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vai
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
APPEAL NO.1176 OF 2010
IN
NOTICE OF MOTION NO.4203 OF 2009
IN
SUIT NO.3184 OF 2009
M/s.J.K. Sons
J.K. House No.80,
Shreeji Indl. Estate
Raipur Mill Compound, Saraspur,
Ahmedabad -380 018 ....Appellants
V/s.
1. M/s.Parksons Games & Sports
41-B, Lalbaug Indl. Estate,
Dr.Ambedkar Road, Lalbaug,
Mumbai - 400 012.
2. Mr.Ketan Mehta,
Sole Proprietor of
M/s.K.D. Corporation,
Having address at Room No.29,
1st Floor, Kagajwala Building,
256-258, Narsi Natha Street,
Bhat Bazar, Mumbai-400 009. ....Respondents
Mr.J.J. Bhatt, Senior Counsel with Mr.Ashish Kamat i/b M/s.Apex Law
Partners for the Appellants.
Mr.Venkatesh Dhond i/b M/s.Bhagwati & Co. for the Respondents.
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CORAM : MOHIT S. SHAH, C.J. AND
S.J. VAZIFDAR, J.
FRIDAY, 18TH MARCH 2011.
ORAL JUDGMENT (Per S.J. VAZIFDAR, J.) :-
1. This is the defendants appeal against the order of the learned
single Judge granting interlocutory reliefs in the respondents action for
infringement and passing off.
The learned judge restrained the appellants from infringing
the respondents’ word mark “MERELANE” and from passing off their
goods viz. playing cards for and as those of the respondents. The
appellants have also been restrained from infringing the respondents’
copyright in the following labels :-
1) Trade Mark No.318995 in respect of `555′ (Label) ;
2) Copyright of Plaintiff in the `555′ Label ; and
3) Copyright in the `555 MERELANE’ Premium Label
including its outer (dozen) carton ,
4) Copyright in the `555 MERELANE’ Deluxe Label
including its outer (dozen) carton ,
5) Copyright in the `MEREDIAN 555′ Original Label,
6) Copyright in the Spade Ace inside face design label.
Mr.J.J. Bhatt, the learned Senior Counsel appearing on
behalf of the appellants did not press the appeal, as regards the grant of
reliefs qua the word mark “MERELANE”.
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2. The respondents contended that they are the proprietors
inter-alia of the trade mark 555 written in a stylized manner. The mark
was registered and the application for renewal thereof is pending. The
respondents claim to be the assignees of this mark.
3. The plaint contains the necessary averments to establish the
respondents’ goodwill in respect of the said marks including the sales
figures of and the expenses incurred towards publicity, promotion and
advertising the goods sold under the said marks. M/s.Parksons Printers
had applied for and obtained registration of the trade mark 555 label in
class 16 of Schedule IV for playing cards. The mark was assigned from
time to time. Ultimately by a Deed of Assignment dated 14.9.2004, the
registered trade mark label 555 was assigned to the respondents. The
respondents’ predecessor had applied for registration of the carton/label
555 written in a stylized manner as one of its essential features claiming
the user thereof since 26.9.1973. The application for renewal of the
mark is pending. The respondents have also filed an application for
registration of the trade mark 555 (word per-se and logo) also in clause
16 thereof claiming user since 26.9.1973. The respondents have used
the trade mark label 555 in conjunction with other marks such as
MEREDIAN, MERELANE Delux and MERELANE Premium.
4. Mr.Bhatt for the purpose of this appeal proceeded on the
basis that the appellants mark 555 is identical to or in any event
deceptively similar to the respondents’ mark 555. He further proceeded
on the basis, for the purpose of this appeal, that the respondents had
established all the ingredients necessary to maintain an action for
passing off. He confined himself in this appeal to two submissions.
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Firstly, he submitted that the respondents themselves were
not the proprietors or owners of the mark and that respondents’ cartons
and/or labels are not original artistic works. This submission was based
on the contention that the respondents’ marks were a slavish, flagrant
imitation of the carton of the globally renowned cigarette State Express
555. He submitted that the respondents themselves having infringed the
mark of another, were not entitled to any protection in respect thereof
including as against the appellants even assuming that they had
otherwise made out a case for passing off and/or infringement of trade
marks or of copyright.
Secondly, he submitted that the respondents were not the
owners of the copyright.
5. In respect of the first submission, Mr.Bhatt relied upon the
judgment of a Full Bench of this Court in Abdul Cadur Allibhoy v.
Mahomedally Hyderally (1901) 3 Bombay Law Reporter, 220.
