Calcutta High Court
Amir Biri Factory & Ors vs Mohd. Aslam on 16 January, 2024
IN THE HIGH COURT AT CALCUTTA
(Ordinary Original Civil Jurisdiction)
COMMERCIAL DIVISION
Present:
The Hon'ble Justice Krishna Rao
IA No. GA 4 of 2022
In
CS 211 of 2012
Amir Biri Factory & Ors.
Versus
Mohd. Aslam
Mr. Sarosij Dasgupta
Mr. Avijit Dey
Mr. Biswaroop Mukherjee
... For the plaintiffs.
Mr. Manish Biala
Ms. Amrita Panja Moulick
Mr. Sourajit Dasgupta
... For the defendant.
Hearing Concluded On : 04.01.2024
Judgment on : 16.01.2024
2
Krishna Rao, J.:
1. The defendant has filed the present application being G.A No. 4 of 2022
in C.S No. 211 of 2012 praying for vacating the injunction order passed
by this Court dated 26.06.2012 and 19.07.2012. The plaintiffs have
filed a suit being C.S No. 211 of 2012 against the defendant for
permanent injunction restraining the defendants, its men, assigns,
servants, agents, distributors, representatives or any of them from any
manner infringing and passing off the plaintiff's registered label of
"MAZDOOR BIDI" and ancillary prayers.
2. The plaintiffs have also filed an application in the said suit for grant of
injunction against the defendant and on 26.06.2012, this Court has
passed an ad-interim injunction till 04.07.2012. In the said order, this
Court specified that the limited order of injunction is to enable this
Court to hear the defendant and fixed the matter on 02.07.2012. On
02.07.2012, this Court extended the returnable date till 09.07.2012
and ad-interim order was extended till 13.07.2012 or until further
order whichever is earlier. On 13.07.2012, the ad-interim order was
extended till 23.07.2012 or until further order whichever is earlier.
3. On 17.07.2012, the plaintiff has filed affidavit-of-service and this Court
being satisfied with the service upon the defendant but none appeared
on behalf of the defendant had confirmed the ad-interim order on
19.07.2012.
4. Mr. Manish Biala, Learned Advocate representing the defendant
submitted that the defendant came to know about the proceedings of
C.S. No. 211 of 2012 only in the month of February, 2019 when
objection was raised in the defendant's trade mark application No.
4001083 filed before the Trade Marks Registry. Thereafter, the
defendant had contacted the Learned Advocate at Kolkata to enquire
about the status of the proceeding and the defendant came to know
that the plaintiffs have not taken any steps for issuance of writ of
summons for the last seven years after filing of the suit.
5. The defendant has filed an application being G.A No. 2638 of 2019 (new
G.A 3 of 2019) in C.S No. 211 of 2012 for dismissal of the suit for not
taking steps for issuance of writ of summons. The plaintiffs have also
filed an application being G.A No. 864 of 2019 (New G.A No. 2 of 2019)
seeking extension of time to lodge writ of summons. This Court by an
order dated 05.02.2020 has disposed of both the applications by
allowing the plaintiffs to lodge the writ of summons and to proceed with
the suit, subject to payment of cost of Rs. 50,000/- which is to be paid
to the West Bengal Legal Aid Services, Kolkata.
6. Mr. Manish Biala submitted that the plaintiffs have intentionally
concealed and suppressed material facts and have made false and
misleading statement in the injunction application and played fraud
upon the Court. He submits that the trade mark of the plaintiff
"MAZDOOR BIDI" was granted to the plaintiff with the condition that
"Registration of this trade mark shall give no right the exclusive use of
descriptive matters." He submits that in trade mark application No.
862656 of the plaintiff it is mentioned that "Biri included in Class 34,
for sale in the State of West Bengal".
7. Mr. Biala submitted that plaintiffs were granted registration of their
trade mark 'BIDI' to be sold only in the State of West Bengal. He
submits that plaintiffs were not granted any right in the descriptive
matters within their label and the plaintiffs have a right only in the
label as a whole, and not in part of the said label. He submits that the
plaintiff has no right to seek injunction against any person including
the defendant outside the State of West Bengal.
8. Mr. Biala submitted that the plaintiff has no right to obstruct the
defendant from using his trademark in different area i.e. in Uttar
Pradesh and Uttarakhand. He submits that the plaintiffs have made a
false claim that the defendant's product being offered for sale in
Kolkata but the defendant sells its goods only in Uttar Pradesh and
Uttarakhand and the defendant is not selling its goods directly or
indirectly in the State of West Bengal.
