Karnataka High Court
Forbes Technovative (P) Limited vs Eureka Forbes Limited on 2 August, 2024
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 2ND DAY OF AUGUST, 2024
PRESENT
THE HON'BLE MRS. JUSTICE ANU SIVARAMAN
AND
THE HON'BLE MR. JUSTICE G BASAVARAJA
COMMERCIAL APPEAL NO. 18 OF 2024
BETWEEN:
1. FORBES TECHNOVATIVE (P) LIMITED
A COMPANY INCORPORATED UNDER
INDIAN COMPANIES ACT, 2013
AND HAVING ITS OFFICE AT
NO.34, 3RD FLOOR, 10TH 'B' MAIN
OPP. COSMO CLUB
JAYANAGAR 3RD BLOCK
BENGALURU
KARNATAKA-560 011
REPRESENTED BY ITS DIRECTOR
ANAND NAIK
2. ANAND NAIK
S/O MURTHY NAIK
AGED ABOUT 30 YEARS
DIRECTOR
ION EXACENSE PRIVATE LIMITED
AND ERSTWHILE DIRECTOR OF
FORBES TECHNOVATIVE PRIVATE LIMITED
R/AT. NO.74, 2ND FLOOR, 30TH CROSS
4TH BLOCK, JAYANAGAR
BENGALURU-560 011
3. MURTHY NAIK
DIRECTOR
FORBES TECHNOVATIVE PRIVATE LIMITED
AND ION EXACENSE (P) LIMITED
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R/AT. NO.74, 2ND FLOOR, 30TH CROSS
4TH BLOCK, JAYANAGAR
BENGALURU-560 011
4. ION EXACENSE PRIVATE LIMITED
A COMPANY INCORPORATED UNDER THE INDIAN
COMPANIES ACT, 1956
AND HAVING ITS OFFICE AT
NO.34, 3RD FLOOR, 10TH B MAIN
OPP. COSMO CLUB
JAYANAGAR 3RD BLOCK
BENGALURU, KARNATAKA-560 011
REPRESENTED BY ITS DIRECTOR
MR. ANAND NAIK
...APPELLANTS
(BY SRI. MANMOHAN P.N., ADVOCATE)
AND:
1. EUREKA FORBES LIMITED
(FORMERLY FORBES ENVIRO SOLUTIONS LIMITED)
A COMPANY INCORPORATED UNDER
THE INDIAN COMPANIES ACT, 1956
AND HAVING ITS REGISTERED OFFICE AT
B1/B2, 701, 7TH FLOOR, MARATHON INNOVA
OFF. GANPATRAO KADAM MARG
LOWER PAREL, MUMBAI
MAHARASHTRA-400 013
AND BRANCH OFFICE AT
NO.8/3, SREENIDHI ARCADE
2ND FLOOR, 13TH CROSS
WILSON GARDEN
BENGALURU-560 027
KARNATAKA
REPRESENTED BY ITS GENERAL COUNSEL
AND VICE PRESIDENT-LEGAL (COMPLIANCE
AND CORPORATE GOVERNANCE)
Ms. MITALI BASU
2. SUREKA FORBES PRIVATE LIMITED AND OTHERS
A COMPANY INCORPORATED UNDER
THE INDAIN COMPANIES ACT, 2013
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AND HAVING ITS OFFICE AT
NO.579, 69TH CROSS
KUMARASWAMY LAYOUT, BSK II STAGE
BENGALURU URBAN
KARNATAKA-560 070
ALSO AT:
NO.5, KALKERE MAIN ROAD
NEAR KRISHNA GREEN MEADOWS APARTMENT
RAMAMURTHYNAGAR
BENGALURU-560 016
REPRESENTED BY ITS DIRECTOR
BALAJI UDAYAKUMAR
3. BALAJI UDAYAKUMAR
S/O R. BALAJI
AGED ABOUT 44 YEARS
DIRECTOR
SUREKA FORBES (P) LIMITED
R/AT. NO.34, 3RD FLOOR
10TH B MAIN ROAD
JAYANAGAR 8TH BLOCK
BENGALURU-560 011
4. NARESH MAHADEVAN
FATHER'S NAME NOT KNOWN
AGED ABOUT 60 YEARS
DIRECTOR
SUREKA FORBES PRIVATE LIMITED
R/AT. NO.579, 69TH CROSS
KUMARASWAMY LAYOUT, BSK II STAGE
BENGALURU URBAN
KARNATAKA-560 070
5. ACQUA CARE ION EXACENSE
NO.34, 3RD FLOOR, 10TH 'B' MAIN
OPP: COSMO CLUB
JAYANAGAR 3RD BLOCK
BENGALURU-560 011
...RESPONDENTS
(BY SRI. HEMANT DESWANI, ADVOCATE FOR C/R1;
V/O DTD 05.02.2024, NOTICE TO R2 TO R5 IS DISPENSED
WITH)
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THIS COMMERCIAL APPEAL IS FILED UNDER SECTION
13(1-A) OF THE COMMERCIAL COURTS ACT, 2015 READ WITH
ORDER 43 RULE 1(R) OF THE CODE OF CIVIL PROCEDURE, 1908,
PRAYING TO SET ASIDE THE ORDER DATED 23.09.2023, PASSED
BY THE COURT OF LXXXVI ADDL. CITY CIVIL AND SESSIONS
JUDGE (CCH-87), COMMERCIAL COURT AT BENGALURU, ON
I.A.No.17, IN O.S.No.47/2022, DISMISSING I.A.No.17, FILED BY
THE APPELLANTS HEREIN, UNDER ORDER 39 RULE 4 R/W
SECTION 151 OF CPC, SEEKING TO VACATE THE EX-PARTE
INJUNCTION ORDER DATED 11.01.2022.
