Delhi High Court
Johnson Enterprises vs Johnson Appliances Pvt. Ltd. & ... on 8 February, 2011
Author: Pradeep Nandrajog
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: January 18, 2011
Judgment Delivered on: February 08, 2011
+ FAO (OS) 461/2010
JOHNSON ENTERPRISES ..... Appellant
Through: Mr.S.K.Bansal, Advocate
versus
JOHNSON APPLIANCES PVT. LTD.
& ORS. .....Respondents
Through: Mrs.Pratibha M.Singh, Advocate
with Mr.Deepak Gogia and
Mr.J.P.Karunakaran, Advocates for
R-1
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR. JUSTICE SURESH KAIT
1. Whether the Reporters of local papers may be allowed
to see the judgment?
2. To be referred to Reporter or not?
3. Whether the judgment should be reported in the Digest?
PRADEEP NANDRAJOG, J.
1. The above captioned appeal is preferred against the
judgment and order dated 25.03.2010, whereby the learned
Single Judge has allowed IA No. 5352/2008 under Order XXXIX
Rule 1 and 2 CPC filed by the respondent No.1 against the
appellant and has confirmed the ad-interim injunction
restraining the appellant and respondents Nos.2 to 5 or any
person acting under their authority from using the trademark
„JOHNSON‟ in relation to electric water geysers (excluding the
instant type geysers), directly or indirectly, in any manner
whatsoever.
2. The backdrop facts leading to filing of the present appeal
are that the respondent No.1 filed a suit inter-alia praying for a
decree of permanent injunction restraining the appellant and
respondents Nos.2 to 5 or any person acting under their
authority from using the trademark „JOHNSON‟ in relation to
electric water geysers (excluding instant type geysers). Prayer
for rendition of accounts and damages was also made by said
respondent. I.A. No.5352/2008 was filed by the said
respondent praying for an interim injunction till the disposal of
the suit.
3. The case projected by respondent No.1 before the
learned Single Judge was that it is engaged in the business of
manufacture of electric water geysers (except the instant type
geysers). Vide certificate of registration No.197998-B dated
14.09.1960 trademark „JOHNSON‟ was registered in the name
of M/s Jain Industries in class 11 in respect of hot plates,
toasters and water boilers. Vide certificate of registration
No.319955 trademark „JOHNSON‟ dated 02.11.1976 was
registered in the name of M/s Jain Youngsters Trust in class 11
in respect of hot plates (electric), toasters (electric), water
boilers, hot cases, cooking ranges and baking ovens. On
26.10.1982 M/s Jain Youngsters Trust filed application
No.398342 before Trade Marks Registry for registration of
trade mark „JOHNSON‟ in its name in class 11 in respect of
electric fans installations for cooking, electrically operated
cooking apparatus, water filters, refrigerators and cooling
apparatus, air conditioning apparatus, electric geysers for hot
water, heaters and parts and accessories for the foregoing.
Trademark „JOHNSON‟ was assigned in favour of various
concerns before finally being assigned in favour of M/s Classic
Equipment Private Limited.
4. Vide assignment deed dated 09.03.1994 M/s Classic
Equipment Private Limited assigned trademark „JOHNSON‟ to
M/s Vidyut Udyog, the predecessor-in-interest of respondent
No.1, in respect of electric storage type water heaters
(excluding the instant type geysers). The relevant portion of
the assignment deed dated 09.03.1994 reads as under:-
"DEED OF ASSIGNMENT OF TRADE MARKS
THIS DEED OF ASSIGNMENT is made on this 9th day of March 1994
by M/s Classic Equipment Private Limited, ....., hereinafter called the
Assignor......in favour of M/s Vidyut Udyog,....., hereinafter called the
Assignee.