9. Mr. Biala submitted that the right of the plaintiffs in their registered
trade mark is subject to the provisions of Section 34 of the Trade Marks
Act, 1999 which provides that the proprietor of a registered trade mark
cannot restrain the use of a trademark by person who is a prior user of
the trade mark. He submits that as per the case of the plaintiffs, they
are using the trade mark since the year' 1997, whereas the defendant is
using the trademark since the year' 1972.
10. Mr. Biala submitted that the defendant came to know that the plaintiffs
have filed another suit against some third party before this Court being
C.S No. 145 of 2021 wherein the plaintiff has claimed the user date of
their trade mark from the year 1979. He submits that the plaintiffs
have not established any prima facie case of passing off as the
defendant does not sell his goods in the State of West Bengal.
11. Mr. Biala submitted that the functioning of regular Courts were
suspended from the month of March 2020 due to the pandemic COVID-
19 and the defendant being a resident of Amroha, Uttar Pradesh could
not take further steps in the proceeding and at the earliest possible
opportunity, the defendant has taken steps by filing the present
application for vacating the injunction order granted by this Court.
12. Mr. Sarosij Dasgupta, Learned Advocate representing the plaintiffs
submitted that this Court has confirmed the order of ad-interim
injunction on 19.07.2012 on being satisfied with the affidavit of service
filed by the plaintiffs showing that the notice of injunction application
was duly served upon the defendant at Amroha. He submits that in the
month of March, 2019, the defendant has filed an application seeking
dismissal of the suit on the ground that despite the plaintiffs obtained
an interim order dated 26.06.2012, the plaintiffs apparently did not
takes any steps in the suit. He submits that from the averments of the
application filed by the defendant it is evident that the defendant was
aware of the injunction order dated 26.06.2012.
13. Mr. Dasgupta submitted that as per the order passed by this Court, the
plaintiffs have deposited an amount of Rs. 50,000/- to the West Bengal
Legal Services Authority, Kolkata and the defendant has accepted the
plaint and had filed written statement thus the defendant has
consented the order dated 26.06.2012. He submits that after the period
of 10 years, the defendant has filed the present application for vacating
the order of injunction which already attained finality in the eye of law.
He submits that the notice of the injunction application was duly
served upon the defendant but the defendant did not choose to appear
before this Court and this Court after being satisfied with the service
report has confirmed the ad-interim injunction.
14. Mr. Dasgupta submitted that during the subsisting of the order of
injunction, the defendant had filed an application for registration of
"MAZDOOR BIRI" with inconsequential modifications, on 17.11.2018
before the Trade Mark Registry since the trade mark application of the
defendant being No. 2266186, dated 13.01.2012, has been refused for
registration by the authority. He submits that on comparison of the
mark of the plaintiffs and the mark used by the defendant it is
evidently clear that the defendant deliberately, knowingly and
dishonestly adopted and used the mark "MAZDOOR BIDI". He submits
that the plaintiffs are the owners of the copyright in the artistic label in
a particular colour combination, appended with unique and novel
features and thus the plaintiffs are entitled to exclusively reproduce
and publish and use the said artistic label, in any form alone.
15. Mr. Dasgupta submitted that inspite of the order of injunction passed
by this Court, the defendant is still using the impugned mark and label
on their goods. He submits that the defendant only with the intention
to stall the contempt application has filed the present application for
vacating the stay order. He submits that it is not the contention of the
defendant that the marks of the plaintiffs and the defendant are
different and distinct from each other. He submits the defendant had
proceeded on the incorrect basis that the registration of mark of the
plaintiffs does not give any exclusively right to the plaintiffs. He
submits that the defendant has admitted the mark of the defendant is
similar to the mark of the plaintiffs.
16. Mr. Dasgupta submitted that the plaintiffs have various registered
marks involving the word "MAZDOOR" which is the principal mark of
the plaintiff. One of them being trade mark No. 1809172 was registered
without any restrictions and conditions or association. Only the trade
mark No. 862656, was registered subject to confining goods for sale in
the State of West Bengal. He submits that in between the year' 2016 to
2018, the defendant had applied for removal of the trademarks of the
plaintiffs being Trade Mark Nos. 2330773, 1803929, 1809172,
2301814 and 862656, by filing rectification applications under Section
57(2) of the Trade Marks Act, 1999 before the Learned Registrar of the
Trade Marks at Kolkata but all the applications have been dismissed as
abandoned. He submits that the documents relied by the defendant
with regard to the prior user since 1972 are the forged documents and
the same is required to be adjudicated during trial.
