* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 373/2011
Judgment dated 12.01.2012
RESEARCH IN MOTION LIMITED..... Plaintiff
Through :Mr. Sanjay Jain, Sr. Adv. with Ms.Charu Mehta, Ms. Deepali and Ms. Prabsahay Kaur, Advs.
versus
DATA INFOSYS LIMITED..... Defendant
Through :Mr. S.K. Bansal, Mr. Ajay Amitabh Suman and Mr.Keshav Ch. Thakur, Advs. for defendants no.2 to 4.
CORAM:HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (ORAL) I.A.NO.6112/2011
- Plaintiff has filed the present suit for injunction against infringement of copyright, infringement of trade mark, passing off, breach of contract, delivery up, damages and rendition of accounts. Along with the plaint, plaintiff has filed I.A.2476/2011 under Order XXXIX Rules 1 and 2 CPC for grant of ex parte ad interim injunction.
- While issuing summons in the suit and notice in the application on 18.2.2011, this Court had passed an interim order, by which the only defendant, M/s Data Infosys Limited, was restrained from using, copying, reproducing and/or distributing any software application developed by using the SDK or BES software of the plaintiff till the next date of hearing. Defendant was also restrained from using the mark „Berry‟ as a part of its trademark or trade name or any other name similar to the plaintiff‟s trademark BlackBerry till the next date of hearing. Relevant portion of the order dated 18.2.2011 reads as under:
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"I.A.No.2477/2011
- Allowed, subject to the plaintiff filing all the original documents relating to this case within its power and possession within 10 days.
- The application stands disposed of.
CS(OS) 373/2011 and I.A.No.2476/2011
1. Issue summons in the suit and notice in application to the defendant by ordinary process, registered AD post as well as dasti,
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returnable on 24May, 2011.
2. The plaintiff is a corporation incorporated under the laws of Canada. The plaintiff was founded in the year 1984 and claims to be the first wireless data technology developers in the world. The plaintiff is manufacturing and marketing wireless solutions for the mobile communications in the name of BlackBerry. The trademark BlackBerry was adopted by the plaintiff in the year 1999 and its wireless solution allows the users to stay connected with the wireless access to e-mails, corporate data, phone, web and organizer features. The plaintiff has incurred huge amount on research and development. The figures in this regard are given in para 10 of the plaint. The plaintiff also owns the copyright in the code, specifications, documentation and other materials in respect of BlackBerry Enterprise Server (BES) Software and Software
Development Kit (SDK). The plaintiff‟s trademark BlackBerry is
registered in Classes 9, 38 and 41. The registration numbers of the nine registrations of the plaintiff are given in para 16 of the plaint. The annual revenues of the plaintiff are given in para 17 of the plaint. The plaintiff is also owning various websites with the trademark BlackBerry forming part of its website. The plaintiff claims to have 55 million subscribers who are using the BlackBerry products and the services of the plaintiff throughout the world. As per the particulars given in para 23 of the application, the plaintiff claims the trademark BlackBerry to be well known within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
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3. From the newspaper report dated 4October, 2010 in the Hindustan Times, the plaintiff came to know that the defendant is offering BharatBerry services and software application whereupon the plaintiff investigated the matter and discovered the website
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www.bharatberry.com owned and managed by the defendant. The defendant is offering BharatBerry software which has all the
features of the plaintiff‟s software. On further inquires, the plaintiff
found that an employee/representative of the defendant, Mr. Nitin
Walia had downloaded the plaintiff‟s proprietary SDK from the
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plaintiff‟s website on or before 28September, 2010. By downloading the SDK, the defendant agreed to abide by the terms of the SDK licence agreement which explicitly prohibits the unauthorized use of the software. However, in violation of the terms of the SDK licence, the defendant developed, marketed and
advertised the plaintiff‟s software under the name of BharatBerry by replicating the plaintiff‟s software.
4. According to the plaintiff, the defendant has infringed the plaintiff‟s copyright in the SDK software by unauthorizedly using the application without plaintiff‟s approval. Learned Senior
Counsel for the plaintiff further submits that the defendant is
using the name BharatBerry with both the „B‟ in capital like in
BlackBerry and is also passing its services as that of the plaintiff. The defendant has also violated the terms of SDK licence and BBSLA by offering hosted BES services to their parties.
- The plaintiff has made out a prima facie case for grant of ex-parte ad-interim injunction and this court is satisfied that unless the ex-parte ad-interim injunction is not granted, the plaintiff would suffer irreparably and the balance of convenience is also in favour of the plaintiff.
- 6. In the facts and circumstances of this case, the defendant is restrained from using, copying, reproducing and/or distributing any software application developed by using the SDK or BES software of the plaintiff till the next date of hearing. The defendant is also restrained from using the mark „Berry‟ as a part of its trademark or trade name or any other name similar to the plaintiff‟s trademark
- BlackBerry till the next date of hearing.
- Order XXXIX Rule 3 of the Code of Civil Procedure be complied within two weeks.
- The application is disposed of.
