* HIGH COURT OF DELHI : NEW DELHI
+ IA No. 5352/2008 in CS (OS) No. 816/2008
M/s. Johnson Appliances (P) Ltd. ......Plaintiff
Through: Ms. Pratibha M. Singh with
Mr. Deepak Gogia, Advs.
Versus
M/s. H.E. Industries & Ors. ......Defendants
Through: Mr. S.K. Bansal, Adv.
Judgment decided on : March 25, 2010
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment? No
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported
in the Digest? Yes
MANMOHAN SINGH, J.
1. The plaintiff filed IA No. 5352/2008 under Order XXXIX
Rules 1 and 2 of the Code of Civil Procedure, 1908 („CPC‟ for brevity)
for an interim injunction restraining the defendants, their family
members, promoters, officers, agents etc. from using the word/ name/
mark “JOHNSON” in relation to electric water heaters (including instant
geysers) in any manner as such use would result in infringement of the
plaintiff‟s registered trademark and passing off of the defendants‟ goods
as those of the plaintiff‟s.
2. The brief facts of the case are that the mark “JOHNSON”
was registered on 14.09.1960 vide registration no. 197998-B in class 11
CS (OS) No. 816/2008 Page 1 of 25
in the name of the predecessors in interest i.e. M/s. Jain Industries of the
plaintiff with regard to hot plates, toasters and water boilers.
3. The predecessors in interest M/s. Jain Industries was a
partnership firm which was dissolved on 01.04.1967 and on the same
date a new partnership was constituted which continued business under
the mark “JOHNSON”.
4. A Trust Deed dated 26.06.1979 brought into existence a
Trust by the name of Jain Youngsters Trust („JY Trust‟ for brevity) who
took over the business of M/s. Jain Industries by way of an assignment
deed dated 22.12.1979.
5. Thereafter the mark “JOHNSON” which was by that time
registered in Classes 9, 11 and 21 vide registration nos. 197997-B,
197998-B and 195359 respectively and three pending applications being
319954, 319955 and 319953 for wider specification of goods in the
afore-mentioned respective classes were also assigned to the JY Trust.
6. The understanding reached between the parties was that
actual manufacturing and marketing of the “JOHNSON” products was
to be done by M/s. Jain Industries.
7. By letter dated 21.03.1979 the JY Trust informed the
Trademark Registry that as and when the pending application no.
319955 under class 11 was proceeded for registration, the same would
be associated with the mark “JOHNSON” already registered in class 11
vide registration no. 197998-B.
8. Another Trust was created by trust deed dated 08.06.1984 by
the name of M/s. C.L. Jain Trust („CL Trust‟ for brevity) which was
CS (OS) No. 816/2008 Page 2 of 25
constituted of Sh. Chain Lal Jain, Smt. Laj Wanti Jain and Sh. Muni Lal
Jain.
9. By way of an assignment deed dated 01.07.1984 the JY Trust
assigned the mark “JOHNSON” to the CL Trust including the registered
and pending trademarks. At this time, applications no. 398343 in class
7, nos. 398341 and 390169 in class 9 and no. 398342 in class 11 were
also pending in addition to the previously mentioned pending
applications and all of these were assigned to the CL Trust.
10. By way of a further assignment, the CL Trust by assignment
deed dated 05.10.1987 assigned the mark “JOHNSON” registered in
three classes as well as all the pending registration applications to M/s.
Johnson Sales (India) which was a partnership firm consisting of Mr.
Subhash Chand Jain S/o Sh. Chain Lal Jain, Mrs. Gunmala Jain W/o Mr.
Muni Lal Jain and Mrs. Shashi Jain W/o Sh. Vinod Kumar Jain.
11. The ownership of the trademark “JOHNSON” was once
again shifted by agreement dated 02.04.1992 by way of which M/s.
Classic Equipment Pvt. Ltd. (promoted by the Jain family) took over
M/s. Johnson Sales (India) the partnership firm along with all its assets
and liabilities and became the proprietor of the said trademark.
12. By assignment deed dated 09.03.1994, the trademark
“JOHNSON” in relation to electric storage water heaters (excluding
instant geysers) covered under No. 197998-B in class 11 was assigned
to a partnership firm M/s. Vidyut Udyog by M/s. Classic Equipment
Pvt. Ltd.
13. The assignment was accepted by the Trademark Registry
CS (OS) No. 816/2008 Page 3 of 25
vide order no. PR/985 dated 20.01.1995 and the mark “JOHNSON”
registered in class 11 was split in a way that in relation to the item
electric water heaters (excluding instant geysers), the mark
“JOHNSON” became the proprietary concern of M/s. Vidyut Udyog.
