2008(102)DRJ503,
MIPR2008(3)62, 2008(37)PTC24(Del)
IN THE HIGH COURT OF DELHI
Decided On: 25.03.2008
Appellants: Rana
Steels
Vs.
Respondent:Ran India Steels Pvt. Ltd.
Vs.
Respondent:
Counsels:
For Appellant/Petitioner/plaintiff:
For Respondents/Defendant:
· Trade
and Merchandise Marks Act, 1958 - Section 29;
· Trade
Marks Act, 1999 - Section 7 ,
· Trade
Marks Act, 1999 - Section 9 ,
· Trade
Marks Act, 1999 - Section 11 ,
· Trade
Marks Act, 1999 - Section 11(1) ,
· Trade
Marks Act, 1999 - Section 12 ,
· Trade
Marks Act, 1999 - Section 28 ,
· Trade
Marks Act, 1999 - Section 28(1) ,
· Trade
Marks Act, 1999 - Section 28(3) ,
· Trade
Marks Act, 1999 - Section 29 ,
· Trade
Marks Act, 1999 - Section 29(4) ,
· Trade
Marks Act, 1999 - Section 30(2) ,
· Trade
Marks Act, 1999 - Section 31 ,
· Trade
Marks Act, 1999 - Section 57 ,
· Trade
Marks Act, 1999 - Section 134(2) ,
· Trade
Marks Act, 1999 - Section 159(2);
· Code
of Civil Procedure, 1908 (CPC) - Section 151 ,
· Code
of Civil Procedure, 1908 (CPC) - Order 39 Rule 1 ,
· Code
of Civil Procedure, 1908 (CPC) - Order 39 Rule 2 ,
· Code
of Civil Procedure, 1908 (CPC) - Order 39 Rule 4;
· Trade
Marks Rules, 2002;
· Trade
and Merchandise Marks Rules, 1959;
· Trade
Marks Rules, 2002 - Rule 22
· Pfizer
Products Inc. v. Altamash Khan and Anr. 2006 (32) PTC 208 (Del);
· Salem
Advocate Bar Association, Tamil Nadu v. Union of India (2005) 6 SCC 344;
· Ramdev
Food Products (P) Ltd. v. Arvindbhai Rambhai Patel (2006) 8 SCC 726;
· N.R.
Dongre and Ors. v. Whirlpool Corporation and Ors. AIR 1995 DELHI 300;
· Anand
Kumar Deepak Kumar and Anr. v. Haldiram Bhujia Wala and Anr. 1999 PTC (19) 466;
· Niky
Tasha India Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd. AIR 1985 DELHI 136;
· Veerumal
Praveen Kumar v. Needle Industries (India) Ltd and Anr. 2001 PTC 889 (Del);
· Bal
pharma Ltd. Centaur Laboratories Pvt Ltd. and Anr. 2002 (24) PTC 226 (Bom);
· Ansul
Industries v. Shiva Tobacco Company 2007 (34) PTC 392 (Del);
· Gujarat
Bottling Co Ltd and Ors. v. Coca Cola Company and Ors. AIR 1995 SC 2372 :
(1995) 5 SCC 545;
· State
of Orissa and Ors. v. Prasana Kumar Sahoo JT 2007 (6) SC 182;
· Union
of India and Ors. v. Bashir Ahmed AIR 2006 SC 2487;
· Union
of India and Ors. v. Rakesh Kumar AIR 2001 SC 1877;
· Flower
Tobacco Company v. State and Anr. 1986-PTC-352;
· Gopal
Krishan v. Mex Switchgear (P) Ltd and Anr. 1993-PTC-1;
· Hidesign
v. Hi-Design Creations 1991 (1) Delhi Lawyer 125;
· P.M.
Dissels Pvt Ltd v. Thukral Mechanical Word AIR 1988 Del 282;
· Pfizer
Products, Inc. v. Rajesh Chopra and Ors. 2006 (32) PTC 301 (Del);
· Dabur
India limited v. K.R. Industries 2006 (33) PTC 348 (Del.);
· S.
Oliver Bernd Freier GmbH and Co. KG v. Karni Enterprises and Anr. 2006 (33) PTC
574 (Del)
JUDGMENT
1. Two applications shall be disposed
of by this order. The first application (IA.No. 9165/2007) has been filed by
the plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of
Civil Procedure, 1908 (hereinafter referred to as the 'CPC') and the second
application (IA.No. 10779/2007) has been filed by the defendant under the
provisions of Order 39 Rule 4 CPC for vacation of the ex parte interim
injunction which was granted by this Court on 14.08.2007 on the first application,
that is, is 9165/2007.
The Ex Parte Order:
2. A reading of the order dated
14.08.2007 reveals that the plaintiff claimed itself to be the proprietor of
the registered trademark "RANA" in respect of its products which
include steel rolled products, C. T. D bars, angles, flats, rounds, channels
and girders. The plaintiff had stated that it had used the said trademark since
1993 continuously and that it had applied for the registration of the trademark
on 14.12.1994 which was finally granted on 03.03.2006. The said registration
was in Class 6 specified in Schedule IV to the Trade Marks Rules, 2002. It may
be pertinent to note that while the application for registration was made at
the time when the Trade and Merchandise Marks Act, 1958 was in operation, the actual
registration was done on 03.03.2006 and in view of Section 159(2) of the Trade
Marks Act, 1999, it would be deemed to be a registration under the said Act of
1999.
