Delhi High Court

M/S Ahmed Oomerbhoy & Anr. vs Sh.Gautam Tank & Ors. on 24 December, 2010

Author: V.K.Shali

*             IN THE HIGH COURT OF DELHI AT NEW DELHI



+                     CS(OS) NO.806/2005


                                          Date of Decision : 24.12.2010


M/S AHMED OOMERBHOY & ANR.                           ......Plaintiffs
                   Through:                    Mr.     Pravin     Anand,
                                               Advocate.

                                  Versus

SH.GAUTAM TANK & ORS.                                 ...... Defendants
                                Through:       Ms.Pratibha     M.Singh,
                                               Advocate.


CORAM :
HON'BLE MR. JUSTICE V.K. SHALI

1.

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

2. To be referred to the Reporter or not ? NO

3. Whether the judgment should be reported in the Digest ? NO

V.K. SHALI, J. (oral)

1. The matter has been listed on the directions of the learned

Division Bench in FAO(OS) No. 141/2008 for further

proceedings.

2. Briefly stated the facts of the case are that the plaintiff

company M/s Ahmed Oomerbhoy filed a suit for permanent

injunction against infringement of trade mark and passing off

and the consequential relief of damages, rendition of

accounts, delivery up, costs etc. against the defendants.

The plaintiff no. 2 was stated to be the Court Receiver, duly

appointed by the High Court of Bombay vide its order dated

06.07.2000, in suit no. 4913/2000 in case titled Ajid A.

Oomerbhoy Vs. Rashid S. Oomerbhoy & Ors. who was

directed to take possession of the partnership business assets

and make an inventory of all the partnership assets of M/s

Ahmed Oomerbhoy trading as M/s Ahmed Mills, plaintiff no.1

in respect of which suit for dissolution of the partnership was

pending in the High Court of Bombay. It is alleged in the

plaint that vide order dated 30.07.2001, Court Receiver was

directed to take steps to safeguard the trade mark of the

plaintiff no.1 against any person who was unauthorized user

of the said trade mark of the plaintiff no.1.

3. It may be pertinent here to mention that the plaintiff no. 1/

partnership firm was manufacturing, distributing, selling and

dealing in edible oils for almost more than five decades under

various trade names including „Postman‟ which is a reputed

trade mark. The details of the registration was mentioned in

paragraph 6 of the plaint. Apart from the registration of the

trade mark, the logo was also registered. The plaintiff with a

view to establish the popularity of the trade mark has referred

to the turnover of the partnership from the year 1990-1991 to

1999-2000, which shows the progressive increase in the turn

over.

4. It is alleged that the defendants are infringing the trade mark

of the plaintiff by using the trade mark „Super Postman‟ for

groundnut oil, even though the plaintiff no.1 is not

manufacturing edible oil on account of the disputes between

the members of the partnership firm.

5. This Court vide order dated 30.05.2005 passed an ex-parte

ad interim injunction restraining the defendants from selling

any product under the trade name „Super Postman‟. It also

appointed the Local Commissioner for the purpose to conduct

search and seizure of counterfeit goods, books of accounts

etc. from the defendant and its allied companies at different

places. This ex-parte ad interim injunction order was

confirmed on 20.12.2007.

6. The defendant had filed the written statement and contested

the claim of the plaintiff. It had denied that the defendant

had infringed the trade mark of the plaintiff. It was also

alleged that the plaintiff no. 1 is not a registered partnership

firm, and therefore, the suit is barred. It was alleged that the

person signing is not competent to sign, verify and institute

the suit on behalf of the plaintiff. The registration of the

plaintiff as the proprietors of the trade mark „Postman‟ was

also disputed. It was stated that the defendant had adopted

the trade mark „Super Postman‟ in the year 2004 honestly

and in a bonafide manner as they were informed that there

was no such trade mark being used by any other person.