14. By agreement dated 02.04.1997 M/s. Johnson Appliances (P)
Ltd., the plaintiff herein, took over the business of M/s. Vidyut Udyog
along with all assets and liabilities and consequently, the said trademark
with relation to electric water heaters (excluding instant geysers)
became the property of the plaintiff.
15. The Trademark Registry issued a certificate on 26.09.1997
recording the plaintiff as the proprietor of the trademark “JOHNSON” in
relation to the electric water heaters (excluding instant geysers).
16. The said mark was renewed from time to time except on
14.09.2002 after which a TM-13 for renewal was filed but disallowed as
time barred.
17. An appeal was filed in the IPAB and the Registrar‟s order of
refusal was set aside vide order dated 10.02.2005. An application for
renewal is filed and is pending as per the case of the plaintiff.
18. The flow chart hereunder indicates as to how the said mark
over the years has travelled from predecessors in interest of the plaintiff
to the plaintiff company :
M/s. Jain Industries
22.12.1979
Jain Youngsters Trust
01.07.1984CS (OS) No. 816/2008 Page 4 of 25
C.L. Jain Trust
05.10.1987M/s. Johnson Sales (India)
02.04.1992
M/s. Classic Equipment Pvt. Ltd.
09.03.1994
M/s. Vidyut Udyog
02.04.1997M/s. Johnson Appliances (P) Ltd.
19. As per the plaintiff, it has been the sole and exclusive owner
of the mark “JOHNSON” in relation to electric water geysers (except
instant geysers) since 02.04.1997 and the plaintiff and its permitted user
being Johnson Sales (India) have together been manufacturing/ trading
the said products under the name “JOHNSON” all over the country
through their distributors/ dealers.
20. It is averred by the plaintiff that the plaintiff has advertised
the mark “JOHNSON” throughout the country and the said mark is now
associated exclusively with the plaintiff. The sales figures of the
plaintiff and its permitted user for the last six years are given in the
plaint.
21. The plaintiff has alleged that the inter-se disputes between
the four brothers of the Jain family (of which M/s. Classic Equipment
Pvt. Ltd. and defendant no. 4 were part) resulted in a Memorandum of
Partition dated 12.03.1999 to which all the brothers were signatories.
The assignment deed dated 01.04.1999 was a result of and in
consonance with the Memorandum of Partition.
22. It is the plaintiff‟s submission that the said Memorandum and
CS (OS) No. 816/2008 Page 5 of 25
assignment deed had nothing to do with the mark “JOHNSON” in
relation to electrical water geysers as the rights of M/s. Classic
Equipment Pvt. Ltd. in the same had ceased to exist vide its assignment
deed dated 09.03.1994 with M/s. Vidyut Udyog which was taken over
by the plaintiff and as such, the said disputes etc. do not in any way
relate to the subject matter of this suit.
23. The plaintiff has also submitted that there was a Registered
User Agreement dated 23.04.1992 between M/s. Classic Equipment Pvt.
Ltd. and a M/s. Blumac Electricals India („M/s. Blumac‟ for brevity) as
per which the latter was allowed to use the name “JOHNSON” against
payment of royalty and further get agency commission as distributors.
24. Even in the Memorandum of Partition (Clause 1.3 of
addendum) it was mutually agreed that the assignment would not affect
the registered user rights of M/s. Blumac and that the same would not be
pressed to pay royalty and with effect from 01.04.1998 M/s. Blumac
was mutually held to be not liable to pay any royalty and not entitled to
any agency commission.
25. However, defendant no. 4 in contravention of the said
Memorandum interfered with the registered user rights of M/s. Blumac
due to which M/s. Classic Equipment Pvt. Ltd. revoked the assignment
deed dated 01.04.1999 vis-à-vis defendant no. 4 vide its letter dated
15.05.2000 to the Registrar of Trademarks.
26. The matter was decided and appealed repetitively and finally
the said assignment deed was stayed by this Court vide order dated
18.03.2008 in WP (c) No. 2157/2008. Meanwhile, defendant no. 4
CS (OS) No. 816/2008 Page 6 of 25
violated the Memorandum of Partition by terminating the registered user
agreement to which Classic Equipment Pvt. Ltd. and M/s. Blumac were
party.
27. Thereafter defendant no. 4 instituted a suit for infringement,
passing off etc. against M/s. Blumac in this Court being CS (OS) No.
166/2004. No interim order as per the record has been made in favour of
defendant no. 4 yet.