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3. In the application filed under Order XXVI Rule 9 CPC, on the same day,
this Court while appointing two Local Commissioners to visit the
premises of defendant at (i) Registered office Inside Jaipur Glass Factory,
Tonk Road, Jaipur – 302018, Rajasthan; and (ii) Head Office at Station
Road, Durgapura, Jaipur – 302018, Rajasthan, had issued following
directions to the Local Commissioners:
(ii) The Local Commissioners shall prepare an inventory of the impugned software, packaging, advertising and other material on the aforesaid premises bearing trademark
"BharatBerry" and/or "BlackBerry" or any deceptive
variations thereof and after taking into custody, hand over the seized material on supardari to the defendant, after obtaining an undertaking that the defendant shall produce the same as and when required by this Court. The Local Commissioner shall also inspect the contents of Central Processing Units (CPUs), Compact or Floppy discs and/or any other storage media for the purposes of identification of the software in question and thereafter prepare mirror images or copies of the hard disc(s) containing such impugned software and seal the same in suitable packing material or container and deposit the same before this Court. The Local Commissioner shall also inspect and sign the books of accounts including cash books, purchase and sale records of the defendant which pertain to manufacture and sale of the infringing products.
(iii) The Local Commissioners shall take the assistance of the technical expert to be appointed by the plaintiff for the purpose of identification of the software and for preparing mirror images and copies of the hard disc(s) containing the software.
- (iv) Two representatives of the plaintiffs are permitted to accompany the Local Commissioners to assist the Local Commissioners for execution of the Commissions proceedings.
- (v) The Local Commissioners shall visit the defendant‟s premises without giving prior notice to the defendants.
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(vi) The fee of the Local Commissioners is fixed at Rs.70,000/-each apart from travel, transport and out of pocket expenses. The Commission shall file their reports within three weeks.
4. Mr. Sanjay Jain, learned senior counsel for the plaintiff, submits that necessity for filing I.A.No.6114/2011 under Order I Rule 10(2) and Order VI Rule 17 CPC for impleading Bharat Berry Technologies Private Limited as defendant no.2, Mr. Ajay Data as defendant no.3 and Mr.Nitin Walia as defendant no.4, and I.A.NO.6112/2011, under Section 94(E) and Order XXXIX Rules 1 and 2 CPC praying that interim order granted by
this Court on 18.2.2011 be extended against defendant‟s no.1 Directors,
namely, Mr. Ajay Data, and Mr.Nitin Walia, and its sister concern/affiliate company Bharat Berry Technologies Private Limited, has arisen on account of the fact that defendants no.2-4 are closely connected with defendant no.1, Data Infosys Limited, against which the interim order dated 18.2.2011 was passed. Defendants no.2-4 initially were not made parties to the suit and taking advantage of this fact defendants no.2-4 are not only flouting and disobeying the order passed by this Court on 18.2.2011 but they have also filed a suit under Section 142 of the Trademarks Act against the plaintiff herein to gain unfair advantage and to over reach the order of this Court.
5. On 9.5.2011 while allowing I.A.NO.6114/2011 this Court had impleaded defendants no.2 to 4 as parties to the present suit and also passed an Order in I.A.No. I.A.NO.6112/2011 by which the interim order 18.2.2011 with regard to the software was extended to defendants no.2-4. Para 5 of the order dated 9.5.2011 passed in I.A.NO.6112/2011 reads as under:
"5. The learned counsel for defendants No.2 to 4 is not able to explain his stand with respect to „SDK‟ and „BES‟. In that view of
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the matter, the interim order dated 18February, 2011 relating to
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software „SDK‟ and „BES‟ is extended to defendants no.2 to 4. The
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extension of the order dated 18February, 2011 relating to the use of BharatBerry by defendants No.2 to 4 shall be considered on the
next date of hearing."
6. Learned senior counsel for the plaintiff submits that interim order dated
18.2.2011 with regard to use of the word BERRY be extended to
defendants no.2-4 as well as all the defendants are closely connected with
each other.
7. Mr. Jain further submits that after the interim order was passed, as
directed by this Court, the Local Commissioners visited the Head Office
of defendant no.1 company situated at Station Road, Durgapura, Jaipur –
302018, Rajasthan. The Local Commissioner met Mr.Ajay Data and
Mr.Nitin Walia, CEO of defendant no.1 company. The senior counsel has
highlighted the relevant portion of the report of the Local Commissioner
wherein it has been observed as under:
- (i) Ms. Charu Mehta (Counsel for the plaintiff) handed over a copy of the Court Orders along with a copy of the petition including the documents to the defendant (through Mr.Ajay Data) (paragraph 2);
- (ii) Mr.Nitin Walia, Director of the company was also present there (paragraph 4);
(iii) The mark „bharat berry‟ (written in black in bold letters, bearing space between the two words, with strips representing the tricolor), appeared on the glass door(s) on entrance and the glass door(s) on further cabins (paragraph 15);
(iv) Mr.Nitin Walia stated that, as on date, the mark „bharat berry‟ has been used since October 2010 (paragraph
16);
(v) Mr.Walia states that the trade mark "Bharatberry" is being used on the website
www.bharatberry.com (paragraph 14)"
8. It is submitted that, during the execution of the Commission at the head
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office of the Respondent company (Station Road, Durgapura, Jaipur 302019, Rajasthan), the plaintiff‟s representative and the Local Commissioner, Mr.Vibhav Misra, met Mr.Ajay Data and Mr.Nitin Walia, CEO/directors/responsible officers of the defendant no.1 company. The Local Commissioner, Mr. Vibhav Misra, duly served the defendant no.1, through Mr.Ajay Data and Mr.Nitin Walia, with a copy of the Order and paperbook and such fact of service is recorded by the Local Commissioner in his report filed with this Hon‟ble Court.