3. It was also stated that the sales of
the plaintiff in respect of the goods in question run into several crores of
rupees. It was alleged by the plaintiff that the defendant had recently started
using the trademark "RANA tor" in respect of identical products,
namely, steel bars. The plaintiff, as stated in the plaint, came to know of this
in July 2007 and, consequently, had immediately approached this Court by filing
this suit. On the basis of the statements made in the plaint and the documents
filed along with the plaint as well as the submissions made by the learned
Counsel for the plaintiff, the following order was passed on 14.08.2007:
In view of
the averments made in the plaint and submissions made by the learned Counsel
for the plaintiff, I am of the view that the plaintiff is entitled to ex parte
orders. Accordingly, till the next date of hearing the defendants by itself or
through their proprietors, partners, directors, agents, representatives,
distributors, assigns, heirs, successors, stockists and all others acting for
and on their behalf shall refrain from using, selling, advertising, displaying
or through the visual, audio, print mode or by any other mode manner or dealing
in or using the trademark RANA or any other identical or deceptively similar
mark in respect of the impugned goods in relation to metal building materials,
pipes, tubes of steel which include rods, flats, pipes, angles and building
steels made of mild steel and related / allied products.
The Defendant's arguments:
4. Being aggrieved by this order, the
defendant has filed the second application, that is, the application under
Order 39 Rule 4 CPC for vacation of the same. It was contended by Mr. Sudhir
Chandra, the learned senior counsel who appeared on behalf of the defendant,
that this Court would not have granted the ex parte injunction to the plaintiff
had the full facts been disclosed. He submitted that, first of all, it was not
disclosed to this Court that the defendant was the registered proprietor of the
trademark "RANA tor". The defendant's trademark was registered on
06.04.2005 under Class 19 in respect of "building material (steel)".
Since the application for the same had been made on 26.04.2001, the
registration would relate back to that date. It was also contended by Mr.
Sudhir Chandra that both the plaintiff and the defendant have trademark registrations.
The plaintiff has a registration in respect of the trademark "RANA"
whereas the defendant has a registration in respect of the trademark "RANA
tor". He submitted that in view of Section 28(3) of the Trade Marks Act,
1999, there is a complete bar in respect of filing a suit by one registered
proprietor of a trademark against another registered proprietor of the same or
similar mark. Section 28(3) reads as under:
28. Rights conferred by registration
1. xxxx xxxx xxxx xxxx
2. xxxx xxxx xxxx xxxx
3. Where two or more persons are
registered proprietors of trade marks, which are identical with or nearly
resemble each other, the exclusive right to the use of any of those trade marks
shall not (except so far as their respective rights are subject to any conditions
or limitations entered on the register) be deemed to have been acquired by any
one of those persons as against any other of those persons merely by
registration of the trade marks but each of those persons has otherwise the
same rights as against other persons (not being registered users using by way
of permitted use) as he would have if he were the sole registered proprietor.
It was contended by the
learned Counsel that while the two registered proprietors had exclusive rights
to use the trademarks in respect of third parties, they did not have such
exclusivity in respect of each other. Therefore, the plaintiff could not have
filed the present suit against the defendant in respect of the alleged
infringement of the trademark. The provisions of Section 30(2)(e) were also
referred to by Mr. Sudhir Chandra. They stipulate that a registered trademark
is not infringed where the use of a registered trademark, being one of two or
more trade marks registered under this Act which are identical or nearly
resemble each other, is in exercise of the right to the use of that trade mark
given by registration under this Act. It was contended that since the defendant
had a registered trademark, namely, "RANA tor", no infringement
action could lie against the defendant for the use of the said trademark.
5. It was further contended on behalf
of the defendant that, apart from the question of infringement of trademark
under the Trade Marks Act, 1999, this suit has also been filed on account of
allegations of passing off. In this regard, he submitted that there is no
evidence that the mark employed by the plaintiff had acquired a distinctive
character so as to connect the plaintiff with the said mark exclusively. He
submitted that there is no evidence produced by the plaintiff in respect of any
sales under the said trademark for the years 1996-2005. He submitted that prior
to 1996 there may have been certain local sales, most of which were cash sales
and there were no excise records produced by the plaintiff in respect of such sales.
It was also submitted that the defendant is based in Tamil Nadu and its
business is confined to the southern Indian states. He also submitted that the
defendant has been in business since 1991 and has been using the said trademark
since then. He referred to various documents filed on behalf of the defendant
and in particular the Chartered Accountant's certificate at page 5 of the
documents file which relates to sale figures of 1996-97, the costs of
advertisement etc. In any event, he submitted that all the sales of the
defendant are in South India and there are no sales whatsoever in Delhi. A
statement was also made at the Bar that the defendant had no intention to sell
its products in Delhi. On the basis of these statements, it was submitted by
Mr. Sudhir Chandra that this Court would not have territorial jurisdiction to
entertain the present suit and, Therefore, the plaint itself has to be returned
after the ex parte order is vacated. He submitted that insofar as the action
based on infringement of the trademark is concerned, that would not lie because
of the provisions of Section 28(3) read with Section 30(2)(e) of the Trade
Marks Act, 1999. As regards the passing off action, he submitted, the same
would only lie if there were sales by the defendant in Delhi or there was any
threat of any sales in Delhi. The threat aspect has been discussed in a
decision of this Court in the case of Pfizer Products Inc. v. Altamash Khan and
Anr. MANU/DE/0269/2006 : 127(2006)DLT738 . He submitted that there is not an iota
of evidence of any sale by the defendant of any product under the trademark
"RANA tor" in Delhi. Furthermore, the defendant has no intention of
selling its products in Delhi and it is for this purpose that the statement at
the bar had been made that the defendant does not intend to sell any of its
products in Delhi. Therefore, not only are there no sales in Delhi, there is
also no threat of sales in Delhi. Consequently, it was submitted that in
respect of the passing off action, this Court would not have any territorial
jurisdiction.
