Mr.Kiran Jogani & Anr. vs George V.Records, Sarl
2008 Latest Caselaw 1969 Del

*            IN THE HIGH COURT OF DELHI AT NEW DELHI


+                               FAO (OS) No.48/2004


                                                      Reserved on: 31.10.2008
%                                                  Date of decision: 06.11.2008


Mr.Kiran Jogani & Anr.                                    ...APPELLANTS
                                  Through:     Mr.Amarjit Singh and Ms.Sheetal
                                               Dang, Advocates.


                                          Versus


George V.Records, SARL                                    ...RESPONDENT
                      Through:                 Mr. Pravin Anand and Mr.Dhruv
                                               Anand, Advocates.


CORAM:
HON'BLE MR. JUSTICE SANJAY KISHAN KAUL
HON'BLE MR. JUSTICE MOOL CHAND GARG

1.        Whether the Reporters of local papers
          may be allowed to see the judgment?                   Yes

2.        To be referred to Reporter or not?                    Yes

3.        Whether the judgment should be
          reported in the Digest?                               Yes

SANJAY KISHAN KAUL, J.

1. The claim of the respondent-plaintiff to a trans-border

reputation in the mark BUDDHA-BAR for music albums and

the allegation of an infringement thereof by the

appellants/defendants gave rise to legal proceedings inter-

se the parties.

2. The respondent-plaintiff filed a civil suit on the Original Side

of this Court. An interlocutory application for injunction

under Order 39 Rules 1 and 2 of the Code of Civil

Procedure, 1908 ('the said Code' for short) was filed along

with the plaint. The respondent-plaintiff was granted an ad

interim ex parte injunction and thus the appellants-

defendants moved an application under Order 39 Rule 4 of

the said Code for vacation of the interim injunction. The

learned Single Judge in terms of the impugned order dated

11.03.2004 has confirmed the interim injunction.

3. It is the case of the respondent-plaintiff that the trademark

BUDDHA-BAR was first adopted and used in the year 1996

as the name of a restaurant in Paris by the respondent's

affiliate company George V Restauration. The name is

stated to have acquired immense reputation. The music

albums played at the restaurant by the well-known Disco

Jockeys were compiled into CDs as they became extremely

popular. These CDs were sold under the name BUDDHA-

BAR from the year 1999 onwards by the respondent-

plaintiff. It is thus the plea of the respondent-plaintiff that

the mark BUDDHA-BAR is connected with the respondent-

plaintiff inasmuch as its affiliate ran the restaurant business

under the said trademark while the respondent-plaintiff on

its own has been using the said mark in relation to music

albums after three years. It is also the case of the

respondent-plaintiff that this trademark has been registered

by the respondent-plaintiff in many countries such as the

European Community, USA, Canada, Japan, New Zealand,

France, Hong Kong etc. in Classes 9 and 41 and that the

reputation generated by the respondent-plaintiff has spread

across the world and has spilled over to India prior to the

adoption of the mark BUDDHA-BAR by the appellants-

defendants in February, 2002. The respondent-plaintiff

pleaded that the adoption of the mark BUDDHA-BAR by the

appellants-defendants is dishonest. The mark BUDDHA-

BAR has been constituted by a unique combination of two

words which would otherwise have no correlation with each

other and the adoption of an identical mark in relation to

identical goods being music albums without any

explanation by the appellants-defendants as to why and

how they came to have adopted the mark BUUDHA-BAR

itself shows the dishonest intent on the part of the

appellants-defendants. The plea raised is that the only

object was to play on the goodwill of the mark of the

respondent-plaintiff.

4. The respondent-plaintiff has filed material in the form of

paper cuttings of magazines and other publications to

establish that not only is the mark BUDDHA-BAR well known

all over the world, but it has been so known even in India

through circulation of its material. The appellants-

defendants have relied upon a single advertisement dated

14.02.2002 to demonstrate their adoption of this mark prior

to the respondent-plaintiff's adoption of the mark. It has

been stated that there has been blatant copying of the

artistic features of the inlay card of the music album

BUDDHA-BEATS of the respondent-plaintiff released in 2001

by the appellants-defendants when the release was under a

licence of the respondent-plaintiff.

