Marie Stopes International vs Parivar Seva Sanstha
2010 Latest Caselaw 989 Del

*        IN THE HIGH COURT OF DELHI AT NEW DELHI
                                                                               Date of Reserve : 30.10.2009
                                                                               Date of Decision : 22.02.2010
IA NO.4907/2005 IN CS (OS) 898/2005
MARIE STOPS INT.,                                            ..... Plaintiff
                         Through: Mr. Hemant Singh with Mr. Sachin Gupta and Mr.
                         Animesh Rastogi, Advocates.

                             versus

PARIVAR SEVA SANSTHA                                          ..... Defendant
                    Through: Mr. Sanjay Jain, Sr. Advocate with Ms. Ekta Kalra, Mr.
                    Sanjeev Sindhwani and Ms. Prabhsahay Kaur, Advocates.

IA Nos. 9256/2003 & 9764/2003 IN CS (OS) 1691/2003
PARIVAR SEVA                                                         ..... Plaintiff
                          Through: Mr. Sanjay Jain, Sr. Advocate with Ms. Ekta Kalra, Mr.
                          Sanjeev Sindhwani and Ms. Prabhsahay Kaur, Advocate.

                             versus

VIVEK MALHOTRA                             A                                    ..... Defendant
                                       Through: Mr. Hemant Singh with Mr. Sachin Gupta and Mr.
                                       Animesh Rastogi, Advocates.
CORAM:
MR. JUSTICE S. RAVINDRA BHAT

1.       Whether the Reporters of local papers                                 Yes.
         may be allowed to see the judgment?
2.       To be referred to Reporter or not?                                    Yes.
3.       Whether the judgment should be                                        Yes.
         reported in the Digest?

MR. JUSTICE S.RAVINDRA BHAT

%
1.       This order will dispose of rival temporary injunction applications, i.e. No. 4907/2005 in
Suit no. 898/2005 and No. 9256/2003 in Suit no. 1691/2003. Suit No. 1691/2003 is filed by
Parivar Seva Sansthan (hereafter called "PSS") complaining passing off and trademark
infringement by Marie Stopes International (hereafter "MSI") and seeking permanent injunction


IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003                   Page 1
 and other allied reliefs. The second suit, CS (OS) 898/2005, is by MSI; it alleges trademark
infringement and passing off by PSS, and claims injunctive and other consequential reliefs. The
defence taken by MSI in the suit of PSS, are the grounds urged in support its claim in its suit;
likewise, the PSS's claim in its suit, constitutes its stand in defence in the suit filed by MSI.

2.       MSI was registered as a Charity (No.265543) in the year 1973, under the laws of England
and Wales. It was earlier known as "Population Services International" and "Population Services
Europe" as admitted by defendant itself.

3.       Ms. Marie Stopes who died on 01.10.1958 founded the first British Control Centre, the
"Mother's Clinic" in London in 1921. Her clinic was taken over by MSI on 26.4.1976 when it
was under liquidation and has been run ever since. Despite MSI not changing its name officially
in 1976 to Marie Stopes, it adopted and used the name Marie Stopes and worked with advertisers
to create the Marie Stopes and door device logo. It contends having used the Marie Stopes and
the door device as a trade mark in UK since 1976. MSI's right to use the name "Marie Stopes", it
submits, has been confirmed by Harry Stopes himself, son of Ms. Marie Stopes. MSI claims to
have been engaged in a range of charitable services (including family planning, reproductive
health care, screening etc.) under the trade name/ trade mark "Marie Stopes" and the "door
device" logo - essentially a graphic design of the front door of the Marie Stopes clinic of MSI,
continuously, since 16.03.1973. The said mark is reproduced hereunder:




4.       It is alleged that on 2.3.1978, MSI entered into an agreement with promoters of PSS,
namely Dr. (Mrs.) Sudesh Bhal Dhall, Mr. V.K. Govil and Mr. G.K. Arora, to set up the PSS, a
society, as its local partner, to carry out the reproductive healthcare programme in India. MSI's
trustees and signatories to the Agreement dated 2.3.1978, jointly registered the PSS and also
became members of its Governing Body. PSS was initially registered as "Marie Stopes Society"
but changed its name to "Parivar Seva Sanstha". It (the PSS) was managed for several years from
1978 till 2002 by Dr. Tim Black, the plaintiff's Trustee, as its President. Gradually, alleges MSI,


IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003    Page 2
 PSS hijacked the Governing Body and replaced its (MSI's) members with its own. Large amount
of donations running into crores of rupees were forwarded by international donors to the PSS
through the MSI. However, the latter refused audit of its accounts. MSI submits to have become
aware, in September 2003 that PSS had applied for registration of trade mark `Marie Stopes' in
its own name. The MSI therefore terminated the Trade mark Licence Agreement, dated
02.03.1978 by letter, dated 13.03.2003. The mark in use by the PSS is:




5.       MSI submits that to preempt it, PSS filed Suit No.1691/2003. MSI says that it awaited
adjudication of the dispute. However, it came across a consumer court order against PSS in
December 2004, which was reported in the press where the respondent was identified as MSI.

The latter realizing the damage PSS was causing to the goodwill of Marie Stopes, was constrained to file the suit to protect the goodwill and reputation of the brand "Marie Stopes" and "Door Device" logo from further injury.

6. It is submitted that the use of the trade mark "Marie Stopes" and the "Door Device" logo by PSS was pursuant to the licence agreement dated 2.3.1978. It is argued that PSS's contentions about being owner of the disputed mark, as no subsequent agreement was signed between MSI and PSS (as envisaged in the agreement) and therefore, agreement not being binding on PSS and about its (PSS's) proprietary right on account of use of these trade marks in India since 1978, are untenable because:

i) The society (PSS), adopted and acted upon the terms of the agreement from its inception and hence is estopped from challenging its validity;

ii) PSS was initially registered as "Marie Stopes Society" in accordance with Clause (4) of the agreement;

iii) PSS was promoted and registered by the signatories to the agreement dated 2.3.1978, namely, Dr. T.R.L. Black, Dr. (Mrs.) S. Bahl Dhall, Mr. V.K. Govil and Mr. G.K. Arora;

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 3

iv) The governing body of the said society was formed by all signatories to the agreement who were also its promoters;

v) Rule 6.1 of Rules and Regulations of PSS' Memorandum of Association, required the President of the PSS to be a nominee of Population Services Europe, Charity No.265543. It is admitted by PSS that Population Services Europe was the former name of MSI;

vi) The trade marks appearing on Memorandum of Association are same as appearing in the agreement;

vii) PSS has claimed trademark right in "Door Device logo" which mentions "established 1921 London". Evidently, it was `Marie Stopes' clinic taken over by plaintiff that was established in "1921" in "London" and not the defendant society. It, hence, has to be plaintiff's trade mark and can never be considered as the PSS's trade mark, which is an Indian society registered in India in 1981.

viii) PSS has always represented itself publicly as Associate/Affiliate of MSI.

ix) Affidavits of Peter Lawton, dated 16.05.2006, Dr. (Mrs.) Sudesh Bhal Dhall, dated 03.03.2006 and Mr. V.K. Govil, dated 16.01.2006.

7. MSI submits that the fact that no subsequent agreement was executed pursuant to the agreement dated 02.03.1978, does not absolve the PSS from its obligations in terms of the agreement dated 02.03.1978. Learned counsel has relied upon the judgment reported in Kollipara Sriramulu v. T. Aswathnarayana & Others, AIR 1968 SC 487.