9. Learned senior counsel for the plaintiff submits that plaintiff thereafter learnt that on 3.3.2011 a company known as BharatBerry Technologies Private Limited (BBTPL) filed a Civil Suit No.32/2011, inter alia, against the plaintiff and its subsidiary, Research in Motion India Private Limited, which was listed for hearing before the Court of Additional District Judge No.VII, Jaipur, Metro Jaipur. The suit filed at Jaipur did not disclose the factum of the present suit filed by the plaintiff in this Court and the order dated 18.2.2011 passed by this Court by which defendant no.1, inter alia,
wasrestrained from using the word „Berry‟ as part of trademark/trade
name of defendant no.1. BBTPL alleged in its suit filed at Jaipur that the plaintiff had issued threats to them on 2.3.2011 not to use the trademark/name BharatBerry of the plaintiff. On 3.3.2011 the Court at Jaipur issued notice to the plaintiff and its subsidiary for the very next day
i.e. 4.3.2011 and fixed the matter for hearing at 12.00 Noon. The learned Court at Jaipur, it is alleged, ignored the fact that the plaintiff is having its office at Canada and its subsidiary is located at New Delhi and thus one day notice is no notice in the eyes of law. Besides there was no merit in the suit, which had been filed, and the object of filing the said suit at Jaipur was to defeat the injunction order granted by this Court on 18.2.2011.
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10. Learned senior counsel for the plaintiff submits that since the contesting defendants (plaintiff herein) did not appear on the next date of hearing i.e. 4.3.2011 before the Court at Jaipur, as they were not served, the learned Additional District Judge at Jaipur passed an ex parte injunction order, inter alia, restraining plaintiff and its subsidiary from allegedly interfering, causing impediments/obstructions or groundlessly threatening whether directly or indirectly vis-à-vis the business affairs of BBTPL in
carrying on or continuing business in the name and style of „BharatBerry‟.
As advised, plaintiff filed a writ petition, challenging the said order before the High Court at Rajasthan, which was disposed of in view of availability of the alternative remedy of appeal.
Upon receipt of the interim order from the Court at Jaipur, plaintiff started conducting enquiries with respect to BBTPL. Upon reading of the plaint, which was filed at Jaipur, plaintiff noticed that BBTPL had made numerous baseless allegations against the plaintiff and its subsidiary including that the plaintiff had visited the premises of BBTPL on 2.3.2011 and threatened BBTPL. Counsel further submits that the averment made by defendants no.2-4 in Para 10 of the plaint filed at Jaipur is a blatantly false statement as the Local Commissioners did not visit the premises of BBTPL, which is evident from the report of the Local Commissioner. Counsel next submits that in fact the plaintiff only visited the office of defendant no.1 and plaintiff was not even aware of the existence of BBTPL till that point of time. Upon further enquiries made by the plaintiff, plaintiff learnt from the records of the Registrar of Companies that BBTPL was incorporated on 21.12.2010 and is closely connected with defendant no.1, which had been injuncted by this Court from using the impugned trademark, namely, BHARATBERRY. Senior counsel for the plaintiff contends that plaintiff also learnt that Mr.Ajay Data and
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Mr.Nitin Walia are Directors/CEO/responsible officers/promoters of BBTPL and defendant no.1.
11. Elaborating his arguments further to show that defendant no.1 and Bharat Berry Technologies Private Limited are closely connected and they have common Directors/CEO/responsible officers/promoters, Mr. Jain submits that enquiries were made into the affairs of BBTPL, which reveal from the record of the Registrar of Companies that BBTPL was incorporated on 21.12.2010 and is closely connected with defendant no.1, which has been injuncted by this Court from using the impugned trade mark/name BharatBerry. Plaintiff also learnt that Mr.Ajay Data and Mr.Nitin Walia are Directors/CEO/responsible officers of BBTPL and defendant no.1. and in fact on account of the closeness of the two companies defendant no.1 had issued a no objection certificate to the Registrar of Companies stating that "With reference to the cited subject, our Company DATA INFOSYS LIMITED having its registered office at Inside Jaipur Glass
Factory, Tonk Road, Jaipur (Rajasthan) hereby convey its „No Objection‟ for registration of the new Company Using the word "BHARAT BERRY"
. Original print out from the records of the Registrar of Companies of „No Objection Certificate‟ issued by defendant no.1 has been filed as a document vide List of Documents dated 19.4.2011. Senior counsel also contends that the certificate issued by Data Infosys Limited would show a close connection between Data Infosys Limited and BBTPL otherwise there would be no occasion for one company to allow another company the use of its name. It has further been argued by learned senior counsel for the plaintiff that the two companies belong to the same person, who are acting in connivance with each other, and both -Mr.Ajay Data and Mr.Nitin Walia – were present at the premises of defendant no.1 during the execution of the Commission by the Local Commissioners; they were
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handed over a copy of the order passed by this Court on 18.2.2011; and they were aware that the use of the word BharatBerry had been injuncted by this Court by an order dated 18.2.2011.
