Indian Herbs Research & Supply Co. ... vs Lalji Mal And Anr.
2001 Latest Caselaw 1604 Del

JUDGMENT

Sharda Aggarwal, J.

1. The application under Order 39 Rule 1 & 2 CPC for temporary injunction has been moved by the plaintiff in the suit for perpetual injunction to restrain the defendants from infringing their registered trade mark "HIMALAYAN BATISA" and from using the artistic work/label registered under the Copy Right Act, 1957 in respect of "ayurvedic veterinary medical preparations" and from passing off their goods under the offending trade mark "HIMALAYA BATISA" or under any other trade mark/label which may be identical with and/or deceptively similar to the plaintiffs registered trade mark.

2. Plaintiffs have been carrying on their business of manufacturing and marketing of "ayurvedic veterinary medical preparations" since 1956 under the trade mark/label "HIMALAYAN BATISA" which is duly registered in the name of the plaintiffs under the Trade & Merchandise Marks Act, 1958 (in short the Act). The plaintiff No. 1 is also the owner of copy right of the artistic work of the label consisting of "HIMALAYAN BATISA" which is duly registered under the Copy Right Act, 1957. The allegations are that the products of the plaintiffs marketed under the trade mark and artistic label "HIMALAYAN BATISA" connote and denote the goods and merchandise of the plaintiff's origin and none-else. Plaintiffs claim that sale of aforesaid goods under the registered trade mark and artistic label runs into crores of rupees. They claim to have acquired an enviable goodwill in the minds of the purchasing public and the trade, and "ayurvedic veterinary medical preparations" manufactured by them and marketed under the impugned trade mark and artistic label and exclusively identified, recognised and associated with plaintiffs.

3. Earlier in the year 1985 Sohan Lal ji, father of defendant No. 1 infringed the trade mark of the plaintiff by manufacturing and selling the products under the trade mark "HIMALAYA BATISA No. 777" which was phonetically and deceptively similar to that of the plaintiff's trade mark "HIMALAYAN BATISA". The colour combination, get up, lay out and arrangement of the label was also copied. The plaintiffs served a notice on Sohan Lal ji calling upon him to stop is user of the offending trade mark, in response to which he undertook in his reply to stop such user. Sohan Lal ji died in 1986 but his son, defendant No. 1, Lalji Mal, continued with the said deceitful infringement. Plaintiff filed a suit No. 15/86 for perpetual injunction on 16th July, 1986 against defendant No. 1 in the court of District Judge, Saharanpur. That suit was compromised under Order 23 Rule 3 CPC. Defendant No. 1, being the sole proprietor of Moti Kiryana Stores, gave an undertaking to the Court that in future he would not use the trade mark "HIMALAYA BATISA No. 777". The said suit was decreed in terms of the compromise on 11th March, 1987. Defendant No. 1, thereafter closed his firm M/s Moti Kiryana Stores and started a new firm M/s Saharanpur Batisa Co., Bhiwani (defendant No. 2) and again started using the trade mark "HIMALAYA BATISA" and using the same on the cartons which was identical and/or deceptively similar to the registered trade mark of plaintiffs. The plaintiffs on coming to know about this infringement filed in execution application in December, 1995 which was transferred to the Court of District Judge, Bhiwani. Defendant No. 1 made a statement in the execution petition that he was not manufacturing and marketing under the trade mark "HIMALAYA BATISA No. 777" and after closing down his earlier company he had started using the trade mark 'HIMMATWALA HIMALAYA BATISA' for which he had obtained a registered trade mark number. On this statement, the execution petition was dismissed. In the revision petition, preferred by the plaintiffs, Punjab & Haryana High Court set aside the order of dismissal of the execution petition and remanded it back for deciding the same after recording evidence, if need be.