6. It was also contended that the
balance of convenience lay in vacating the order and not in maintaining it. He
submitted that there is no evidence of user by the defendant in Delhi. The
defendant had substantial sales in South India. The plaintiff has not furnished
any sales figures for the period 1996-2005. No invoices have been placed on
record so as to enable this Court to take a prima facie view that the plaintiff
had a long and continuous user of the mark "RANA". It was also
contended by the learned Counsel for the defendant that the plaintiff has been
guilty of suppression of facts. With reference to the Supreme Court decision in
the case of Salem Advocate Bar Association, Tamil Nadu v. Union of India
MANU/SC/0450/2005 : AIR2005SC3353 , he contended that this is a fit case where
actual costs should be imposed on the plaintiff. He submitted that because of
the suppression of facts on the part of the plaintiff, this Court was persuaded
to pass the ex parte orders, which has resulted in untold misery to the
defendant. He submits that Rs 10 crores worth of goods are lying unsold and are
rusting. He also submitted that a suit of the present nature ought to be thrown
out and such a practice should be deprecated in strong words. Consequently, he
submitted that the injunction order passed on 14.08.2007 ought to be vacated.
The plaintiff's arguments:
7. Mr. Bansal, who appeared on behalf
of the plaintiff, submitted that there was no suppression of facts and that the
order passed on 14.08.2007 ought to be maintained. First of all, he submitted
that the trademark registration, which was obtained by the defendant, was in an
entirely different Class from that of the plaintiff's registration. The
defendant's registration was in respect of Class 19 whereas the plaintiff's
registration was under Class 6. He referred to the IVth Schedule to the Trade
Mark Rules, 2002 and drew my attention to the contents of Class 6 and Class 19.
He submitted that Class 6 deals with metallic goods whereas Class 19 dealt
entirely with non-metallic goods. In this background he submitted that the
registration of the defendant's mark "RANA tor" in Class 19 is ex
facie wrong. He submitted that in respect of steel, there could not have been
any registration under Class 19 and the same could only have been registered in
Class 6.
8. He submitted that in 2005 the
defendant had also filed an application No. 1334903 for registration of the
label mark "RANA tor" under Class 6. The plaintiff filed an
opposition to the same in Form TM-5. In the counter statement to the
plaintiff's said opposition, no mention was made by the defendant that its
application for registration under Class 19 was pending. The counter statement
also revealed that the defendant had stated that it was the leading
manufacturer and merchant in India of a wide range of "building materials
which includes pipes and tubes of metals, flats, rods and angles". The
defendant had also stated that by way of the "rich quality standards
maintained", wide advertisements made in different media and promotional
efforts undertaken "ever since the year 2001", the defendant had
earned valuable reputation in the field of manufacturing and marketing of the
said goods. It was, Therefore, contended by Mr. Bansal that the defendant, by
its own statement made in the counter statement, did not have any user in
respect of the mark RANA prior to 2001. Secondly, the defendant did not
disclose in its counter statement that it had applied for registration of the
mark "RANA tor" under Class 19.
9. Mr. Bansal sought to answer the
allegations made by Mr. Sudhir Chandra that there was no evidence of any sales
during the period 1996-2005 and more so no evidence with regard to any excise
documents. He drew my attention to page 44 of the plaintiff's documents which
was a bill raised by Rana Steels and was dated 01.01.1994 with respect to MS
angles. A reference was also made to the sales turnover for the year 31.03.1996
at pages 25 to 33 of the plaintiff's documents. There is no doubt the sales figures
are substantial but it must be noted that they pertain to K.K. Steel Limited
which, according to the learned Counsel for the plaintiff, is a part of the
group of which Rana Steels is a constituent. Mr. Bansal then referred to page
50 of the plaintiff's documents to show that there were excise documents also
in respect of the Rana Steels in 1996. The said document does indicate that it
pertains to the removal of certain goods. However, the description of the goods
is NS ingots. The document is dated 27.03.1996. A reference was also made to
the document at page 61 of the plaintiff's document which is a bill dated
08.09.2006 raised on Rana Steels with respect to the advertising charges over
the radio. Similarly, the document at page 68 also indicates that the plaintiff
has, in the year 2007, extensively advertised in radio-one FM in Delhi.
10. It was next contended by Mr. Bansal
that the adoption of the mark RANA has a basis and is not mischievous as in the
case of the defendant. He submitted that a look at the Memorandum and Articles
of Association of K.K. Steels Limited would show that the word RANA forms part
of the names of the promoter Directors and it is for this reason that the mark
RANA was employed by the plaintiff and in respect of which registration has
been obtained.
11. Mr. Bansal referred to page 1 of the
second volume of the plaintiff's documents to show an advertisement in the
Punjab Kesari of 04.11.1993 which was brought out by the plaintiff in respect
of the mark RANA. Another advertisement was brought out in the same newspaper
but on a different date, i.e., 21.10.1993. He referred to similar
advertisements in Punjab Kesari of other dates as well as of Amar Ujala in
1994. The advertisements which appear in 1993-94 in Amar Ujala referred to the
plaintiff's name RANA Steels as well as the mark RANA and they clearly indicate
that the plaintiff's "RANA Steels" is the first automatic plant in
North India and that it manufactures, inter alia, bars, angles, channels,
rounds, flats and girders of steel. A reference was also made to the caution
notice taken out on behalf of the advocates of the plaintiff with regard to the
use of the mark RANA. This caution notice was published in the Vijayawada
edition of the Hindu of 17.08.2006. A reference was then made to the September
2006 edition of the Hindi Magazine Parvat Piyush, which is brought out from
Dehradun. The said Magazine contains an advertisement by the Rana Group of
Companies which includes RANA Steels (plaintiff herein). The advertisement is
in respect of various steel products of the said Rana Group of Companies and
includes the expression "RANA SARIA" as well as RANA GIRDERS". A
reference was also made to the estimate dated 17.03.2006 raised by Top
Advertising in respect of telecasting charges of T.V. advertisements on the Sun
T.V. Channel at Chennai. The said advertisements were in the month of March
2006. On the basis of the aforesaid documents, Mr. Bansal submitted that there
is, prima facie, evidence of continuous user from 1993-2006 of the mark RANA in
respect of the plaintiff's products. He submitted that there is also evidence
that the plaintiff has vigorously advertised its mark and because of which the
mark has become distinctive of the plaintiff's products. He submitted that on
the other hand the defendant has no right or logical basis to use the mark
RANA. He submitted that the defendant's name was and is RAN India Steels Pvt
Limited and its products were sold under the mark RAN. This would be apparent
from the invoice-cum-delivery challan dated 28.10.2001 which has been filed at
page 60 of the defendant's documents. There are similar documents in respect of
the product turn Steel at pages 60, 61, 62 and 63. All these are
invoice-cum-delivery challans of September and October, 2001. Mr. Bansal also
submitted that apart from the fact that these invoice-cum-delivery challans
reveal that the defendant was using the mark RAN at that point of time and not
RANA, it also reveals that these documents have been fabricated because the
words "RANA turn TESTED" appear to the eye to have been printed later
and using a different typewriter / printer. He submitted that this would be
further apparent by comparing similar invoice-cum-delivery challans of August
2005 which have been placed at pages 149 -150 of the documents file. On an
examination of all the invoice-cum-delivery challans filed by the defendant
beginning from 16.04.2000 and ending with 24.07.2007 running from pages 1 to
210 of the defendant' documents, it is clearly discernible that for the period
prior to May 2001 there is no mention of the mark RANA in any of the invoices
of the defendant. In respect of the period from May, 2001 right up to June,
2004, the invoices apparently did not contain the expression "RANA turn
TESTED" when they were originally issued. But the said expression has been
subsequently superimposed on each of the challans using a different ribbon,
perhaps a different printing devise. However, from July, 2005 onwards, the
expression "RANA turn TESTED" appears to have been printed on the
original invoices themselves. On the basis of this, the learned Counsel for the
plaintiff submitted that the invoices for the period 2001 to 2004 are clear
fabrications. He also submitted that the defendant has not been able to show
any advertisements prior to 2005 in respect of mark RANA.
