J. K Oil Industries Trading Wing ... vs Joginder Pal Gupta
2021 Latest Caselaw 1358 j&K

     HIGH COURT OF JAMMU AND KASHMIR AND LADAKH
                      AT JAMMU

                                              Reserved on : 22.10.2021
                                              Pronounced on : 29.10.2021

                                               MA No.16/2021
                                               CM Nos.7558/2021,
                                               7559/2021
                                               Cav No.1832/2021


J. K Oil Industries Trading Wing and                        ....Appellant(s)
another
                 Through :- Mr. Sunil Sethi, Sr. Advocate with
                             Mr. Vikas Khera and Ankesh Chandel
                             Advocates.
         V/s

Joginder Pal Gupta                                           ....Respondent(s)

                 Through :- Mr. Rahul Pant, Sr. Advocate with
                            Mr. Jagpaul Singh, Advocate.

Coram: HON'BLE MR. JUSTICE TASHI RABSTAN, JUDGE

                             JUDGMENT

1. Through the medium of this appeal, the appellants seek setting aside

of the order dated 15.09.2021, passed by the court of learned Principal

District Judge, Jammu (for short the "Trial Court") in a civil suit titled

as "Joginder Pal Gupta vs. J.K. Oil Industries Trading Wing and

anr.", whereby made absolute the ex parte temporary injunction order

dated 20.08.2021 till final disposal of the suit, on the grounds tailored

therein.

2. It is contended in the appeal that the appellant No. 1 entered into an

agreement with K.S. Oil Industries, who had registration of trademark

"DO PATTAR" brand bearing no. 1201032 in Class 29, whereby K.S.

Oil Industries has given exclusive right to the appellant No. 1 to use

the trademark "DO PATTAR" and as per the agreement, K.S. Oil

Industries itself cannot use the trademark "DO PATTAR". The said

agreement was to be renewed from time to time on discretion of

appellant No. 1 on same terms and conditions on expiry of the

agreement and further, right to terminate the agreement is with

appellant No. 1 only. It is contended that the agreement was first

entered on 14.02.2006 for the period of five year i.e. till 14.02.2011.

The appellant No. 1 approached K.S. Oil Industries and got the

agreement renewed on 12.02.2011 for further five years i.e. from

14.02.2011 to 14.02.2016. It is further contended that the appellant

no. 1 approached K.S. Oil Industries on 14.02.2016 but could not

locate the same and the enquiry into the market revealed that K.S. Oil

Industries ceases to exist.

3. It is averred that the appellant no. 1 is continuously and

uninterruptedly using the trademark "DO PATTAR" in respect of

edible oil since 14.02.2006 and has all the licenses, certification and

approval. The goods of the appellant No. 1 under the trademark "DO

PATTAR" has acquired enviable goodwill and reputation, owing to

extensive commercial use and advertisement through various

mediums including newspapers, magazines, hoardings, sales

promotional material, etc. at huge financial expense.

4. It is contended that the respondent by abusing the process of law and

judicial proceedings‟ has filed a civil suit titled "Joginder Pal Gupta

vs. J. K. Oil Industries Trading Wing and anr" before the court of

learned Principal District Judge, Jammu seeking decree of permanent

prohibitory injunction restraining the appellants herein including their

agents and persons claiming through them from using the trade mark

"DO PATTAR" as the respondent herein is the proprietor of the trade

mark "DO PATTAR" and mandatory injunction directing the

appellants herein to pay an amount to the tune of Rs. 1,00,000/- along

with interest @ 18 % for the period the trademark of the respondent

herein "DO PATTAR" is used by the defendants unauthorizedly. It is

further contended that the respondent herein has also filed an

application for temporary injunction under order 39 Rule 1 & 2 read

with Section 151 C.P.C. alongwith suit and the learned Principal

District Judge, Jammu entertained the suit and passed the order dated

20.08.2021. It is averred that the appellants on coming to know about

the order dated 20.08.2021 besides filing written statement, reply to

temporary injunction application and application under Order 39 Rule

4, filed application under Order VII Rule 11 for rejection of plaint on

the ground of no cause of action, but the learned Principal District

Judge, Jammu disregarded the argument of the appellants herein

completely, passed order dated 15.09.2021 whereby made absolute its

ex-parte temporary injunction order dated 20.08.2021.