The defendants also contended that they have already filed

petition for cancellation/rectification of all the registration

pending or granted before the Intellectual Property Appellate

Board which is still pending. It was also denied that the

plaintiffs have developed any goodwill or reputation or that

the defendants were passing off their goods as that of the

plaintiff.

7. On 01.12.2008 the Court framed the following issues in the

matter:-

"(1) Whether the plaintiff no.1 is proprietor of the trade mark POSTMAN? OPP

(2) Whether the plaintiff no.1 is proprietor of artistic work in the label/packaging with the mark POSTMAN? OPP

(3) Whether the defendants are guilty of passing off their goods as those of the plaintiff? OPP

(4) Whether the defendants have infringed the plaintiff‟s trade mark POSTMAN and/or the artistic work in the packaging/label? OPP

(5) Whether the plaintiff‟s claim/suit is barred by acquiescence and delay and effect thereof? OPD

(6) Whether the plaintiff is entitled to damages? If so, to what amount? OPP

(7) Whether the plaintiff is entitled to decree for rendition of accounts and/or damages, if so, what amount? OPP

(8) Whether the plaintiff is entitled to decree of permanent injunction(s) as prayed for? OPP

(9) Relief."

8. The parties were directed to file their list of witnesses within

six weeks and the plaintiff was directed to file evidence by

way of affidavits within ten weeks. Since the evidence was

not filed despite the repeated opportunities the evidence of

the plaintiff was closed on 16.12.2010 by the learned Joint

Registrar and the matter has been adjourned to 28.03.2011

for recording of the evidence of the defendant.

9. It may be pertinent here to mention that the defendants

herein had preferred an appeal bearing FAO(OS) No.

141/2008 which was listed before the learned Division Bench

on 20.12.2010. On the said date, it was pointed out to the

learned Division Bench that the evidence of the plaintiff has

already been closed as they have failed to produce any

evidence and consequently so far as the defendants in the

suit are concerned, who were appellants in the appeal, there

is no question of defendants producing any evidence. It was

on this basis that the learned Division Bench adjourned the

matter to 15.02.2011 with the observations that as the matter

is still pending before the learned Single Bench therefore the

matter be listed on 23.12.2010.

10. The learned counsel for the plaintiff Mr. Pravin Anand has

vehemently contended that so far as the closure of the

evidence of the plaintiff by the learned Joint Registrar vide

order dated 16.12.2010 is concerned, that is an order which

cannot be sustained and he has already filed yesterday a

Chamber appeal against the said order, but the same was

returned on account of the fact that the affidavit which was

filed along with the said appeal was not the original affidavit

of the Official Liquidator or his duly authorized person, but

only a scanned copy of the fax message which was received by

him. It was contended by him that since the Chamber appeal

has already been filed against the closure of evidence the

Court may adjourn the matter so as to enable the plaintiff to

place the said appeal on record for the correct appreciation of

facts. It was also suggested that the learned Joint Registrar

has failed to appreciate the facts and has wrongfully denied

an opportunity to the plaintiff to adduce evidence. In this

regard, the learned counsel drew the attention of the Court to

the orders passed by the Hon‟ble Court from time to time to

observe that the plaintiff has been diligently prosecuting his

matters although there was some delay in filing the affidavit

by way of evidence of one Mr. B.Prasad. It is stated that the

delay stood condoned as the plaintiff was put to terms firstly

by directing him to pay a cost of Rs.30,000/- permitting the

plaintiff to file affidavit within two weeks and then another

cost of Rs.5,000/- for bringing that affidavit on record. It

has been contended that the cost has already been paid and

after payment of the cost only one opportunity was granted to

the plaintiff to adduce evidence which unfortunately could not

be availed by the plaintiff as there was a communication gap

between the plaintiff and his client namely the Official

Liquidator because of which the plaintiff‟s evidence was

closed on 16.12.2010. The learned counsel for the plaintiff

Mr. Anand took the Court through the various orders of the

Court passed from time to time in this regard.