12. Mr. Bansal referred to various
decisions and they include:
1. N.R. Dongre and Ors. v. Whirlpool
Corporation and Ors. MANU/DE/0700/1995 : AIR1995Delhi300
2. Anand Kumar Deepak Kumar and Anr. v.
Haldiram Bhujia Wala and Anr. 1999 (19) PTC 466
3. Niky Tasha India Pvt. Ltd. v.
Faridabad Gas Gadgets Pvt. Ltd. MANU/DE/0401/1984 : AIR 1985 DELHI 136
4. Veerumal Praveen Kumar v. Needle
Industries (India) Ltd and Anr. 2001 PTC 889 (Del)
5. Bal pharma Ltd. Centaur Laboratories
Pvt. Ltd and Anr. MANU/MH/0682/2001
6. Ansul Industries v. Shiva Tobacco
Company MANU/DE/7486/2007 : 2007 (34) PTC 392 (Del)
7. Gujarat Bottling Co Ltd and Ors. v.
Coca Cola Company and Ors. MANU/SC/0472/1995 : AIR1995SC2372
8. State of Orissa and Ors. v. Prasana
Kumar Sahoo MANU/SC/7358/2007 : AIR2007SC2588
9. Union of India and Ors. v. Bashir
Ahmed MANU/SC/8135/2006 : AIR2006SC2487
10. Union of India and Ors. v. Rakesh
Kumar MANU/SC/0223/2001 : [2001]2SCR927
11. Flower Tobacco Company v. State and
Anr. 1986 PTC 352
12. Gopal Krishan v. Mex Switchgear (P)
Ltd. and Anr. 1993 PTC 1
13. Hidesign v. Hi-Design Creations 1991
(1) DL 125 .
13. Mr. Bansal then referred to the
jurisdictional argument which was raised by Mr. Sudhir Chandra. He drew my
attention to paragraph 26 of the plaint where it is stated that this Court has
territorial jurisdiction to try and adjudicate the present suit inasmuch as the
defendant's impugned acts of infringement and passing off are taking place in
Delhi. It is also alleged that the defendant has intention to use the impugned
trademark / label in Delhi, if not already used inasmuch as the defendant has
filed the impugned application for registration, on an All India basis. It is
also alleged that the defendant is otherwise soliciting trade and has
distribution networks in Delhi in relation to the said trade mark / labels. In
view of these averments, the learned Counsel for the plaintiff submitted that
this Court would have territorial jurisdiction to entertain this present suit.
He submitted that the defense taken by the defendant in the written statement
is not required to be gone into at this stage and as to whether the allegations
contained in para 26 of the plaint are established or not can only be
determined on evidence. He referred to the decision of a learned Single Judge
of this Court in the case of S. Oliver Bernd Freier GmbH and Co. KG v. Karni
Enterprises and Anr. MANU/DE/3449/2006 to submit that the defendants are
functioning on an All India basis and the threat looms large in Delhi also. He
also reiterated that in the counter statement to the opposition filed by the
plaintiff referred to above, the defendant had itself stated that it is the
leading manufacturer of building materials in India. Therefore, it was
contended by Mr. Bansal that this Court has jurisdiction both in respect of the
infringement action and in respect of the passing off action.
The defendant's further
arguments:
14. Mr. Sudhir Chandra, the learned
senior counsel appearing on behalf of the defendant, submitted, in rejoinder,
that the registration of the defendant's mark "RANA tor" in Class 19
was not defective. He submitted that the application was made under the Trade
and Merchandise Marks Act, 1958. The registration, however, was granted when
the said Act had been replaced by the Trade Marks Act 1999. He submitted that
Class 19 in the IVth Schedule to the Trade and Merchandise Marks Rules 1959 was
materially different from Class 19 of the IVth Schedule to the Trade Marks
Rules, 2002. The old Class 19 referred to building materials whereas the new
Class 19, inter alia, referred to building materials (Non-metallic). It was
submitted by Mr. Sudhir Chandra that old Class 19 included both metallic and
non-metallic materials whereas new Class 19 has reference only to non-metallic
building materials. Therefore, the registration of the defendant's mark under
Class 19 in respect of the building materials (steels) cannot be regarded as a
fractured registration or a registration under a mistake.