4. Since the defendants continued to infringe the plaintiffs registered trade mark and design work "HIMALAYAN BATISA" and continued to market their products under the identical/deceptively similar trade mark, plaintiffs filed the present suit for injunction as the defendants continued infringement of plaintiff's registered trade mark, gave them a fresh cause of action. The plaintiffs specifically allege that in the second week of July, 2000, they came to know that defendants were still continuing to infringe the registered trade mark of the plaintiffs and the infringement and passing off was at Delhi also. The allegations are that the goods of both the parties are being sold within the jurisdiction of this Court and defendant's goods are being passed of in a clandestine manner.

5. The application for interim injunction is contested by defendants raising host of technical objections. The main objections are in fact three in number. Firstly, the defendants have raised the objection regarding territorial jurisdiction of this Court. Second objection relates to the non-disclosure of cause of action and third relates to the maintainability of the suit in view of pending execution petition in Bhiwani for executing compromise decree dated 11th March, 1987 in Suit No. 15/86. The present suit is alleged to be barred under various provisions of the Code of Civil Procedure.

6. Before dealing with the prime facie case on merits, it would be appropriate to deal with the technical objections touching the maintainability of the suit. At the point of want of territorial jurisdiction of this Court, defendants contentions is that parties to the suit are not based in Delhi. The Court of the first instance in Saharanpur (U.P.) and the Executing Court is that of Bhiwani (Haryana). The defendants are not selling their goods under the trade mark/copy right in Delhi. NO cause of action wholly or in part has arisen in Delhi, giving jurisdiction to Delhi Courts. Learned counsel for the plaintiffs submits that at the stage of deciding an application for interim injunction, to determine the jurisdiction of the court, averments made in the plaint alone are sufficient. It is submitted that at this state, defense of the defendants has not to be gone into. It is contended that the question of jurisdiction is a mixed question of facts and law and it cannot be decided at the stage of deciding the application for temporary injunction. Only the averments made in the plaint can be looked into. It is submitted that plaintiffs have pleaded necessary facts in the plaint to invoke territorial jurisdiction of this Court. Para Nos. 27 and 28 of the plaint relevant for determination, whether prima facie this Court has territorial jurisdiction or not, read as under:

27. That the cause of action to file the present suit against the present defendant firstly arose in December 1996, when the plaintiff filed an execution petition and thereafter a fresh cause of action arise in the 2nd week of July, when the plaintiff came to know that the defendant is still continuing his activities and infringing the registered trade mark as well as the registered copyright of the plaintiff under the title "Himalaya Batisa". The cause of action is still continuing form day to day and is still subsisting unless the defendants are restrained from carrying on their unlawful and illegal trade activities, within the territorial jurisdiction of this Hon'ble Court. Further the cause of action for the suit arose at Delhi where the infringement of the plaintiff's reputed and registered trade mark and passing off committed by the defendants came to the notice of the plaintiffs and de die in diem thereafter as the defendants are still persisting in their illegal and unlawful activities of passing off within the territorial jurisdiction of this Hon'ble Court.

28. The jurisdiction of this Hon'ble Court is also attracted under Section 62(2) of the copyrights Act, 1957, since the defendants have copied the entire artistic work in the label entitled "Himalaya Batisa" as for the registered artistic work in the label entitled "HIMALAYAN BATISA" of the plaintiff under the Copyright Act, 1957. Therefore, this Hon'ble Court has got the territorial Jurisdiction to entrain and try the instant suit, under Section 62(2) of the Copyright Act, 1957. That the goods of both the parties are also being sold within the jurisdiction of this Hon'ble Court. The defendant's goods are being passed off in clandestine fashion.