THIS APPEAL HAVING BEEN HEARD AND RESERVED FOR
JUDGMENT ON 29.07.2024 AND COMING ON FOR
PRONOUNCEMENT OF JUDGMENT THIS DAY, ANU SIVARAMAN
J., PRONOUNCED THE FOLLOWING:
CORAM: HON'BLE MRS. JUSTICE ANU SIVARAMAN
and
HON'BLE MR. JUSTICE G BASAVARAJA
CAV JUDGMENT
(PER: HON'BLE MRS. JUSTICE ANU SIVARAMAN)
This appeal filed under Section 13(1A) of the
Commercial Courts Act, 2015 read with Order XLIII Rule 1(r)
of Code of Civil Procedure, 1908 is preferred against the
order dated 23.09.2023 passed on I.A.No.17 in Com
O.S.No.47/2022 by LXXXVI Additional City Civil and
Sessions Judge (CCH-87), Commercial Court at Bengaluru,
by which, the earlier ex-parte order of injunction granted on
11.01.2022 has been made absolute. The suit was filed by
the first respondent herein seeking the following reliefs:-
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"a) Permanent injunction to restrain the Defendants
No.1 to 8, their partners, principals, employees, agents,
distributors, franchisees, representatives and assigns from
manufacturing, selling, marketing, advertising, exporting
and/or permitting the use of or supplying their AMC
services, counterfeit filters, motors, electrical spares to
any third party, or clients of the Plaintiff, who are
wrongfully using, or in any other manner, using or
applying the trademark and passing off the copyrighted
work "Eureka Forbes - Your friends for life" "Eureka Forbes
Home Store" "Aqua Care" Aqua Guard" "Aqua Sure" which
is confusingly similar to the Plaintiff's registered trademark
"Forbes" "Aqua Care" Aqua Guard" "Aqua Sure" or any
other trademark deceptively or confusingly similar to the
Plaintiff's well-known trademark in any manner
whatsoever; and / or;
b) Permanent injunction to restrain the Defendants
No.1 to 8, their partners, principals, employees, agents,
distributors, franchisees, representatives and assigns from
manufacturing, selling, marketing, advertising, exporting
and/or permitting the use of or supplying their goods or
service with the name Sureka Forbes Limited, Forbes
Technovative Private Limited, Ion Exacense Private Limited
and Aqua Care Ion Exacense, to any third party, or clients
of the Plaintiff, in any other manner, using the prefix and
suffix of Plaintiffs brand name/trade name or applying the
trademark such as "Eureka Forbes" "Aqua Care" Aqua
Guard" "Aqua Sure" "Forbes or any other trademark
deceptively or confusingly similar to the Plaintiff's well-
known trademark Eureka Forbes" "Aqua Care" Aqua
Guard" "Aqua Sure" "Forbes" in any manner whatsoever as
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described hereinabove and doing any acts as may lead to
passing off of their goods as those of the Plaintiff, and/or;
c) Mandatory injunction directing the Defendants
No.1 to 8, their partners, principals, employees, agents,
distributors, franchisees, representatives and assigns to
disclose the names of all the persons and entities working
with and/or involved in supplying any infringing material
and / or abetting in the act of infringement carried out by
the Defendants in the course of its trade;
d) Mandatory injunction directing the Defendants
No. 1 to 8, their partners, principals, employees, agents,
distributors, franchisees, representatives and assigns to
recall all marketing, promotional and advertising materials
filters, cartridges, other parts of the filter, catalogues,
stationary and any other material bearing the infringing
mark Sureka Forbes Limited, Forbes Technovative Private
Limited, Ion Exacense Private Limited and Aqua Care Ion
Exacense which infringes the trademark Eureka Forbes"
"Aqua Care" Aqua Guard" "Aqua Sure" "Forbes" or any
