Goldtex Furnishing Industries ... vs Security Systems And Anr.
2004 Latest Caselaw 1064 Del

JUDGMENT

Vikramajit Sen, J.

1. By these presents I shall dispose of the Plaintiff's application for ad interim injunction filed in this Suit for permanent injunction restraining infringement of copyright, passing off, delivery up and rendition of accounts of profits has in reality been filed by the father against one of his sons. From the arguments addressed before me it appears that the father has the support of one of his sons, whereas his other two sons are in the opposite camp. The Mark/logo in question is 'Golden' which, being a commonly used word and having a laudatory connotation, can scarcely be appropriated by any one person. The exception can be where this word 'Golden' is written or depicted in a distinct artistic style for which copyright exclusvity can be claimed. This is, in fact, what has been contended in the present case and avowedly 'Golden' has its own distinct style of writing, which would ordinarily attract copyright. It is also not in controversy that the use of the word 'Golden' in i s distinctive manner has been in use for almost half a century. Learned counsel for the Defendant has admitted that the father had started life in humble circumstances and because of the demise of his parents was forced to work from his adolescence and w s therefore uneducated; that the father had set up a flourishing furnishing textile business having gained hands-on experience and expertise in the manufacturing and sale of handloom furnishings under the trademark 'Golden'. It is also not in dispute that Plaintiff No. 2 and his sons had thrived in their business operations as one family unit. The furnishing business was carried on in the name and style of Plaintiff No. 1, that is, M/s. Goldtex Furnishing Industries. The trademark 'Golden' was registered in the name of Golden Industries Limited in 1990. The parties alleged that this was because Plaintiff No. 2 was its Chairman at that time. The Defendants do not dispute or challenge the use of the mark 'Golden' by Plaintiff No. 1 for handlooms. It is also not in controversy that the locks business commenced after the furnishing business in the na e and style of Golden Industries Ltd. in 1991 or thereabout. Defendant No. 2 had been on the Board of Plaintiff No. 1 till differences had erupted between them. The Defendants have not challenged the Plaintiff's rights to use the mark 'Golden' for their roduct. The Mark was freely used by all members of the family.

2. There is a serious debate about the legal efficacy of the registration of the mark 'Golden' under the Copyright Act since the author, namely, Shri Satish Gupta, who is in the camp of Defendant No. 2, was an infant/ minor at that time. I need not go into these intricacies for the reason that the Mark has been used by various members of the family and, therefore, it is of little significance at this stage who was the actual author. In any event if there is some infirmity in the registration it would be u der a cloud for all members of the family. Plaintiff No. 2 cannot assail as well as rely on the copyright.

3. The Plaintiffs and the Defendants manufacture and market distinct products and prima facie, therefore, there can be no grievance as to the passing off. It is true that they are being marketed under the similar 'Golden' logo but no confusion is possible since from the beginning the product has become synonymous or identified with that of Plaintiff No. 2's family which includes Defendant No. 2. The mark 'Golden' is being used by the Plaintiffs along with the word 'Furnishing' and by the Defendants with the word 'Locks'.

4. On differences erupting between the family, a Family Settlement took place in July, 1999. Defendant No. 2 states that he has complied with all the obligations cast on him; but that his father has not performed all the covenants resting on him. I need not go into the details of these transactions pursuant to which Golden Industries Limited came to belong to Defendant No. 2. It appears that the trademark 'Golden' which was in common use of Plaintiff No. 1 came to be registered in favor of Golden Indust ies Ltd., which is now in the control of Defendant No. 2, which has given a License to Defendant No. 1. It is also not in dispute that Defendant No. 1 has been using the trademark since 2001.

5. It is admitted that Plaintiff No. 2 had approached the Company Law Board seeking reliefs similar to those contained in the present Suit and that those proceedings had been unconditionally withdrawn.

6. At this stage of the proceedings the only conclusion that can be drawn is that the mark 'Golden' has been freely used amongst the family of Plaintiff No. 2 which includes Defendant No. 2 for decades. At the time when its use had commenced there was no di fferentiation between Plaintiff No. 2 and any of his sons as they were carrying on business jointly. In view of the user of the mark 'Golden' for at least one decade, it is difficult for me at this stage to detect a prima facie case in favor of the Plaintiff, as would also be the case in the event that the roles are reversed and Defendant No. 2 becomes the Plaintiff and claims an injunction against his father. The discord in the family appears to have arise when Plaintiff No. 2 was removed as the Chairman of Golden Industries Limited. It was only to be expected that the jurisdiction of the Company Law Board would have been invoked.

7. The most telling feature of the litigation revolves around the factor of balance of convenience. The Court cannot shut its eyes at the admitted use of the Mark by all the family members for over one decade. The Court cannot also ignore the fact that Golden Industries Limited has been using the Mark for over several years, restricted to the locks business, which Company has now fallen within the domain of Defendant No. 2. The Plaintiffs have already made a futile attempt before the Company Law Board (sic) injunct the Defendants. The balance of convenience is not in favor of the Plaintiff and on the contrary is in favor of the Defendants who have the exclusive rights to transact the locks business.

8. It has also not been disclosed by the Plaintiffs what irreparable loss and injury would result if the Defendants were to continue using the mark 'Golden' for the locks business.

9. As has already been stated the trademark 'Golden' was registered in the name of Golden Industries Ltd. which came to Defendant No. 2 consequent on the Family Settlement. Part of the grievance of the Plaintiff is that Defendant No. 2 has assigned, transferred or licensed these rights to Defendant No. 1 which is his sole proprietorship concern. In my opinion since the Mark has been used for several years, both in the furnishing and the locks business by different members of the family, its use by any of them ought not to be interdicted. The Plaintiff, however, apprehends that Defendant No. 2 may further license its use to other parties. Mr Nigam immediately undertakes, on instructions from Defendant No. 2, that no third pa ty shall be allowed by Defendant No. 2 the use of the subject mark 'Golden' for locks or for any other products.

10. In these circumstances the interim Orders passed on 10.9.2004 are recalled and the goods and material presently in the Superdari of the Defendants may be dealt by them without any restraints. Defendant No. 2 shall, however, remain bound by his undertak ing that no third party shall be allowed the use of the mark 'Golden' in any of its manifestations or involved in the locks business presently undertaken by Defendant No. 1 or Golden Industries Ltd. or any other entity. The application is disposed of in t ese terms.