- Learned senior counsel for the plaintiff has drawn the attention of the Court to the fact that the website prior to the order dated 18.2.2011 passed by this Court showed "website designed and managed by Team Date Infosys Limited" and the same website now states "website designed and managed by Bharat Berry Technologies Pvt. Ltd.". Senior counsel further submits that the domain name
- www.bharatberry.com is owned and controlled by defendant no.1, which would show a direct nexus between defendant no.1, BBTPL, Mr.Ajay Data and Mr.Nitin Walia. It would further show that Mr.Ajay Data and Mr.Nitin Walia are the main persons behind all the activities of defendant no.1 and BBTPL. It is also submitted that BBTPL and defendants are closely related companies having common Directors/Officers and both -Mr.Ajay Data and Mr.Nitin Walia under the garb of the new company BBTPL are violating the order dated 18.2.2011 passed by this Court.
- Learned senior counsel for the plaintiff further submits that statement of Mr.Rakesh Mamnani, who was working as Legal Officer with Data Infosys Limited since March, 2009, was recorded in Court on 21.4.2011. In the said statement it has been deposed by Mr.Rakesh Mamnani, inter alia, that Mr. Nitin Walia is the Director of Data Infosys Limited, the office of BharatBerry Technologies Private Limited is situated at D-47, Laxaman Marg, Hanuman Nagar, Vaishali Nagar, Jaipur. Mr. Ajay Data, Mr. Deepak Data and Mr.Nitin Walia are the Directors of BharatBerry Technologies Pvt. Ltd. and he was also looking after the affairs of BharatBerry Technologies Private Limited. Mr.Rakesh Mamnani further deposed that the suit at Jaipur was instituted under his signatures and he
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had signed and verified the plaint, whereas Mr.Nitin Walia had signed and verified the written statement in the present suit. The Legal Officer of Data Infosys Limited further stated that the Board of Directors of BBTPL took the decision to file a case at Jaipur in the meeting of the Board of Directors held on 3.3.2011 at 10:00 o‟clock, when he was present. He also deposed that he was aware on 3.3.2011 when the Board meeting took place that an injunction order had been passed by this Court and the Local Commissioners had conducted their proceedings on 2.3.2011. Mr. Jain contends that the statement of Sh.Rakesh Mamnani further leaves n o room for doubt about the fact that both Mr.Ajay Data and Mr.Nitin Walia are running defendant no.1 and defendant no.4.
14. Learned senior counsel for the plaintiff contends that with a view to continue their illegal activities and circumvent the order dated 18.2.2011 passed by this Court, defendant no.1 simply shifted the impugned operations of their company, Data Infosys Limited, to be run under BBTPL, which was a newly formed company, completely under their control and share holding. Despite, being aware of the pendency of the civil suit and the injunction order having been passed by this Court, Mr.Ajay Data and Mr. Nitin Walia, as share holders and/or Directors of BBTPL, initiated and filed a false civil suit before the Court of Additional District Judge, Jaipur, by willfully suppressing the order dated 18.2.2011 on the false pretext of receiving threats from the plaintiff. Counsel further contends that Mr.Ajay Data and Mr.Nitin Walia would have come to know about the injunction order only from the Local Commissioners only a day before filing the suit at Jaipur, as the plaintiff had made no direct or indirect contact with them, nor the plaintiff was aware of the new company BBTPL. Counsel next contends that defendant no.1 is continuing to commit breach of the order dated 18.2.2011 in connivance
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with defendants no.2-4 by running its website
www.bharatberry.com, which was de-activated upon receipt of the order dated 18.2.2011 and all references to defendant no.1 stands replaced with BBTPL.
- On the merits, Mr.Jain submits that the plaintiff is a corporation incorporated under the laws of Canada. The plaintiff was founded in the year 1984 and claims to be the first wireless data technology developers in the world. The plaintiff is manufacturing and marketing wireless solutions for the mobile communications in the name of BlackBerry. The trademark BlackBerry was adopted by the plaintiff in the year 1999.
- Counsel for the plaintiff also submits that large sums of money is spent in maintaining and protecting the fruits of its labour and efforts in the form
of intellectual property the world over. The plaintiff‟s intellectual
properties and technologies are statutorily protected around the world including by way of trade mark, copyright, patent and design protection.