5. The impugned Order shows that the following defence

raised by the appellants-defendants has been considered:

i)The respondent-plaintiff has failed to establish proprietary rights in the mark BUDDHA-BAR as the

restaurant business was owned by its affiliate company which is not a party in the suit;

ii) The respondent-plaintiff failed to prove the user for the year 1999-2000 since such user is of Claude Challe of Chall'O Music;

iii)The respondent-plaintiff had failed to establish user rights in India and the first invoice is of 21.02.2002 after the release of the album by the appellants-defendants in January, 2002;

iv)The material relied upon by the respondent- plaintiff in the form of newspaper reports and magazines is hearsay evidence and thus is not admissible;

v)The mark BUDDHA-BAR is being used by third parties both in relation to restaurant and music business;

vi)The delay in filing the suit for injunction disentitles the respondent-plaintiff to any injunction.

vii)The CDs of the respondent-plaintiff do not bear its name for the earlier albums BUDDHA-BAR and BUDDHA-BAR II and thus the consumers are unable to associate the product with the respondent- plaintiff. The mark thus cannot be said to be distinct of the respondent-plaintiff and

viii) The trading activity of the restaurant business is completely different from the music album.

6. It would naturally be presumed that these were the pleas

advanced on behalf of the appellants-defendants as there

was no review application filed by the appellants-

defendants seeking to contend that there were other pleas

raised which had not been dealt with by the learned Single

Judge.

7. The pleas raised by the appellants-defendants, as

mentioned aforesaid, have been comprehensively dealt

with by the learned Single Judge in the impugned order.

The learned Single Judge has emphasized that passing off is

an action of deceit and thus prior adoption and use of the

mark as also it having acquired reputation and goodwill

distinctive of the goods of the plaintiff in the country of

origin is a necessity. There should be connection in the

course of trade between the goods of the two parties by

use of identical or a deceptively similar mark.

8. Learned Single Judge has relied upon large amount of

published material placed on record by the respondent-

plaintiff in the form of newspaper reports and magazines

which would show that there was even television coverage

beamed to India on satellite television of a fashion show

held by Indian designer Ritu Beri in the BUDDHA-BAR

restaurant which had brought awareness of the mark in

India in relation to its music albums. Learned Single Judge

has also found that there was sufficient evidence on record

of the user of the mark BUDDHA-BAR in relation to the

music albums by the respondent-plaintiff and the music

album business is owned by the affiliate of the sister

companies of the respondent-plaintiff who constitute single

company entity. At the stage of interlocutory injunction,

the learned Single Judge has taken a prima facie view on

the material brought on record.

9. The defence of the appellants-defendants in respect of

failure of the part of the respondent-plaintiff to produce

sufficient evidence regarding any agreement with Chall'O

Music has been rejected on account of the translated copy

of an agreement being brought on record and the original

document having been shown in the Court. It is recorded

that the agreement shows that the licence was earlier

granted to the Chall'O Music by George V Records for

production of the first double compilation of the music

under the trademark BUDDHA-BAR free of cost. Article 7 of

the agreement specifically stipulates that any proceedings

pertaining to infringement of trademark against any third

party would be instituted by the licensor-respondent in its

name and at its own expense with the technical help of the

licensee and the proprietary rights have been

acknowledged by the licensee. The music album was first

released in the year 1999 and thereafter in the year 2000

by Claude Challe/Chall'O Music as per the trademark

licence agreement. The plea raised by the appellants-

defendants of respondent-plaintiff having infringed certain

provisions of The Copyright Act, 1957 ('the said Act' for

short) has been rejected only by observing that the same

shall be considered at the stage of trial. It has also been

further observed that though the respondent-plaintiff may

have filed the first invoice dated 21.02.2002, it is always

open to the respondent-plaintiff to produce documents at a

later stage during the trial. The factum of the failure of the

appellants-defendants to give any satisfactory explanation

in relation to adoption of the mark BUDDHA-BAR has been

emphasized. It has been held not to be honest.

10. It may be noticed at this stage that after the casting of

issues, the trial in the suit proceedings and part of the

evidence of the respondent-plaintiff has been recorded. It

was suggested to learned counsel for the parties that in

view of the lapse of time of almost four years since the

stage of the interlocutory injunction, the more advisable

course of action would be to expedite the hearing of the

suit. Learned counsel for the appellants-defendants,

however, was of the view that recording of evidence would

take some time and thus he would like to invite a judgment

on the appeal against the decision on the interlocutory

application.