5. It is contended that the appellants have already challenged the right

and locus of the respondent and filed application under Order 7 Rule

11 of C.P.C. and the learned Trial court without enquiring the right

and locus of the respondent not only entertained the civil suit but also

passed the impugned order. The learned Trial court has committed a

grave error in not appreciating that the sale of the appellants were

more than 35 crores for last five years and the balance of convenience

is heavily tilted in favour of the appellants. It is also contended that

the Trial court has also failed to appreciate the delay and latches in

filing the suit filed by the respondent herein.

6. Heard the learned counsel for the parties and considered the matter.

7. Mr. Sunil Sethi, learned senior counsel has vehemently argued that the

defendants/appellants herein have challenged the locus of

plaintiff/defendant herein as the trademark "Do PATTAR" is

registered in favour of K.S. Oil Industries. It is further argued that the

defendant claimed to be registered proprietor of trade mark "DO

PATTAR", however, his registration is not relevant being in different

class and the appellants herein have challenged the validity of the

registration being obtained fraudulently. It is contended that the

respondent has not mentioned the current status of the partnership

firm K.S. Oil Industries and has also not mentioned any

assignment/transfer of the subject mark from K.S. Oil Industries to

him. It is argued that property of partnership is not a property of

individual partner and individual partner cannot claim right over the

property of the firm without any written agreement to this effect. It is

further argued that the entire plaint is based on agreement between

K.S. Oil Industries and J.K. Oil Industries Trading Wing but K.S. Oil

Industries is not a party in the suit. It is contended that the

plaintiff/defendant herein knew the activity of the

defendants/appellants herein throughout and chose not to file any

infringement suit as he knew that the mark is registered in favour of

K.S. Oil Industries and the defendant herein has no right over the

aforesaid mark. The plaintiff/defendant herein has not filed any

document to prove that he approached the defendants/appellants to

discontinue the work and the cause of action is fictitious and

imaginary. It is further contended that the appellant is using the mark

since 2006 and the agreement was expired on 14.02.2011. The present

suit is filed after 11 years thereby suffers from inordinate delay,

latches and acquiescence. In support of his contention Mr. Sethi,

learned senior counsel has referred to the judgment passed by the

High Court of Delhi reported as 2019 DLT 692 titled "Allied

Blenders and Distillers Pvt. Ltd. and ors. vs. Amit Dahanukar and

ors." and judgment titled "Shree Ganesha Enterprises vs. Sandeep

Gullah". Mr. Sethi has also relied upon the judgments of the

Supreme Court reported as (2011) 8 SCC249, AIR 2012 SC 2448

and 1990Supp(1)SCC 727, (2007) 5 SCC 614. The judgments cited

above by the appellants shall be the ultimate result of the suit;

therefore, the appellants can agitate the matter relying upon the said

judgments before the Trial court.

8. Per contra, learned counsel for the respondent has vehemently

resisted the present appeal and argued that the respondent is the

proprietor of the trade mark "DO PATTAR" and it is specifically

mentioned in the registration certificate that Joginder Pal Gupta is the

proprietor of the trade mark trading as K.S. Oil Traders and the said

trade mark is being used by the respondent since 01.01.1988, as such,

it is wrong that the said trade mark was never used by the respondent.