8. MSI contends that the agreement was terminated, in the present case on 13.04.2003; consequently, PSS ceased to have any right to use the work as per Clause 3 (c). MSI argues that having taken benefit of the license user as per the Agreement dated 02.03.1978, PSS is estopped from challenging its (MSI's) proprietary right and also from claiming any right in respect of the said trade mark or from using the said trade-marks. By continuing to use trade mark "Marie Stopes" and "the door device" logo PSS is passing off its services and business for those connected with the plaintiff whereas no such connection/association exists any more. Reliance is placed on J.K. Jain & Others v. Ziff Davies Inc, 2000 PTC 244 (DB), Rob Mathys India Private

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 4 Limited v. Synthes Ag. Chur, 1997 (17) PTC 669 (DB) and Baker Hughes Limited v. Hiroo Khushalani, 1998 PTC (18) 580.

9. MSI submits that the registration of trade mark obtained by PSS is not in their name. They are in the name of "non-existent entity". Such registration does not confer any right in favour of the defendant. Even otherwise, the trade mark registration is no defence to cause of action for passing off as per Section 27(2) of the Trade marks act, 1999. Reliance is placed on N.R. Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300.

10. It is argued that PSS obtained copyright registrations without the MSI's knowledge. Even otherwise copyright registration is no defence to passing off action. Notwithstanding these, says MSI, the said registration is fraudulent considering that Mr. Peter Lawton is shown as the author, in the copyright registration certificates, whereas the said Mr. Lawton has sworn an affidavit dated 16th May, 2006 categorically denying being the author and attributes copyright in favour of MSI. MSI claims to have applied for cancellation of the copyright registrations and the judgment in the said petitions is reserved by the Copyright Board.

11. MSI submits to being registered proprietor of the trade mark "Marie Stopes International" and "the Door Device" and its use by PSS constitutes infringement. The registrations, obtained by PSS are challenged as invalid, fraudulent and even otherwise in the name of non-existent entity. According to MSI, PSS does not have any right of use under Section 28 (3). The Trade mark and Copyright Registration Certificates, it submits, were obtained by PSS fraudulently and cannot be considered valid.

12. PSS's version, in the written statement to MSI's suit, and in its suit (OS 1691/2003) is that the Population Services Family Planning Programmes Ltd. (PSFPPL) was incorporated as a company on 17th March, 1973, and was conducting business as Population Services International (PSI). It is alleged that PSFPPL leased Marie Stopes' Clinic at Whitfield Street in London, on 26.04.1976. This clinic was carried out in the name and style "Mother's Clinic", i.e. the same name which had been adopted by Ms. Marie Stopes for her clinic. PSS says that prior to securing lease of the premises, PSFPPL had no connection or dealing with Mother's Clinic, in any manner whatsoever, and that Marie Stopes had died in 1958.

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 5

13. PSS disputes that any agreement, or the agreement dated 02.03.1978 (hereafter called "the 1978 Agreement") was entered into, by MSI, with it, as asserted by the latter; it disputes that such agreement was signed by the three persons, i.e. Dr. Sudesh Dhall, Shri V.K. Govil and Shri G.K. Arora. It is contended by PSS that the original of the said document has not seen the light of the day, despite lapse of more than 7 years, since the dispute has arisen. PSS also says that the original of that document was not produced by MSI, even in its later suit, filed in 2005; it has not been produced despite notice by PSS calling upon it to do so. PSS submits that the Marie Stopes clinic society was registered in India with seven founder members, i.e. Dr. Sudesh Bhall Dhall; Dr. Malcolm Potts; Mr. Alan Cole; Dr. T.R.L. Black; Mr. P.D. Harvey, Mr. V.K. Govil and Mr. G.K. Arora. The said society applied for copyright registration in respect of the Marie Stopes clinic with the logogram, for which copyright was issued on 27.01.1982. Copies of the certificates have been produced. Other copyright registrations are alleged to have been granted on the same date. It is also contended, similarly that the MARIE STOPES SOCIETY clinic, with logogram copyright registration was granted on 01.12.1983. The other copyright registrations claimed are in respect of MARIE STOPES SOCEITY CLINIC, MARIE STOPES CENTER (with logogram) and MARIE STOPES with logogram.