15. Mr. Sudhir Chandra also submitted
that with regard to the passing off action, Delhi has no jurisdiction.
Moreover, no use has been indicated by the plaintiff between 1996-2005 and,
Therefore, the plaintiff can be assumed to have abandoned the mark. Mr. Sudhir
Chandra also referred to P.M. Dissels Pvt Ltd v. Thukral Mechanical Word
MANU/DE/0238/1988 : AIR1988Delhi282 ; Pfizer Products, Inc. v. Rajesh Chopra
and Ors. MANU/DE/0708/2006 : 127(2006)DLT783 ; and Dabur India limited v. K.R.
Industries MANU/DE/4206/2006 : 2006 (33) PTC 348 (Del.).
16. He also submitted that, essentially,
in a passing off action, the plaintiff must show that its mark has acquired
distinctiveness by continuous user. In this context, he submitted that the mark
RANA is not known at all as being distinctive of the plaintiff's products. He
reiterated that there is no invoice for the periods 1996 to 2005 and the sales
figures that have been given by the plaintiff are those of K.K. Steels and not
of the plaintiff (RANA Steels).
Jurisdiction:
17. The argument advanced on the part of
the defendant is that the plaintiff's suit for infringement is not maintainable
on account of the provisions of Section 28(3) of the trademarks act, 1999 and,
Therefore, Section 134(2) of the said act would not be available to the
plaintiff. The further argument is that in respect of the alleged passing off
action nothing has happened in Delhi as the defendant has neither sold nor
offered its products for sale in Delhi and, Therefore, this Court would not
have territorial jurisdiction over this suit. At this juncture, it would be
instructive to remember that the suit filed by the plaintiff is composite in
nature. It is both, a suit for infringement of the trademark RANA as well as a
suit for passing off. Therefore, the question of territorial jurisdiction has
to be examined keeping in mind this composite nature of the suit. The learned
Counsel for the defendant wanted this Court to hold that the infringement
action was barred on account of the provisions of Section 28(3) read with
Section 30(2)(e) of the said act. And, then, to look at the suit merely as one
of passing off. But, as will be clear from the discussion that follows, it
cannot be held at this stage that the plaintiff has no case on infringement or
that Section 28(3) would come into play or that the defense under Section
30(2)(e) would be available to the defendant. Though the position appears to be
to the contrary, those are issues which will have to determined in the suit
after considering the evidence led by the parties. Therefore, in the facts and
circumstances of the present case at this preliminary stage, it cannot be held
that the plaintiff's alleged infringement action is not maintainable.
Consequently, the argument that this Court does not have jurisdiction would
have to be rejected.
Infringement:
18. The plaintiff has alleged that its
mark RANA which is registered in respect of "steel rolled products, CTD
bars, angles, flats, rounds, channels and girders" falling under class 6
of the Fourth Schedule to the Trade Marks Rules, 2002 has been infringed by the
defendant inasmuch as the defendant has used and is using the mark "RANA
tor" in respect of its products. The defendant, on the other hand, has
taken the stand that there is no infringement on its part because it is a registered
proprietor of the mark "RANAtor" in respect of "Building
materials (steels)" falling under class 19. It was, Therefore, contended
on the strength of Section 28(3) and 30(2)(e) of the said Act that the
defendant has not infringed the plaintiff's registered trade mark RANA and that
both the plaintiff and the defendant can co-exist in the market using their
respective marks. The plaintiff also propounded the view that the defendant's
registration under class 19 is invalid as the said class does relate to to metallic
products at all.
19. To examine the relative merits of
these contentions a brief survey of the relevant provisions of the said Act
would be necessary. Section 28(1) of the said act prescribes that, subject to
the other provisions of the said act, the registration of a trademark, if
valid, gives to the registered proprietor of the trademark, the exclusive right
to the use of the trademark "in relation to the goods or services in
respect of which the trademark is registered" and to obtain relief in respect
of infringement of the trademark in the manner provided by the act. Sub-section
(2) stipulates that the exclusive right to the use of a trademark given under
Sub-section (1) shall be subject to any conditions and limitations to which the
registration is subject. As already indicated earlier, Sub-section (3) deals
with a situation where two or more persons are registered proprietors of
trademarks which are identical to or nearly resemble each other. In such a
situation, the exclusive right to the use of any of those trademarks shall not
be deemed to have been acquired by anyone of those persons as against the other
"merely by registration of the trademarks". Of course, each of those
persons would otherwise have the same rights as against other persons, not
being registered users using by way of permitted use, as he would have if he
were the sole registered proprietor. It is noteworthy that the registered
proprietor of a trademark gets the exclusive right to use the trademark in
relation to the goods or services in respect of which the trademark is
registered. This means that a trademark is registered not merely in favor of a
person but also bears relation to goods or services. So, while a particular
trademark may be registered in favor of one person in respect of certain goods,
that person may not have the exclusive right to use the mark in respect of
other goods. This means that under normal circumstances the right to use a
trademark to the exclusion of others is only in respect of the goods or
services in connection with which the trademark is registered. There are
exceptions which shall be alluded to presently.