It is further contended that the said trade mark was initially registered

on 21.05.2003 and the proprietor of the said trade mark is Joginder Pal

Gupta as K.S. Oil Industries. The said trade mark was registered under

Class 29 which provides edible oil and accordingly on 05.06.2013, the

respondent with intent to extend the area of operation of the said trade

mark "DO PATTAR" applied before the concerned authorities to get

the said trade mark registered in Class 35 also. The Class 29 only

provides for the manufacturing of edible oils but the Class 35 provides

for advertising, business administration, office function, wholesale

and retail outlets including service relating to trading, marketing,

import and export of edible oils including mustard oil. Therefore,

Class 35 widens the scope of the said trade mark or in other words

widens the area of the operation of the said trade mark. Thus, there is

no bar in getting the trade mark registered under two different classes.

However, the appellant is trying to create an illusion by pleading that

trade mark is wrongly registered under Class 35, though, the trade

mark has been renewed under both the classes by the respondent and

the same has been renewed up to 2023. It is further contended by

learned counsel for the respondent that the agreement dated

14.07.2006 on the basis of which permissive right was given to the

appellant to use the trade mark of the appellant for a period of five

years with a right of renewal was never renewed after expiry of five

years by the appellants and the appellants are using the said trade

mark illegally and unauthorizedly. It is contended that the appellants

have failed to renew the agreement dated 14.07.2006 after the expiry

of five years, as such, the appellant has no right to use the said trade

mark of the respondent, thus, the respondent has defended the order

impugned passed by the Trial court. Mr. Rahul Pant, learned senior

counsel vehemently argued that infringement of the trade mark is a

recurring cause of action and every moment a new cause of action

accrues to the respondent to file a suit for injunction restraining the

appellants from using the trade mark of the respondent. He contends

that mere delay in filing the suit cannot confers a right upon the

appellants to use the trade mark of the respondent illegally and

unauthorizedly. Learned counsel for the respondent has vehemently

argued that the appeal is without merit and the same is required to be

dismissed. In support of his contention learned counsel for the

respondent has relied upon the Supreme Court judgment reported as

AIR 1997 SC 1398. The relevant para is reproduced as under:-

"The aforesaid averments in the plaint clearly show that the present suit is not based on the some cause of action on which the earlier suit was based. The cause of action for filling this present second suit is the continuous and recurring infringement of plaintiff‟s trade mark by the defendants continuously till the filing of the present second suit. We asked the learned counsel for the defendants as to whether pending the suit and at present also the defendants are trading in the offending goods, namely, bearing the mark „DACK BACK‟ and he informed us that defendants even at present are carrying on this business. Therefore, pending the second suit all throughout and during the pendency of these proceedings the defendants have carried on the business of

trading in the commodity waterproof raincoats „DACK BACK‟. It is obvious that thus the alleged infringement of plaintiff‟s trade mark „DUCK BACK‟ and the alleged passing off action on the part of the defendants in selling their goods by passing off their goods as if they were plaintiff‟s goods has continued all throughout uninterrupted and in a recurring manner. It is obvious that such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the plaintiff to make a grievance about the same and to seek appropriate relief from the court. It is now well settled that an action foe passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach of infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper reliers, for all times to come in future defendant of such a suit should be armed with a licence to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. We posed a question to the learned counsel for the defendants as to whether after the disposal of the earlier suit if the defendants had suspended their business

activities and after a few years had resumed the same and had started selling their goods under the trade mark „DACK BACK‟ passing them off, the plaintiff could have been prohibited and prevented by the bar of Order 2 Rule 2 sub- rule (3) from filing a fresh suit in future when such future infringement or passing off took place. He rightly and fairly stated that such a suit would not be barred. But his only grievance was that whatever was the infringement or passing off alleged against the defendants in 1980 had, according to the plaintiff, continued uninterrupted and, therefor, in substance the cause of action in both the suits was identical. It is difficult to agree. In cases of continuous causes of action or recurring causes of action bar of Order 2 Rule 2 sub-rule (3) cannot be invoked. In this connection it is profitable to have a lock at Section 22 of the Limitation Act, 1963. It lays down that „in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the beach or the tort, as the case may be, continues‟. As act of passing off is an act of deceit and tort every time when such tortious act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to some to the court by appropriate proceedings. Similarly infringement of a registered trade mark would also be a continuing wrong so long as infringement continues. Therefore, whether the earlier infringement has continuer or a new infringement has taken place cause of action for filing a fresh suit would obviously arise in favour of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing off actions alleged against the defendant. Consequently, in our view even on merits the learned Trial Judge as well as the learned Single Judge were obviously in error in taking the view that the second suit of the plaintiff in the present case was barred by Order 2 Rule 2 sub-rule (3), CPC.

