Smt. Harbans Kaur vs Gurmarg Appliances Pvt. Ltd. & ...
2009 Latest Caselaw 755 Del

*            IN THE HIGH COURT OF DELHI AT NEW DELHI


                                                   Date of Reserve: February 17, 2009
                                                        Date of Order: March 05, 2009


+ IA Nos. 11476/07, 13684/07 & Crl.M. 14610/2007 in CS(OS)
1987/2007
%                                                05.03.2009
     Smt. Harbans Kaur                    ...Plaintiff
     Through: Mr. V.P. Dalmia, Advocate

        Versus

        Gurmarg Appliances Pvt. Ltd. & Ors.                ...Defendants
        Through: Mr. M.K. Miglani & Mr. Kapil Kumar Giri, Advocates


        JUSTICE SHIV NARAYAN DHINGRA

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

2.      To be referred to the reporter or not?

3.      Whether judgment should be reported in Digest?


        ORDER

IA NO.11476/2007 & 13684/2007

1. By this order, I shall dispose of the above two applications under Order

39 Rules 1 & 2 CPC made by the plaintiff and defendant respectively. In both

the above applications the prayer made is that plaintiff/defendant be

restrained from using the trademark "Tanashi".

2. The plaintiff's case is that plaintiff was carrying on business of

manufacturing and trading electrical and electronic goods under the

trademark "Tanashi" a new coined and invented word of the plaintiff's firm

and plaintiff was using the same since 1993. This trademark was being used

in respect of electrical and electronic goods. The trademark "Tanashi" was

also got registered by the plaintiff in Class-9 vide trademark registration

CS (OS) 1987/2007 Smt. Harbans Kaur vs Gurmarg Appliances Pvt. Ltd. & Ors. Page 1 Of 4 number 1290305 with respect to DC Micro Motors, VCDs, DVDs, TVs,

telephone codeless, amplifiers, home theatre appliances etc. The plaintiff

appointed defendant No.2 M/s Gurmarg International as a dealer for the

purpose of marketing and selling the products of the plaintiff under

trademark "Tanashi" in the region of Punjab, Haryana, Himachal Pradesh and

Jammu and Kashmir. The trademark "Tanashi" was previously being used by

a firm viz Reliance Plastic Industries and this trademark was assigned to the

plaintiff vide assignment deed dated 29th January 2003. The firm Reliance

Plastic Industries had earlier applied for registration of this trademark vide

application number 963980 in Class-9. However, due to delay on the part of

the Registrar of Trademarks in processing this application, the plaintiff moved

fresh application for registration of this trademark and the fresh application

was allowed. The plaintiff came to know during the course of business that

defendant had issued a caution notice in the Network newspaper dated 5 th

September 2007 where the trademark "Tanashi" was claimed by defendant

No.1 and it was claimed that defendant No.1 was the registered proprietor of

the trademark "Tanashi". The plaintiff then learnt about defendant's No.1

being associated with defendant No.2 and found that the plaintiff's trademark

"Tanashi" had been hijacked by defendant No.1 and 2 and defendants No.1

and 2 formed a company under a tradename "Tanashi" and started doing

business under the name "Tanashi" Group of Companies and they adopted

"Tanashi" as a part of their firm name as well. The defendants started

manufacturing spurious and fake goods under the trade name "Tanashi"

causing serious dent to reputation of plaintiff.

3. The defendants in the written statement-cum-counter claim had taken

the stand that the plaintiff was pirator and had instituted the suit to

CS (OS) 1987/2007 Smt. Harbans Kaur vs Gurmarg Appliances Pvt. Ltd. & Ors. Page 2 Of 4 camouflage its own improprieties. It is stated that the trademark "Tanashi"

was adopted by Mr. Baldev son of Shri Gurender Singh in the year 2000 and

the business was being done in the name of Asian Trade Link. The trademark

was assigned to defendant No.4 who used it openly and specifically publicized

the same through, various media. Defendant No.1 started marketing the

products of defendant No.2 and 4 under the trademark "Tanashi" in the year

2003. The products were being got manufactured from different sources

including the plaintiff. The trademark "Tanashi" was never assigned to the

plaintiff and defendant No.2 was never appointed as a dealer by the plaintiff.

The plaintiff, for the some period got its products manufactured from the

plaintiff without any marking and defendant used to put the trademark

"Tanashi" and do the business under their trademark "Tanashi". The plaintiff

also used to manufacture the goods for other brands such as Akai, Trinity,

Bush etc.

4. It is also submitted that the defendants got the trademark "Tanashi"

registered in its name. The application of the defendant was published in the

trademark Journal and the objections were invited from all the parties but the

plaintiff did not file any objection against defendants' trademark "Tanashi"

and trademark "Tanashi" was ultimately registered in the name of defendants

as their registered trademark. The counterclaim is made by the defendants

that it was plaintiff who was passing off its goods as that of the defendants.

5. Both parties have filed their documents showing that the trademark

"Tanashi" was registered in the name of both parties. I have also gone

through different photographs, bills and invoices placed on record. In view of

Section 28 of the Trademarks Act, 1999 where two or more registered

CS (OS) 1987/2007 Smt. Harbans Kaur vs Gurmarg Appliances Pvt. Ltd. & Ors. Page 3 Of 4 proprietors of an identical trademark exist, the exclusive right to use the

trademark to any of the parties is not available and both the parties can use

the trademark. The two registered proprietors of trademark cannot bring an

action of infringement against each other. However, they can bring action of

infringement of trademark only against a third party. Similarly the action of

passing off the goods also would not lie because both the plaintiff and

defendants are marketing their goods under their own company name using

the registered trademark "Tanashi". There are no allegations that

misrepresentation about the manufacturer was being made.

6. I, therefore consider that both the applications, one moved by the

plaintiff and other by defendants have no force and are hereby dismissed.

Crl. M NO.14610/2007

1. This application under Section 340 of Code of Criminal Procedure has

been made by the plaintiff to initiate action under Section 191, 192,193, 196,

199, 177 and 182 of Indian Penal Code against the defendants/non

applicants.

2. I consider that it would be appropriate to decide this application at the

end of the trial when the Court would be in a position to ascertain as to who

made false assertions.

CS(OS) 1987/2007

List this matter before the Joint Registrar on 30th April, 2009, the date

already fixed for cross examination of witness.

March 05, 2009                                          SHIV NARAYAN DHINGRA J.
rd

CS (OS) 1987/2007 Smt. Harbans Kaur vs Gurmarg Appliances Pvt. Ltd. & Ors. Page 4 Of 4