other trademark, which is deceptively or confusingly
similar to the Plaintiff's well-known trademark "Eureka
Forbes" "Aqua Care" Aqua Guard" "Aqua Sure" "Forbes" in
any manner whatsoever, which has been manufactured,
distributed and sold by it and to reimburse all customers
from which the said materials are recalled at their own
expense and hand over to the representatives of the
Plaintiff's attorneys or representatives for destruction all
goods, labels, signs, prints, packages, machines, discs,
wrappers and receptacles in its possession or under its
control whatsoever relating to the Infringing services and
bearing the trademarks "Eureka Forbes" "Aqua Care" Aqua
-
Guard" "Aqua Sure" "Forbes" or any other trademark,
which is deceptively or confusingly similar to the Plaintiff's
well known trademark "Eureka Forbes" "Aqua Care" "Aqua
Guard" "Aqua Sure "Forbes" in any manner whatsoever;
e) Directing all the Defendants i.e. Defendant
No.1 to 8 to render accounts of all transactions concerning
the offending activities set out in the Plaint and rendition
of books of accounts of profits illegally earned by the
Defendants at an estimated amount of Rs.50,00,000/-
(Rupees Fifty Lakhs) by reason of infringing the
trademarks, copyrights and passing off Trade name of the
Plaintiff;
f) Determine mesne profits and direct the
Defendants to jointly and severally pay the same and also
levy penal and exemplary damages on the Defendants;
g) Costs of the suit."
2. For the sake of convenience, the parties are
referred to as per their ranking before the Commercial
Court.
3. The allegations raised were to the effect that the
plaintiff is a Multinational Consumer Goods Company, which
markets Water Purifiers, Air Purifiers, Vacuum Cleaners and
other products and has a global presence and holds
registered Trademarks and Copyright over registered
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Trademark "FORBES", "EUREKA FORBES, Friends for Life",
"EUREKA FORBES HOME STORE" and "Aqua Care", "Aqua
Guard", "A qua Sure" in respect of water purifiers. It was
contended that defendant No.1 - Company is floated by
defendants No.2 and 3 and were involved in infringement of
trademarks of the plaintiff and also passing off of the
plaintiff's brand name and it's name by fraudulently offering
defective parts and annual maintenance contracts by
deceiving the existing customers of the plaintiff and
fraudulently holding out to be the authorized service agents
of the plaintiff - Company. The suit was filed on 07.01.2022
and was moved before the Commercial Court. An ex-parte
order of injunction restraining defendants No.1 to 8, their
proprietors or partners, principal officers, servants, agents
and representatives from using the trademarks Sureka
Forbes Limited, Aqua Care Ion Exacense, Forbes
Technovative Private Limited, Ion Exacense Private Limited,
which are similar to that of the plaintiff's registered
trademarks. The Court Commissioners were also appointed
to visit the offices/go-downs of the defendants without prior
-
notice to search and seize the data base relating to the
plaintiff, which may be stored in the computer hard
disk/compact disk/DVD or any other storage media and port
to port.
4. The appellants herein, who are the fourth, fifth,
sixth and seventh defendants in the suit, had entered
appearance and filed their objections, pursuant to which, the
matter was heard in detail and the I.A.No.1 filed by the
plaintiff was allowed. While the I.As.No.11 and 17, filed by
defendants No.1 to 3 and 4 to 7 under Order XXXIX Rule 4
were dismissed. The interim order granted on I.A.No.1 was
made absolute.