11. The second submission which was made by the learned

counsel for the plaintiff was that admittedly the defendant in

the written statement has taken the plea that she has already

filed an application for rectification of the trade mark of the

plaintiff which is pending adjudication, and therefore, in

pursuance to Section 124 of the Trade Mark and Merchandise

Act, 1958, the proceedings of the present suit be stayed till

the tribunal passes an appropriate order on the said

rectification application.

12. The third point which was taken by Mr. Anand, the learned

counsel for the plaintiff is to the effect that by giving one

opportunity to the plaintiff no serious prejudice is likely to be

caused to the defendant as the plaintiff is not manufacturing

the edible oil under the brand name „postman‟ as on date.

The plaintiff be given one opportunity to adduce evidence on

which date he will examine one witness from the Official

Liquidator‟s Office to prove his case where after the defendant

can enter the witness box. It is urged that the entire process

would roughly take about a couple of months by which date

the entire evidence will be recorded and the case could be

decided on merits. Lastly, it is urged that even if for the sake

of arguments it is admitted that the plaintiff is not to be

permitted to adduce evidence even then there are documents

on record which clearly establish that the defendants are

indulging in act of infringing the trade mark of the plaintiff.

In this regard, it has been contended by the learned counsel

for the plaintiff that he has already placed on record the

documents by way of exhibit P-1 to P-5 which clearly prove

the case of the plaintiff.

13. Ms. Pratibha M. Singh, the learned counsel for the defendants

has refuted all the submissions of the plaintiff. So far as the

Chamber Appeal is concerned, it has been contended by the

learned counsel for the defendants that as on date there is no

Chamber Appeal pending before the Court. Even the registry

has returned the said Chamber appeal. Time cannot be

granted to the plaintiff to file the Chamber appeal so as to

avoid the Court passing an order under Order 17 Rule 3 CPC.

It may be pertinent here to mention that Order 17 Rule 3 CPC

reads as under:-

"3. Court may proceed notwithstanding either party fails to produce evidence, etc.

- Where any party to a suit to whom time has been granted fails to produce his evidence, or to cause the attendance of his witnesses, or to perform any other act necessary to the further progress of the suit, for which time has been allowed, (the Court may notwithstanding such default,--

(a) If the parties are present, proceed to decide the suit forthwith, or

(b) If the parties are, or any of them is, absent, proceed under Rule 2)"

14. With regard to the stay of the present proceedings in view of

the rectification application having been filed before the

registration of the trade mark, it was contended that no doubt

such a provision exists but the said provision is to be availed

of at the first available instance and not by way of an escape

route to avoid the precepetative order being passed on

account of non production of evidence by the plaintiff. With

regard to the production of evidence, it was contended that

the plaintiff had been given sufficient number of opportunities

but he has been negligent in prosecuting the case and did not

produce any evidence. The plea that grant of another

opportunity would not cause any prejudice to the defendant,

is stated to be without any merit. It is stated that there is

already a serious prejudice caused to the defendant on

account of the stay order which has been operating against

them for the last nearly five years and yet the plaintiff is

indulging in dilatory tactics. With regard to the last

submission that the existing record itself including the exhibit

P-1 to P-5 proves the case of the plaintiff, it was submitted

that the plaintiff is not able to prove that the defendant is

infringing the trade mark of the plaintiff. It was contended

that the plaintiff has failed miserably to discharge the onus of

even proving that it is the owner of the trade mark much less

to prove that the defendant is indulging in infringement, even

passing off for warranting directions by the Court.

15. I have considered the respective submission and perused the

record.

16. So far as the first plea regarding the filing of Chamber Appeal

by the plaintiff against the order dated 16.12.2010 by the

learned Joint Registrar closing his evidence is concerned, it

may be pointed out that the plaintiff has already collected the

appeal from the Registry on which objections have been

raised that it was not supported by an affidavit of the

signatory to the appeal in original. The appeal paper book

was produced before the Court and it was accompanied by a

copy of the scanned copy of the affidavit which could not be

accepted to be as a proper affidavit so as to enable the Court

to entertain the appeal, therefore, as on date there is no

appeal which is pending before this Court against the order

dated 16.12.2010 passed by the learned Joint Registrar

closing the evidence of the plaintiff.