Once this conclusion reached the result is obvious. As the learned Single Judge of the High Court has held on merits in favour of the plaintiff and has taken the view that the action of the defendants is actionable and amounts to acts of passing off as the waterproof raincoats manufactured by the first defendant bearing the trade mark „BACK BACK‟ are phonetically and visually similar to those of the plaintiff hearing the trade mark „DUCK BACK‟, it must be held that the plaintiff had made put a case for actionable breach of infringement of plaintiff‟s trade mark as well as actionable act of passing off by the defendants of their goods as if they were plaintiff‟s goods and, therefore, the plaintiff‟s suit would be required to be decreed."

9. In the above contextual discourse, whereby this Court, while deciding

the case in hand qua grant or refusal of temporary injunction, should

delve deeper into the facts and circumstances of the case with

reference to the suit for permanent prohibitory injunction. Answer

thereto is in negative. The reason being, if this Court discusses the

factum, it would tantamount to deciding the whole case and giving a

particular opinion on the subject matter of the case. So better it would

be to confine the present discussion to the impugned as appellants are

only aggrieved thereof and seek setting-aside thereof.

10. The Trial court has, after making a brief discussion of the facts of the

case, taken into account the requirements and ingredients for grant or

refusal of the temporary injunction. The Trial court has rightly

discussed the provisions of Order XXXIX Rule 1 of the Code of Civil

Procedure as also the three cardinal principles for grant of the

temporary injunction, viz. prima facie case; balance of convenience;

and irreparable loss. The Trial court has also rightly discussed a

number of the judgments on the subject and thereafter found that the

plaintiffs/ respondents are entitled to the grant of temporary

injunction.

11. Order XXXIX of the Code of Civil Procedure envisions as to

temporary injunctions and interlocutory orders. Rule 1 thereof

provides:

"1. Cases in which temporary injunction may be granted. -- Where in any suit it is proved by affidavit or otherwise--

(a) that any property in dispute in a suit is in danger of being wasted, damaged or alienated by any party to the suit, or wrongfully sold in execution of a decree, or

(b) that the defendant threatens, or intends, to remove or dispose of his property with a view to defrauding his creditors,

(c) that the defendant threatens to dispossess, the plaintiff or otherwise cause injury to the plaintiff in relation to any property in dispute in the suit, the Court may by order grant a temporary injunction to restrain such act, or make such other order for the purpose of staying and preventing the wasting, damaging, alienation, sale, removal or disposition of the property or dispossession of the plaintiff, or otherwise causing injury to the plaintiff in relation to any property in dispute in the suit as the Court thinks fit, until the disposal of the suit or until further orders."