6. Mr.Dhond, the learned counsel appearing on behalf of the
respondents on a previous occasion submitted that the judgment only
applies to cases of infringement of copyright and does not apply to an
action for infringement of a trade mark or passing off. He submitted that
a passing off action is to protect goodwill in a business ; passing off is
associated with a particular business and business is related to a product
sold as part of the business. Thus if the proprietor of the mark, in this
case State Express, does not object to the use of the mark, the
appellants cannot do so on their behalf.
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7. We are unable to restrict the ratio of the judgment to cases
of infringement of copyrights. The submission misses the basis of the
judgment which precludes an infringer of a mark or copyright from
founding a cause of action based on deceit. In other words, it denies a
person reliefs in respect of a mark or artistic work which are copies of
another. There is no question in such a case of a defendant (in this case
the appellants) raising the defence/objection on behalf of another (in
this case State Express 555).
8. In Abdul Cadar Allibhoy’s case the Full Bench found that
the plaintiffs’ label was designed by combining the labels of four other
manufacturers. It was submitted that the plaintiffs’ labels or trade marks
were so tainted in their conception and origin, that it could not form the
basis of any reliefs. The question before the Full Bench, whether the
plaintiff was entitled on the basis of such a mark to an injunction against
the defendant, was answered in the negative. Chief Justice Jenkins
held :-
“Still confining myself to the original label I will first
consider whether if it were the subject of this suit an
injunction in respect of it could be granted. The
principles on which an injunction can be claimed in a
case of this class are thus stated by Lord Westbury in
the Leather Cloth Company Ld. v. The American
Leather Cloth Company Ld. : 4 De. G.J. & S. P.144.
“These conclusions seem to follow immediately from
the very principle to which a plaintiff seeking protection
for a trade-mark appeals. He desires to restrain the
defendant from selling his own goods as the goods of
another person : but if by the use of the trade-mark in
question the plaintiff himself is representing and selling
his goods as the goods of another, or if his trade-mark
gives a false description of the article, he is violating the
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rule on which he seeks relief from the defendant.” This
is after all but a particular application of the more
general rule that a plaintiff must come into a Court of
Equity with clean hands, and by parity of reasoning a
plaintiff who seeks the relief of an injunction in this
Court (and it is with that form of relief alone that we are
concerned in this case) must answer the same
description….” (emphasis supplied)
While dealing with the contention that the mark had become
publici juris, the Full Bench ( per Russel, J.) cited with approval the
judgment in Ford v. Foster L.R. 7 Ch. Ap. Page 628. The Full Bench
(per Russel, J.) after rejecting the contention that the mark had become
publici juris held as under :-
“It seems to me that the present case comes within the
words of Mellish, J.J. In L.R., 9 Ch. , pp. 630-631 :-
“Then would it be a defence to that action at
law that the plaintiff has made false representation to the
public that his article was patented when in fact it wasnot ? If the false representation was in the trade mark
itself, although I cannot find that that point has ever
been decided or raised in a Court of Common Law, yet I
am disposed to think, and indeed I have a pretty clearopinion, that if that question were raised it would be
held that the fact of the trade mark itself containing a
false representation to the public would be an answer at
law to an action brought for a deceptive use of the trade
mark by the defendant. The declaration at law alwaysbegins by setting out that the plaintiff had used for a
length of time a certain particular trade mark, and that
his goods were known by that trade mark, and it
substantially sets up that by the user of that mark, and
his goods being known in the market by it, he has
practically got a right to the use of that mark. It appears
to me that it would come within the rule Ex turpi causa
non oritur actio ; and if the trade mark contains a false
representation calculated to deceive the public, a man::: Downloaded on – 09/06/2013 17:07:19 :::
7 app1176-10cannot by using that, which is in itself a fraud, obtain – I
do not say an exclusive right – but any right at all.”
I would further refer to Leather Cloth Co. v.
Lorsont ; –
“It was there decided that there was a
representation of a matter of fact in the trade mark
which was calculated to deceive ; that there wasevidence that it did deceive certain persons ; that such a
trade mark could not be the subject of any right
whatever that this Court would recognize, and, to use
the expression of Sir Roundel Palmer, that it was“outlawed.”
See also, Fuentes Trade Marks (1891, 2 Ch.,
166).” (emphasis supplied)
The above observations establish that it is a defence even to
an action for passing off or infringement of a trade mark that the
plaintiffs (in this case the respondents) marks are an imitation of themark of another to wit that the respondents had themselves infringed
the mark of another. The entire judgment in fact deals with such
`marks’, `trade marks’ and not copyright.
9. The Full Bench had relied only upon the judgment of Lord
Westbury in The Leather Cloth Company v. The American Leather
Cloth Company (Limited). That judgment was in fact confirmed by the
House of Lords in The Leather Cloth Company (Limited) v. The
American Leather Cloth Company (Limited) 11 ER 1435 = (1865) XI
HLC 521. It is interesting to note that the Lord Chancellor Lord
Westbury against whose judgment the appeal had been filed to the
House of Lords was also a party to the judgment of the House of Lords.