20. Section 29(1) of the Trade Marks
Act, 1999, which deals with the issue of infringement of registered trade marks
indicates that a trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which is identical with or deceptively similar to the
trade mark "in relation to goods or services in respect of which the trade
mark is registered" and in such manner as to render the use of the mark
likely to be taken as being used as a trade mark. So, for an infringement
action, it must be shown that -- (1) the registered trade mark is being used by
a person other than the registered proprietor or by a person permitted to use
the same; and (2) the use must be in the course of trade; and (3) in relation
to goods or services in respect of which the trade mark is registered. This
means that if a trade mark is registered in respect of a certain set of goods
or services, then the use of that trade mark by a person other than the
registered proprietor or by a person permitted to use the same would not, ipso
facto, amount to infringement if such person uses the trade mark in relation to
an entirely different set of goods or services. However, Sub-section (2) of
Section 29 of the said Act brings within the fold of infringement, uses of the
registered trade mark by a person other than a registered proprietor in respect
of "similar" goods also in three different sets of circumstances --
where there is (a) identity with the registered trade mark and similarity of
the goods or services covered by the registered trade mark; or (b) similarity
to the registered trade mark and identity or similarity of goods or services
covered by such registered trade mark; or (c) identity with the registered
trade mark and identity of the goods or services covered by the registered
trade mark -- and there is likelihood of confusion being caused on the part of
the public or the likelihood of such user having an association with the
registered trade mark. Sub-section (3) of Section 29 of the said Act provides
that where there is an identity of the impugned trade mark with the registered
trade mark and there is also an identity of the goods or services covered by
the registered trade mark, the court shall presume that it is likely to cause
confusion on the part of the public. By virtue of Sub-section (4) of Section
29, there may be infringement of a registered trade mark even where the mark is
used in relation to goods or services which are not similar to those for which
the trade mark is registered provided, inter alia, the registered trade mark
has a reputation in India and the use of the mark without due cause takes
unfair advantage of or is detrimental to the, distinctive character or repute
of the registered trade mark.
21. A reading of the relevant provisions
of Sections 28 and 29 of the said Act, Therefore, reveals that the registration
of a trade mark is linked to the goods or services in respect of which the
trade mark is registered. If a person uses a registered trade mark in relation
to goods and services which are different and distinct from the goods or
services in respect of which the trade mark is registered, then he would not be
infringing the registered trade mark except in the case covered by Sub-section
(4) of Section 29 which requires that the registered trade mark must have a
reputation in India and the use of the mark without due cause would be
amounting to taking unfair advantage of or would be detrimental to the
distinctive character or repute of the registered trade mark.
22. Since the defendant has taken the
defense of Section 30(2)(e), it also needs to be taken note of. This provision
stipulates that a registered trade mark is not infringed where there is use of
a registered trade mark, being one of two or more trade marks registered under
the said Act which are identical or nearly resemble each other, in exercise of
the right to the use of that trade mark given by registration under the said
Act. Thus, where there are two registered trade marks, which are identical or
nearly resemble each other, the use of such trade marks by their respective
registered proprietors would not amount to infringement of the others'
registered trade mark. But, when can there be registration of marks which are
identical or similar? Section 9 of the said Act, inter alia, absolutely
prohibits the registration of trade marks which are devoid of any distinctive character,
that is to say, not capable of distinguishing the goods or services of one
person from those of another person. Section 11(1), save as provided in Section
12, also conditionally prohibits the registration of a trade mark if, because
of its (a) identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or (b) similarity to an earlier trade mark
and the identity or similarity of the goods or services covered by the trade
mark, there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark. Section 12
permits the registration of trade marks which are identical or similar (whether
any such trade mark is already registered or not) in respect of the same or
similar goods or services in cases of honest concurrent use or of other special
circumstances. It is obvious that where identical or similar trade marks are
registered in relation to the same or similar goods or services in exercise of
the powers under Sections 11 and 12, the use of such marks by their respective
proprietors would not amount to infringement. This is what is specifically
provided for under Section 30(2)(e).
23. But, does Section 30(2)(e) also
cover cases where identical or similar trade marks are registered in respect of
different classes of goods or services? The answer is - No. Section 28 deals
with the rights conferred by registration. And, it has already been clarified
that the use of a registered mark must be in relation to the goods or services
in respect of which the trade mark is registered. It follows that where the
goods or services, in respect of which two or more identical or similar (nearly
resemble) marks are registered, are different then Section 30(2)(e) does not
come into play. The question of infringement would, itself, not arise as the
registered marks would be used in respect of different classes of goods or
services by their respective proprietors. A couple of examples would further
clarify the position:
Example 1: Assume that a
trade mark "M" has been registered in favor of Mr "X" as
well as in favor of Mr "Y" in relation to the same goods or services.
In such a situation, by virtue of Section 28(3), neither Mr "X" nor
Mr "Y" can claim exclusivity against each other for the use of the
said mark in relation to the goods or services for which it was registered. If
Mr "X" were to bring an action for infringement against Mr
"Y", the latter would have a complete defense under Section 30(2)(e).
Example 2: Let us now
assume that there are two different goods "A" and "B" in
respect of which the same trademark "M" has been registered in favor
of different persons "X" and "Y", respectively. Here,
although the same mark "M" is registered in favor of both Mr
"X" and Mr "Y", Mr "X" has exclusive right to use
the same in respect of good "A" and Mr "Y" has exclusive
right to use the said mark in respect of good "B". Therefore, Section
28(3) is not attracted. Moreover, if Mr "X" were to bring an action
of infringement against Mr "Y" alleging that Mr "Y" was
using the said mark "M" in relation to good "A", then, the
defense of Section 30(2)(e) would not be available to Mr "Y" as he
does not have any right to use the mark "M" in relation to good
"A", his registration being in relation to good "B".
24. At this point, it would be
appropriate to refer to Section 7 of the said Act which provides for
classification of goods and services. Sub-section (1) stipulates that the
Registrar shall classify the goods and services, as far as may be, in
accordance with the international classification of goods and services for the
purposes of registration of trade marks. Rule 22 of the Trade Marks Rules, 2002
provides that for the purposes of registration of trade marks, goods and
services shall be classified in the manner specified in the Fourth Schedule.
Clearly, registration of trademarks is in relation to specified goods or
services. Goods and services have been classified. It is obvious that, prima
facie, goods falling under one class would be different from goods falling
under another class. Ordinarily, when registration of a trade mark is granted
under one class of goods, it does not cover goods of another class.
