Ramesh Mardia vs Mr Kamlesh Jain & Others
2009 Latest Caselaw 770 Del

           THE HIGH COURT OF DELHI AT NEW DELHI
%                                          Judgment delivered on: 06.03.2009

+             IA 1941/2006 in CS(OS) 328/2006

M/S KOXAN INDIA                                              ... Plaintiff


                                          - versus -


RAMESH MARDIA & OTHERS                                         ... Defendants

Advocates who appeared in this case:
For the Plaintiff     : Mr S.K. Bansal with Mr Prabhat Kaushik and
                        Mr Pankaj Kumar
For the Defendants    : Mr Manmohan Singh with Mr Sushant Singh

                                             AND


+             IA 7308/2006 in CS(OS) 1352/2006

RAMESH MARDIA                                                  ... Plaintiff


                                          - versus -


MR KAMLESH JAIN & OTHERS                                       ...   Defendants

Advocates who appeared in this case:
For the Plaintiff     : Mr Manmohan Singh with Mr Sushant Singh
For the Defendants    : Mr S.K. Bansal with Mr Prabhat Kaushik and
                        Mr Pankaj Kumar

CORAM:-
HON'BLE MR JUSTICE BADAR DURREZ AHMED

      1.

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

2. To be referred to the Reporter or not ? Yes

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

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.1 of 13 BADAR DURREZ AHMED, J

IA No. 1941/2006 in CS (OS) 328/2006 & IA No.7308/2006 in CS (OS) 1352/2006

1. These applications have been filed under Order 39 Rules 1 &

2 read with Section 151, CPC by the plaintiffs in the said two suits

which are in the nature of cross-suits. By an order dated 20.08.2007,

the suits were directed to be consolidated. In the said suits, the

opposite parties claim exclusive rights in the trademark / label

„MARDIA CABLES‟ in respect of electrical cables, electrical wires

and accessories. IA 1941/2006 is by Koxan India, who is the plaintiff

in CS(OS) 328/2006. IA 7308/2006 has been filed by Mr Ramesh

Mardia proprietor of Mardia Cables and who is the plaintiff in CS(OS)

1352/2006. It may also be noted that in the suit filed by M/s Koxan

India, Ramesh Mardia has been arrayed as defendant No.1, M/s Mardia

Cables as defendant No.2 and one Shree Raj Ventech Power Cab

Limited as defendant No.3. In the suit filed by Mr Ramesh Mardia as

proprietor of Mardia Cables, Mr Kamlesh Jain and Mrs Lalita Jain,

who are the partners in M/s Koxan India, have been arrayed as

defendant Nos. 1 and 2. M/s Koxan India is the defendant No.3 in that

suit. The tussle in both the suits is over the exclusive rights in respect

of the trademark / label „MARDIA CABLES‟. There is also a dispute

with regard to the copyright in the art work involved in the trademark /

label „MARDIA CABLES‟. However, the main and central point is

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.2 of 13 with regard to the exclusive ownership of the trademark / label

„MARDIA CABLES‟.

2. In these applications in the cross suits, M/s Koxan India, on

the one hand, seeks an ad interim injunction restraining Ramesh

Mardia, who is the sole proprietor of „MARDIA CABLES‟ from using

the trademark / label „MARDIA CABLES‟ in relation to electrical

cables, electrical wires and accessories. On the other hand, Ramesh

Mardia also seeks an ad interim injunction restraining M/s Koxan India

and its partners from using the trademark / label „MARDIA CABLES‟

in respect of electrical cables, electrical wires and accessories.

According to M/s Koxan India, the trademark / label „MARDIA

CABLES‟ was initially registered in the name of Ramesh Mardia

trading as M/s Mardia Cables vide Registration No.568306 in Class-9

w.e.f. 25.02.1992. There is no dispute with regard to this fact. It is

alleged on behalf of Koxan India that Ramesh Mardia duly assigned the

trademark „MARDIA CABLES‟ alongwith its registration and

goodwill to Mr Kamlesh Jain through a deed of assignment dated

01.03.2002. There is also no dispute with regard to this fact also.

3. Thereafter, the said Mr Kamlesh Jain and Mr Ramesh Mardia

filed a joint application in Form TM-23 alongwith the supporting

affidavits before the Registrar of Trademarks to record the said transfer

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.3 of 13 and assignment in favour of Mr Kamlesh Jain. By his order dated

26.02.2004, the Registrar of Trademarks allowed the said request and

registered Mr Kamlesh Jain as the proprietor of the trademark / label

„MARDIA CABLES‟ in respect of the electrical cables, electrical wires

and accessories. This fact was also advertised in the Trademarks

Journal of 1316 dated 01.04.2004.