The plaintiff‟s proprietary (i) BES software primarily designed to
integrate and synchronize email servers with BlackBerry smartphones and
(ii) software development tools made available in the form of the SDK, comprising the source code and object code used to program and compile applications for BlackBerry smartphones, qualify for protection as
„original literary works‟ as contemplated under Section 2(o) and Section
13 of the Copyright Act, 1957 and enjoy copyright protection. Such software is made available to consumers and developers either along with the smartphone or on a standalone basis under the terms of various user licences. Before one can use this software, one has to accept the terms of the respective licence agreements and abide by such terms. The plaintiff owns copyright in the code, specifications, documentation and other materials that comprise the BES software and SDK. Both India and Canada are signatories to the Berne Convention and thus works first
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published in Canada are entitled to protection in India as well. Such protection is available under Section 40 of the Copyright Act and by virtue of the International Copyright Order passed by the Indian Government, whereunder the works first published in the convention countries mentioned in the Schedule to the Copyright order are protected and all the provisions of the Copyright Act, except in Chapter VIII relating to the rights of broadcasting organizations and of all performers, apply to any work first made or published in such countries in like manner as if the work was first published in India. Therefore, all the software products of the plaintiff are entitled to protection in India as literary works and the plaintiff is entitled to take action for infringement of its copyright in such literary works and obtain relief from the Court as provided under the Copyright Act. The plaintiff owns a global portfolio of Blackberry and BlackBerry formative trade marks including the trade mark BlackBerry. The plaintiff has secured more than 2000 registrations of BlackBerry and BlackBerry formative marks in 160 jurisdiction around the world. Copies of a selection of relevant registration certificates obtained in various countries around the world including the commonwealth countries have been filed along with the Plaint.
17. It is also contended that with respect to India, the plaintiff has obtained the registration of BlackBerry and plaintiff has made its trademark in various classes, the example of which have been set out in the plaint. The strong global sales for its products and the extent and use and popularity
of the plaintiff‟s BlackBerry trademark, is evident from the fact that there
are more than 55 million subscribers using the BlackBerry products and services of the plaintiff throughout the world.
18. Mr.Jain, learned senior counsel for the plaintiff has drawn the attention of
the court to the plaintiff‟s revenue recorded in US$, which are reproduced
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as under:
- a. $ 1 billion for the fiscal year 2005
- b. $ 2 billion for the fiscal year 2006
- c. $ 3 billion for the fiscal year 2007
- d. $ 6 billion for the fiscal year 2008
- e. $ 11 billion for the fiscal year 2009
- f. $ 15 billion for the fiscal year 2010"
- Mr.Jain also contends that plaintiff has a significant presence in Indian market and its products under the trademark BlackBerry are extensively available in the Indian market especially through relationships with Bharti Tele-Services Limited (which operates under its trade mark "AIRTEL"), Vodafone (India), Aircel, BSNL, Idea Cellular and various other operators.
- Counsel for the plaintiff submits that while granting interim ex parte injunction this court had considered the above factors and the submissions made by counsel for the plaintiff. Mr.Jain has strongly urged before this court that having regard to the facts of this case and having regard to the conduct of the defendants No.2 to 4, the interim order granted on 18.02.2011 should be extended so that the defendants No.2 to 4 cannot take advantage of their own wrongs in frustrating the order passed by this court. It is further urged before this court that even prior to a detailed hearing in the application under Order 39 Rules 1 and 2 and the application under Order 39 Rule 4 CPC, the interim order should be extended to defendants No.2 to 4, failing which a wrong signal would be sent to such litigants, who by adopting sharp practices want to over-reach orders of the court.
- Mr.S.K. Bansal, counsel for defendants has primarily raised three objections with regard to extending interim order to defendants No.2 to 4. Firstly Mr.Bansal contends that the plaintiff has not approached this court
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with clean hands, as the plaintiff has suppressed and withheld material facts. The plaintiff has wilfully suppressed the disclaimer on the
registration certificate with regard to the word „Berry‟. It is contended
that on this ground alone the suit should be dismissed and the interim order dated 18.02.2011 should be vacated. Secondly, the plaintiff has failed to comply with a direction of this court by which the parties were called upon to file copies of their software on record. Mr.Bansal, counsel for defendants submits that while the defendants have complied with the order, plaintiff has not filed the software till date. The third objection raised by Mr.Bansal, counsel for the defendants is that there are large
number of persons in the market, who are using the suffix „Berry‟ and thus the plaintiff cannot have any monopoly on the said work „Berry‟.
22. Elaborating his first argument Mr.Bansal submits that plaintiff has failed to state in the plaint that the registration of the plaintiff with regard to the word BlackBerry was with a disclaimer. This is a material fact which has been suppressed in the plaint and during the course of hearing of the interim application. In support of this submission counsel for the defendants has placed strong reliance in the case of Om Prakash Gupta v. Parveen Kumar and Anr., reported at 2000 PTC 326, wherein a Single Judge has considered various judgments and held that concealment of material facts or documents, making any misrepresentation in court, has been seriously viewed by the Court. Relevant portion of the judgment at pages 333-334, are reproduced below:
"As seen above, the trademark was registered subject to disclaimer that this registration shall give no right to the exclusive use of the device of 'Sun' and the word "SURAJ". This means that the word "SURAJ" and the device of Sun do not form part of the registered trademark. And the registered trademark is only "Zafrani Patti".