28. Another suit being CS (OS) No. 1399/2006 was filed by M/s.
Blumac for declaration etc. The plaintiff has submitted that all this
litigation has no bearing on the present case.
29. It is the plaintiff‟s averment that defendant nos. 1 and 2 are
engaged in manufacturing electric water geysers (except instant geysers)
under the mark “JOHNSON” and the same are being marketed by
defendant nos. 3 and 4. Defendant no. 5 is a distributor of defendant no.
3 and the latter claims to be a licensed user of the mark “JOHNSON” in
relation to the above-mentioned products due to a license/permitted user
agreement dated 27.05.2006 executed in its favour by defendant no. 4.
30. As per the plaintiff, the assignment deed entered into
between M/s. Classic Equipment Pvt. Ltd. and defendant no. 4 does not
relate to the mark “JOHNSON” with regard to the products in question
which came into the share of the Plaintiff. The same has been stayed by
this Court in order dated 18.03.2008 in WP (c) No. 2157/2008.
31. In view of these averments, the plaintiff has contended that
the defendants‟ use of the mark “JOHNSON” for electric water geysers
(except instant geysers) is illegal and unlawful and constitutes the acts
CS (OS) No. 816/2008 Page 7 of 25
of infringement and passing off as the defendants are attempting to ride
on the goodwill and reputation created by the plaintiff in the country for
its products.
32. The acts of the defendants are alleged to be causing grave
and irreparable injury to the plaintiff and thus it is prayed that the
interim injunction as sought be allowed.
33. The defendants have contended that the suit filed by the
plaintiff is bad in law and ought to be dismissed. The submissions of the
defendants can be enumerated as under :
I. The plaintiff‟s entire case is built on a fraudulent and
doctored document i.e. the deed of assignment dated
09.03.1994 has been fabricated and manipulated in order to
portray certain things to this Court. A photocopy of the
actual document as it was originally has been filed by the
defendants and as per the defendants a comparison of the
deed filed by the plaintiff with this copy of the deed will
prove the alleged fabrication. Details of the differences are
given by the defendants on page 1 and 2 of the written
statement.
II. Without prejudice to the above-stated contention, Counsel
for the defendants has sought to highlight the difference in
the product which was assigned to M/s. Vidyut Udyog by
the deed dated 09.03.1994 and the product in relation to
which the plaintiff is contending that the product is being
used by it. M/s. Vidyut Udyog was assigned the mark
CS (OS) No. 816/2008 Page 8 of 25
“JOHNSON” with respect to “electric storage type waterheaters (excluding the instant type geysers)” but the said
mark was obtained by the plaintiff as regards “electric
water heaters (excluding the instant type geysers)”. It is the
defendants‟ submission that the difference in the two is that
the words “storage type” have been omitted in the second
type of products and without the said words, the plaintiff‟s
product is only what is known in the trade as „immersion
rods‟ which are used to heat up water. Even otherwise if it
is believed that the two products are the same and are used
for storing hot water, the plaintiff‟s product is a „hammam‟
or a „boiling chamber‟ which is a portable drum where
water is stored and then heated through an electric element.
This type of product is very different form the electric
geyser which is mounted on the wall. In fact, the plaintiff‟s
brochures and the defendant‟s predecessors has also been
filed showing the „hammam‟ product.
III. Defendant no. 4 acquired all proprietary rights in the mark
“JOHNSON” by way of the deed dated 01.04.1999 with
relation to all the goods specified therein and as regards
goods with wider specifications also. Further, defendant no.
4 acquired the said rights from M/s. Classic Equipment Pvt.
Ltd. itself whereas the plaintiff has claimed to have
acquired its rights from M/s. Vidyut Udyog which obtained
the rights from M/s. Classic Equipment Pvt. Ltd.
CS (OS) No. 816/2008 Page 9 of 25
IV. The plaintiff has been aware of the defendants‟ rights anduse of the mark “JOHNSON” from the year 1999 as the
parties are all closely related and are part of the same
family. The defendants have established formidable
goodwill and reputation and the plaintiff is trying to take
advantage of the same.
V. The plaintiff‟s alleged rights in the product derived from
registration no. 197998-B in Class 11 which was split with
regard to “water boilers” as the assignment dated
09.03.1994 was amended by a TM-16 application dated
18.01.1995 and “Electric water heaters” was changed to
“Electric water boilers”.
34. The defendants have argued that balance of convenience
does not lie with the plaintiff as the defendants cannot be restrained
from exercising their rights.
