Kerala High Court
Mr.Shanavas vs Mr.Ahammed Sajid. A on 30 October, 2024
Author: T.R.Ravi
Bench: T.R.Ravi
RFA NO. 251 OF 2023
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IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE T.R.RAVI
WEDNESDAY, THE 30TH DAY OF OCTOBER 2024 / 8TH KARTHIKA, 1946
RFA NO. 251 OF 2023
AGAINST THE JUDGMENT AND DECREE DATED 22.07.2023 IN OS NO.1
OF 2021 OF ADDITIONAL DISTRICT COURT-II, KASARAGOD
APPELLANT/DEFENDANT IN OS:
MR.SHANAVAS
AGED 30 YEARS
S/O ASSAINAR, RESIDING AT ATHAR MANZIL,
(AGE AND HOUSE NAME ARE WRONGLY STATED IN THE
PLAINT AND IAs BY THE PLAINTIFFS AS 34 AND
SHANU VILLAH, OPP.ANNAN COLONY)
KOTTIKULAM, BEKAL POST, HOSDURG TALUK,
KASARGOD, PIN - 671 318
BY ADVS.
SABU GEORGE
SRI.P.B.KRISHNAN
SRI.P.B.SUBRAMANYAN
SRI.MANU VYASAN PETER
RESPONDENTS/PLAINTIFFS IN OS:
1 MR.AHAMMED SAJID. A
AGED 37 YEARS
S/O LATE ABDULLA, ATHAR MANZIL,
DOOR NO.XIII-198, KOTTIKULAM, BEKAL POST,
HOSDURG TALUK, KASARGOD, PIN - 671 318
2 MR.MUHAMMED KUNHI ABDULLA
AGED 47 YEARS
S/O LATE ABDULLA, ATHAR MANZIL, DOOR NO.XIII-198,
KOTTIKULAM, BEKAL POST, HOSDURG TALUK,
KASARGOD, PIN - 671 318
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BY ADVS.
SRI.P.E.SAJAL
SRI.AJAS K.S
THIS REGULAR FIRST APPEAL HAVING COME UP FOR HEARING ON
30.10.2024, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:
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T.R.RAVI.J
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RFA No.251 of 2023
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Dated this the 30th day of October, 2024
JUDGMENT
The appeal has been filed by the defendant
against the judgment and decree in OS No.01/2021 on
the file of the Additional District Court-II, Kasargod.
The respondents had filed the suit alleging that the
appellant was passing off their goods as if they are the
goods of the plaintiff/4th respondent. According to the
plaintiffs, the plaintiffs are doing business under the
name and style 'Metro Gold' at Kasargode since 2016
and at Uppala since 2019. It is stated that they are
dealing in gold ornaments, silver ornaments and precious
stones and using the trademark "METRO GOLD, True
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Value of your money" with a picture from the very
beginning of the business. The plaintiffs have pleaded
that they have acquired reputation, trust and goodwill
among the general public due to the quality, purity,
standard and service guaranteed by them. They claimed
that the customers have started identifying the shop as a
place for getting pure and trustworthy ornaments.
According to the plaintiffs, when they were about to
start another shop at Uppala town, they noticed an
advertisement that the defendant is opening a shop for
gold and diamonds in the same name with a logo similar
to the trademark used by the plaintiffs. It is alleged that
the action amounts to passing off the trademark of the
plaintiffs and if the defendant is permitted to continue
with the action, it will cause irreparable loss and
hardship to the plaintiffs. The prayer in the suit is for a
permanent prohibitory injunction restraining the
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defendant, his men and agents from using trademark
'Metro Gold' of the plaintiffs or one similar or identical
with it for the business of the defendant.
2. The defendant filed written statement
contending that the plaintiffs have never gained any
reputation or goodwill as alleged in the plaint. It is
stated that the customers have never identified the
trademark "Metro Gold' as that of plaintiffs and that
there are other business concerns using the name 'Metro'
for their businesses. The defendant had applied for
issuance of a trademark with the name 'Sanabil Metro
Gold and Diamonds' before the Registrar of Trademarks
which was pending approval at the time of filing the
written statement. It is stated that subsequently the
defendant was issued with trademark and also issued
with a logo with the letter 'S'. The logo of the plaintiffs
contains the letter 'M'. The defendant contended that the
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trademark and the logo chosen by him are not similar to
that of the trademark and logo used by the plaintiffs.
They have hence prayed that the suit may be dismissed.
It is also contended that the Court did not have
jurisdiction to entertain the suit since it was a
commercial dispute which had to be taken up before the
Commercial Court. An additional written statement was
filed stating that the relief claimed is covered by Section
2 (c) (XVII) of the Commercial Courts Act and the
market value or specified value is not the criteria for
deciding the jurisdiction when the market value of the
relief claimed cannot be estimated. The trial Court raised
the following issues at trial;
1. Is the suit maintainable?
2. Whether the plaintiffs are entitled to a
permanent prohibitory injunction restraining
the defendant, his men and agents from
using the trademark 'METRO GOLD' of the
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plaintiffs or one similar or identical with it
as prayed for or not?