14. It is submitted that the Marie Stopes Society resolved to change its name into Parivar Seva Sansthan, on 14.04.1982, which was applied for, and granted by the Registrar of Societies on 24.11.1982. A copy of the certificate (by which its name was changed to PSS) has been produced. PSS contends that PSFPPL was granted permission in the UK, to operate as a charitable society, on 1st June, 1984. In these circumstances, PSS submits that it applied for registration of trademarks in respect of MARIE STOPES WITH LOGOGRAM, MARIE STOPES with the door device; on 28.12.1987.

15. It is argued that PSFPPL changed its name into Marie Stopes International Ltd., with effect from 02.04.1991. This entity (Marie Stopes International Ltd.) became Marie Stopes International w.e.f. 12.08.1991. PSS says that however, none of the trademarks used by it were used or adopted by Marie Stopes International, even as of the time of filing of the two suits. It also submits that "Marie Stopes" was used for the first time by MSI since 1991. Except use of the name MARIE STOPES, the logo was never used or adopted. On 22.12.1998, a trust known as MARIE STOPES INDIA, was formed (it is the third defendant in the PSS suit). The Trust,

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 6 and another company, Population Health Services (PSH, Defendant No.2 in CS(OS) 1691/2003, created w.e.f. 31.03.1999) says PSS, were formed only to receive funding and donation from various sources. It is alleged that neither of them started, or set-up any clinic under the style MARIE STOPES.

16. PSS refutes allegations of passing off contending that it is prior user of the mark, device and logo. It also submits that MSI secured registration of certain MARIE STOPES formative trademarks on 27.12.2002, including the door device, in Class 10 and Class 16.

17. It is contended that PSS has been continuously using the mark since 1978. Besides relying upon copies of Trademark Registration Certificates as well as Copyright Registration Certificates, it places reliance on letters written in 1982-83, 1987 etc. to various governmental authorities as well as others. Copies of Annual General Meeting intimations for the years 2003- 04 etc. are placed on record. The proposal of PSS to establish clinics in various parts of the country and for seeking approval in regard to importation of equipment etc. written at various points of time are also emphasized. It is submitted that the Annual Reports for the period 1999- 2005 are on the record. The PSS claims to have been in correspondence with international funding agencies and donors, in regard to its activities; letters written to the European Commission in 2003 are relied on. Copies of advertisements issued in the local newspapers dated 24.10.2004 in respect of PSSs clinics are relied on. Commendation Letters and intimations concerning visit of foreign delegations have also been relied upon.

18. It is argued that the MSI was aware and in fact was made aware of the kind of services that the PSS was giving and offering to the public at large as well as the usage of the trademark and door device. These, says the PSS, constituted knowledge so far as to amount to MSI's acquiescence about such usage thus disentitling MSI to any kind of equitable relief. On the other hand, says the PSS, it has been using the mark continuously since 1978 and that even if the so- called agreement of 1978 were deemed to have been cancelled in 2003, such usage is uninterrupted and entitles it to protection through temporary injunction. Learned counsel for the PSS also argued that MSI in any event is not running any clinic but is engaged in sale of certain products like contraceptives etc., which do not entitle it to the injunction it seeks.

19. From the above discussion, it is apparent that certain facts are undisputable. They are:-

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 7 (1) PSFPPL was incorporated as a company and was carrying-on its business under the style - Population Services International (PSI).

(2) On 24.04.1976, PSFPPL took on lease the Marie Stopes Clinic in London; it was known as "Mother's Clinic", from the time Dr. Marie Stopes ceased using it in 1958.

(3) In 1981-82, the PSS (formerly "Marie Stopes Society") obtained registration of copyright of the Marie Stopes logo and device. On 02.04.1991, the PSI changed its name to MSIL; subsequently, it was known as MSI, with effect from 12.08.1991.

(4) The PSS was incorporated as a society under the Societies Registration Act, on 11.09.1978. Its founder-members included Dr. (Mrs.) Sudesh Bhal Dhall, Mr. V.K. Govil and Mr. G.K. Arora. Its Memorandum of Association reserved power in favour of PSI (later MSI) to nominate members on the PSS's Governing board, or management;

(5) Initially, the Society was known as "Marie Stopes Society". The name was later changed to PSS with effect from 24.11.1982.