7. A reading of the above two paras indicate that plaintiffs have claimed jurisdiction of Delhi High Court on the ground that infringement of plaintiff's reputed and registered trade mark and passing off action committed by defendants came to their notice in the second week of July, 2000 and de die in diem thereafter as the defendants are persisting in their illegal and unlawful activities of passing off their products under the offending trade mark as that of plaintiffs within the territorial jurisdiction of this Court. It is claimed that goods of both the parties are being sold in Delhi. Secondly, the jurisdiction of this Court is also claimed under Section 62(2) of Copyright Act, 1957. It is submitted that the allegations in the plaint clearly indicate that prima facie Delhi courts have territorial jurisdiction to entertain the present suit. The support his contentions, learned counsel for the plaintiffs has placed reliance on John Richard Brady and Ors. v. Chemical Process Equipments P. Ltd. It was a suit for permanent injunction restraining the defendants form infringing their copyright, from passing off defendant's products as those of plaintiff's and for rendition of accounts. On an application moved by plaintiff for interim injunction, defendant raised an objection regarding territorial jurisdiction of Delhi High Court. The court after considering the pleadings of parties held as under:-

"The plaintiffs have invoked jurisdiction of this Court under Section 62(2) of the Copyright Act, 1957 (hereinafter referred to as the Act) on the plea that the plaintiffs carry on business in Delhi, within the local limits of the jurisdiction of this Court. This is denied by defendants. This is a mixed question of facts of law. It cannot be decided at this state. Only averments made in the plaint can be seen at this stage. The plaintiffs have pleaded the necessary facts in the plaint to invoke territorial jurisdiction of this Court."

8. Further reliance has been placed on 1998 PTC 18 (DB) 260 P.M. Diesels Ltd. v. Patel Field Marshal Industries. In the said case, plaintiff's application for interim injunction pending disposal of the suit was dismissed by learned Single Judge holding that plaintiff failed to prima facie show the territorial as well as pecuniary jurisdiction of this Court irrespective of merits. Plaintiff preferred an appeal before Division Bench of this Court. The facts of the said case show that both the plaintiff and defendant were residing and had been ordinarily working in Rajkot. Plaintiff had claimed the jurisdiction of Delhi courts on three counts. Firstly, in view of Section 62 of Copyright Act and secondly in view of the fact that defendant and sought registration of trade mark for sale at Delhi as well and, therefore, plaintiff was entitled to restrain the threatened sale by defendant at Delhi. Thirdly, it was claimed that goods under the impugned mark were sold at Delhi and plaintiff's right violated at Delhi. The Division Bench held that at the time of deciding an application for interim injunction, jurisdiction of Court did not depend upon the defense taken by the defendant and it was the allegations made in the plaint which decide the forum. The Division Bench relying on , Tata Oil Mills Co. Ltd. v. Reward Soap Works and , Jawahar Engineering Co. and Ors. v. Jawahar Engineering Pvt. Ltd. held that in view of specific averments made in the plaint that the goods of the plaintiff under the registered trade mark and the goods of defendant under the impugned trade mark were sold in the union territory of Delhi and defendants had violated the plaintiffs' statutory rights, and the jurisdiction of Delhi Courts was also attracted under Section 62(2) of the Copyright Act, 1957, prima facie Delhi courts and territorial jurisdiction to entertain the suit and grant temporary injunction.

9. Applying the above discussed legal position and referring to the averments made int he plaint, it is held that prima facie, Delhi courts have territorial jurisdiction to try the present suit. There are specific allegations in the plaint that plaintiffs and come to know in the second week of July, 2000 that defendants were still continuing their activities and infringing the registered trademark and copyright of the plaintiffs by using the impugned trade mark 'HIMALAYA BATISA". It is averred that the cause of action is continuing from day to day and is still subsisting till the defendants are restrained from illegal activities of passing off their products under the impugned trade mark in Delhi. There are also specific averments that artistic work in the label of plaintiffs is duly registered under the Copyright Act and the defendants have copied their entire artistic work in the impugned mark "HIMALAYA BATISA".