35. According to the defendants, in case the plaintiff‟s claimed
goods „Electric Water Heaters‟ are the same as „Electric Storage Type
Water Heaters‟, even then these products in the trade, market and
consumer parlance and in local language are commonly referred to as
“hammams” or “boiling chambers”. The product “hammam” is a
different type of geyser which is mounted on the wall and is fixed and
stationery thereon. The term „instant type geyser‟ refers to fixed or
portable geysers which are not hammams. In the hammam, water is
stored and heated, while in a geyser water flows in from one inlet then
passes through an element and flows out from another. Therefore, the
CS (OS) No. 816/2008 Page 10 of 25
two set of products i.e. hammams and geysers are different as per the
written statement.
36. It is contended that defendant No.4 acquired all proprietary
rights in the trademark “JOHNSON” under the written Deed of
Assignment dated 01.04.1999 executed in its favour by Classic
Equipment Pvt. Ltd. Under the Deed of Assignment, Defendant no. 4
was assigned the trademark “JOHNSON” registration Nos. 195359,
197997B and 319955 as per the goods specified therein as well as the
pending application bearing Nos.398341 in Class 9, 398342 in Class 11,
398343 in Class 7, 319954 in Class 9 and 390169 in Class 9.
37. The application No.398342 in Class 11 being Electric
Geysers for hot waters and heaters and parts and accessories besides a
whole lot of other electrical items have been assigned to the Defendant
no. 4 besides the trademark registrations for the goods mentioned.
These assigned goods include water boilers.
38. The contention of the Defendant no. 4 is that since the date
of assignment deed dated 01.04.1999, the Defendant has been using the
trademark “JOHNSON” continuously and commercially in relation to
the goods falling in Class 7, 9, 11 and 21 except in relation to
hammams, within the knowledge of the Plaintiff and therefore, valuable
rights in the said goods has been built up by the Defendant.
39. It is also alleged in the written statement that the plaintiff
was fully aware about the said right of the defendant from the year 1999
itself as well as of the pending litigation between the defendant and M/s.
Blumac wherein all these claims are claimed by the defendant pertaining
CS (OS) No. 816/2008 Page 11 of 25
to the goods in Class 11 also. The Plaintiff is therefore, guilty of
concealing the said fact from this Court and has deliberately
manipulated the cause of action to read as from the year 2006 although
the defendant has been carrying on business since the year 1999.
40. The suit of the plaintiff is barred by limitation and is not
maintainable due to the plaintiff‟s acquiescence, delay and estoppel.
41. The defendants have also denied any infringement of the
trademark and also of any passing off in view of the honest practices
adopted and independent rights claimed by the Defendants in relation to
the geysers. It is alleged by the defendants that there is no cause of
action for the present suit and the plaint is liable to be dismissed as the
plaintiff has no right, title or interest in the subject matter of the
trademark and the goods involved in the present case.
42. I have heard learned counsel for the parties. After moving
their respective submissions, both the parties have informed the Court
that up till the date of deed of assignment dated 09.03.1994, there is no
dispute or challenge to the earlier assignments executed between the
parties dated 1.7.1984, 5.10.1987 as well as the incorporation of Trust
by the parties.
43. In the written statement, there is a challenge made by the
defendant No.4 pertaining to the deed of assignment dated 09.03.1994.
As per the defence raised by the said defendant the said deed of
assignment is a forged document and the plaintiff on the basis of the
same has procured the split trademark registration and orders from the
Trade Marks Registry.
CS (OS) No. 816/2008 Page 12 of 25
44. In reply to the first submission of the Defendant No.4 as
referred above, Ms. Pratibha M. Singh, learned counsel for the plaintiff
has also referred the Affidavit of Sh. Munni Lal Jain, one of the
Directors of M/s. Classic Equipments Pvt. Ltd dated 06.06.2008 wherein
he has deposed that on the date of execution of the assignment deed
dated 09.03.1994 another assignment deed was entered into between
M/s. Classic Equipments Pvt. Ltd. and M/s. Jain Associates. Both these
assignment deeds mentioned were drafted and prepared by the same
M/s. Delhi Registration Service, Patent and Trademark Attorney
representing both the parties at that point of time. The same trademark
attorney also drafted and prepared the other assignment deed and
documents referred in the pleading and particularly the deeds of
assignment dated 01.07.1984, 05.10.1987, 09.03.1994 and 01.04.1999.