Whereas the Assignor is the owner and proprietor of the trade mark
JOHNSON duly registered under the trade and Merchandise Marks Act
1958 as per details given hereunder:-
------------------------------------------------------------------------------------------
Trade Mark Regn. No. Class Goods
------------------------------------------------------------------------------------------
JOHNSON 197997B 9 Electric Flat Irons
JOHNSON 197998B 11 Hot Plates, Toasters & Water
Boilers.
JOHNSON 319955 11 Hot Plates (electric),
Toasters
(electric), Water Boilers, Hot
Cases, Cooking Range and
Baking Ovens.
JOHNSON 195359 21 Frying Pan, Jug & Jar
(domestic utensils not of
Precious metal nor coated
Therewith) not included in
Other classes.
JOHNSON 319953 21 Frying Pan, Jug & Jar
(domestic utensils not of
Precious metal nor coated
Therewith) not included in
Other classes.
------------------------------------------------------------------------------------------
The Assignor also filed applications for the registration of the trade
mark JOHNSON in respect of wider specification of goods, which are still
pending in the Registry as per details given below:-
Application_________________Class
......
NOW THIS DEED WITNESSES that in pursuance of the said
agreement and in consideration of the said sum of Rs.1000/- paid by the
said Assignee to the said Assignor, receipt thereof the said Assignor
hereby acknowledges, the Assignor hereby assigns upon the terms
hereinafter mentioned the exclusive use and all benefits of the aforesaid
trade marks in relation to Electric Storage Type Water Heater (excluding
the instant type geysers).
......" (Emphasis Supplied)
5. On 18.01.1995 the attorney of M/s Classic Equipments
Private Limited filed an application before Trade Marks
Registry for the amendment of goods specified under
certificate of registration No.197998B, the relevant portion
whereof reads as under:-
"We, M/s Classic Equipment Pvt. Ltd.,..... being the
applicants in the above matter hereby request to
read the expression Electric storage type water
heaters (excluding instant type geysers) that was
used in the assignment deed dated 09.03.1994
entered into between M/s Classic Equipments Pvt.
Ltd and M/s Vidyut Udyog, be read as Electric Water
Heaters (excluding the instant type geysers).
(Emphasis Supplied)
6. Pursuant thereto, vide order No.PR/985 dated
20.01.1995, Trade Mark Registry bifurcated the goods „water
boiler‟ specified under certificate of registration Nos.197998B
and 319955 into „Water Heaters (electric) (excluding instant
type geysers) and Water Heaters (instant type geysers) and
registered trademark „JOHNSON‟ relating to registration
No.197998B in the name of M/s Vidyut Udyog, the
predecessor-in-interest of the respondent No.1, in respect of
Water Heaters (electric) (excluding the instant geysers) and
trademark „JOHNSON‟ relating to registration No.319955 in the
name of M/s Classic Equipments in respect of Water Heaters
(Instant type geysers), which order was reaffirmed by the
Registry vide order No.PR/25 dated 14.02.1997.
7. On 02.04.1997 the respondent No.1 took over the
business of M/s Vidyut Udyog and thus consequently the
respondent No.1 became the proprietor of trademark
„JOHNSON‟ registered under certificate of registration
No.197998B in relation to electric water heaters (excluding the
instant type geysers).
8. On 01.04.1999 an assignment deed was executed
between M/s Classic Equipments Private Limited and the
appellant, the relevant portion whereof reads as under:-
"DEED OF ASSIGNMENT OF TRADE MARKS
THIS DEED OF ASSIGNMENT is made on this 1st day of April 1999 by
M/s Classic Equipment Private Limited, ....., hereinafter called the
Assignor......in favour of Shri Vinod Kumar Jain Proprietor M/s Johnson
Enterprises,....., hereinafter called the Assignee.
Whereas the Assignor is the owner and proprietor of the trade mark
JOHNSON duly registered under the trade and Merchandise Marks Act
1958 as per details given hereunder:-
------------------------------------------------------------------------------------------
Trade Mark Regn. No. Class Goods
------------------------------------------------------------------------------------------
JOHNSON 195359 21 Frying Pan, Jug and Jar
(domestic utensils not of
Precious metal nor coated
Therewith) not included in
Other classes.
