Madras High Court
M/S.Mrf Limited vs Sumit Gumber on 14 July, 2021
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IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 14.07.2021
CORAM
THE HONOURABLE DR. JUSTICE G.JAYACHANDRAN
C.S.No.387 of 2020
and
O.A.Nos.720 to 722 of 2020, A.Nos.3148, 3149 of 2020
M/s.MRF Limited,
Having Regd Office at
No.114, Greams Road,
Chennai 600 006,
Rep. by Dy.General Manager-Market Development/POA,
Mr.P.Charles Pravin Kumar. .. Plaintiff
vs
Sumit Gumber,
Sole Proprietor, Shiva Tyres,
Chandigarh Road,
Narayangarh Chowk,
Baldev Nagar, Ambala City,
Haryana 134 007. ...Defendant
Prayer:Civil Suit filed under Order IV Rule I of the O.S.Rules, Sections
28,29,134 and 135 of the Trade Marks Act, 1999 and Sections 51, 55 &
62 of the Copyright Act, 1957 praying for the following:
a.perpetual injunction restraining the defendant, his
distributors, stockists, servants, agents, retailers, representatives or any
other person claiming under/through him from in any manner infringing
the plaintiff's trademarks 'MRF', 'MRF Connected Letter Device, the
MRF Muscleman Device and/or MRF Tiretok tyres and service
Franchise Display Board by using the said trademarks or any other makr,
which is identical with and/or deceptively similar to the plaintiffs
trademarks 'MRF', 'MRF Connected Letter Device, the MRF Muscleman
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Device and/or MRF Tiretok tyres and service Franchise Display BoarD
in connection with any of the business carried on by the defendant
including the tyre dealership/distribution/sale business of the defendant
or in any other manner whatsoever;
b) a perpetual injunction restraining the defendant, his distributors,
stockists, servants, agents, retailers, representatives or any other person
claiming under/through him from in any manner using the trademarks
'MRF', 'MRF Connected Letter Device, the MRF Muscleman Device
and/or MRF Tiretok tyres and service Franchise Display Board and/or
any other mark, which is identical with or deceptively similar to the
plaintiffs trademarks 'MRF', 'MRF Connected Letter Device, the MRF
Muscleman Device and/or MRF Tiretok tyres and service Franchise
Display Board in respect of the business including the tyre
dealership/distribution/sale business so as to pass of the defendant's
business as that of a Franchise of the plaintiff and wrongfully associate
themselves with the plaintiff's business or in any other manner
whatsoever;
c) a perpetual injunction restraining the defendant, his distributors,
stockists, servants, agents, retailers, representatives or any other person
claiming under/through him from in any manner infringing the plaintiff's
coyright in the 'MRF Connected Letter Device' filed as Plaint Document
No.1, or 'MRF Muscleman Device' filed as Plaint Document No.2 or
MRF Tiretok tyres and service Franchise Display Board filed as Plaint
Docuent NO.3 by using the above mentioned Artistic works or any
substantial reproduction of the same on or in connection with the
business of the defendant or in any other manner whatsoever;
d) The defendant be ordered to remove all painted displays and other
display material being used by the defendant containing MRF Corporate
Trademarks/Artistic Works and/or MRF Tiretok tyres and service
Franchise Display Board or any other mark which is deceptively similar
and/or is a substantial reproduction of the plaintiff's trademarks 'MRF',
'MRF Connected Letter Device, the MRF Muscleman Device and/or
MRF Tiretok tyres and service Franchise Display Board and surrender to
plaintiff the glow sign board, all goods, labels, dyes, blocks, moulds,
screen prints, packing materials, bills, vouchers, literature, publicity
material, letterheads, invoices, challans, visiting cards, job cards,
delivery notes, rate list, sign boards, glow signs, blow ups and all
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reprographic materials and other materials bearing any of the trade marks
or artistic works of the plaintiff.
e) A preliminary decree be passed in favour of the plaintiff directing
the defendant to render account of profits made by use of MRF Tiretok
tyres and service Franchise Display Board or any other mark which is
deceptively similar and/or is a substantial reproduction of the plaintiff's
trademarks 'MRF', 'MRF Connected Letter Device, the MRF Muscleman
Device and/or MRF Tiretok tyres and service Franchise Display Board
and a final decree be passed in favour of the plaintiff for the amount of
profits thus found to have been made by the defendant after the latter
have rendered accounts;
f) The defendant be ordered and decreed to pay to the plaintiff's a sum
of Rs.25,01,000/- as damages;
g) For costs of the suit;
For Plaintiffs : Mr.Madhan Babu
For Defendant : Mr.R.Uma Shankar
JUDGMENT
The suit against the defendant is preliminarily alleging
infringement of the plaintiff's trademark 'MRF', 'MRF Connected Letter
Device, the MRF Muscleman Device and/or MRF Tiretok tyres and
service Franchise Display Board by using the said trademark.