After having received the original assignment deeds entered into
between M/s. Classic Equipments Pvt. Ltd. and M/s. Vidyut Udyog and
M/s. Classic Equipments Pvt. Ltd. and M/s. Jain Associates dated
09.03.1994 from Delhi Registration Service along with copies thereof,
the same were duly signed and witnessed. One such duly signed and
witnessed copy of each assignment deed was retained by M/s. Classic
Equipments Pvt. Ltd. for official record and the original deeds were
returned to Delhi Registration Service for taking the necessary action for
the purpose of recording these assignments in the Trademark Office. In
the Affidavit, it was also deposed that subsequently it was discovered
that the name of the assignee on the last page of both the assignment
deeds was typed as “For Jain Associates through its partner Shri Muni
CS (OS) No. 816/2008 Page 13 of 25
Lal Jain” whereas one of the assignment deeds in effect related to M/s.
Vidyut Udyog. This error was duly communicated to trademark
attorney Delhi Registration Service and necessary corrections were
made in the copies of the said deeds retained by M/s. Classic
Equipments Pvt. Ltd. for official purpose.
45. It is also mentioned in the Affidavit that both the assignment
deeds dated 09.03.1994 were duly submitted to the Trademark Registry
by M/s. Delhi Registration Service. Vide letter dated 24.01.1995 M/s.
Classic Equipments Pvt. Ltd. was informed by the trademark attorney
that the said assignments were allowed by the Trademark Registry. The
said letter/order No. Pr/985 dated 20.01.1995 is already placed on
record by the plaintiff along with the Affidavit as Annexure B.
46. When the learned counsel for the defendants was confronted
with these facts, Mr. S.K. Bansal fairly gave up the argument regarding
the validity of the assignment deed dated 09.03.1994 entered into
between M/s. Classic Equipments Pvt. Ltd. and M/s. Vidyut Udyog and
resisted from alleging thereon that the same was a forged document.
Despite the oral statement given by the defendant‟s counsel, the said
fact is being dealt with by this Court in order to avoid any objection/
confusion in the future litigation.
47. It is already admitted between the parties that the trademark
No.197998B was initially registered for Hot Plates, Toasters and Water
Boilers in Class 11 in the name of M/s. Jain Industries. There is no
dispute that M/s. Jain Industries made another application bearing
No.319955 in Class 11 for wider specification of goods covering items
CS (OS) No. 816/2008 Page 14 of 25
which are part and parcel of registered trademark No.197998B in
addition to other goods. M/s. Jain Industries admittedly informed the
Trade Marks Registry that the said pending applications bearing
No.319955 made by it, as and when get registered, would be associated
with the mark “JOHNSON” already registered bearing No.197998B.
48. As already mentioned that on 09.03.1994, the said trademark
in relation to electric storage type water heaters (excluding the instant
type geysers) was assigned in favour of M/s. Vidyut Udyog by M/s.
Classic Equipments Pvt. Ltd.
49. The Trademark Registry vide its order No.PR/985 dated
20.1.1995 split the mark as per the following details:
MARK REGN. CLASS GOODS PROPRIETOR
NO.
JOHNSON 197998 B 11 Water Heaters M/s Vidyut
(electric) (excluding Udyog
the instant geysers)
JOHNSON 197998 B 11 Hot Plats (electric), M/s Classic
(Split) toasters Equipments
JOHNSON 319955 11 Toasters (electric), M/s. Classic
Water Heaters Equipments
(instant type
geysers), Baking
Ovens
JOHNSON 319955 11 Hot Plates (electric) M/s. Jain
(Split) (Coil Stoves), Associates
Electric Cooking
Range
50. It appears from the preceding paragraph wherein the
description of goods is mentioned that both, the trademark registered
under Applications No.197998B and 319955, covered the item „water
boiler‟. It appears that when the abovementioned two trademarks were
split by the Trademark Registry by virtue of assignment deed dated
CS (OS) No. 816/2008 Page 15 of 25
09.03.1994, the item water boiler got bifurcated into “Water Heaters
(electric) (excluding the instant type geysers) and “Water Heaters
(instant type geysers)”. The description of goods mentioned as Water
Heaters (electric) (excluding the instant type geysers) went to M/s.
Vidyut Udyog under the registered No.197998B (which was
subsequently taken over by the Plaintiff) and the remaining description
of goods/item Water Heaters (instant type geysers) remained with
Classic Equipments Pvt. Ltd. under registered No.319955.
51. In fact subsequent to the order No.PR-985 by the Registry,
the requisite TM-24 and TM-36 applications pertaining to the
assignment deed dated 09.03.1994 in favour of M/s. Vidyut Udyog were
filed by the same trademark attorney. The said order was reaffirmed by
the Trademark Registry vide its order No.PR-25 dated 14.2.1997. There
was a further split in the trademark No.319955 on the same very date i.e.