17. Without considering as to whether any appeal is pending or

not against the order of closure of evidence of the plaintiff if

one goes from the previous order sheets, it becomes clear that

there is nothing illegal or irregular in the order which has

been passed by the learned Joint Registrar who has been

literally forced to close the evidence of the plaintiff as he has

failed to produce the witness despite the sufficient number of

opportunities having been given to him. It may be mentioned

here that the issues in the instant case were framed almost

two years back on 01.12.2008 and the onus of proof of main

issues that the plaintiff is the proprietor of the trade mark

„Postman‟ and the artistic work „Postman‟ apart from proving

the action of the defendant amounting to infringement or

passing off was on the plaintiff. Similarly, the onus to prove

damages to which the plaintiff was entitled was also on the

plaintiff as would be reflected from the issues which have

been reproduced hereinabove. The plaintiff was given 10

weeks time to file evidence by way of affidavit which was not

done and the matter was adjourned to 16.03.2009 before the

learned Joint Registrar for fixing up dates of cross

examination. On 16.03.2009, neither the list of witnesses

nor the affidavit by way of evidence of the parties were filed

and two weeks‟ time was further sought whereupon the

learned Joint Registrar adjourned the matter to 06.05.2009.

On 06.05.2009 again an adjournment was sought on behalf

of the plaintiff for the purpose of filing evidence as it was

stated that instructions are still awaited from the plaintiff.

This request was repeated even after expiry of two months on

06.07.2009. The matter was adjourned to 13.07.2009. On

13.7.2009, last and final opportunity was granted to the

plaintiff to file the affidavit and the matter was adjourned to

28.10.2009. On 28.10.2009, the learned Joint Registrar

again noticed that no affidavit by way of evidence has been

filed despite last opportunity having been given. This clearly

shows that despite sufficient number of opportunities having

been given to the plaintiff, he was negligent in prosecuting the

matter and was shying away from producing the evidence,

perhaps on account of the fact that he was enjoying the

restraint order against the defendants.

18. On 14.01.2010, the factum of negligence of the plaintiff in

prosecuting the matter was noted and one more opportunity

was granted to the plaintiff to file affidavit by way of evidence

subject to payment of cost of Rs.30,000/- and in default of

filing of the affidavit the evidence of the plaintiff was

peremptorily directed to be treated as closed. The matter

was adjourned to 22.02.2010. On 22.02.2010 it was noted

by the learned Joint Registrar that the affidavit had been

returned back as it was not filed within the stipulated period

and the matter was directed to be placed before the Court.

On 09.04.2010, the affidavit was re-filed by the plaintiff

though belatedly and on an application having been filed the

plaintiff„s affidavit was permitted to be taken on record

subject to payment of additional cost of Rs.5,000/-. The

matter was directed to be relisted before the learned Joint

Registrar on 05.05.2009 for the purpose of cross examination.

The witness did not appear before the Court on 21.09.2010

for the purpose of cross examination. On the contrary, a

fresh application was filed on behalf of the plaintiff under

Order XVIII Rule 4 CPC for production of one official from the

office of Official Liquidator for the purpose of proving the

plaint. It was stated that he will be examined orally. An

impression was sought to be created as if oral examination of

this witness was in lieu of the other witness whose affidavit

was already filed. The application was allowed and the

plaintiff was permitted to examine the said witness orally.