10. The second objection raised by defendants relate the cause of action. Learned counsel for defendants contends that the present suit is based on the same cause of action on which earlier sit, decreed on the basis of a compromise, was based. No doubt, the previous suit which was decreed in the year 1987 by way of a compromise decree was filed by the plaintiffs against defendant No. 1, who at that time was the proprietor of M/s Moti Kiryana Store, Bhiwani and the suit was for perpetual injunction for restraining of defendant from infringing the registered trade mark "HIMALAYAN BATISA" of the plaintiffs by using the trade mark "HIMALAYA BATISA No. 777" for their products and passing off the same as that of the plaintiffs. But the learned counsel for the plaintiffs contends that each infringement of the plaintiffs trade mark gives rise to a fresh cause of action in their favor. It is submitted that wherever and whenever a fresh deceitful act is committed, the person deceived would have a fresh cause of action in his favor. It is submitted that every time when a person passes off goods as that of another he commits the act of such deceit. Likewise when ever and wherever a person commits breach of a registered trade mark of another he commits recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action each time of such infringement to the aggrieved party. It is submitted that the previous suit which ended into a compromise decree on the basis of an undertaking given by defendant No. 1 and the execution proceedings pending in Bhiwani Court, do not bar the filing of the present suit as it is based on continuing and fresh cause of action, Reliance in this regard is placed by counsel for the plaintiffs on 1997 PTC 17 (SC) 98, Bengal Waterproof Ltd. v. Bombay Waterproof Mnfg. Co. The plaintiff in the said case was the registered owner of trade mark 'DUCK BACK' where as the defendant company was manufacturing and selling similar products under the trade mark 'DACK BACK' which was phonetically and visually similar to the plaintiff's trade mark. The plaintiff alleging infringement and passing off its trade mark filed a suit for injunction against the defendants in 1980 in City Civil Court, Hyderabad. That suit was dismissed on the ground that there was no infringement of plaintiff's trade mark. After two years it again came to the notice of plaintiff that defendant was infringing the plaintiff's trade mark and passing off its products under the impugned trade mark as that of the plaintiff's. They filed a second suit in the same Court seeking permanent injunction against the defendant. The defendant claimed that the suit being based on the same cause of action was barred by res-judicata and Order 2 Rule 2 (3) CPC. The Trial Court dismissed the second suit as barred and the High Court upheld the said order. The plaintiff moved the Supreme Court of India in Special Leave Petition. Supreme Court after considering the provisions of Order 2 Rule 2(3) CPC and relying upon a Constitution Bench judgment of the Supreme Court in the case of Gurbax Singh v. Bhoore Lal, held that in the case of a continuing cause of action or recurring cause of action, bar of Order 2 Rule 2(3) CPC could not be invoked. On scrutiny of the plaint in the said case, it was found that there were relevant averments regarding the fresh cause of action which had accrued in favor of the plaintiff after the dismissal of the earlier first suit. It was held that the cause of action for filing the suit was continuous and a recurring act of breach or infringement of plaintiff's trade mark by the defendants till the filing of the second suit gave a recurring and fresh cause of action at each time of such infringement to the plaintiffs. It was held that the infringement of registered trade mark carried on from time to time would give rise to a recurring cause of action to the holder of a trade mark to make a grievance about the same and similarly the impugned passing off actions would also give rise to a recurring cause of action to the aggrieved person. It was held as under:

"It is now well settled that an action for passing off is a common law remedy being an action is substance of deceit under the Law of torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favor. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliefs, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts.

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In case of continuous causes of action or recurring causes of action bar of Order 2 Rule 2 Sub-rule (3) cannot be invoked. In this connection, it is profitable to have a look at Section 22 of the Limitation Act, 1963. It lays down that "in the case of a continuing breach of contract or in the case of a continuing tort, a fresh period of limitation beings to run at every moment of the time during which the breach or the tort, as the case may be continues'. As act of passing off is an act of deceit and tort every time when such tortuous act or deceit is committed by the defendant, the plaintiff gets a fresh cause of action to come to the Court by appropriate proceedings. Similarly infringement of a registered trade mark would also be continuing wrong as so long as infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing a fresh suit would obviously arise in favor of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing off actions alleged against the defendant."