3. Reliefs and costs?
3. The 1st plaintiff was examined as PW1 and
Exts.A1 to A10 were marked. Exts.C1, C1(a) and C1(b)
were marked by the Advocate Commissioner. Exts.A1, A2
and A10 were marked subject to proof. The defendant
did not let in any oral evidence but produced Exts.B1 to
B9. Exts.B6 and B7 were marked subject to proof. The
trial court after considering the evidence on record,
decreed the suit finding that the plaintiffs have acquired
a goodwill in the business under the name and style
'Metro Gold' and the defendant cannot add 'Metro Gold'
to their trademark. The court found that such an action
will be an encroachment into the goodwill and
reputation of the plaintiffs.
4. Heard the counsel for the appellant and the
respondents.
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5. Senior Counsel Sri.P.B.Krishnan appearing for
the appellant submitted that the trial court went wrong
in decreeing the suit since the plaintiffs had failed to
even make out a case regarding acquisition of goodwill.
Reference is made to the documents which have been
produced on the side of the plaintiffs. It is pointed out
that none of the documents produced would actually
show that the plaintiffs were carrying on a business
similar to that of the defendant. Ext.A1 is the printed
form of the trademark used by the plaintiffs. Ext.A2
contains the details of the application made by the
plaintiffs for registration of trademark as TM Application
No.5026252. It has come out in evidence that the above
application was later rejected. Ext.A3 is the extract of
the register of copyrights showing that METRO GOLD
with LOGO MG TRUE VALUE FOR MONEY has been
registered by the plaintiffs. Ext.A3(a) is the copy of the
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application filed by the plaintiffs for trademark with
Logo. Ext.A4(series) are advertisement materials of the
defendant using the trademark Metro Gold, which have
been produced to support the contention that the
defendant is trying to pass off his goods as that of the
plaintiffs. Exts.A5 is the attested copy of the licence
issued by Mangalpady Grama Panchayat to the 1st
plaintiff. Exts.A5(a) is the attested copy of the licence
issued by Mangalpady Grama Panchayat to the 2 nd
plaintiff. Ext.A6 is the GST Registration Certificate of the
plaintiffs' show room which has been issued on
30.08.2018. None of the above documents would go to
show the actual conduct of the business or the fact that
a goodwill has been earned by the plaintiffs for their
goods and trademark. Ext.B1 produced on the side of the
defendant is the GST registration of Sanabil Metro Gold
and Diamond LLP. Ext.B2 is the certificate of
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incorporation issued by the Ministry of Corporate Affairs
issued in the name of Sanabil Metro Gold and Diamond
LLP. Ext.B3 is the original LLP Agreement entered into
between the parties. Ext.B4 is the license issued by the
Secretary, Mangalpady Grama Panchayat and Ext.B5 is
the computerised copy of the registered trademark
application status information. Ext.B6 would show that
Application No.5026252 filed by the plaintiffs has been
rejected. Ext.B7 is the trade certificate obtained by the
appellant for Sanabil Metro Gold and Diamond. In the
appeal, the appellant has also produced Annexure A to
show that the appellant has been issued with trademark
registration for the trademark and Logo.
6. The counsel for the appellant relied on the
decision of the Hon'ble Supreme Court in Brihan Karan
Sugar Syndicate Private Limited Vs. Yashwantrao Mohite
Krushna Sahakari Sakhar Karkhana [2024 (2) SCC 577] to
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submit that the respondent for getting a decree, has to
actually prove the figures of sales and expenditure
incurred on advertising and promotion of their product
and mere production of statements is not sufficient to
establish that the plaintiff had gained reputation or
goodwill in connection with the goods in question or the
mark in question. The Court held in the said decision
that for establishing goodwill of a product, it is
necessary for the plaintiff to prove not only the figures
of sale of the product but also the expenditure incurred
on promotion and advertisement of the product.
7. Referring to the documents which have been
produced in this case, it is submitted that this is a case
where even details of sale or expenditure is not available
and all that has been produced is a GST registration and
certain documents which would go to show that the
plaintiffs are permitted to carry on business with the
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name 'METRO GOLD'. It is hence submitted that no
decree could have been passed on the basis of the said
materials. It is also seen from the above referred
judgment of the Hon'ble Supreme that if goodwill or
reputation in a particular jurisdiction is not established
by the plaintiff, no other issue really would need any
further examination to determine the extent of the
plaintiffs' right in the action of passing off. I find
considerable force in the argument raised by the counsel
for the appellant.
8. The counsel for the appellant also has another
argument that the suit itself cannot be maintained and it
ought to have been filed before the Commercial Court.