(6) In 1998-99, the MSI India Trust and the Population Health Services were founded.

20. There cannot be any serious dispute about the fact that the erstwhile Marie Stopes Society

- later known as "PSS", used "Marie Stopes" banner for the services it was providing. The copies of letters and correspondence placed on the record prima facie justify this inference. The bone of contention, however, is whether such use can be claimed any longer, in view of MSI's contention. The latter, in its defence in PSS suit - as well as in the averments in its suit, asserts that on 02.03.1978, an agreement had been executed to which three of the promoters of PSS were parties. The agreement was entered into with PSI (which had been incorporated in 1973) and was earlier known as PSFPPL. According to MSI, the PSI granted permission and license for the use of the Marie Stopes mark with the door device, to the parties who had executed the agreement. The said three promoters, it is stated, had agreed to incorporate a new society. The material portions of the said agreement are as follows:

         "XXXXXX                                 XXXXXX                                        XXXXXX



IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003            Page 8
          NOW THESE PRESENTS WITNESSETH and it is mutually agreed by and
         between the parties hereto as follows:

1. Pursuant to the said Agreement and in consideration of the Promoters forming the said New Society in the Union Territory of Delhi in India for carrying out and executing said objects and purposes subject to the provisions of Clause 2 below, PSI hereby grant permission and license for the use of the said Marks as are specified in the Schedule given hereunder by the said New Society in the name of the New Society and/or in relation to the clinics run and maintained by the said New Society.

2. The Promoters hereby undertake that this Agreement shall be adopted and cause to be adopted by the said New Society immediately after the registration of the Said New Society and thereafter the said New Society shall carry out the terms of this Agreement to the full extent.

3. The Promoters and/or the said New Society subject to the provisions of Clause 2 above shall not pay any money for the licence hereby granted by PSI during the continuance of this Agreement and thereafter the following terms shall be applicable.

a) If the said New Society shall do or cause to be done directly or indirectly whether as principal or agent any acts deeds or things and/or to omit to do anything which may injure or imperil or be against the interest of PSI and/or the said Marks, of which events PSI shall be sole judge and the decision of PSI in this behalf to be final and binding on the liberty to terminate and cancel this Agreement forthwith by writing a letter to the said New Society. On termination of this Agreement the said New Society shall absolutely stop using the said Marks and also take immediately effective steps to change its name and to remove the name „Marie Stopes‟ from the name of the said New Society.

b) If the said New Society shall fail and/or neglect to carry out the directions in sub Clause (a) above, PSI shall be at liberty to specifically enforce its rights under this Agreement through court of law.

c) Notwithstanding anything herein before contained it shall be lawful for PSI to terminate this Agreement without assigning any reason therefore by giving 3 months notice in writing and immediately on receipt of the notice the said New Society shall take effective steps for deletion of the word „Marie Stopes‟ from the name of the said New Society. After the expiry of the notice period the said New Society shall not use in any manner whatsoever the word „Marie Stopes‟ and/or the said Marks and shall not represent or indicate in any way connection with PSI.

4. The Promoters hereby undertake that immediately after the registration of the said New Society, they shall cause the said New Society to enter into an Agreement with PSI on the lines of a draft annexed hereto and marked „A‟.

         XXXXXX                                  XXXXXX                                        XXXXXX"

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21. The PSS flatly denies the existence of the agreement and contends that the Marie Stopes mark, the door device and the label were used by it even before the PSI device, and started using "Marie Stopes" in relation to any services rendered by it anywhere in the world. It mainly contends that being a society, its rights cannot be whittled-down by any agreement, especially entered into by some promoters, prior to its foundation and that, even otherwise, allowing its use of the mark crystallized into a right to prevent the MSI, which has only recently entered directly in respect of allied services, but not for establishing maternity care clinics and similar services, in India. It also argues that independent of the trademark issue, it (PSS) is the copyright proprietor of the Marie Stopes mark and the device.