JOHNSON 197997B 9 Electric Flat Irons
JOHNSON 319955 11 Toasters (electric), Water
Boilers, Hot Cases and
Baking Ovens
The Assignor also filed applications for the registration of the trade
mark JOHNSON in respect of wider specification of goods, which are still
pending in the Registry as per details given below:-
Application____________Class
......
NOW THIS DEED WITNESSES that in pursuance of the said
agreement and in consideration of the said sum of Rs.1000/- paid by the
said Assignee to the said Assignor, receipt thereof the said Assignor
hereby acknowledges, the Assignor hereby assigns upon the terms
hereinafter mentioned the exclusive use and all benefits of the aforesaid
trade marks in relation to the aforesaid goods along with the goodwill of
the business concerned.
......" (Emphasis Supplied)
9. It was alleged by respondent No.1 that on the strength of
the afore-noted assignment deed dated 01.04.1999 executed
between M/s Classic Equipments Private Limited and the
appellant, the appellant and respondents Nos.2 to 5 are using
the trademark „JOHNSON‟ in respect of electric water geysers
(except instant type geysers). In view of the fact that
respondent No.1 is the registered proprietor of trademark
„JOHNSON‟ in respect of electric water heaters (excluding
instant type geysers) which includes electric water geysers,
the appellant and respondents‟ Nos.2 to 5 use of the
trademark „JOHNSON‟ in respect of electric water geysers
(except instant geysers) is illegal and unlawful and constitutes
the acts of infringement and passing off as they are
attempting to ride on the goodwill and reputation created by
the respondent No.1 for the electric water geysers
manufactured by it.
10. The prayer of ad-interim injunction in favour of the
respondent No.1 was opposed by the appellant and the
respondents Nos.2 to 5 on following four grounds:-
I Assignment deed dated 09.03.1994 which forms the very
basis of the suit of the respondent No.1 is a forged and
fabricated document.
II Under the assignment deed dated 09.03.1994, trade
mark „JOHNSON‟ was assigned in favour of the respondent
No.1 in respect of the electric storage type water heaters
(excluding instant type geyser). However, in terms of order
No.PR/985 dated 20.01.1995 passed by Trade Marks Registry,
the respondent No.1 was granted proprietary rights in
trademark „JOHNSON‟ only in respect of electric water heaters
(excluding instant type geyser) and not electric storage type
water heaters (excluding instant type geyser). The very
omission of „storage type‟ from the expression „electric storage
type water heater‟ connotes that the respondent No.1 was not
granted any proprietary rights in trademark „JOHNSON‟ in
respect of storage type water heaters and thus the respondent
No.1 cannot claim any proprietary rights in trademark
„JOHNSON‟ in respect of storage type geyser manufactured by
him.
III By way of assignment deed dated 01.04.1999 M/s Classic
Equipments Private Limited who was the registered proprietor
of trademark „JOHNSON‟ registered under certificate of
registration Nos.197998B and 319955 in respect of water
boilers assigned the said trademark to the appellant in respect
of the same goods. Not only that, M/s Classic Equipments
Private Limited assigned trademark „JOHNSON‟ which formed
the subject-matter of application bearing No.398342 pending
registration of Trade Marks Registry in respect of electric
geysers for hot water to the appellant in respect of the same
goods. In that view of the matter, the appellant has acquired
exclusive proprietary rights in trademark „JOHNSON‟ in respect
of electric water geysers as the electric water geysers fall
within the water boiler specified under certificate of
registration Nos.197998B and 319955 and in particular within
electric geyser for hot water specified in application
No.398342.
IV The respondent No.1 is not entitled to the relief of ad-
interim injunction on account of delay and laches for the
reason the appellant has been continuously using trademark
„JOHNSON‟ in respect of electric water geysers since the
execution of the assignment deed dated 01.04.1999, which
fact was within the knowledge of the respondent No.1 yet the
respondent No.1 has filed the present suit only in the year
2008.