09.03.1994 between Classic Equipment Pvt. Ltd. and M/s. Jain
Associates pertaining to items Electrical Coil Stoves, Electric Hot Plates
and Electric Cooking Ranges.
52. The case of the Defendant No.4 is that the expression
„Electric storage type water heaters (excluding instant type geysers)‟
that has been used in the assignment deed dated 09.03.1994 entered into
between M/s. Classic Equipments Pvt. Ltd. and M/s. Vidyut Udyog is in
fact a „Hammam‟ which is different from the product „Electric water
heaters (excluding instant type geysers)‟ in which the Plaintiff has no
right as the Plaintiff who has acquired the right from M/s. Vidyut Udyog
is using the same as water heater in the market on commercial scale.
CS (OS) No. 816/2008 Page 16 of 25
53. The documents filed by the Plaintiff as well as the
description of goods referred by the Defendant no. 4 in their respective
catalogues and advertising material clearly shows that the two terms
„electric storage type water heaters‟ and „water heaters‟ are one and the
same thing. This is further fortified from the fact that the said item has
been acquired by the Plaintiff by virtue of assignment deed dated
09.03.1994 and the same is being used openly with the knowledge of the
Defendant. However, no action was taken by the Defendant against the
Plaintiff in case the said item was merely “Hammam” and not water
heater.
54. I agree with the learned counsel for the Plaintiff that the
Electric water heater/geyser in the market is classified in two categories
i.e. the instant type and the storage type. While the former is the one
wherein water is not stored, in fact it gets heated instantly as and when it
enters the heater/geyser and passes through the heating element before it
exists in the heater/geyser, the latter gets stored and then gets heated.
The expression „excluding instant type‟ itself connotes that the said
product is storage type.
55. This fact is also proved from the printout of the screen shot
taken from the website of the Plaintiff which is available at Page114.
The Plaintiff has also filed a printout of the website of the Defendant
No.4 which indicates that the expressions “geyser” and “heater” are one
and the same.
56. Even the Defendants are using the expressions “geyser” and
“heater” interchangeably as appears from the various documents filed by
CS (OS) No. 816/2008 Page 17 of 25
the Defendant No.4. The same nomenclature is used by the Defendant
in ISI specification i.e. IS 2082 as is apparent from the documents filed
by the Defendant No.4 for the product in question is Stationary Storage
Type Electric Water Heaters.
57. Therefore, the contentions of the Defendants have no force
when it is mentioned that in the assignment deed dated 09.03.1994
entered into between M/s. Classic Equipments Pvt. Ltd. and M/s. Vidyut
Udyog the term Electric Storage Type Water Heater is used as
„Hammams‟ and then is distinguished from the product Electric Water
Heater.
58. From the documents filed by the parties, it is clear that there
is no distinction between the two expressions namely „Electric storage
type water heaters (excluding instant type geysers)‟ and „Electric water
heaters (excluding instant type geysers)‟ as is also evident from the TM-
16 application for amendment dated 18.01.1995 filed on behalf of M/s.
Classic Equipments Pvt. Ltd. by M/s. Delhi Registration Service, Trade
Marks Agent representing Defendant No.4 in the present case. The
operative portion of the prayer in the said application reads as under:
“to read the expression Electric storage type
water heaters (excluding instant type geysers)
that was used in the assignment deed dated
09.03.1994 entered into between M/s. Classic
Equipments Pvt. Ltd. and M/s. Vidyut Udyog,
be read as “Electric water heaters (excluding
instant type geysers)”.
59. As far as the items in question are concerned, the same had
been assigned by M/s. Classic Equipments Pvt. Ltd. in favour of M/s.
Vidyut Udyog by virtue of assignment deed dated 9.3.1994. M/s.
CS (OS) No. 816/2008 Page 18 of 25
Vidyut Udyog was taken over by the plaintiff company vide agreement
dated 2.4.1997 along with all assets and liabilities.
60. As a matter of fact, pursuant to the assignment deed dated
09.03.1994 M/s. Classic Equipments Pvt. Ltd. itself made the
application to the Trademark Registry in the prescribed form TM-36
dated 17.05.1995 through the same trademark attorney for striking off
the goods i.e. Water Heaters (electric) (excluding the instant type
geysers) from the category of goods under their registered trademark
No.197998B in Class 11.