17. Order XXXIX, Rule 4 of the Code of Civil Procedure, 1908 reads as
follows :
"4. Order for injunction may be
discharged, varied or set aside.- Any Order for
an injunction may be discharged, or varied, or set
aside by the court, on application made thereto by
any party dissatisfied with such order:
[Provided that if in an application for
temporary injunction or in any affidavit
supporting such application, a party has
knowingly made a false or misleading
statement in relation to a material particular
and the injunction was granted without giving
notice to the opposite party, the court shall
vacate the injunction unless, for reasons to be
recorded, it considers that it is not necessary
so to do in the interests of justice:
Provided further that where an Order for
injunction has been passed after giving to a
party an opportunity of being heard, the Order
shall not be discharged, varied or set aside on
the application of that party except where
such discharge, variation or setting aside has
been necessitated by a change in the
circumstances, or unless the court is satisfied
that the Order has caused undue hardship to
that party.]"
18. The defendant alleged that the plaintiffs have obtained an order of
injunction without issuance of notice to the defendant and making false
and misleading statements. Initially on 26.06.2012, this Court has
passed an ad-interim injunction in favor of the plaintiffs till
04.07.2012. This Court specified that this limited order of injunction
was passed enabling this Court to hear the defendant and fixed the
matter on 02.07.2012. As notice upon the defendant could not be
served, interim order was extended from time to time. On 17.07.2012,
the plaintiff has filed affidavit of service and this Court satisfied with
the service upon the defendant at Uttar Pradesh Address but the
defendant did not entered appearance and confirmed the interim dated
26.06.2012. This Court considered the affidavit of service filed by the
plaintiffs on 17th July, 2012 wherein it reveals that the plaintiffs have
sent first notice dated 26.06.2012 to the defendant at both the
addresses i.e. Amroha and Kolkata by speed post and the second
notice on 28.06.2012 also in both the addresses by speed post. The
plaintiffs have enclosed track reports of the postal authorities with
respect of the above notices sent to the defendant wherein it reveals
that the first notice was delivered at Dharamtala Post Office, Kolkata on
29.06.2012 and at Amroha Post Office, Uttar Pradesh on 30.06.2012.
The second notice was delivered on 30.07.2012 at Dharamtala Post
Office, Kolkata on 03.07.2012 and on 02.07.2012 at Amroha Head
Office, Uttar Pradesh. The plaintiffs have also enclosed two numbers of
speed post envelops wherein address of Kolkata is mentioned and in
the affidavit it is stated that the notices sent at Kolkata address were
not served to the defendant and returned unserved with the
endorsement not known. After scrutinizing the affidavit of service it is
found that the track report of Kolkata address mentioned that delivered
to Dharamtala Post Office but the speed post cover returned unserved
with the remarks not known the similar report reveals from the track
report with respect of Amroha Address that the speed post packet was
delivered to Amroha Head Office and not to the party concern.
Considering the above, it is very difficult for this Court to accept the
submissions of the plaintiffs that notices were served upon the
defendant at Amroha address.
19. The plaintiffs have filed the suit praying for the following reliefs:
"a) Decree of permanent injunction restraining the
Defendant, by itself its men, assigns,
servants, agents, distributors, representatives
or any of them from in any manner infringing
the Plaintiff's registered label mark by use of
mark being Annexure "G" and "H" hereof or
any other mark deceptively similar thereto;
b) Decree of permanent injunction restraining the
Defendant its men, assigns, servants, agents,
distributors, representatives or any of them
from passing off and enabling others to pass
off the Defendants' products mark by use of
mark being Annexure "G" and Annexure "H"
hereof or any other mark deceptively similar
thereto or in any other deceptively manner
whatsoever;
c) Decree of permanent injunction restraining the
Defendant, by itself its men, assigns,
servants, agents, distributors, representatives
or any of them from in any manner infringing
the Plaintiff's copyright in the artistic work by
use of labels and/or wrappers being
Annexure "G" and "H" hereof
d) Decree for delivery up and cancellation of biri
wrappers containing the mark Majdur and a
similar get up as that of the Plaintiff;
e) Decree of perpetual injunction restraining the
Defendant his men, associates, dealers,
agents and servants and anybody claiming
through them from manufacturing, selling,
stocking, making available or offering for sale,
biris under the mark Majdur or any other
trade mark which is identical or deceptively,
similar to the Plaintiff's mark Majdur."