The matter was directed to be listed before the learned Joint

Registrar on 26.10.2010 for the purpose of cross examination

of the witnesses who was sought to be summoned and

examined orally. But neither the witness was summoned nor

he was brought. Even the person whose affidavit was filed

and who was to be examined also did not appear. It is in

this backdrop when the witness whose affidavit was filed did

not appear for cross examination and the witnesses whose

examination was to be recorded orally was also not present

that the learned Joint Registrar closed the evidence of the

plaintiff. The plaintiff is not to be given endless opportunities

to adduce evidence specially when objection is being taken by

the opposite side that he is deliberately indulging in dilatory

tactics because the stay order is operating against the

defendants. All these sequence of events shows that the

plaintiff had been deliberately negligent in prosecuting his

matter because he was continuing to enjoy the restraint order

in his favour and against the defendant. There was

absolutely no justification for the plaintiff to have defaulted

on so many occasions and despite so many warnings in filing

the affidavit by way of evidence and even producing the

witness when he was visited by costs. It was in this

backdrop that I feel that the order of the learned Joint

Registrar cannot be found to be at fault and he was perfectly

justified in closing the evidence of the plaintiff. The plea of

the learned counsel for the plaintiff that grant of another

opportunity for the purpose of cross-examination or for

producing of witnesses will not cause any serious prejudice to

the defendant is of no consequence. This is an argument

only in desperation to see that the matter is kept alive for the

purpose of recording of evidence. The question of non-grant

of permission to adduce evidence in the instant case does not

hinge on the plea that no prejudice would be caused to the

defendant but on the fact that as to how many opportunities

have been given for the purpose of production of evidence

which the plaintiff has failed to avail of. Obviously, the

plaintiff has miserably failed to avail of even a single

opportunity having been given for the cross-examination of

the witnesses. I, accordingly, feel that there is no infirmity or

illegality in the order passed by the learned Joint Registrar in

closing the evidence of the plaintiff. If the evidence of the

plaintiff is closed then the question which arises is as to

whether, as urged by Mr. Anand, Advocate that from the

existing record he is able to show that the defendant is

responsible for infringement, is to be examined. In this

regard, the following issues are relevant with regard to which

the onus of proof is on the plaintiff.

"(1) Whether the plaintiff no.1 is proprietor of the trade mark POSTMAN? OPP

(2) Whether the plaintiff no.1 is proprietor of artistic work in the label/packaging with the mark POSTMAN? OPP

(3) Whether the defendants are guilty of passing off their goods as those of the plaintiff? OPP

(4) Whether the defendants have infringed the plaintiff‟s trade mark POSTMAN and/or the artistic work in the packaging/label?

              OPP

              (5) Whether the plaintiff is entitled         to
              damages? If so, to what amount? OPP

(6) Whether the plaintiff is entitled to decree for rendition of accounts and/or damages, if so, what amount? OPP

(7) Whether the plaintiff is entitled to decree of permanent injunction(s) as prayed for? OPP

(8) Relief."

The onus of proof of these issues no. 1 to 4 and 6 to 8 was on

the plaintiff to establish that he is the proprietor of the trade

mark and that the said trademark was being infringed and

the rest of the reliefs were consequential. No evidence has

been produced by the plaintiff to prove that he is the

proprietor of the trade mark of the word „Postman‟ or is even

the proprietor of the artistic work, therefore, issue Nos.1 and

2 have to be decided against the plaintiff.

19. So far as the issue nos. 3 and 4 are concerned, that deals

with the question of passing off and infringement of the trade

mark or the artistic work of the packaging. Since the

plaintiff himself has not been able to establish that he is the

proprietor of the trade mark of „Postman‟ or the artistic work

„Postman‟ as alleged by him, the question of the infringement

and passing off the trademark by the defendant does not

arise. The exhibits which have been admitted by the

defendants are of no consequence so far as the discharge of

onus in respect of the above issues is concerned. There has

to be either proof of a fact by the plaintiff or there has to be

an admission of the plaintiff‟s trademark or the artistic work

in the logo of „Postman‟, which are not there. Therefore, the

documents admitted become inconsequential. These exhibits

are:-

"i) Exhibit P-1 is the photograph of the defendant‟s product.

ii) Exhibit P-2 (colly) is the bill by virtue of which the impugned goods under the Mahalaxmi Oil Company is purported to have been purchased. In addition to this, there are two visiting cards.