61. The inter se dispute, if any, between the assignor of the
Plaintiff i.e. M/s. Classic Equipments Pvt. Ltd. and Defendant No.4 or
any other third party subsequent to the assignment deed dated
09.03.1994 in relation to the goods in question has no concern with the
present litigation. Admittedly, the necessary entries have been made by
the Trade Mark Registry on the basis of the execution of the assignment
deed between M/s. Classic Equipments Pvt. Ltd. and M/s. Vidyut
Udyog. The term „water boiler‟ is also deleted from the description of
goods vide orders dated 20.01.1995 and 14.02.1997.
62. In view of the aforesaid reasons, I am of the considered
view that any subsequent action by the assignor or third party in
relation to the items contrary to the assignment dated 9 th March, 1994 in
the registered trade mark or pending applications or any entries made
thereon was uncalled for and contrary to the law and orders dated
20.01.1995 and 14.02.1997 already passed.
63. The important aspect of the matter is that all the relevant
CS (OS) No. 816/2008 Page 19 of 25
parties who were involved in the various assignment deeds and
agreements and filing the necessary application for making the
amendment were represented by the same Trade Mark attorney. It
appears from the documents filed by the parties that the assignor M/s.
Classic Equipments Pvt. Ltd. after the assignment of items in favour of
the plaintiff has made subsequent application in the Trademark Office
claiming its rights for the same items owned by it and incorrectly got the
order passed on 26.09.1997. It appears from the order/letter dated
26.09.1997 issued by the Trade Mark Office the item water boiler is still
shown in the name of M/s. Classic Equipments Pvt. Ltd. under the
trademark No.319955 in Class 11, despite earlier orders already passed
by according the assignment dated 9.3.1994 in favour of the Plaintiff.
Thus, order/letter issued by the Trade Marks Registry vide order/letter
dated 26.9.1997 is contrary to the orders already passed.
64. The learned counsel for the Defendant No.4 Mr. Bansal has
argued that in any case Defendant No.4 has acquired the right by virtue
of the assignment deed dated 01.04.1999 between M/s. Classic
Equipments Pvt. Ltd. and Defendant No.4, another application No.
398342 in Class 11 which was filed in respect of electric geyser. One
cannot but come to the conclusion that once the right pertaining to the
water heaters has already been assigned in favour of M/s. Vidyut Udyog
by virtue assignment deed dated 09.03.1994, the question of
reassignment of the same goods under application No.398342 by the
same company M/s. Classic Equipments Pvt. Ltd. in favour of
Defendant No.4 does not arise unless mala fide intentions are there.
CS (OS) No. 816/2008 Page 20 of 25
65. Learned counsel for the Plaintiff submits that the application
No.398342 in Class 11 was already obtained by the Defendant, factum
of which is mentioned in suit bearing No. CS(OS)166/2008 and despite
having knowledge about the abandonment which is referred in the said
suit the said application was assigned in favour of M/s. Jain Industries.
66. It is clear from the facts that the expression „water boiler‟
was already split in the year 1994 on the basis of the assignment deed
dated 09.03.1994. By the assignment deed dated 01.04.1999 between
M/s. Classic Equipments Pvt. Ltd. and Defendant No.4, the assignor
could not have under any circumstances assigned the items after the
execution of deed of assignment dated 9.3.1994 as item/products „water
boiler‟ was already deleted from the said registration no.319955 by
virtue of the assignment deed dated 09.03.1994.
67. The items which are subject matter of assignment deed dated
09.03.1994, the assignor or Defendant No.4 cannot subsequently claim
any rights in pending applications or registered Trade Marks whether
those are specifically mentioned or not in the deed of assignment
otherwise, the very purpose of assignment of the mark is defeated.
68. It is also pertinent to mention that Defendant No.4 was aware
of the assignment made in favour of M/s. Vidyut Udyog by M/s. Classic
Equipments Pvt. Ltd. on 09.03.1994. The said Defendant No.4 was also
aware about the taking over of M/s. Vidyut Udyog by the Plaintiff on
02.04.1997 as the said Defendant was one of the Directors in the
Plaintiff company at that point of time and only resigned from the
Directorship of the Plaintiff company on 01.10.1997. Claiming any
CS (OS) No. 816/2008 Page 21 of 25
right on the basis of assignment deed dated 01.04.1997 after the
retirement from the Directorship of the Plaintiff company on 01.10.1997
shows the mala fide intention of the Defendant No.4.
69. There is a malafide intention on part of defendant No.4 by
filing a fresh application for the same items in the Trademark Registry
in the year 2009 after having knowledge that the goods in question had
already been assigned in favour of the predecessor in interest of the
Plaintiff.