22. The first question is as to the existence and effect, if any, of the agreement dated 02.03.1978, in view of the PSS's denial. The material part of the agreement has been extracted above. In support of the contention that the agreement is genuine and binds the parties, the MSI relies upon the affidavits of two of its signatories, i.e. Dr. (Mrs.) Sudesh Bhal Dhall, and Mr. G.K. Arora. These deponents affirmed their affidavits on 03.03.2006 and 16.01.2006. They have unequivocally mentioned about the due execution of the agreements and also that they were members of the Governing Body for some time. However, they have leveled allegations that the Governing Body was completely taken-over sometime in 2000-01. There is no doubt that these affidavits have been filed by an interested party. Nevertheless, the Court has to be mindful of the circumstance that only a prima facie view can be taken at this stage - which would imply that the totality of circumstances has to be gauged rather than scrutinizing every piece of evidence as if the parties were at trial. There is authority for the proposition that in such circumstances, affidavit depositions do guide the Court as to the contents and what the witnesses have affirmed: Ref to Allergan Inc. v. Milment Oftho Industries & Ors., 19 (1999) PTC 160, where it was held that at the interlocutory stage, the Court cannot discard affidavit testimony:

"At the interlocutory stage, where the deponents to the affidavits are not subjected to cross-examination, the Court necessarily has to proceed on the basis of affidavit of evidence. There is no reason at this stage to disregard the statements made on oath..."

23. Here, an interesting related aspect would be that the PSS claims to be copyright owner of the "Marie Stopes" mark and device, alleging that they are artistic works, created by Mr. P.S.

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 10 Lawton, an executive member of the erstwhile "Marie Stopes" Society (later known as "PSS"). Copies of such registration certificates issued in 1992 have been produced and are part of the record. The affidavit of the said Mr. P.S. Lawton dated 16.05.2006 has been filed by the MSI. In that affidavit, the deponent, Mr. P.S. Lawton clearly disclaims authorship of the alleged artistic works and says that MSI UK is the copyright owner in all the artistic works. The relevant part of the deposition reads as follows:-

"XXXXXX XXXXXX XXXXXX .......My name is shown as the author of the alleged artistic work subject matter of copyright registration Nos. A35536/82, A35613/82, A35649/82, A35644/82, A35595/82, A35600/82. I am not the author of these works. MSI, UK is the owner of copyright in all these artistic works. My name has been used by PSS India in the copyright application without my permission or knowledge.

XXXXXX XXXXXX XXXXXX"

24. As far as the other materials on record are concerned, a careful scrutiny would reveal that copies of the webpages of PSS filed by it state as follows:

"XXXXXX XXXXXX XXXXXX Established in the year 1978 and affiliated to Marie Stopes International, Parivar Seva Sanstha is a pioneer social service initiative in the field of reproductive healthcare in India.

XXXXXX XXXXXX XXXXXX"

25. Apparently, the PSS had been in touch with the MSI; this is evident from copies of the letters placed on the record by the PSS dated 21.03.2003, which encloses the annual reports for the period 2000-01 and 2001-02, to MSI. The letter also emphasizes that expenditure reports since inception had been audited and that such expenditure reports would henceforth be furnished to the MSI. The other letters particularly dated 20.06.2003, 17.07.2003 and 20.08.2003 (the letter of July having been written to MSI) reveal that the MSI, in fact, used to receive funding for onward utilization by the PSS. The European Commission was one such donor. Two letters written to the Commission by the PSS voice its (PSS's) complaint that the MSI was not releasing the funds.

26. Besides above, the PSS itself has produced voluminous evidence documenting its continuous and sustained engagement with MSI in various health-based projects, in India. Two

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 11 of them concern Orissa and Rajasthan. There is documentary evidence saying that the Department for International Development (DFID) of UK was involved as also the Buffet Foundation, in the funding of such programmes. For instance, in the document styled as "Orissa Project Memorandum", it is mentioned in para 10.9, as follows:

"XXXXXX XXXXXX XXXXXX MSI has provided financial and technical assistance to PSS since establishment of the latter in 1978. The link is part of MSI‟s working relationship with partner organizations in 25 countries in Asia, Africa, Latin America and Eastern Europe. As one of MSI‟s most formal establishment partners, PSS has the capacity to raise funds internationally and locally and to manage its wide range of activities.