11. The first aspect to be considered, rightly emphasized by

learned counsel for the respondent-plaintiff, is the scope of

scrutiny by the appellate Court in matters of grant or

refusal of such interim injunction. The position has been

succinctly set out by the Apex Court in Wander Ltd. & Anr.

v.Antox India P.Ltd; 1990 Supp (1) SCC 727. The aforesaid

legal position crystallized and relevant for the present

appeal is that it is not the function of this Court as an

appellate Court to substitute its own discretion with the

exercise of discretion by the Trial Court except where the

discretion has been shown to be exercised arbitrarily,

capriciously and perversely or where the Court has ignored

the settled principles of law regulating the grant or refusal

of interlocutory injunctions. It is not for this Court to re-

assess the material and seek to reach conclusion different

from one reached by the courts below as long as the

conclusion already reached by the courts below is a

reasonably plausible one. It is not for this Court to put itself

in the shoes of the Trial Judge to decipher as to what

conclusion it would have reached if it was the Trial Judge.

Thus, so long as the exercise of discretion by the Trial Court

is reasonable and in a judicial manner, no interference is

called for. It is within this limited scope that the scrutiny in

an appeal has to be made. Interestingly it is the aforesaid

judgment which has also been relied upon by the learned

counsel for the appellants-defendants to plead that the

exercise of discretion by the learned Single Judge was

arbitrary, capricious and perverse. One such example

given is of a finding reached that the respondent-plaintiff

could file additional documents of prior use at the time of

framing of issues and thus it cannot be said that the

absence of documents is fatal to the respondent-plaintiff.

12. We have noted the aforesaid submission for the reason

that we are unable to agree with this line of reasoning of

the learned Single Judge. The grant or refusal of injunction

has to be on the triple criteria of a prima facie case,

balance of convenience and irretrievable loss and injury.

The prima facie case is established on the basis of the

material placed on record by both the parties. The material

documents relied upon by the respondent-plaintiff have to

be filed along with the suit. Thus, the mere fact that the

parties may have opportunity to file additional documents

subsequently is not a relevant ground to form a prima facie

opinion.

13. The result of the aforesaid is that it would have to be

considered whether the prima facie view formed by the

learned Single Judge on the basis of the evidence placed on

record by the respective parties can be said to be arbitrary,

capricious or perverse. The learned Single Judge has, in

fact, dealt with the evidence brought on record in depth. It

cannot be disputed that the trademark BUUDHA-BAR has a

uniqueness to it as it is a combination of two words which

otherwise would have no connection with each other. The

material on record shows that the trademark BUDDHA-BAR

was adopted for use in the restaurant business. The

success of the music played by the Disco Jockeys in the

restaurant gave another business opportunity of making

CDs of the music and selling the same. Learned Single

Judge has discussed the agreements filed on record as also

the original documents produced before it to come to the

conclusion that the respondent-plaintiff had established a

link and a commonality of interest between the two

businesses as also the right in the respondent-plaintiff to

carry on the business. To that extent, the findings of the

learned Single Judge cannot be faulted.

14. We are unable to accept the plea of the learned counsel for

the appellants-defendants that the material in the form of

newspaper reports, magazines and other publications has

to be ignored because it is in the nature of secondary

evidence. No doubt, the plaintiff would have the duty to

prove the evidence on record by leading appropriate

evidence, but that stage had not arisen. The reference by

the learned counsel for the appellants-defendants to the

judgments of the Supreme Court are in relation to a final

trial of a matter where hearsay or secondary evidence

cannot be considered. However, at the interlocutory stage,

where the parties are yet to have the opportunity to

produce witnesses to prove the documents, such material

cannot be shut out especially taking into consideration the

nature of controversy in the present matter.

15. What would be the best material which the respondent-

plaintiff could have produced to establish its trans-border

reputation? In our considered view, it would be material

akin to the one produced by the plaintiff which would be

relevant. It is not as if there is a motivated article in one

newspaper or magazine, but the vast coverage given to the

restaurant and the music in international press and the

magazines including transmission of programs through

television channels to show even the participation of Indian

designers. It is this which seems to have awakened the

appellants-defendants to think of utilizing the trademark

BUDDHA-BAR as it has failed to give any other justification

as to how it deciphered the mark BUDDHA-BAR.

16. It is not necessary that only an invoice of sale would be the

relevant evidence and thus merely because the invoice is

just after the alleged propagation of the CD album by the

appellants-defendants cannot by itself defeat the rights of

the respondent-plaintiff on the face of other voluminous

prima facie material in support of its trans-border

reputation. Similarly, the findings about there being a

single economic entity is in the context of agreements

referred to aforesaid and relationship would be between the

lincesor and licensee giving rights to the respondent-

plaintiff.