12. Rule 1 of Order XXXIX, thus, says and envisages that in the event in

a suit it is by affidavit or otherwise proved that any property, which is

in dispute in a suit, is in danger of being wasted, damaged or alienated

by any party to the suit or wrongfully sold in an execution of a decree

or that the defendant threatens or intends to remove or dispose-off his

property with a view to defrauding his creditors or that the defendant

threatens to dispossess the plaintiff or otherwise cause injury to the

plaintiff in relation to any property, which is in dispute in the suit, the

Court may by order grant a temporary injunction to restrain such act

or make such other order for the purpose of staying and preventing the

wasting, damaging, alienation, sale, removal or disposition of the

property or dispossession of the plaintiff or otherwise causing injury

until the disposal of the suit or until further orders. It is necessary to

be seen that if the property in dispute is tried to be wasted, damaged,

alienated, sold, disposed-off or there are chances of dispossessing the

plaintiff from any property, which is in dispute in the suit and/or

which may cause injury to the plaintiff concerning any property,

which is in dispute in the suit, the Court may grant the temporary

injunction. So, grant of temporary injunction is not to put an end to

the litigation, but it is a beginning of the litigation and grant of the

temporary injunction is aiming at preserving the property, which is in

dispute in the suit because if the temporary injunction is refused to be

granted, it would pave way for either of the parties before the Court to

alienate, sell, dispose of and/or change the nature of the property,

which is in dispute in the suit and in such situation the purpose of

litigation would be futile and/or endless for both the parties. Thus, as

can be professed from the Rule 1 of Order XXXIX, grant of

temporary injunction is to prevent damage or wastage to „any

property‟ which is in dispute in the suit.

13. Grant of an order of injunction is intended to preserve and maintain in

status quo the rights of the parties and to protect the plaintiff, being

the initiator, of the action against the incursion of his rights and for

which there is no appropriate compensation being quantified in terms

of damages. The basic principle of the grant of an order of injunction

is to assess the right and need of the plaintiff as against that of the

defendant. To fortify this saying, I lend support from a decision of the

Supreme Court in the case of "Wander Ltd vs. Antox India P. Ltd",

1990 Supp (1) SCC 727, in which it was observed and held:

"Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case."

14. The Supreme Court, in the case of Gujarat Bottling Co. Ltd. v. Coca

Cola Co. and ors, AIR 1999 SC 2372, has said that the decision

whether or not to grant an interlocutory injunction has to be taken at a

time when the existence of the legal right assailed by the plaintiff and

its alleged violation are both contested and uncertain and remain

uncertain till they are established at the trial on evidence. Relief by

way of the interlocutory injunction is granted to mitigate the risk of

injustice to the plaintiff during the period before that uncertainty could

be resolved and that in order to protect the defendant while granting

an interlocutory injunction, the court can require the plaintiff to

furnish an undertaking so that the defendant can be adequately

compensated if the uncertainty were resolved in his favour at the trial.

It would be profitable to reproduce paragraph 43 of the aforesaid

judgement hereunder:

"43. The grant of an interlocutory injunction during the pendency of legal proceedings is a matter requiring the exercise of discretion of the court. While exercising the discretion the court applies the following tests - (i) whether the plaintiff has a prima facie case; (ii) whether the balance of convenience is in favour of the plaintiff; and (iii) whether the plaintiff would suffer an irreparable injury if his prayer for interlocutory injunction is disallowed. The decision whether or not to grant an interlocutory injunction has to be taken at a time when the existence of the legal right assailed by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. Relief by way of interlocutory injunction is granted to mitigate the risk of injustice to the plaintiff during the period before that uncertainty could be resolved. The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the

trial. The need for such protection, has, however, to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience" lies. (see: Wander Ltd. Vs. Antox India (P) Ltd, (1990 (supp) SCC at pp.731-32.) In order to protect the defendant while granting an interlocutory injunction in his favour the court can require the plaintiff to furnish an undertaking so that the defendant can be adequately compensated if the uncertainty were resolved in his favour at the trial."

15. The Supreme Court in the case reported as (2016) 2 SCC 672 has

observed that the Appellate court should not flimsily, whimsically or

lightly interfere in exercise of discretion by a subordinate court unless

such exercise is palpably perverse.

16. The learned Principal District Judge, Jammu while passing the

impugned order has exercised discretion reasonably and in judicial

manner. Therefore, there is no scope to interfere into the impugned

order passed by the Trial court. Accordingly, this appeal is dismissed.

17. Copy be sent down.

(Tashi Rabstan) Judge Jammu 29.10.2021 Pawan Angotra Whether the order is speaking : Yes/No Whether the order is reportable: Yes/No

PAWAN ANGOTRA 2021.11.01 14:08 I attest to the accuracy and integrity of this document