25. The plaintiff is the registered
proprietor of the mark RANA w.e.f. 14.12.1994 in relation to "steel rolled
products, CTD bars, angles, flats, rounds, channels and girders" falling
under class 61 of the Fourth Schedule to the Trade Marks Rules, 2002. The
defendant does not have a registered trade mark in respect of goods falling
under class 6 of the said schedule. However, as things stand today2, the
defendant is the registered proprietor of the mark "RANAtor" w.e.f.
26.04.2001 in respect of "Building materials (steels)" falling under
class 193. Whether the registration is liable to be cancelled, as alleged by
the plaintiff, or not, as contended by the defendant, is not a matter for
consideration before this Court. For the present, in view of Section 31 of the
said Act, the registration of the trade mark is prima facie evidence of its
validity. So, considering the defendant's registration to be valid, for the
time being, it must be kept in mind that the mark RANAtor is registered in
class 19 and not class 6. The plaintiff has brought this suit claiming its
exclusive right to the use of the trade mark RANA in relation to "steel
rolled products, CTD bars, angles, flats, rounds, channels and girders"
falling under class 6 of the Fourth Schedule to the Trade Marks Rules, 2002.
The defendant, admittedly, does not have any registration in class 6 (its
registration being under class 19). Therefore, the situation which presents
itself in the case at hand is similar to the situation explained in Example 2
above. Consequently, neither is Section 28(3) attracted nor can the defendant
take refuge under Section 30(2)(e).
26. In Ramdev Food Products (P) Ltd. v.
Arvindbhai Rambhai Patel MANU/SC/3725/2006 : 2006(33)PTC281(SC) , the Supreme
Court observed that the purpose of a trade mark is to establish a connection
between the goods and the source thereof which would suggest the quality of
goods and that if the trade mark is registered, indisputably the user thereof
by a person who is not otherwise authorised to do so would constitute
infringement. It was further noted that a proprietor of a registered trade mark
indisputably has a statutory right thereto. In the event of such use by any
person other than the person in whose name the trade mark is registered, he
will have a statutory remedy in terms of Section 29 of the 1958 Act. The
registration of the trade mark RANA in relation to "steel rolled products,
CTD bars, angles, flats, rounds, channels and girders" falling under class
6 has established a connection between such goods and the plaintiff who
manufactures them. Whenever such goods are found in the market and they bear
the mark RANA, the prospective consumer connects the goods with the source,
that is, the plaintiff (RANA STEELS). If another person such as the defendant
uses the same mark or a similar mark in relation to the very same goods (steel
rolled products, CTD bars, angles, flats, rounds, channels and girders falling
under class 6) then, that would be seen as an interference and an attempt at
breaking the connection between the goods bearing the mark RANA and the source,
the plaintiff. In such a situation, the plaintiff would have the statutory
remedy of seeking injunction for preventing further infringement.
27. The plaintiff has certainly
established a prima facie case in its favor. Because of registration and by
virtue of Section 28(1) of the said Act, an exclusive right of using the trade
mark RANA has been conferred upon the plaintiff in relation to steel rolled
products, CTD bars, angles, flats, rounds, channels and girders falling under
class 6. And, such right is absolute [see: Ramdev Food Products (supra)(para
83)]. As observed in Ramdev Food Products (supra)(para 82), what is needed by
way of cause of action for filing a suit of infringement of trade mark is use
of a deceptively similar mark which may not be identical. It was contended on
behalf of the plaintiff that the marks RANA and RANAtor are identical inasmuch
as turn is merely descriptive of a kind of high strength steel. While this may
be debatable, there cannot be any escape from the fact that RANAtor is
deceptively similar to RANA. It is interesting to note that though the
defendant's registration under class 19 is in respect of the trade mark RANAtor
used as one word, the defendant has been using it in the form of two words RANA
tor. This clearly signifies the defendant's intention to break up the mark
RANAtor into RANA and tor. It is this separation of RANA and turn which, in
fact, lays emphasis on the mark RANA because the other word tor, as is commonly
understood, is merely descriptive of a type of steel. The moment this happens
there is every possibility that the mark RANA turn used by the defendant is
confused by the public at large with the plaintiff's registered trade mark RANA
which is used for the plaintiff's turn steel products.
28. The balance of convenience is also
in favor of the plaintiff. The plaintiff's user is since 1993. Its registration
relates back to 14.12.1994. As discussed above the plaintiff has been
extensively advertising its products under the said mark RANA in Punjab Kesari
(04.11.1993 & 21.10.1993 and 1994), Amar Ujala (1993-94), Hindi Magazine
Parvat Piyush (September, 2006), TV advertisements in Sun TV channel at Chennai
(March, 2006). On the other hand, the defendant's alleged user (even as per its
own admission in its application for registration) is from the year 2001 and
its registration under class 19 relates back to 26.04.2001. Even the user of
the mark by the defendant after 2001 is suspect. This aspect will be discussed
in some detail later. The defendant's name is RAN India Steels Pvt Ltd and it
sold its products (including turn steel) under the mark RAN. There appears to
be no reasonable cause for its subsequent adoption of the mark RANA turn when
the mark RANA was already being used by the plaintiff and for the registration
of which the plaintiff's application was pending since 14.12.1994. Then, there
is the circumstance of the defendant not opposing the plaintiff's application
for registration in relation to goods under class 6 but, in applying for
registration of the mark RANAtor in class 19. The plaintiff has a valid
registration in relation to steel rolled products, CTD bars, angles, flats,
rounds, channels and girders falling under class 6. The defendant has a
registration under class 19 but not in relation to steel rolled products, CTD
bars, angles, flats, rounds, channels and girders falling under class 6. It is
obvious, that it is the plaintiff's statutory right which requires protection
and not the defendant's improper use of the mark RANA turn in relation to steel
rolled products, CTD bars, angles, flats, rounds, channels and girders falling
under class 6. The balance of convenience is clearly in favor of the plaintiff
and against the defendant. Furthermore, in an infringement action, when the
plaintiff has demonstrated that it has a prima facie case and also that the
balance of convenience lies in its favor, not granting an interim injunction
restraining the defendant from further infringing the plaintiff's registered
trade mark would result in causing irreparable injury to the plaintiff.