17. There is yet another aspect urged by learned counsel for

the appellants-defendants arising from the allegation of

violation of the provisions of Section 52A of the said Act by

the respondent-plaintiff and the consequent punishment

which may follow under Section 68A of the said Act. This

plea has been brushed aside by the learned Single Judge to

be considered at the time of trial and one can have some

reservation about such a conclusion. The prima facie

finding on the effect of the same is liable to be given and

thereafter one can observe that the parties would have the

rights to produce the evidence in that behalf.

18. Learned counsel for the respondent-plaintiff has sought to

explain in respect of the aforesaid plea that the same was

not the focus of the submissions advanced by learned

counsel for the appellants-defendants before the learned

Single Judge as the focus was only on the issue of trans-

border reputation. It is also the plea of the respondent-

plaintiff that there has, in fact, been no lack of compliance

with the said provision. The provisions of Section 52A of

the said Act read as under:

"52A. Particulars to be included in sound recordings and video films - (1)No person shall publish a sound recording in respect of any work unless the following particulars are displayed on the sound recording and on any container thereof, namely :-

(a) The name and address of the person who has made the sound recording;

(b) The name and address of the owner of the copyright is such work; and

(c) The year of its first publication

(2) No person shall publish a video film in respect of any work unless the following particulars are

displayed in the video film, when exhibited, and on the video cassette or other container thereof, namely:-

(a) If such work is cinematograph film required to be certified for exhibition under the provisions of the Cinematograph Act, 1952 (37 of 1952), a copy of the certificate granted by the Board of Film Certification under Section 5-A of that Act in respect of such work.

(b) The name and address of the person who has made the video film and a declaration by him that he has obtained the necessary licence or consent from the owner of the copyright in such work for making such video film, and

(c) The name and address of the owner of the copyright in such work."

19. Learned counsel for the respondent-plaintiff pleads that the

BUDDHA-BAR albums may have been sold in India, but they

are not published in India and thus Section 52A of the said

Act would not be attracted. In support of this plea, learned

counsel has sought to draw distinction between the

provisions of Section 52A of the said Act and Section

51(b)(i) of the said Act. The relevant portion is re-produced

as under:

"51. When copyright infringed - Copyright in a work shall be deemed to be infringed - ...............

(b) When any person -

....................

(i) Make for sale on hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire any infringing copies of the work."

20. The attention of this Court has also been drawn to Section 5

of the said Act which specifies when a work is first deemed

to be published in India. The work is deemed to be

simultaneously published in India and other country if the

time between the publication in India and publication in

such country does not exceed 30 days. Since this has not

happened factually, it is submitted that there is no

publication in India so as to infringe the provisions of

Section 52A of the said Act.

21. The most material aspect is that the penalty for

contravention of Section 52A of the said Act is provided

under Section 68A of the said Act of imprisonment

extending up to 3 years and fine. It is nobody's case that

there has been any prosecution of the respondent-plaintiff

for infringement of the provision of Section 52A of the said

Act. Learned counsel for the respondent-plaintiff has rightly

emphasized that if there was such an infringement, the

appellants-defendants would have taken steps in respect of

the same. In any case, this fact is sufficient to prima facie

come to the conclusion that even the appellants-defendants

do not appear to have thought that there was any such

infringement by the respondent-plaintiff. The object of

Section 52A of the said Act also appears to be clear i.e.to

prevent piracy and counterfeiting. That is not so in the

present case and the dispute is one relating to passing off.

The focus of the appellants-defendants before the learned

Single Judge and before this Court has largely been on the

claim of a prior user by the appellants-defendants coupled

with the failure of the respondent-plaintiff to produce

appropriate evidence in support of its prima facie case.

22. We thus are unable to agree with the learned counsel for

the appellants-defendants that this plea in any way has any

effect in grant of injunction in favour of the respondent-

plaintiff.

23. We having clarified the aforesaid two aspects in respect of

the impugned order of the learned Single Judge, feel that

the conclusion drawn by the learned Single Judge for grant

of injunction and dismissing the application for vacation of

injunction cannot be doubted. The material has been

rightly appreciated by the learned Single Judge to come to

a prima facie view. In fact, even if we were to weigh this

material again, there would be no different prima facie

conclusion. We must also emphasize that the object of

grant or refusal of interim injunction is to protect the inter

se rights of the parties till the Trial Court is able to reach a

final conclusion post-trial. The trial in the matter has

already commenced and is regularly in progress. The

injunction has operated for four years. In view of our

aforesaid observations, we see no reason to vary the

impugned order.

24. We find the appeal is without merit and dismiss the same

with costs of Rs.25,000/-.

SANJAY KISHAN KAUL, J.

NOVEMBER 06, 2008                         MOOL CHAND GARG, J.
dm