20. The label marks of the defendant appearing at Annexure 'G' and 'H' are
as follows :
Annexure 'G' Annexure 'H'
21. It is the case of the defendant that the plaintiffs have suppressed the
material facts and mislead this Court and obtained an order of
injunction that the plaintiff's trade mark application No. 862656 was
granted registration with the condition that "REGISTRATION OF THIS
TRADEMARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF
DISCRIPTIVE MATTERS" and registration of the said trade mark was
granted in the said application is "BIRI INCLUDED IN CLASS 34, FOR
SALE IN THE STATE OF WEST BENGAL." The plaintiffs have denied
the contentions of the defendant in their affidavit in opposition but
have not disclosed any documents that the conditions as mentioned by
the defendant are not correct. In contrary, the defendant has enclosed
the copy of the application No. 862656 being Annexure 'F' at page 199
of the application under Class 34 which supports the case of the
defendant.
22. In the case reported in 2015 SCC OnLine Cal 6415 (Khan Mohamad
Khan & Ors. -vs- Jam Mohammad Khan), the Coordinate Bench of
this Court held that :
"7. It is no longer res integra that an
application for temporary injunction are decided on
three well recognized principles firstly, prima facie
case, secondly, balance of convenience and
inconvenience and thirdly irreparable lose and
injury. The conduct of the parties before the Court
is also one of the relevant factors which shall
weigh to the Court in an injunction proceeding as a
person who does not come to the Court with clean
hands does not deserve to get an order of
injunction. This Court had an occasion to peruse
the plaint of the title suit No. 73 of 2010 and the
order refusing to pass an injunction wherefrom it
appears, though the claim was restricted to 90
decimal of land but the properties inherited by the
parties from their predecessor were also noticed by
the Trial Court. The injunction is a discretionary
and equitable relief and may disentitle the plaintiff
an order of injunction if there is a suppression of
the material facts. This Court is not oblivion of the
fact that there lies a distinction between the
suppression of the facts and suppression of
material facts. Every facts which do not germane to
the core issue if not disclosed cannot stand in the
way of passing the order of injunction. The material
facts are those which have a direct nexus and
impact on the disputes involved in the suit or a
proceeding and the suppression thereof may
disentitle the plaintiff to have the order of injunction
in his favour. The reference can conveniently be
made to a judgment of the Delhi High Court
rendered in case of Seemax Construction (P)
Ltd. v. State Bank of India reported in AIR 1992
Delhi page-197 wherein it is held that the
suppression of material fact by itself is sufficient
enough to decline the discretionary relief of
injunction in these words:
"10. The suppression of material fact by
itself is sufficient ground to decline the
discretionary relief of injunction. A party seeking
discretionary relief has to approach the court
with clean hands and is required to disclose all
material facts which may, one way or the other,
affect the decision. A person deliberately
concealing material facts from court is not
entitled to any discretionary relief. The court can
refuse to hear such person on merits. A person
seeking relief of injunction is required to make
honest disclosure of all relevant statements of
facts otherwise it would amount to an abuse of
the process of the court. Reference may be made
to decision in The King v. The General
Commissioners for the purposes of the Income-
tax Acts for the District of Kensington, 1917 (1)
King' Bench Division 486 where the court
refused a writ of prohibition without going into
the merits because of suppression of material
facts by the applicant. The legal position in our
country is also no different (See: Charanji
Lal v. Financial Commissioner, Haryana
Chandigarh, AIR 1978 Punjab and Haryana,
326 (FB). Reference may also be made to a
decision of the Supreme Court in Udai
Chand v. Shankar Lal, AIR 1978 SC
265: (1978) 2 SCC 209. In the said decision the
Supreme Court revoked the order granting
special leave and held that there was a
misstatement of material fact and that amounted
to serious misrepresentation. The principles
applicable are same whether it is a case of
misstatement of a material fact or suppression of
material fact."
23. It is the further case of the defendant that the defendant is the prior
user of the said mark as the defendant is using the said mark since
the year 1972 and it is the admitted case of the plaintiffs that the
plaintiffs are using the said mark since 1997. This contention is also
proved by the defendant appearing at Annexure 'F' and 'G' of the
application. Annexure 'C' of the application is the application of the
plaintiffs, wherein the plaintiffs have mentioned the plaintiffs are using
the said mark since the year 1997. The defendant in its application
specifically admitted that the defendant is selling its goods only in the
State of Uttar Pradesh and Uttarakhand and is not selling the said
product in the State of West Bengal either directly or indirectly. It also
reveals that the plaintiffs have not disclosed any documents such as
cash, memo, bills or any other documents to established that the
defendant is selling its goods in the State of West Bengal.