11. As already stated in foregoing paras, vide impugned
judgment and order dated 25.03.2010 the Single Judge
allowed the application No.5352/2008 under Order XXXIX
Rules 1 and 2 filed by the respondent No.1 and granted ad-
interim injunction restraining the appellant and the
respondents Nos.2 to 5, their servants, agents or anyone
acting on their behalf from using the trademark „JOHNSON‟ in
relation to electric water geysers (excluding the instant type
geysers), directly or indirectly, in any manner whatsoever.
With respect to ground (I), it was held by the Single Judge that
during the course of arguments the counsel for the appellant
and the respondents Nos.2 to 5 had given up the argument
pertaining to the genuineness of the assignment deed dated
01.04.1999. With respect to ground (II) it was held by the
Single Judge that the documents filed by the respondent No.1
and the appellant, particularly the advertisement material and
catalogues of the product of the appellant, and the application
dated 18.01.1995 filed by the appellant before Trade Marks
Registry show that the two terms „electric storage type water
heaters‟ and „water heaters‟ are one and same thing, which
circumstance stands corroborated by the fact that the
respondent No.1 was using trademark JOHNSON in respect of
geysers manufactured by him since the year 1994 openly to
the knowledge of the appellant; that two types of geysers are
available in the market namely instant type and storage type
and thus the expression „excluding instant type geyser‟ itself
connotes that the expression „water heater‟ refers to storage
type geyser, which is the product of the respondent No.1 as
evident from the screen shot of the product of the respondent
No.1 taken from the website of the respondent No.1 and that
the terms „geyser‟ and „heater‟ are one and same thing is also
evident from the fact that the appellant has been using the
said terms interchangeably in the documents filed by him.
With respect to ground (III), it was held by the Single Judge
that vide assignment deed dated 09.03.1994 M/s Classic
Equipments Private Limited had assigned trademark
„JOHNSON‟ in respect of water boilers and electric geysers for
hot water covered under registrations Nos.197998B and
319955 and application No.398342 in favour of M/s Vidyut
Udyog, the predecessor-in-interest of the respondent No.1 thus
having lost proprietary rights in trademark „JOHNSON‟ in
respect of said goods in the year 1994 M/s Classic Equipments
Private Limited could not have assigned the same in favour of
the appellant in the year 1999. With respect to ground (IV) it
was held by the Single Judge that no document was produced
by the appellant to show that it was using trademark
„JOHNSON‟ in relation to electric water geysers since the year
1999.
12. Having abandoned ground (I) before learned Single
Judge, the learned counsel appearing for the appellant
challenged before us the decision of the Single Judge with
respect to grounds (II), (III) and (IV). With respect to ground (I),
the counsel urged that while holding that the geyser
manufactured by the respondent No.1 falls within the ambit of
expression „electric water heater (excluding instant type
geyser) the Single Judge did not appreciate the factum of
deletion of words „storage type‟ from the expression „electric
storage water type water heater‟. With respect to ground (III),
the counsel urged that the learned Single Judge did not
correctly appreciate the tenor of the assignment deed dated
01.04.1999 executed between M/s Classic Equipments Private
Limited and the appellant. With respect to ground (IV), the
counsel urged that the learned Single Judge failed to
appreciate that invoices, twelve in number, evidencing the use
of trademark „JOHNSON‟ by the appellant in respect of geysers
manufactured by him were filed by the appellant along with
the written statement.
13. It is not in dispute that the respondent No.1 had
proprietary rights in trademark „JOHNSON‟ in respect of
„electric water heater (excluding instant type geyser)‟. The
question which needs adjudication is that whether the storage
type geyser manufactured by the respondent No.1 is included
within the expression „electric water heater (excluding instant
type geyser)‟.