4. It is also alleged on the part of Koxan India that initially, Mr

Kamlesh Jain was carrying on business through his sole proprietorship

concern under the name of Kevin Mardia Cab Industries.

Subsequently, a partnership deed dated 14.11.2003 was executed by the

said Mr Kamlesh Jain and Mr Mahaveer Jain and the name of the

erstwhile sole proprietorship concern Kevin Mardia Cab Industries was

changed to its present name M/s Koxan India. It is alleged that the said

partnership between Kamlesh Jain and Mr Mahaveer Jain was

dissolved by virtue of the dissolution deed dated 07.05.2004 w.e.f.

01.04.2004. By virtue of clause 3 of the said dissolution deed, Mr

Kamlesh Jain took over the entire business of the partnership concern.

On the same date, i.e., on 07.05.2004, a fresh partnership deed was

executed between Mr Kamlesh Jain and Ms Lalita Jain. It is submitted

that the said constitution of the firm M/s Koxan India continues till

date.

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.4 of 13

5. On behalf of M/s Koxan India, it was submitted that it had

filed a request in Form TM-24 to record the registered trademark in the

name of the present two partners in terms of the said partnership deed

dated 07.05.2004. A further request in Form TM-23 to record the

change in the name and address was also made and that both these

requests are pending with the Registrar of Trademarks.

6. It is stated that after the assignment of the trademark / label

„MARDIA CABLES‟ by virtue of the deed of assignment dated

01.03.2002, Mr Kamlesh Jain and his partnership concern M/s Koxan

India has consistently used the said mark / label in the course of trade

and had built up a valuable trade and goodwill thereunder. It is the

case of M/s Koxan India and its partners (Mr Kamlesh Jain and Ms

Lalita Jain) that nobody other than them can be permitted to use or deal

with the trademark / label „MARDIA CABLES‟ in relation to electrical

cables, electrical wires and accessories which fall in Class-9 for which

the trademark registration under registration No.568306 was granted

and which had been assigned to Mr Kamlesh Jain. It is alleged that Mr

Ramesh Mardia trading through his sole proprietorship concern Mardia

Cables had, on or about September-October, 2005, started using the

trademark / label „MARDIA CABLES‟ bearing the same artistic /

copyright features as that used by M/s Koxan India. It is alleged that

the said Mr Ramesh Mardia and his sole proprietorship concern Mardia

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.5 of 13 Cables have, without leave and licence of Koxan India and / or its

partners (Mr Kamlesh Jain and Ms Lalita Jain), used the said trademark

/ label in the course of trade in relation to electrical wires, cables and

accessories and have, therefore, infringed the rights of Koxan India and

its partners.

7. The contention on behalf of M/s Koxan India is that Mr

Ramesh Mardia, by adopting and using the trademark / label

„MARDIA CABLES‟ has infringed the registered trademark

„MARDIA CABLES‟ under registration No.568306 in Class-9. Mr

Ramesh Mardia has also passed off his goods and business as that of

Koxan India and has also allegedly violated Koxan India‟s copyrights

in the said label.

8. On the other hand, it was submitted on behalf of Mr Ramesh

Mardia that on 25.02.1992, he had filed an application for registration

of the trademark / label „MARDIA CABLES‟ in respect of electrical

wires, cables and accessories and that the application for registration

was ultimately accepted on 15.03.2000 when registration under class-9

was granted w.e.f. 25.02.1992. It was further contended that on

24.12.2002 another application was filed by Mr Ramesh Mardia for

registration of the trademark „MARDIA CABLES‟ word per se in

Class-9 in respect of electrical cables, electrical wires and accessories.

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.6 of 13 The said application was also accepted and advertised in the

Trademarks Journal and no opposition was filed and the same came to

be registered on 17.03.2005 w.e.f. 24.12.2002. It was also contended

that although the trademark „MARDIA CABLES‟ was adopted and

used by Mr Ramesh Mardia through his sole proprietorship concern

Mardia Cables in the year 1987, it was, however, used on an extensive

scale from 1992 onwards. It is the case of Mr Ramesh Mardia that Mr

Kamlesh Jain approached him at Chennai through some common

friends in the month of February, 2002 with the request that he was

willing to manufacture wires and cables for and on behalf of him under

the trademark „MARDIA‟. It is the case of Mr Ramesh Mardia that Mr

Kamlesh Jain also assured him that he would manufacture the said

products at a reasonable price in loose form. It was submitted that in

order to get some benefits from the business, Mr Kamlesh Jain

requested Mr Ramesh Mardia to assign the trademark / label

„MARDIA CABLES‟ in his name, which, at that time stood registered

in the name of Mr Ramesh Mardia under Registration No.568306.