2.The facts of the case in brief is that the defendant was
appointed as a Franchisee by the plaintiff at Ambala under a Franchise
Agreement dated 10.10.2008. The said Agreement is for a period of 7
years. On expiry of the validity of the said Franchise, the parties have
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entered into a fresh Franchise Agreement dated 22.11.2017. According
to the plaintiff on the request of the defendant, the termination of the
dealership Agreement came to force on 01.04.2020. Further in the
plaint, it is alleged that since July 2019, the defendant has defaulted in
payment of monthly franchise fees to the plaintiff. It is alleged in the
plaint that though permission granted to the defendant to use the
plaintiff's trademark, artistic work till the Franchise agreement was in
force, on and after the termination of the Franchise Agreement, the
defendant cannot use “MRF” mark. However it came to the notice of the
plaintiff that the defendant is continuing to use the mark “MRF”. To
restrain the defendant from using the plaintiff's registered trademark and
for damages, the suit has been filed.
3.Soon after receipt of the notice, the defendant had filed an
affidavit stating that the defendant was forced to terminate the Franchise
Agreement. The plant and machineries implanted by the plaintiff started
giving trouble and failed to perform. The plaintiff have taken away the
machineries but not settled the due payable to the defendant for the
investments made by the defendant for putting up a showroom as
mandated by the plaintiff. In this connection, the defendant has already
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initiated the civil suit before the Additional Civil Judge, Sirsa, assailing
the termination of the Franchise Agreement and for ancillary reliefs. It is
also stated in the said affidavit that a criminal complaint before the Chief
Judicial Magistrate Court, Sirsa, has also been lodged against the
plaintiff and his officials. Without prejudice to these allegations and
averments in the affidavit, the defendant has categorically stated that he
is not using the trademark of the plaintiff “MRF” either independently or
jointly with any word or in any form and he has no intent to use the same
in future. He has also specifically stated that he has removed all the
display and display materials having trademark of the plaintiff. It is also
stated in the affidavit that presently, the defendant is appointed as a
Dealer for Appollo, Bridgestone and Michelin Tyres, which indicates
that there is no more reason for him to use in his showroom the
trademark of the plaintiff.
4. The affidavit of the defendant clearly indicates that the
cause of action in the suit no more survives as far as the allegation of
infringement of the plaintiff's trademark. Hence, being a commercial
suit, it is a fit case to pass summary judgment regarding the relief of
injunction restraining the defendant from using the plaintiff's trademark,
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artistic work, etc., in any manner whatsoever.
5. The other reliefs sought in the suit regarding the rendition
of account of profits made by use of the plaintiff's trademark and
damages for passing off, this Court on taking note of the fact that there is
suit initiated by the defendant in Court of Sirsa, where termination of
Franchise Agreement itself is under challenge. The question of damages
for passing off and rendition of account depends on the outcome of the
suit C.S.No.457 of 2020 initiated by the defendant. Unless the
termination of the Franchise Agreement is justified, the question of
passing off and rendition of accounts and damages for passing off will
not arise. In any event, the plaintiff herein can always exercise his right
of making a counter claim in the pending suit at Sirsa, which has seized
the issue regarding validity of the Franchise agreement.
6. In the result, the suit is partly allowed by passing summary
judgment in the following terms:
i) The injunction relief sought in prayer a, b and c is granted.
ii) The relief sought under prayer (d) already complied. Hence,
the prayer infructuous.
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ii) As far as the relief sought in prayer (e) and (f) are
concerned, leave is granted to the plaintiff to agitate the same before
Sirsa Court by way of counter claim without prejudice to their
application questioning the jurisdiction of the Sirsa Court. No order as
to costs. The connected applications are closed.
14.07.2021
vri
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DR.G.JAYACHANDRAN,J.
Vri
C.S.No.387 of 2020
and
O.A.Nos.720 to 722 of 2020,
A.Nos.3148, 3149 of 2020
14.07.2021
https://www.mhc.tn.gov.in/judis/
