
Order dated 25th February, 2020 passed by 19th Joint Civil Judge, Senior
Division, Pune, below Exh-5 in Special Civil Suit No.95 of 2020 filed by it,
ssm 8 ia897.20-in-comip309.20.doc
thereby refusing to grant interim relief in favour of the Defendant. The
facts and documents involved in present case are same as are involved in
the said Appeal from Order (Stamp) No.3938 of 2020 preferred by the
Defendant.
12 This Court by its Judgment dated 6 th June, 2022 has dismissed
the said Appeal from Order. In the said Judgment, after scrutinizing the
said two agreements i.e. Share Purchase and Share Holders Agreement
dated 2nd August, 2014 and License Agreement dated 6th December, 2014
and other relevant documents and after taking into consideration the
defence adopted by the Defendant herein has held that; there is no clause
of oral license or even oral assignment or verbal assignment in the Share
Purchase Agreement dated 2nd August, 2014 in favour of the Defendant; the
License Agreement dated 6th December, 2014 is determinable and was
terminated by notice/letter dated 3 rd November, 2019; the plea of 'oral
license' is adopted only to overcome the disability in the pleadings in the
plaint of Suit No.95 of 2020 filed by the Defendant. In the said Judgment,
this Court by relying on a decision of the Hon'ble Supreme Court in the case
of Mumbai International Airport Private Limited Vs. Golden Chariot Airport
& Anr. reported in (2010) 10 SCC 422, has held that, the Defendant is
changing stances convenient to it, by adopting different pleas at different
stages of the litigation and is not consistent in its pleadings. It is held
therein that, the plea of Defendant of 'Oral License' is a palpably sham plea
ssm 9 ia897.20-in-comip309.20.doc
adopted by it.
The Defendant has taken contrary plea herein than what is
pleaded by him in the plaint of Special Civil Suit No.95 of 2020 filed by it.
Therefore, with further modification to the above observations, it is hereby
held that, the defence of Defendant of oral/verbal license is not only
palpably sham but moonshine too.
The observations made and findings recorded by this Court in
its Judgment dated 6th June, 2022 passed in Appeal from Order are mutatis
mutandis applicable to the present case and needs no further elaboration in
that behalf.
13 In view of the above, this Court is of the considered opinion
that, the Applicant/Plaintiff has made out a strong prima facie case to grant
temporary injunction in its favour against the Defendant. It is needless to
mention that the balance of convenience lies in favour of the
Applicant/Plaintiff. As the Defendant has claimed for liquidated damages
in Special Civil Suit No.95 of 2020, the Defendant will not suffer any
irreparable loss, least to say, monetary loss, if injunction is granted against
it.
14 As a consequence of the above, Interim Application is allowed
in terms of prayer clauses (a), (b), (d), (e), (g), (h) and (j).
15 At this stage, Dr. Chandrachud, learned counsel for the
Defendant submitted that, the Defendant is using the trademarks/labels of
ssm 10 ia897.20-in-comip309.20.doc
Plaintiff since December, 2014 and are in continuous use of it. He therefore
prayed that, the operation and implementation of the present Order may be
stayed for a period of four weeks from today, to enable the Defendant to
prefer an Appeal.
16 Mr. Gorwadkar, vehemently opposed the said prayer. He
submitted that, the said prayer may not be considered as the License
Agreement has already been legally terminated by his client by issuing
Notice/letter dated 3rd November, 2019.
17 As observed in Judgment dated 6th June, 2022 passed in Appeal
From Order (Stamp) No.3938 of 2020, the parties herein are governed by
the License Agreement dated 6th December, 2014. That, the Plaintiff has
properly and legally terminated the said License Agreement by its
notice/letter dated 3rd November, 2019 and since then, the Defendant is
prohibited from using the said trademarks/labels/logo owned by the
Plaintiff.
18 In view therefore, this Court is of the opinion that, it is not
necessary to grant stay to the operation and implementation of the present
Order. The said prayer is accordingly rejected.
(A.S. GADKARI, J.)
Digitally signed
by SANJIV
SANJIV SHARNAPPA
SHARNAPPA MASHALKAR
MASHALKAR Date:
2022.06.06
17:20:57 +0530