Consequently, Mr Ramesh Mardia assigned the said trademark / label

by virtue of the said deed of assignment dated 01.03.2002 in favour of

Mr Kamlesh Jain. It is the contention of Mr Ramesh Mardia that Mr

Kamlesh Jain had agreed to re-assign the trademark in case of a break-

up in the arrangement between the parties.

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.7 of 13

9. Thereafter, the arrangement continued and Mr Kamlesh Jain

was exclusively manufacturing wires and cables on behalf of Mr

Ramesh Mardia and his sole proprietorship concern Mardia Cables.

Sometime, in April, 2004, the supplies were made by M/s Koxan India

which was hitherto known as Kevin Mardia Cab Industries. This

arrangement continued till February, 2005, when, according to Mr

Ramesh Mardia, complaints were received from his dealers about the

substandard quality of material under the trademark „MARDIA

CABLES‟. Though discussions were held with Mr Kamlesh Jain, the

quality of products did not improve and, therefore, according to Mr

Ramesh Mardia, the business relations were closed and the assignment

deed of 01.03.2002 was superseded by a re-assignment deed dated

13.05.2005 in favour of Mr Ramesh Mardia and Mardia Cables. It is

alleged that the assignment deed dated 13.05.2005 was duly signed by

both the parties, i.e., Mr Kamlesh Jain and Mr Ramesh Mardia. It is

alleged that all the relevant papers, including certified copies of

assignment deed, affidavits, and joint power of attorney, etc. were

signed by the parties and were duly submitted in the trademarks

registry by filing Form TM-23 on 31.05.2005. It is also alleged that

after the termination of the arrangement between Mr Ramesh Mardia

and Mr Kamlesh Jain, Shree Raj Ventech Power Cab Limited was

appointed to manufacture products on behalf of Mr Ramesh Mardia and

Mardia Cables.

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.8 of 13

10. The key point over which the dispute in the suit hinges is the

validity of the deed of assignment or re-assignment deed dated

13.05.2005. According to the learned counsel appearing on behalf of

Koxan India and Mr Kamlesh Jain and Ms Lalita Jain, this document is

a fabricated document. It is stated that this document is fabricated

because the date has been left blank. The document refers to Mr

Kamlesh Jain as the sole proprietor of Kevin Mardia Cab Industries,

when, in fact, in 2003 itself, the name had been changed from Kevin

Mardia Cab Industries to Koxan India. The purported joint application

in Form TM-23 also does not contain any date. It merely refers to the

month „May‟. It is not signed by the parties. A further point was

raised by the learned counsel that if the assignment was of 13.05.2005,

then how did Mr Ramesh Mardia apply for registration of the

trademark „MARDIA CABLES‟ (word per se) in December, 2002.

11. The learned counsel appearing on behalf of Mr Ramesh

Mardia / Mardia Cables submitted that no injunction ought to be

granted in favour of Koxan India or Mr Kamlesh Jain inasmuch as they

had concealed the factum of the re-assignment deed dated 13.05.2005.

He also submitted that the partnership deed dated 07.05.2004 was

manipulated and fabricated. The deed of partnership dated 07.05.2004,

in the very first recital, refers to the date 06.10.2003 and the dissolution

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.9 of 13 deed dated 07.05.2004 also earlier indicated the date of 07.03.2004.

The word „March‟ was subsequently corrected to read as „May‟.

12. The learned counsel also pointed out that the deed of

assignment of 13.05.2005 was signed by Mr Kamlesh Jain. A

handwriting expert had also verified the fact that the signature on the

said document was that of Mr Kamlesh Jain. He also referred to the

order dated 14.06.2007 passed by the Deputy Registrar of Trademarks

on the application in Form TM-23 filed on 31.05.2005 in respect of the

registered trademark No. 568306 in Class-9. The said order dated

14.06.2007 records the history of the assignment and re-assignment.

The contention before the Deputy Registrar of Trademarks was that Mr

Kamlesh Jain had alleged that he had not signed the assignment deed of

May, 2005 for assigning the mark in question to Mr Ramesh Mardia.