11. Learned counsel for the defendants has tried to distinguish this authority saying that in the said case, previous suit was dismissed whereas in the case in hand, previous suit was decreed in terms of compromise. The distinction drawn by learned counsel, to my mind, is of no avail. In a case of infringement of trade mark or copyright or passing off action, dismissal or decreeing of the earlier suit is immaterial as by each deceitful act of the defendant by way of committing breach of registered trade mark of another person, he commits a recurring act of breach and infringement of such trade mark which gives rise to a recurring and fresh cause of action each time.

12. Coming to the third objection raised by the defendants, contention of learned counsel for the defendants is that in view of the pendency of the execution petition which is a contiuation of the suit decreed on the basis of compromise, present suit on the same cause of action is barred under various provisions of the Code of Civil Procedure like Sections 10, 11 and 47 apart from Order 2 Rule 2(3) CPC. The previous compromise decree shows that defendant No. 1 had made a statement and gave an undertaking that he would stop using the offending trade mark 'HIMALAYA BATISA NO. 777'. He, however, changed the firm name to M/s Saharanpur Batisa Co. and continued to infringe the plaintiff's trade mark and copyright and when plaintiff came to know of the said continued infringement, he filed execution petition in the year 1995 where again the defendant No. 1 gave a statement that he had stopped using the offending trade mark and had started using the trade mark 'HIMMATWALA HIMALAYA BATISA" for which he had a registration number. While said execution is still pending, plaintiff came to know that no such trade mark was registered under the Trade & Merchandise Marks Act, 1957 and the defendants were found passing off their products under the offending trade mark in Delhi as well and were infringing the plaintiff's registered trade mark with impunity. Defendants have admitted in the written statement that their trade mark was not registered. While discussing the second preliminary objection, it has already been found that the defendant's deceitful act of infringing plaintiff's trade mark and copyright gave rise to a fresh cause of action in favor of plaintiffs. Since it was a continuous cause of action and plaintiffs present suit is based n a fresh cause of action, the contention of its being barred on account of pendency of the execution petition is not sustainable. Learned counsel for the defendants in this respect placed reliance on the following authorities i.e. Shriram Narayan Dhond and Anr. v. Demu Surya Gaude, 1992 (1) Cr. Civil Cases 41, Nebubala Sardar v. Abdul Aziz Baidya, , Byram Pestonji Gariwala v. Union Bank of India and Ors., Prithvichand Ramchand Sablok v. S.Y. Shide, , R. Rajamma v. Anula Saraswathamma and Ors., and P.K. Vijayan v. Kamalakshi Amma and Ors., . None of the authorities is applicable on facts to the case in hand. In fact, the contentions and arguments of learned counsel in this respect are mis-conceived and mis-directed. The contention of learned counsel for the defendants that the present suit is barred under Section 47 CPC has no substance. In fact, where a suit is based on fresh cause of action, same cannot be held to be no maintainable and barred under Section 47 CPC. In this respect, learned counsel for the plaintiffs has placed reliance with advantage on Ajit Chopra v. Sadhy Ram and Ors., .

13. To establish a prima facie case, learned counsel for the plaintiffs contends that eh plaintiffs having been using the trade mark/label "HIMALAYAN BATISA" or marketing their products i.e. 'ayurvedic veterinary medical preparations' for the last more than four decades and the trade mark is duly registered under the Act and the defendants have copied their trade mark and label by using offending trade mark 'HIMMATWALA HIMALAYA BATISA' which is phonetically and visually similar to that of the plaintiffs. It is submitted that the defendants are also manufacturing and marketing the same products under the deceptively similar trade mark. It is contended that the due to long, continuous, extensive and exclusive use of their reputed trade mark and artistic work 'HIMALAYAN BATISA', plaintiffs have acquired a distinct goodwill in the minds of the purchasers who are primarily farmers and illiterate persons. It is contended that a visual appearance of the cartons/label of the defendants using the offending trade mark and design and art work which is deceptively identical/similar to that of the plaintiffs is likely to deceive the purchasers, who purchase the products of the defendants taking and identifying them as the products coming from the plaintiffs. Learned counsel for the plaintiffs also points out that the plaintiffs have also got registered the artistic design of their mark 'HIMALAYAN BATISA' under the Copyright Act. The plaintiffs have placed on record the carton/label under which they are marketing their products. For comparison, plaintiffs have also placed on record the carton/label using the offending trade mark and design of defendants. On visual comparison of the two cartons/labels, one finds that the lay out, design, get up. colour combination and artistic work on the defendant's carton/label is so deceptively similar that it is difficult to locate dis-similarities at a glance. It appears to be a flagrant and blatant attempt on the part of defendants to copy plaintiff's trade mark and design work for the same products, with a view to deceive the purchasers and exploit and encash the goodwill of the plaintiffs in order to pass of their products as that of the plaintiffs. The offending mark 'HIMMATWALA HIMALAYA BATISA' and the manner of its depiction with the picture of an animal with its design and colour combination leaves no doubt about the intentions of the defendants.