         XXXXXX                                            XXXXXX
              XXXXXX"

27. A separate Memorandum of Understanding (MoU) was also executed between PSS and MSI in 2001. Further documentary evidence reveals that similar projects in respect of a Howrah project also involved MSI as a major support partner.

28. It is a matter of record - the document, Ex. P/8 in Suit No. 1691/2003, filed by PSS establishes that MSI recollected that PSS was financed and given permission to use the trademark and name Marie Stopes as well as trademark comprising the door device. By the said letter, (Ex.P-8), MSI terminated the agreement and advised PSS to desist from using the mark and the device. It also requested that the trademark registration existing in its favor should be withdrawn.

29. The result of the above discussion is that prima facie, this Court concludes that the agreement dated 02.03.1978, is genuine and was within the knowledge and awareness of PSS; the latter was established as a consequence of such understanding. Two out of the seven founder- promoter-members have deposed about the existence of the agreement. The documentary evidence in the form of affidavits also prima facie discloses that the PSS's claim about being copyright proprietor cannot be sustained in view of Mr. P.S. Lawton's deposition. No doubt, PSS used the Marie Stopes mark and its variants as well as the door device. Yet, the documentary evidence prima facie establishes that it had a close association and affiliation with MSI; even the website relied upon by it in the suit filed (by the PSS itself) claims it to be MSI's affiliate in India. The other documentary evidence about the arrangement with the international donors and

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 12 the projects established and administered by the PSS underline this aspect and further enforce that MSI was monitoring and also actively providing support to PSS. The latter used to regularly furnish expenditure reports to MSI. In these circumstances, it is held that the use of the mark Marie Stopes and any of its variants as also the door devise was a permissive one, so long as MSI chose to allow PSI to do so. On 13.03.2003, the license or permission to use the mark and door device were withdrawn by Ex. P-18 (marked in Suit No. 1691/2003).

30. As far as the argument by PSS that MSI was aware of use by it (i.e. PSS) of the Marie Stopes mark and the door device is concerned, this Court has noticed, in the preceding part of this judgment, that MSI was in collaboration with PSS in the latter's activities. PSS indeed sought, and was granted support and was referred as MSI's initiative in India. In the circumstances, PSS's use of the mark and the door device was a permissive use as licensee, under the 1978 agreement. It would not be out of place here to notice that in terms of Clause 7.4 and other terms of the PSS's Memorandum of Association, MSI's nominees functioned in its management. Baker Hughes Ltd. and Rob Mathys India (Pvt.) Ltd. are authorities for the proposition that once a license or permissive user arrangement is terminated, unless the erstwhile license can set up another permission, or authorization (for use) by the trademark owner, estoppel operates against him. In Baker Hughes, it was held by the Court that:

"The use of the name Baker as part of its corporate name by the second defendant was permissive in nature and once the plaintiffs disassociated themselves from the second defendant the use of the word Baker in the corporate name of the second defendant becomes highly improper, and it impinges upon the right of the plaintiffs to use the same exclusively. Learned Counsel for the plaintiffs submitted that assuming without admitting that the 'Basic Agreement' was not binding on the second defendant even then the plaintiffs will be entitled to interim injunction as the second defendant is passing off its goods and business as that of the plaintiffs by using the word Baker in its corporate name despite the fact that the plaintiffs have proprietory right over the name Baker and the goodwill attached thereto. It was pointed out that the word Baker is being used by the plaintiffs and its associate companies all over the world for a long time. The second defendant was not entitled to use the word Baker in its corporate name after the first plaintiff had sold its share in the second defendant. Once the first plaintiff snapped its ties with the second defendant the continued use of the word Baker in the corporate name of the second defendant cannot be permitted. On the other hand, learned Counsel for the defendants contended that in this part of the world the plaintiffs have not earned any goodwill or reputation associated with the word Baker. The plaintiffs do not have any proprietory right in India in the trade name or trade mark Baker. The name/mark Baker is not distinctive of their goods and the relevant members of the public in India do not associate the same with the goods manufactured by them. Rather it is the second IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 13 defendant who has established the goodwill and reputation in respect of oil field equipment manufactured in India under the name Baker. The buyers identify the name and mark Baker with the goods of the second defendant and not with the goods of the plaintiffs who do not have a trans-border reputation in India...."