An affidavit dated 02.06.2007 was filed by Mr Ramesh Mardia stating

that the documents had been handed over to a handwriting expert for

verification of signature of Mr Kamlesh Jain and the report submitted

by him was dated 30.09.2006. It appears that Mr Kamlesh Jain had not

presented himself before the Deputy Registrar of Trademarks and,

therefore, his point of view was not considered. However, the order

dated 14.06.2007 does record that reasonable opportunity had been

given to Mr Kamlesh Jain to appear on the date of hearing and the

hearing notice bearing No. TLA-325 dated 16.04.2007 had been sent to

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.10 of 13 Mr Kamlesh Jain by registered post and the same had been returned by

the postal authorities with the remarks "No such person in such

number". The order dated 14.06.2007 is, therefore, clearly an ex parte

order which has been challenged in appeal before the Intellectual

Property Appellate Board by Mr Kamlesh Jain and the same is pending.

However, by virtue of the order dated 14.06.2007, the said form TM-23

dated 31.05.2005 filed by Mr Ramesh Mardia was allowed and he was

brought on record as the subsequent proprietor in respect of the

trademark registration No. 568306 in Class-9 in the name of Mardia

Cables, Chennai.

13. In this background, it was contended by the learned counsel

appearing on behalf of Mr Ramesh Mardia / Mardia Cables that now

the registration stands in favour of Mr Ramesh Mardia and unless and

until it is set aside by the appropriate authority, all the rights flowing

from the registration accrue to Mr Ramesh Mardia. The proper remedy

would be an appeal under Section 91 of the Trade Marks Act, 1999.

14. The aforesaid discussion clearly emphasises the point that

the entire case turns on the question of whether the trademark / label

„MARDIA CABLES‟ in respect of electrical wires, electrical cables

and accessories was re-assigned by Mr Kamlesh Jain in favour of Mr

Ramesh Mardia. Doubts have been raised on behalf of M/s Koxan

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.11 of 13 India and Mr Kamlesh Jain with regard to the authenticity and

genuineness of this document. On the other hand, the learned counsel

appearing on behalf of Mr Ramesh Mardia has contended that the said

document is genuine inasmuch as the same had been signed by Mr

Kamlesh Jain himself and the same stands verified by the handwriting

expert. The learned counsel also submitted that, in fact, it is Mr

Kamlesh Jain and his partner Ms Lalita Jain, who are guilty of

fabricating the partnership deed and dissolution deed.

15. On examining the pleas raised on both sides, I find that

neither party has been able to set up a clear prima facie case in its

favour. The nature of the disputes raised indicate that the same can

only be resolved after evidence is led in the course of trial. For the

moment, all that can be said is that the trademark / label „MARDIA

CABLES‟ had initially been assigned in favour of Mr Kamlesh Jain.

The assignment had been recorded in the registers of the Trademarks

Registry and, therefore, as long as that assignment holds, Mr Kamlesh

Jain would be entitled to use the said trademark / label. To decide as to

whether the registration stands in favour of Mr Kamlesh Jain even after

the re-assignment deed of May, 2005 would require the leading of

evidence, in particular because Mr Kamlesh Jain has denied that the

said document bears his signature. Of course, Mr Ramesh Mardia has

obtained the opinion of a handwriting expert, but, at this stage, that

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.12 of 13 opinion cannot be relied upon without such expert having been

subjected to cross-examination. It may also be noted that the order

dated 14.06.2007 passed by the Deputy Registrar of Trademarks is an

ex parte order and is also the subject matter of an appeal. At the same

time, one has also to notice the fact that Mr Ramesh Mardia does have

another registration in his name in respect of the word mark „MARDIA

CABLES‟ under registration No.1161248 in Class-9 in respect of

electrical cables, electrical wires and accessories w.e.f. 24.12.2002.

The registration certificate in respect thereof was granted on

17.03.2005.

16. In view of the above, it is clear that at this prima facie stage,

neither Mr Kamlesh Jain nor his partnership concern Koxan India on

the one hand nor Mr Ramesh Mardia on the other have been able to

establish a case for claiming exclusivity over the use of the trademark /

label „MARDIA CABLES‟. In these circumstances, I feel that neither

party is entitled to an ad interim injunction. Consequently, both the

applications are dismissed. There shall be no order as to costs.

BADAR DURREZ AHMED ( JUDGE ) March 06, 2009 dutt

IA 1941/06 in CS(OS) 328/06 & IA 7308/06 in CS(OS)1352/06 Page No.13 of 13