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17. Section 17 of the Act reads as under :
"17. Registration of trade marks subject to disclaimer.-
(a) contains any part -
- (i) which is not the subject of a separate application the proprietor for registration as a trade mark; or
- (ii) which is not separately registered by the proprietor was a trade mark; or
- (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character;
the Tribunal, in deciding whether the trade mark shall be entered or shall remain, on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the Tribunal holds him not to be entitled, or make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration :
Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made."
Similar provision existed in Section 13 of the earlier Trade Marks Act, 1940. The object and purpose for imposing disclaimer has been explained by the Supreme Court in the case of Registrar of Trade Marks v. Ashok Chandra Rakhit AIR 1955 SC 558 as under:
"8. The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks."
Disclaimed part(s)/matter of the registered trademark does not form part of the registered trademark and as such is not entitled to the
benefits available in respect of a registered trademark."
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- Elaborating upon the second submission Mr.Bansal contends that large number of persons in the market are using the suffix BERRY including Burberry, which has a registration under Clause 9 for the use of mobile case as well. Mr.Bansal, counsel for the defendants has drawn attention of the court to the search report conducted by him in this regard to show the various names with the suffix BERRY.
- Mr.Bansal further contends that a mere glance of the getup of the two marks would show that there is absolutely no similarity and the writing style is completely distinct and different and no person can be mislead. Counsel has relied upon Hindustan Sanitaryware & Industries Litd. v. Champion Ceramic, reported at 2010 (45) PTC 260 (Del.) and J.K. Oil Industries v. Adani Wilmar Limited, reported at 2010 (42) PTC 639 (Del.).
- In response to the submissions made by Mr.Bansal, counsel for the defendant, Mr.Sanjay Jain, learned senior counsel for the plaintiff, submits that the allegation of suppression are baseless and unfounded as the plaintiff has filed copies of all the registration certificates in favour of the plaintiff and only in one registration certificate there is a disclaimer
with regard to the word „Berry‟ and thus it cannot be said that the plaintiff
has intentionally and willfully suppressed the disclaimer from this court. It is further submitted that having regard to the fact that there is disclaimer only in one registration the defendant cannot derive any benefit.
26. While relying on the judgment in the case reported in the case of Cadbury India Limited and Ors. v. Neeraj Good Products reported at 142 (2007) DLT 724, Mr.Jain, learned senior counsel for the plaintiff submits that the injunction order can be passed on the basis of the registration certificate in which there is no disclaimer. Para 68 of the judgment reads as under:
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"68. There is no dispute that the registration of the plaintiff which have been granted to the plaintiff bearing No. 249360 on 20th May, 1968 in Class 30 for CADBURY MILK CHOCOLATES GEMS '(Word)' contained the disclaimer on the exclusive right to use 'GEMS'. On the registration bearing No. 249841, there is an additional disclaimer regarding the use the device of tablets. However, it is undisputed that the plaintiff No. 1 has a registration dated 21st September, 1973 in respect of 'CADBURY's GEMS' Label bearing No. 291026 in Class 30 on which there is no such disclaimer. I find force in the submissions of the plaintiff that by this registration alone, the plaintiff is entitled to maintain an action for infringement of trademark against the defendant if it establishes that the defendant is dishonestly using a mark
which is similar to the plaintiff's registered mark."
- As far as the submissions made by counsel for the defendants with regard to non-filing of the software is concerned, Mr.Jain submits that the software was sent to the expert for its opinion and only for this reason there has been delay in filing copies of the software. With regard to the third submission made by Mr.Bansal, Mr.Jain, counsel for the plaintiff submits that placing reliance on the search report can be of no aid, help and assistance to the defendants, as almost all the registrations do not pertain to mobile phones except Burberry which primarily deals with accessories and not with respect to the mobilephones. Mr.Jain also submits that with respect to the other users, the products and services are different and there is no phonetic and any other similarity in the mark as in the present case.
- I have heard learned senior counsel for the plaintiff and also learned counsel for the defendant. Ordinarily the submission made by learned counsel for the defendant that all pending applications including the application filed by defendants under Order XXXIX Rule 4 CPC should be heard and disposed of by a composite order would no doubt be the
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correct manner of dealing with this application. But the facts of this case and the manner in which the newly added defendants no.2 to 4 have successfully defeated the interim order passed by this Court on 18.2.2011 till date requires I.A.No.6112/2011 to be heard and taken up at the very first opportunity available and on account of paucity of time it is not possible to take up all the applications today and having regard to the conduct of defendants no.2-4 and to meet the ends of justice I deem it appropriate to take up I.A.No.6112/2011.