29. For all these reasons, even de hors
the question of passing off, I am of the view that the plaintiff is entitled to
an order confirming the ex parte injunction dated 14.08.2007, though, with a
slight modification. The said order was in respect of "metal building
materials, pipes, tubes of steel which include rods, flats, pipes, angles and
building steels made of mild steel and related/ allied products". But, as
noted above the plaintiff's registration is only in relation to "steel
rolled products, CTD bars, angles, flats, rounds, channels and girders falling
under class 6". Consequently, the plaintiff is entitled to an interim
injunction order only in respect of "steel rolled products, CTD bars,
angles, flats, rounds, channels and girders falling under class 6".
Suppression:
30. It has been submitted on behalf of
the defendant that the plaintiff had deliberately withheld and suppressed the
factum of the defendant's registration from this Court and that had the full
facts been disclosed, this Court would not have granted the ex parte ad interim
injunction to the plaintiff. Suppression of facts is undoubtedly a good ground
for refusal of the equitable relief of injunction. That is a principle which is
well engrained in our judicial system. But, the question is -- was there any
suppression on the part of the plaintiff? First of all, the plaintiff's
Explanation is that the defendant's registration was in an entirely different
class of goods with which the plaintiff is not concerned. Secondly, the plaintiff
was not aware of the defendants registration under class 19. It, apparently,
came to know of the same through the defendant's written statement filed in the
present suit. Prima facie, I would tend to believe the plaintiff. There are
reasons for this. It must be remembered that in 2005 the defendant had also
filed and application for registration of the mark RANA turn under class 6. The
plaintiff filed an opposition to the same. In the counter-statement to the
plaintiff's said opposition, the defendant made no mention that it had applied
for the same mark in relation to goods falling under class 19. The plaintiff
was interested in goods and services under class 6 and not under other classes
including class 19. Therefore, it is not unreasonable for the plaintiff to have
not known about the defendant's registration under class 19. Moreover, after
the filing of the written statement, from which the plaintiff allegedly derived
knowledge of the defendant's registration, the plaintiff has filed a
rectification application under Section 57 of the said Act before the
Intellectual Property Appellate Board, Chennai seeking cancellation/removal of
the defendant's registration on various grounds. These actions, the filing of
the opposition to the defendant's application in relation to class 6 goods and
the filing of the rectification application, clearly demonstrate that the
plaintiff is quick to guard its rights flowing from its registration. The
sequitur is that the plaintiff was unaware of the defendant's said registration
and could not have reasonably been expected to have known about it.
Defendant's conduct:
31. In Gujarat Bottling Co. Ltd v. Coca
Cola Company MANU/SC/0472/1995 : AIR1995SC2372 , the Supreme Court, in the
context of an application under Order 39 Rule 4 for vacating a temporary
injunction, observed:
Under Order
39 of the Code of Civil Procedure, jurisdiction of the Court to interfere with
an order of interlocutory or temporary injunction is purely equitable and,
Therefore, the Court, on being approached, will, apart from other
considerations, also look to the conduct of the party invoking the jurisdiction
of the Court, and may refuse to interfere unless his conduct was free from
blame. Since the relief is wholly equitable in nature, the party invoking the
jurisdiction of the Court has to show that he himself was not at fault and that
he himself was not responsible for bringing about the state of things
complained of and that he was not unfair or inequitable in his dealings with
the party against whom he was seeking relief. His conduct should be fair and
honest. These considerations will arise not only in respect of the person who
seeks an order of injunction under Order 39 Rule 1 or Rule 2 of the Code of
Civil Procedure, but also in respect of the party approaching the Court for
vacating the ad interim or temporary injunction order already granted in the
pending suit or proceedings.
32. The defendant has moved the
application under Order 39 Rule 4 for vacating the ex parte ad interim
injunction granted in favor of the plaintiff. So, the defendant's conduct is as
much under the scanner as is the plaintiff's. This takes me to the
consideration of the invoice-cum-delivery challans filed by the defendant with
the object of, perhaps, showing user of the mark 'RANA tor' since 2001. It has
been noticed by me in the earlier part of this judgment that the defendant has
filed such challans for the period 16.04.2000 to 24.07.2007 at pages 1 to 210
of the defendant's documents. In the challans prior to May, 2001 there is no
mention of the marks RANA or RANAtor. In the challans for the period May, 2001
to June, 2004, the expression "(RANA turn TESTED)" is apparently
printed subsequently and using a different printing device. This becomes clear
on comparing the challans for this period with the challans for July, 2004
onwards where the said expression appears to have been printed
contemporaneously with the other matter filled therein and using the same
printing device. By way of illustrative samples, photographs of challans for
the periods May, 2001 - June, 2004 and July, 2004 onwards are given below:
33. These photographs reveal that the
expression "(RANA turn TESTED)" is apparently superimposed and in
different typeface in photograph 1. Whereas in photograph 2, the said
expression and the rest of the typed matter match in ribbon intensity, alignment
as well as in typeface. This does give rise to grave suspicion as regards the
challans for the period May, 2001 to June, 2004. Perhaps there is a plausible
reason for this, but, none was forthcoming on the part of the defendant in the
course of arguments. However, as I have already concluded that the plaintiff is
entitled to interim injunction, I shall not dwell on this matter further at
this stage and leave the matter to be conclusively dealt with at the trial
stage.
Conclusion:
34. The ex parte injunction granted on
14.08.2007 is confirmed till the disposal of the suit, though, with the
modification that the injunction would be only in respect of "steel rolled
products, CTD bars, angles, flats, rounds, channels and girders falling under
class 6". I.A. 9165/2007 (under Order 39 Rules 1 & 2, CPC) stands
allowed to this extent. I.A. 10779/2007 (under Order 39 Rule 4 CPC) is
dismissed. The parties shall bear their own costs.