14. The words „excluding instant type geyser‟ occurring in
expression „electric water heater (excluding instant type
geyser)‟ hold the answer to the above question. The fact that
instant type geyser are specifically excluded from electric
water heater throws light as to the meaning of the word
„electric water heater‟. The fact that instant type geyser was
specifically excluded from the expression „electric water
heater‟ shows that geyser was included within the expression
„electric water heater‟. If geyser did not include within the
expression „electric water heater‟, in that event, there was no
necessity to exclude the same from the expression „electric
water heater‟. Furthermore, the fact that only instant type
geyser was excluded from the expression „electric water
heater‟ necessarily implies that other type of geyser i.e.
storage type geyser remains included within the expression
„electric water heater‟.
15. In said regards, it is most apposite to refer to the decision
of Calcutta High Court reported as New India Rubber Works (P)
Ltd v Collector of Customs 1994 (72) ELT 840 (Cal). In the said
case, one of the entries in the Import Policy for the years 1985-
1988 relating to permissible items of import read as „footwear
components including unit soles and heels‟. In the Import
Policy for the years 1988-1991 the aforesaid entry was
amended to read as „footwear components including unit sole
and heels but excluding shoe uppers‟. The petitioners‟
consignments of shoe uppers pertaining to the Import Policy
1985-1988 was confiscated by the customs authorities on the
grounds that the shoe uppers did not fall within the definition
of footwear components in the Import Policy for the years
1985-1988. While quashing the action of the customs
authorities of confiscating the aforesaid consignments of the
petitioner it was held by the Court that the very fact that shoe
uppers was specifically excluded from the definition of
footwear components in the Import Policy for the years 1988-
1991 necessarily implies that shoe uppers was included within
the definition of footwear components. The relevant portion of
the decision is being quoted herein under:-
"....Shoe upper amounts to footwear components
and that at the relevant time the entry was
footwear without any exclusion of footwear
components. But in subsequent years in the Import
and Export Policy, it was clearly provided that
footwear components exclude shoe upper. When
shoe upper has been specifically excluded in the
subsequent policy period, in that event, the
intention of the policy for the year was clear. The
subsequent change by which shoe upper was
excluded from the shoe components, throws light
as to the meaning of the word "shoe components".
As the authorities concerned were fully aware that
shoe upper is treated as shoe component that‟s
why, shoe upper is specifically excluded in the
subsequent policy period. If it was the case of the
respondents that shoe upper did not include within
the expression „shoe component‟, in that event,
there was no necessity for changing the definition
of the expression shoe component. In my view,
from the language used in the relevant provision of
the policy, shoe upper, cannot be said to fall
outside scope and ambit of the expression shoe
component....."
16. In view of the aforesaid, it has to be held that the
respondent No.1 has a very strong case in its favour on the
issue of the proprietary rights in trademark „JOHNSON‟ in
respect of storage type geyser for the reason storage type
geyser is included within the expression „electric water heater
(excluding instant type geyser), in respect whereof the
respondent No.1 is the registered proprietor of trademark
JOHNSON.
17. In dealing with ground (III) raised by the appellant, it is
important to note the interplay between the assignment deed
dated 09.03.1994 executed between M/s Classic Equipments
Private Limited and M/s Vidyut Udyog, the predecessor-in-
interest of the respondent No.1, and the assignment deed
dated 01.04.1999 executed between M/s Classic Equipments
Private Limited and the appellant.