29. This matter had come up for hearing before this Court on 14.12.2011. Learned counsel for the plaintiff had pressed hearing of this application but in view of the fact that the suit filed by defendants no.2 to 4 was pending in the Court at Jaipur, this court was not inclined to hear the matter. At that stage, Mr. Jain had pointed out that plaintiff had visited Jaipur at least 15 dates to bring to the notice of the Court that the present suit had been filed earlier in point of time and also the fact that Directors of defendant no.1 and defendant no.2 were common and in fact one and the same persons. On account of the conduct of defendants no.2 to 4 the matter could not attain finality, however, having regard to the judicial discipline, this Court adjourned the matter to 10.1.2012. As a word of caution the Court observed that the submissions made by Mr. Jain would be considered on the next date even if the final order was not passed by the Additional District Judge at Jaipur. When the matter was listed on 10.1.2012, this Court was informed that the matter was listed for pronouncement at Jaipur and only thereafter arguments were heard on behalf of counsel for the plaintiff on the application. This Court was also informed today before hearing commences that the interim application of defendants no.2 to 4 has been dismissed and the matter has been adjourned to 21.1.2012 for passing an order on an application filed by
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plaintiff herein for dismissal of the suit under Order VII Rule 11 CPC read with Section 142(2) of Trade Marks Act. Pursuant to the orders passed by this Court on 18.2.2011 two Local Commissioners, who were appointed visited the office of defendant no.1. The report of the Local Commissioner clearly shows that the Local Commissioner did not visit the office of defendant no.2. Prima facie it seems that defendant no.2 had made this averment in the plaint filed in the Court at Jaipur only with a view to mislead the Court at Jaipur that the Local Commissioner along with the representative of the plaintiff had visited the office of defendant no.2 and threatened defendant no.2, which led to the filing of the suit by them under Section 142 of Trade Marks Act.
30. I have carefully perused the pleadings and documents on record and the statement recorded in court of Mr.Rakesh Mamnani, Legal Officer of defendant No.1. Statement of Mr. Rakesh Mamnani reads as under:
"Statement of Rakesh Mamnani, s/o Shri Ghanshyam Das
th
Mamnanz, aged 31 years, r/o Mamnani Kunj, Plot No.644/6, 12B Road, Sardarpura, Sodhpur -343003 (on S.A.)
- I am working as Legal Officer with Data Infosys Limited since March, 2009. My office is at Station Road, Durgapura, Jaipur. Mr. Babu Lal Data, Mr. Deepak Data, Mr. Nitin Walia, Mr. Mukesh Gupta, Mr. M.L. Oswal and Ms. Ritika Data are the Directors of Data Infosys Limited.
- The office of BharatBerry Technologies Pvt. Ltd. is at D-47, Laxaman Marg, Hanuman Nagar, Vaishali Nagar, Jaipur. Mr. Ajay Data, Mr. Deepak Data and Mr. Nitin Walia are the Directors of BharatBerry Technologies Pvt. Ltd. I am also looking after the affairs of BharatBerry Technologies Pvt. Ltd.
- The suit filed by BharatBerry Technologies Pvt. LTd. at Jaipur has been instituted by me on behalf of BharatBerry Technologies Pvt. LTd. I have signed and verified the plaint.
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- Mr. Nitin Walia had signed and verified the written statement filed in this case.
- I was not present in the office of Data Infosys Limited when
nd
the Local Commissioner visited on 2March, 2011. I was on leave on that day. I came to know of the inspection of the Local
rd
Commissioner after one day, i.e., on 3March, 2011.
6. The Board of Directors of BharatBerry Technologies Pvt. Ltd. took the decision to file the case at Jaipur. The meeting of the
rd
Board of Directors took place on 3March, 2011 at the office of Laxaman Marg, Hanuman Nagar, Vaishali Nagar, Jaipur at 10:00
o‟clock. I was present in the meeting in which the decision was
taken to file the suit at Jaipur. The Board resolution was also passed in the meeting. I can produce the Board resolution before this Court.
rd
7. I was aware on 3March, 2011 when the Board meeting took place that an injunction order has been granted by this Court
nd
and the Local Commissioner proceedings of 2March, 2011.
8. I do not know whether Data Infosys Limited and BharatBerry Technologies Pvt. Ltd. are using Software Development Kit (SDK) or BlackBerry Enterprise Server (BES) software of the plaintiff. I will find out from the technical department and will also produce the relevant records in this regard
on the next date of hearing."
31. Before dealing with the submissions made by Mr.Bansal on merits, the
facts of this case would unfold the conduct and manner in which
defendant Nos.2 to 4 have successfully defeated and violated interim
orders passed by this court on 18.02.2011, only on the ground that they
were not specifically arrayed as parties to the present suit. The facts
would also show that once the defendants No.2 to 4 who are closely
connected with defendant no.1 became aware of the interim order dated
18.02.2011 passed by this court, they successfully frustrated the interim
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order by filing a suit under Section 142 of the Trade Marks Act in the Court of Additional District Judge No.VII, Jaipur, Metro Jaipur.
32. Based on the documents placed on record and the submissions made by Mr.Jain, senior counsel for the plaintiff, and upon the statement made by Mr.Rakesh Mamnani, the following undisputed facts would show that:
- (i) defendants no.1 and 2 are closely connected with each other. Mr.Ajay Data and Mr.Nitin Walia are Directors/CEO/responsible officers of BBTPL and defendant no.1;
- (ii) at the time when the Local Commissioners visited the office of defendant no.1, Mr.Ajay Data and Mr.Nitin Walia were present. This is evident from the report of the Local Commissioner;
(iii) Copy of the order dated 18.2.2011 was handed over to Mr.Ajay Data and Mr.Nitin Walia, which was duly received by them. This is evident from the report of the Local Commissioner and thus both Sh. Ajay Data and Mr.Nitin Walia had knowledge of the Interim Order passed by this Court.