70. This Court is of the considered view that any order passed or
entry made in the Register of Trademarks in relation to the assignment
of the trademark and/or change in the constitution contrary to the valid
written document/assignment is null and void and is to be treated as
against the law. The Court dealing with the dispute can ignore the said
entry if found that the party has obtained the same by making
misrepresentation or by any other illegal manner. An entry made in the
Register on the basis of misrepresentation or fraud, cannot disentitle the
valid rights of a party who has become the lawful owner of the
trademark by virtue of a valid document. In other words, the effect of
proprietary rights acquired by the party by means of valid document
cannot be lost on the basis of wrongful entry if made.
71. The next submission of the learned counsel for the
Defendants is that Defendant No.4 has been using the trademark
“JOHNSON” in relation to water heater since 1999 after the assignment
deed dated 01.04.1994.
72. The documents filed by the Defendants have been examined
CS (OS) No. 816/2008 Page 22 of 25
by this Court. One more opportunity was given to the parties to produce
cogent evidence in order to show that they have been using the
trademark “JOHNSON” in relation to water heater during the course of
hearing, since 1999. Prima facie there is no cogent evidence produced
by the defendants to show the continuous use of the mark in relation to
the goods in question. From the document, no doubt, it appeared that the
defendants have been using the trademark “JOHNSON” in relation to
various electric and electronic goods, however, except vis-à-vis the
product water heater.
73. On the other hand, the Plaintiff has been able to establish a
prima facie case in its favour as there was a valid assignment deed in
favour of M/s. Vidyut Udyog which was acquired by the Plaintiff. The
Plaintiff has become the subsequent registered proprietor of the
trademark “JOHNSON” in relation to the goods in question. Necessary
entry in this regard has already been made in the register of Trademarks.
74. The balance of convenience also lies in favour of the Plaintiff
and against the Defendants as the Defendants were fully aware from day
one that the item in question had been assigned in favour of the
Plaintiff‟s predecessor in interest. On the other hand, the Defendant
No.4 is using the trademark “JOHNSON” in relation to electric kettles,
toasters, ceiling fans, pressure cookers, mixer grinders, vacuum
cleaners, hand blenders, electric tandoors, heat convectors etc. as per the
documents filed by the Defendant no. 4 for which the plaintiff has raised
no objection.
75. The Defendant No.4 if authorized by M/s. Classic
CS (OS) No. 816/2008 Page 23 of 25
Equipments Pvt. Ltd. is also entitled to use the mark “JOHNSON” in
respect of instant type geysers. However, the Defendants are not
entitled to use the trademark “JOHNSON” in relation to the water
heaters (electric) in any manner.
76. From the aforesaid reasons, this Court is of the view that if
the injunction is not granted in favour of the Plaintiff, the Plaintiff will
suffer irreparable loss and injury in its business.
77. Therefore, till the disposal of the suit, the Plaintiff is entitled
to an injunction restraining the Defendants, their servants, agents or
anyone acting on their behalf from using the trademark “JOHNSON” in
relation to electric water heaters (excluding the instant type geysers),
directly or indirectly, in any manner whatsoever.
78. By following the decision of the Apex Court in terms of
paragraph 37 of the judgment of the Supreme Court in the case of Salem
Advocate Bar Association Vs. Union of India, (2005) 6 SCC 344
wherein the Supreme Court has said that it is high time that actual
compensatory costs be imposed with respect to legal proceedings as
well as in light of Section 35 of the Code of Civil Procedure, which
provides that costs have to follow. In view of the fact that the
defendant No. 4 has in this case knowingly contested the interim
application for injunction despite having the knowledge that the
mark in question in relation to the particular goods has already been
assigned in favour of the plaintiff‟s predecessors in business by virtue of
assignment deed dated 09.03.1994 and the necessary entry has been
made in the Register of Trade Marks by the Trade Marks Registry still
CS (OS) No. 816/2008 Page 24 of 25
he had chosen to raise false and frivolous pleas in the written-statement
and reply to the injunction application. In lieu of this Defendant No.4
shall bear costs of Rs. one lac to be deposited in the name of Registrar
General of this court within two weeks from today, who will make the
total amount available for utilization of Juvenile Justice.
79. It is made clear that any observation made herein shall be
treated as tentative in nature and shall not constitute any expression of
final opinion on the issues involved and shall have no bearing on the
final merit of the case and submissions of the parties in the suit.
CS (OS) No. 816/2008
List before the Roster Bench on 27th April, 2010.
MANMOHAN SINGH, J.
MARCH 25, 2010
acm
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