24. In the case reported in (2011) SCC OnLine Cal 1121 (Orient Papers
Industries Ltd. -vs- Jayanta Lamp Industries Pvt. Ltd.), the Hon'ble
Division Bench of this Court held that :
"We have gone through the records of the case
and we find that of the two, the defendant is the
prior user of the word "orient" in its trade name
and trade articles which are, of course, not in the
field of manufacture of electric lamp. However,
when the basis of an action for injunction and
damages is on the allegation of passing off by the
alleged wrongful use of the word "orient" by the
defendant, if it appears that the defendant is the
prior user of the said word, even though in different
fields of articles, in our opinion, no order of
injunction can be passed restraining the prior user
of the word from using the same even in respect of
the specific goods manufactured subsequently by
the defendant.
It is now settled law, that in the field of
passing off, it is not necessary that the nature of
the business conducted by the defendant must be
of the similar nature as that of the plaintiff and a
prior user of a trade mark or trade name may get
an order of injunction restraining the defendant
from carrying on a different type of business in the
same name as that of the plaintiff (Sony Kabushiki
Kaisha v. Mahaluxmi Textile Mills reported in
(2009) 4 ICC 391 (CAL) (FB).
Therefore, in this case, when the plaintiff
started its lamp manufacturing business by taking
the name of "orient", the defendant could
successfully file an action for injunction alleging
passing off against the plaintiff but for not filing
such action, it, at this stage, may not get the relief
of injunction against the plaintiff from using its
trade name "orient" because of the delay
amounting to acquiescence; however, for that
reason, the Court will never grant an injunction in
favour of the plaintiff against the defendant from
using its own trade name which it is using prior to
the user by the plaintiff. In an action of passing off
based on adoption by the defendant of the name
alone and no other distinctive features of the
plaintiff, the first question that a Court will ask the
plaintiff is, are you the prior user of the word you
are complaining to the user of the defendant? If the
answer is in the negative, the Court will refuse
injunction as the first ingredient of the action for
passing off, viz. prior user by the plaintiff, is
absent."
25. In the case reported in 2017 (70) PTC 489 [Delhi] (Columbia
Sportswear Company -vs- Harish Footwear & Anr.), the Hon'ble
Delhi High Court held that :
"10. This position is not quite correct.
Admittedly there are disclaimers qua three such
registrations and as noted supra, they have been
admitted by the plaintiff. This has however not
been detailed by the plaintiff in his plaint. In para
40 an evasive statement has been made that in
order to register an FIR on the plea of disclaimer,
an opinion had been sought from the Registrar of
Trademarks which opinion was in favour of the
plaintiff. This is the end of the matter. There is no
further details of any disclaimer; para 40 relied
upon in the plaint does not disclose that a
disclaimer had been set up by defendant No. 2 or
that the disclaimer is alive and as such the
aforenoted three registrations are not clear; there
being a disclaimer admittedly attached to them.
This in the view of this Court is a concealment
which has been made by the plaintiff for which he
has no explanation."
26. Before filing the present application, the defendant had filed an
application being GA 2 of 2019 (Old GA No. 864 of 2019) for dismissal
of the suit on the ground that the plaintiff had not lodged writ of
summons for about seven years and after filing of the said application,
the plaintiffs have filed an application for extension of time to lodge writ
of summons and this Court by imposing cost upon the plaintiffs
extended the time to lodge writ of summons but in the said application,
the merit of the case was not considered and it cannot be said that the
defendant had abandoned the right to challenge the order of injunction.
27. Considered the circumstances mentioned above, this Court finds that
the plaintiffs have obtained an order of injunction by suppressing the
materials facts by not disclosing that the there is a restriction that the
plaintiff has no exclusive right over the descriptive matter appearing on
the label and the plaintiff is only having right to sell its product within
the State of West Bengal. The defendant has also established that the
defendant is the prior user and the defendant is selling its product in
the State of Uttar Pradesh and Uttarakhand and in affidavit, it is stated
that the defendant is not selling the goods either directly or indirectly to
the State of West Bengal. The plaintiff has also not enclosed any
documents or any evidence that the defendant is selling goods in State
of West Bengal.
28. The affidavit-of-service also does not prove that the notice of injunction
application was served upon the defendant.
29. In view of the above, the ad-interim order dated 26.06.2012 and the
order of confirmation dated 19.07.2012 passed in G.A No. 1604 of 2012
in C.S No. 211 of 2012 are hereby vacated.
30. G.A No. 4 of 2022 in C.S No. 211 of 2012 is allowed.
(Krishna Rao, J.)
Later :
Counsel for the plaintiff prays for the stay of operation of the order for
two weeks. None appears on behalf of the defendant. Considered the
submissions of the Counsel for the plaintiff, this Court finds that the
plaintiff is enjoying interim order since 26.06.2012, accordingly, operation of
the order is stayed for a period of two weeks.
(Krishna Rao, J.)