- (iv) No Objection Certificate, which was issued by defendant no.1 to Registrar of Companies, giving its no objection for registration of the new company using the word Bharat Berry. The fact shows the closeness of the two companies. This is evident from the copy of No Objection Certificate filed by defendants with its list of document son 19.4.2011;
- (v) On receipt of copy of the summons and injunction order dated 18.2.2011 Mr.Ajay Data and Mr.Nitin Walia conducted a meeting of Board of Directors of defendant no.2
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and took a decision to file a suit at Jaipur. This is evident from the statement made by Mr.Rakesh Mamnani on 21.4.2011;
(vi) The statement of Mr.Rakesh Mamnani, legal officer of Data Infosys Limited also reveals that Mr.Nitin Walia is the Director of defendants no.1 and 2;
(vii) Mr.Nitin Walia has signed and verified the written statement in the present case; and
(viii) Prior to order dated 18.2.2011 passed by this Court the
website of defendant no.1 read as "website designed and managed by Team Date Infosys Limited" and the same
website after passing the order dated 18.2.2011 the website
read as "website designed and managed by Bharat Berry Technologies Pvt. Ltd. and the domain name
www.bharatberry.com is owned and controlled by defendant no.1.
33. The statement of Mr.Rakesh Mamnani, Law Officer, which is reproduced above would show that soon after Local Commissioner visited the office of Data Infosys Limited and handed over a copy of the injunction order, the Board meeting of defendant no.2 was called on 3.3.2011 at 10.00 a.m. and it was decided to institute the suit had Jaipur. The Law Officer who signed and verified the plaint with regard to the suit to be filed at Jaipur and also stated in the statement that when the Board meeting took place he was aware of the injunction order having been passed and the proceedings of the Local Commissioner on 2.3.2011. Both Mr. Ajay Data and Mr. Nitin Walia were also present at the time when the Local Commissioner visited the office of defendant no.1. Having regard to the peculiar facts of this case and the manner in which defendants no.2-4 have
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conducted themselves, I deem it appropriate to extend the injunction order against defendants no.2-4 before hearing the applications at the earliest date possible. At this stage, this order is necessary to be passed at the earliest opportunity available. To meet the ends of justice and with regard to the manner the proceedings have been conducted by defendants no.2 to 4, defendants no.2 to 4, their servants, agents, employees, persons, sister concerns, assignees, are restrained from using the mark Berry as part of
their trade mark/name or any other name similar to the plaintiff‟s trade mark „BlackBerry‟ till the next date of hearing.
34. Even on the merits of matter, prima facie, I am of the view that there is no suppression of facts by the plaintiff as merely because in one of the registrations there is a disclaimer, it would be of little or no consequence as there are subsequent registrations in favour of the plaintiff where there is no disclaimer. I am in respectful agreement with the view expressed by this Court in the case of Cadbury India Limited and Ors. (supra). I also find no force in the submission made by learned counsel for the defendants that since the software has not been filed by plaintiff on this ground alone the injunction order should be vacated, as the explanation rendered by Mr.Jain is cogent that the software has been sent for expert opinion and the matter is taking time. There is also no merit in the submission made by learned counsel for the defendants that there are many players in the market, who are using the suffix BERRY, for the reason that the names have no phonetic similarity and the products are entirely different. As far as Burberry is concerned, it is primarily a clothing company and it does not deal in mobile phones. The submission made by Mr.Bansal shall be considered at length when the applications under Order XXXIX Rules 1 and 2 CPC and Order XXXIX Rule 4 CPC are heard in detail.
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- Prima facie
- the plaintiff has been able to make out a strong case on merits on the basis of which the injunction order was granted on 8.2.2011 and for the reasons stated above, the order dated 8.2.2011 is extended to newly added defendants no.2-4. Prima facie, I am also of the view that defendants have willfully violated the order dated 8.2.2011 passed by this Court as they were well aware of the fact that defendant no.1 had been injuncted from using the software and the mark BERRY. Being common Directors, defendants no.2-4 circumvented the order dated 8.2.2011 passed by this Court by conducting business in their pocket company, defendant no.2. Defendants have interfered in the administration of justice and they have willfully disobeyed the order passed by this Court on 18.2.2011. Defendants no.3 and 4 shall show cause as to why contempt proceedings be not initiated. Defendants no.3 and 4 are also directed to remain present in Court on the next date of hearing.
- I.A.NO.6112/2011 stands disposed of.
CS(OS) 373/2011, I.A.NOS.2476/2011, 2478/2011, 7578-79/2011
37. List on 7.2.2012.
G.S.SISTANI,J JANUARY 12, 2012
msr/ssn
CS(OS) 373/2011
