Delhi High Court
Executive Access (India) Pvt. ... vs Mr. Anand Menon & Ors. on 12 March, 2012
Author: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
+ I.A. Nos.4011/2012 & 4012/2012 in CS(OS) No. 527/2012
% Order decided on : 12.03.2012
Executive Access (India) Pvt. Ltd. ..... Plaintiff
Through: Mr. Neeraj Kishan Kaul, Sr. Adv.
with Mr. Ameet Datta, Mr. Himanshu
Bagai & Mr. Mayank Mikhail
Mukherjee, Advs.
Versus
Mr. Anand Menon & Ors. ..... Defendants
Through: None
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.(Oral)
I.A. No.4012/2012 (u/S 151 CPC for exemption)
This application has been filed by the plaintiff under Section
151 of CPC, seeking exemption from filing the original and or/fair
typed copies of the dim documents at this stage.
Heard. For the reasons stated in the application, the same is
allowed and eight weeks time is granted to file the same.
The application is disposed of.
CS(OS) 527/2012
Let the plaint be registered as a suit. Additional affidavit
and documents are taken on record.
CS (OS) No.527/2012 Page 1 of 6
Issue summons to the defendants, on filing of process fee
and registered AD cover within one week, returnable on 26.04.2012.
I.A. No.4011/2012 (u/O XXXIX, R.1 & 2 CPC)
1. Issue notice for the date fixed.
2. The case of the plaintiff is that it is a company registered
under the Companies Act, 1956 incorporated in the year 1995 and
since then it has been carrying on its business under the corporate name
and trading style "EXECUTIVE ACCESS" and the ren logo to provide
head-hunting/executive search/placement services to clients. The
plaintiff has secured trademark registration and also has a pending
trademark application in respect of the trademark/service mark
EXECUTIVE ACCESS and the ren logo. The details regarding the
registration and the pending trademark application are given in para 13
of the plaint. It is stated by the plaintiff that the executive search
services are used by its client companies to find and hire high level
executives who are most suited to a stated job profile. Since June 2004,
the plaintiff has been operating its website www.executiveaccess.co.in
which gives comprehensive information about the operation
management and the service rendered by the plaintiff company.
3. Mr. Neeraj Kishan Kaul, learned Senior counsel for the
plaintiff states that the defendant No.1, Mr. Anand Menon, a former
employee of the plaintiff company is the Managing Director of
defendant No.2, EAL Consulting India Pvt. Ltd. that is carrying on
business identical to that of the plaintiff, under the name EAL Search
CS (OS) No.527/2012 Page 2 of 6
and claims to be an affiliate of Executive Access Limited, Hong Kong
i.e. defendant No.3 herein. According to the plaintiff, defendant No.1
and employees of defendant Nos. 2 and 3, during their conversations
with prospective customers misrepresent themselves to be the
employees of the plaintiff. The defendants, in the course of trade as
well as for the purpose of advertising and promoting their services in
India, are using the registered trademark "EXECUTIVE ACCESS"
owned in India by the plaintiff. Further, the defendants are using the
website www.ealsearch.com to divert the India based queries,
consumer/customer "web traffic", to defendant No.3's Hong Kong
based website www.executiveaccess.com misrepresenting itself as
Executive Access in India, territorial rights of which, rest solely with
the plaintiff.
4. It is stated on behalf of the plaintiff that defendant No.1 is
misrepresenting himself to be the head of "Executive Access",
therefore, he is personally liable for infringing the rights of the plaintiff
and passing off the services provided by the defendant company as that
of the plaintiff herein. The plaintiff has filed printouts from several
public online resources wherein the defendant No.1 has misrepresented
himself to be the Head/Director of "Executive Access".
5. Further, Mr. Kaul, learned Senior counsel submitted that
Mr. Ranjan Marwah, who had set up the plaintiff company in March,
1995 had also set up Executive Access business in Hong Kong in 1988
and this business was conducted through Access Asia Corporation and
its affiliates.
CS (OS) No.527/2012 Page 3 of 6
In 2003, Mr. Ranjan Marwah effected the sale of Executive
Access Holding Ltd. and its subsidiaries to Mr. John Maxwell Lummis-
III. The Share Purchase Agreement reveals that the following
companies were sold to Mr. John Maxwell :
i. Executive Access Holding Limited (EAHL)
ii. Executive Access Limited (EAL)
iii. Executive Access (S) PTE Limited (EASL)
iv. Executive Access KK (EAKK)
v. Job Access Limited (JAL)
In pursuance of the Share Purchase Agreement, two
separate IP Agreements were also entered into on 29.06.2003 :
a. The Sale Purchase of trade mark "EXECUTIVE ACCESS"
b. License Agreement for the trademark ren logo for a period of 5
(five) years.
6. Mr. Ranjan Marwah vide letter dated 27.06.2003 also gave
an option to Mr. John Maxwell Lummis-II to purchase the trademark
and ren logo after the initial license period of 5 years. At present, he
has no current interests/affiliations with the entities sold under the
Share Purchase Agreement.
In 2007, he sold his shares in the plaintiff company which
he held via Field of Gold Holdings Ltd. to HAT PIN Holdings (Cyprus)
Ltd. and HAT PIN Plc. The current shareholding of Executive Access
CS (OS) No.527/2012 Page 4 of 6
(India) Pvt. Ltd. are HAT PIN Holdings (Cyprus) Ltd., Hawk
Investments, Mink Consulting and Proplanet.
7. The Share Purchase Agreement between Access Asia
Corporation and Mr. John Maxwell Lummis-III defined the terms,
trademark and trade name in a manner, so as to, restrict their usage
only to the countries where the companies sold were domiciled. This
did not include India. The restriction on usage was further incorporated
in the Sale-Purchase of Trade Name Agreement and License of
Trademark Agreement in Clause 3.1 of both the Agreements ensuring
that the only countries where the Trademark and Trademark may be
used were the domicile of the Companies i.e. in
British Virgin Islands
Singapore
Japan; and
Hong Kong
8. This restriction on use of Trademark and Trade name was
further clarified by Mr. Ranjan Marwah vide email dated 19.01.2012
wherein he stated that while assigning the ren logo to EAL :
i. Executive Access Limited acknowledged and understood that
for the territory of India, Executive Access (India) Pvt. Ltd.
owned the rights in the tradename and trademark.
CS (OS) No.527/2012 Page 5 of 6
ii. Since Executive Access (India) Pvt. Ltd. is not an affiliate of
Access Asia Corporation or EAIL, EAL's right in the ren
logo does not include the ren logo mark in India.
9. Having heard the learned Senior counsel appearing on
behalf of the plaintiff and perused the plaint, application and the
documents filed along with the plaint, I am of the view that this is a fit
case for grant of an ex-parte ad-interim injunction as the plaintiff has
been able to show a strong prima facie case in its favour. Accordingly,
till the next date of hearing the defendants, their directors, promoters,
agents, assigns, members, employees, affiliates, subsidiaries and other
persons or entities claiming through them are restrained from setting up
similar business on commercial scale in India, under the name and
mark "EXECUTIVE ACCESS" or the trademark ren logo or any other
deceptively trademark similar to the registered trademark
"EXECUTIVE ACCESS" or trademark ren logo of the plaintiff which
is registered in India.
Compliance of Order XXXIX, Rule 3 CPC be made within
one week.
MANMOHAN SINGH, J.
MARCH 12, 2012