5. The learned counsel appearing for the appellants
submits that the Commercial Court went wrong in
confirming the order of ex-parte injunction passed since
there was no material on record to support the plaint
allegations. It is contended that appellant No.1 herein is an
independent entity carrying out annual maintenance
contracts of water purifiers by purchasing the filter units
from the manufacturers of the same in their separate and
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distinct names and identities and that they cannot be
stopped from carrying out their independent operations
without proper material being on record. It is further
contended that the contentions in the plaint were only with
regard to the customers of the plaintiff being approached by
the appellants herein for Annual Maintenance Contract and
the plaintiff has no proprietary right over the customers and
there is nothing standing in the way of the customers
entrusting Annual Maintenance Contracts to other entities
like appellant No.1. It is further contended that the reading
of the plaint would show that there are separate causes of
action with regard to infringement of trademark as also
passing off and the use of plaintiff's database for procuring
business by the appellants herein and that such diverse
causes of action cannot be agitated in one consolidated suit.
It is contended that the appellants may be permitted to
continue with their business operations on the specific
understanding that they will not use the trade names or the
trademarks of the plaintiff.
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6. In support of his contentions, the learned counsel
appearing for the appellants has relied on the decision in
Dabur India Limited v. K.R. Industries, reported in (2008)
10 SCC 595.
7. The learned counsel appearing for the
plaintiff/respondent No.1 on the other hand, contended that
it was the specific case of the plaintiff that the defendants
were infringing the trademarks of the plaintiff - Company
and that FIRs have been registered with regard to the theft
of database relating to the customers of the plaintiff by the
appellants for fraudulent use. It is submitted that the
material had been clearly produced before the Commercial
Court to prove that the appellants were intentionally
deceiving the customers of the plaintiff by pretending to be
either the plaintiff - Company themselves or their authorized
representatives for the conduct of after sale services and
maintenance contracts involving the replacement of the
integral parts of the water filters. It is submitted that
substandard parts had been made available by the
appellants risking not only the goodwill and financial viability
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of the plaintiff but even the health of the general public at
large. The materials were based on record before the
Commercial Court in support of such contentions.
8. Having considered the contentions advanced, we
notice that the plaintiff had specifically raised a contention
that the defendants in the suit including the appellants had
illegally procured the database containing the details of the
customers of the plaintiff and had also made clear attempts
to defraud the customers of the plaintiff - Company. It is
further submitted that though there was a clear allegation in
the written statement filed by the defendants that defendant
No.1 had made an application for the trademark "Forbes
Technovative Private Limited", the said application had been
rejected and that the materials placed before the Court
would show that there were several criminal cases filed
against the appellants with regard to their fraudulent acts.
9. We have considered the contentions advanced on
either side. We have also referred to the judgment relied on
by the learned counsel for the appellants. The plaint
allegations are to the effect that the defendants including
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the appellants have been fraudulently approaching
customers of the plaintiff and providing products and
services clearly holding out that they are authorised to do so
by the plaintiff or are a part of the plaintiff themselves. It is
in these circumstances that the Commercial Court has
considered the contentions advanced and has come to the
conclusion that prima-facie there is a material to hold that
there is an infringement of the trademark of the plaintiff -
Company.
10. Having considered the contentions advanced on
either side, we notice that the scope that the relief claimed
in the plaint and its admissibility are matters to be decided
by the Trial Court after considering the contentions of the
parties. The Court dealing with the Interlocutory Application
for injunction pending consideration of the reliefs in the
plaint is expected only to arrive at prima-facie satisfaction as
to the tenability of the reliefs sought.
11. In the instant case, it is the specific case of the
plaintiff that there is an infringement of the registered
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trademark of the plaintiff by the defendants who have no
manner of right to use the same. The specific case of the
plaintiff being that there is an infringement of the trademark
as well as an attempt to use marks, words of symbols which
would lead to confusion in the minds of the customers, we
are of the opinion that the said matters require evidence and
have to be considered on their merits in the suit.
12. The order impugned is a discretionary order
passed by the Commercial Court on an Interlocutory
Application. It is well settled that in an appeal against an
Interlocutory order passed in exercise of discretionary
jurisdiction, the Appellate Court would not be justified in
interfering unless it is demonstrated that the impugned
order is arbitrary, capricious and perverse. In view of the
fact that there is no material on record to hold that the
discretion exercised by the Commercial Court is vitiated by
such arbitrary or perverse exercise of power, we are of the
opinion that the discretionary order passed by the Trial
Court does not call for interference. However, we hasten to
add that we have not expressed any view on merits of the
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matter since we are concerned only with the exercise of
discretion by the Commercial Court in passing an
Interlocutory order pending decision in the suit.
13. The appeal therefore fails, the same is
accordingly dismissed.
Pending I.A.No.1/2023 for Stay is hereby dismissed.
Sd/-
(ANU SIVARAMAN)
JUDGE
Sd/-
(G BASAVARAJA)
JUDGE
cp*