The counsel submitted that the Commercial Courts Act
was notified on 05.03.2020. The suit was filed on
10.11.2021 without showing a specified value before the
District Court. On 18.03.2022, the jurisdiction value of
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the Commercial Court was increased to Rs.10 lakhs.
Thereafter on 04.03.2023, the plaintiffs got the suit
amended by showing the estimated value of the
trademark as Rs.9 lakhs. It is submitted by the counsel
that if the amendment is allowed, it relates back to the
date of the suit and the valuation of Rs.9 lakhs would
require the suit to be filed before the Commercial Court.
It is hence submitted that the decree itself is one without
jurisdiction. Reliance is placed on the judgment of this
Court in Alex G.Muricken vs. Murickens Marketing
System LLP [2023 (5) KHC 249]. I do not think it is
necessary to go into the said question. The counsel for
the respondents has an answer with regard to the said
question. According to the counsel for the respondents,
as far as pending cases are concerned, there is an option
for transfer to the appropriate Court and in other cases,
it can only be a return of the plaint. It is submitted that
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in the case on hand, if the plaint is to be returned, it
would necessarily have to be again re-presented to the
very same Court since by that time, the jurisdiction
value of the Commercial has increased to Rs.10 lakhs
and even with the amended value of Rs.9 lakhs, the suit
could not have been preferred before the Commercial
Court. It is hence submitted that acceptance of the
argument regarding jurisdiction may not serve any
purpose ultimately since the effect would be the same.
As already noted, I am not going into the said question
since it may not be necessary for the purpose of disposal
of this appeal.
9. The counsel for the respondents submitted
that what is required to be gone into is the prior use
and this has not been disputed by the appellant. It is
submitted that so long as prior use is not disputed and it
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is admitted that the plaintiffs were doing business from
2016 onwards, no fault can be found with the judgment
and decree of the trial court regarding the goodwill and
reputation earned by the plaintiffs. The counsel relied on
the judgment of the Hon'ble Supreme Court in Ramdev
Food Products Pvt. Ltd. vs. Arvindhbhai Rambhai Patel
and Others [2006 (8) SCC 726]. The above decision states
the essence of a passing of action. Referring to Kerly's
Law of Trademarks and Trade Names, the Court
observed that the law of passing off can be summarised
in one short general proposition that "no man may pass
off his goods as those of another". Basically, it is an
action on deceit. The Court held that there are three
aspects which needs to be proved in order to succeed in
an action. Firstly, the plaintiff should establish a
goodwill or reputation attached to the goods and services
which he supplies, in the mind of the purchasing public,
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by association with the identifying "get-up". Secondly,
the plaintiff has to demonstrate a misrepresentation by
the defendant to the public, whether or not intentional,
leading or likely to lead the public to believe that the
goods or services offered by him are the goods or
services of the plaintiff. Thirdly, the plaintiff has to
demonstrate that he suffers or, in a quia timet action,
that he is likely to suffer damage by reason of the
erroneous belief engendered by the defendant's
misrepresentation that the source of the defendant's
goods or service is the same as the source of those
offered by the plaintiff. I do not think that the said
judgment is in any manner favorable to the contention of
the respondents/plaintiffs. The plaintiffs have not
produced any evidence to prove the establishment of
goodwill or reputation. All that has been attempted to be
proved is the prior use, which is not sufficient for the
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purpose of grant of the decree prayed for. Moreover, it
is not demonstrated that there has been a
misrepresentation by the defendant to the public. No
person has been examined to prove such facts. Nor has
any bill or invoices issued by either the plaintiffs or
defendant been produced to show trading in the same
nature of goods under the same name with an intent to
deceit. As already observed, the Logo of the plaintiffs
and defendant are totally different and this aspect has
been noticed by the trial court. The only reason on
which the trial court has granted the decree is the use of
the word 'Metro Gold' and the fact that the plaintiffs
were the prior users. Going by the decisions referred
above, neither of the above aspects are sufficient to
grant a decree in a passing off action.
10. Faced with the situation, the counsel for the
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respondents prayed that the matter may be remanded
back providing them an opportunity to lead further
evidence. I do not think that such a course of action is
called for in this matter since there is neither any
pleading nor any proof tendered which would support
the plea for a remand to submit further evidence. In a
case where there is a total absence of pleadings and
evidence on several aspects, this Court will not be
justified to remanding the case to facilitate the
respondents in the appeal to make up the deficiency.
11. In the result, the appeal is allowed and the
judgment and decree of the trial court is set aside. In
the circumstances of the case, there will be no order as
to costs.
Sd/-
T.R.RAVI
JUDGE
sn
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PETITIONER ANNEXURES
Annexure A THE REGISTRATION CERTIFICATE UPLOADED IN THE
WEBSITE OF THE REGISTRAR OF TRADEMARKS ,
TRADEMARKS REGISTRY, MUMBAI