18. As already noted in the foregoing paras, assignment
deed dated 09.03.1994 records that M/s Classic Equipments
Private Limited is the proprietor of trademark „JOHNSON‟
registered under certificate of registration Nos.197998B and
319955 and has also filed application No.398342 for
registration of the said mark in respect of wider specification of
goods. By way of assignment deed dated 09.03.1994 M/s
Classic Equipments Private Limited assigned trademark
„JOHNSON‟ in favour of M/s Vidyut Udyog, the predecessor-in-
interest of the respondent No.1, in respect of electric storage
type water heaters (excluding instant type geysers). There was
no recital in the assignment deed regarding the coverage of
electric storage type water heaters (excluding instant type
geysers) under which of particular certificate of registration or
pending application. In absence thereof, electric storage type
water heaters (excluding instant type geysers) was covered
under water boilers specified under certificate of registration
Nos.197998B and 319955 and electric geyser for hot water
specified under application No.398342. Pursuant thereto, vide
order No.PR/985 dated 20.01.1995 Trade Mark Registry
bifurcated the goods „water boiler‟ specified under certificate
of registration Nos.197998B and 319955 into „Water Heaters
(electric) (excluding instant type geysers) and Water Heaters
(instant type geysers) and registered trademark „JOHNSON‟
relating to registration No.197998B in the name of M/s Vidyut
Udyog, the predecessor-in-interest of the respondent No.1, in
respect of Water Heaters (electric) (excluding the instant
geysers) and trademark „JOHNSON‟ relating to registration
No.319955 in the name of M/s Classic Equipments in respect of
Water Heaters (Instant type geysers), which order was
reaffirmed by the Registry vide order No.PR/25 dated
14.02.1997. Thus, as a result of execution of assignment deed
dated 09.03.1994, M/s Classic Equipments Private Limited lost
proprietary rights in trademark JOHNSON in respect of water
boilers specified under certificate of registration Nos.197998B
and 319955 and electric geysers for hot water specified under
application No.398342. Notwithstanding the same, by way of
assignment deed dated 01.04.1999 M/s Classic Equipments
Private Limited assigned trademark JOHNSON in favour of the
appellant in respect of water boilers specified under certificate
of registration Nos.197998B and 319955 and electric geysers
for hot water specified under application No.398342. In that
view of the matter, prima facie, no proprietary rights flowed in
favour of the appellant in trademark JOHNSON in respect of
water boilers specified under certificate of registration
Nos.197998B and 319955 and electric geysers for hot water
specified under application No.398342 by virtue of the
assignment deed dated 01.04.1994.
19. With respect to ground (IV) raised by the appellant, it is
no doubt true that the learned Single Judge has failed to notice
that invoices, twelve in number, evidencing the use of
trademark „JOHNSON‟ by the appellant in respect of geysers
manufactured by him were filed by the appellant along with
the written statement. Now, the question is that whether the
said invoices are sufficient to conclude that the factum of use
of trademark JOHNSON by the appellant in respect of electric
water geysers (except instant type geysers) since the year
1999 was within the knowledge of the respondent No.1.
20. The answer to the aforesaid is NO. Out of 12 invoices
filed by the appellant, two invoices pertain to the year 2001,
five invoices pertain to the year 2004, three invoices pertain to
the year 2005 and two invoices pertain to the year 2006.
According to the respondent No.1, the factum of use of
trademark JOHNSON by the appellant in respect of electric
water geysers (excluding instant type geysers) came to its
knowledge only in the year 2006. Prima facie, Twelve invoices
spanning over a period from the year 1999 to the year 2006
i.e. a period of 8 years is too insignificant a number to
conclude that respondent No.1 had knowledge of the fact that
the appellants has been using trademark JOHNSON in respect
of electric water geysers (except instant type geysers) since
the year 1999 prior to the year 2006.
21. In view of above, we find no infirmity in the impugned
judgment and order dated 25.03.2010 passed by the Single
Judge. The instant appeal is accordingly dismissed.
22. Needless to state view expressed by us are limited for
purposes of interim relief and nothing said by us would be
construed as an expression on the merits of the controversy
between the parties and thus we observe that the suit would
be decided finally with reference to the evidence led at the
trial and our observations herein would not influence the final
verdict.
(PRADEEP NANDRAJOG)
JUDGE
(SURESH KAIT)
JUDGE
FEBRUARY 08, 2011
mm