14. Learned counsel for the plaintiffs further contends that the defendants have been continuing to infringe the plaintiff's registered trade mark and copyright. It is pointed out that though defendant No. 1 made a statement in Bhiwani Court in execution proceedings on an earlier compromise decree that he would not use the trade mark 'HIMALAYA BATISA NO. 777' AS HE HAD got registered trade mark 'HIMMATWALA HIMALAYA BATISA' under the Act. In fact no such trade mark of the defendants has been registered till date. The non-registration of their alleged trade mark has been admitted in the written statement. The carton/label placed on record by plaintiffs show that the defendants are marketing their products under the offending trade mark and infringing the registered trade mark and copyright of the plaintiffs with impunity. The defendants simple denial in the pleadings that they are not infringing the plaintiff's trade mark and are not passing off their goods as that of the plaintiffs on the one hand and admitting on the other hand that their trade mark has not so far been registered under the Act gives rise to an inference that defendants are marketing their products and infringing the registered trade mark and copyright of the plaintiffs.

15. In my view, plaintiffs have established a prima facie case of grant of temporary injunction in their favor. The balance of convenience is also in favor of the plaintiffs and against the defendants. The plaintiffs had been using the impugned trade mark and copyright for the last more than four decades and have been manufacturing and marketing their products i.e. 'ayurvedic veterinary medical preparations' there under. It has come on record that defendants had been infringing and violating the plaintiffs registered trade mark and artistic design even on earlier occasions. So much so in the year 1987 a compromise decree was passed by the Court of Saharanpur in favor of plaintiffs on an undertaking given by defendant No. 1 for not using the offending trade mark and passing off its goods which infringed the trade mark and copyright of the plaintiffs. The defendants despite that undertaking did not stop the user of the offending trade mark and in the year 1995 again stated before the Executing Court that they would not use the trade mark 'HIMALAYA BATISA NO. 777' as the trade mark 'HIMMATWALA HIMALAYA BATISA' has been registered in their name under the Act. Defendants, however, continued to infringe the plaintiffs trade mark by marketing their similar products under the offending trade mark even in the year 2000 and as such the plaintiffs were constrained to file the present suit for injunction. As it has been observed above, defendants have themselves admitted that so far their trade mark has not been registered. The balance of convenience is accordingly in favor of plaintiffs and in case the rights of the plaintiffs are not protected by an interim injunction particularly when the defendants are marketing their products under the offending trade mark, it would cause irreparable injury to the plaintiffs. The plaintiffs are entitled to the relief of temporary injunction.

16. Consequently, the defendants, their servants, agents, dealers, representatives and all other persons on their behalf are restrained from carrying on their business of manufacturing and marketing of 'ayurvedic veterinary medical preparations' under the offending trade mark 'HIMMATWALA HIMALAYA BATISA' or under any other trade mark identical with and/or deceptively similar to the plaintiffs reputed trade mark/label 'HIMALAYAN BATISA' during the pendency of the suit.

17. The application is accordingly disposed of.