Ziff Davis (supra) stated the position of a permissive user, whose right to use the trademark of another is withdrawn, as follows:

"It is apparent that trade- marks of the plaintiff are not just generic or descriptive in nature for the Plaintiff's magazines have acquired their own reputation in the market in view of circulation abroad as well as in India. Besides, the fact that the defendant themselves took license and it indicates the high value of the trade -marks of the plaintiff for otherwise, there was no reason for the defendants to copy them out. In such circumstances the defendants cannot claim any ownership of either of these trade- marks..."

31. PSS's contention as to being prior user and registered owner of the mark, in this Court's view, is insubstantial. Its claim for registration of the mark was made at a time when MSI permitted it to use the device and mark; the registration also was given when the arrangement existed. The license was terminated in 2003. By then MSI had secured its registration. For these circumstances, the existence of two registrations is unimportant, in view of Sections 27 and 28 of the Act; the case is one for passing-off.

32. It would be relevant here to extract Section 48, of the Act, which reads as follows:

"48. Registered users-

(1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trade mark is registered.

(2) The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any other purpose for which such use is material under this Act or any other law."

As is evident, Section 48(2) mandates that use of a mark by a permissive user is deemed to be the owner's use. The contention by PSS that MSI is, in its services in India, not running any clinic, is of no avail. As apparent from the materials on record, PSS was regarded as MSI's initiative in India till 2003. Its use of the mark and device after termination of license in 2003 is clearly unauthorized. The door device or logo in question itself states that the Marie Stopes clinic was

IA NO.4907/2005 IN CS (OS) 898/2005 & I.A. Nos. 9256/2003 and 9764/2003 in CS (OS) 1691/2003 Page 14 established in 1921. PSS uses it. The association of that mark with the MSI is clear; the materials on record point to the PSS using it, on MSI's behalf, for 25 years. It benefitted vastly by the association; funding arrangement related documents are placed on the record; they point to PSS seeking support in a significant manner, from MSI, which appears to be a pioneer of sorts in relation to such mother and child care clinics, and the kind of services they offer and extend. The mark is prima facie distinctive; MSI is, likewise, prima facie its owner.

33. The Supreme Court in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia, 2004 (3) SCC 90, held that in cases of infringement either of trade mark or of copyright, normally an injunction must follow, once prima facie case is established. It has been held that mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction becomes necessary, said the Court, if it prima facie appears that the adoption of the mark was itself dishonest. In this case, the resemblance of the two marks is too striking and close, in relation to the door device, as well as the MARIE STOPES word mark. There is a strong, if not inevitable likelihood of confusion among the patients and customers about the identity of the two.

34. For the above reasons, MSI's application for temporary injunction has to succeed; IA 4907/2005 is, therefore, allowed. An ad-interim temporary injunction is issued against Parivar Seva Sansthan, its agents, employees or anyone acting of for them, or on their behalf, restraining its (PSS's) use of MARIE STOPES, in any of its marks or representations, or use any mark deceptively similar to, or identical with the plaintiff (MSI's) marks, or the door device, and from using the MARIE STOPES logo, word mark, or any part thereof, in relation to the services offered by it (PSS). IA 4907/2005 is allowed in these terms; for the same reasons, IA 9256/2003 filed by PSS, in its suit, is rejected. I.A. No. 9764/2003 is also disposed of.

(S.RAVINDRA BHAT) JUDGE February 22, 2010

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