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Reading the judgment of Lord Westbury as the Lord
Chancellor and the judgment of the House of Lords confirming the
same it is clear that the above principles are not restricted to cases of
infringement of copyright but also apply to an action for infringement
of trade marks and passing off. The Full Bench followed the judgment
of the Lord Chancellor, which was appealed against. In that judgment
i.e. the judgment appealed against (4 De. G.J. & S. 136) the Lord
Chancellor also observed :-
“The same things are necessary to constitute a title to
relief in equity in the case of the infringement of theright to a trade mark, as in the case of the violation of
any other right of property. But when the owner of a
trade mark applies for an injunction to restrain theDefendant from injuring his property by making false
representations to the public, it is essential that the
Plaintiff should not in his trade mark, or in the business
connected with it, be himself guilty of any false or
misleading representation ; for, if, the Plaintiff makesany (143) material false statement in connection with the
property he seeks to protect, he loses, and very justly,
his right to claim the assistance of a Court of Equity.
……………………………………………………………………………
There is a homely phrase, long current in this Court,
that a Plaintiff must come into equity with clean hands.
There is not the case with the present Plaintiffs, whose
case is condemned by the principles to which they
appeal, and I must therefore reverse the decree of theVice-Chancellor and dismiss their bill ; but, as I do not
approve the conduct of the Defendants, I dismiss it
without costs.”
It is thus clear that the principle was applied to an action for
infringement of trade mark and passing off.
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10. That the principle is not so restricted is also clear from the
following observations in the judgment of the House of Lords which
confirmed the judgment of the Lord Chancellor. The observations of
Lord Cranworth, Lord Kingsdown and Lord Westbury are relevant in
this regard.
(A) The following are the observations of Lord Cranworth :-
“The ground on which his Lordship proceeded was that
the trade mark used by the Appellants is so constructed
and worded as to contain more than one false assertion
calculated to mislead those who rely upon it ; that it
represents the articles stamped with it as being the
goods of the Crockett International Leather Cloth
Company ; that these goods had been manufactured by
J.R. And C. P. Crockett ; and that they were tanned
leather cloth. The Lord Chancellor was of opinion that
to give protection to such a trade mark, when affixed to
goods not of the International Leather Cloth Company,
not manufactured by J. R. and C. P. Crockett, and not
consisting of tanned leather cloth, would be to make the
Court of Chancery ancillary to the protection of fraud ;
and that it would or might enable manufacturers and
sellers of goods to secure custom to themselves ; by
falsely leading purchasers to believe that they were
buying something different from that which the trader
was in fact selling.
Of the justice of this principle no one can
doubt. It is founded in honesty and good sense, and rests
on authority as well as on principle. Vice Chancellor
Shadwell refused to protect a trade mark whereby the
Plaintiffs falsely represented the tea they were selling as
being something different from what it in fact was ; and
there are other cases in the books resting on the same
principle.
The case put by the Lord Chancellor, of the
sale of a manufactory of fine cloth by A. B. and Co. in
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Wiltshire, to C. D. and Co., manufacturers in Yorkshire,
who should after (533) wards carry on the manufactory
there, would be another illustration of the same
principle. If the purchasers were in such a case to stamp
their goods with the trade mark, “A.B. And Co., makers,
Wilts,” they would be, under the name of a trade mark,
really attempting to deceive buyers, and would be
entitled to no protection, even though that had been the
trade mark used by the vendors of the business.
So in the case of bottles or casks of wine
stamped as being the growth of a celebrated vineyard, of
cheese marked as the produce of a famous diary, or of
hops stamped as coming from a well-known ho garden
in Kent or Surrey, no protection would be given to the
sellers of such goods if they were not really the produce
of the places from which they purported to
come.” (emphasis supplied)
(B) The following are the observations of Lord Kingsdown:-
“If a trade mark represents an article protected by a
patent, when in fact it is not so protected, it seems to me
that such a statement prima facie amounts to a
misrepresentation of an important fact, which would
disentitle the owner of the trade mark to relief in a court
of equity against anyone who pirated it.”
(C) The following are the observations of Lord Westbury
whose judgment was under appeal :-
“I have added these few observations for the purpose of
showing, not only that the ground which I took in the
Court below was a ground sufficient for my decision,
but also that the grounds which have been now
superadded by me noble and learned friends, and which
I regret that I did not more fully consider and adopt as
the basis of my former judgment, would warrant the::: Downloaded on – 09/06/2013 17:07:19 :::
11 app1176-10same conclusion ; and would, perhaps, have tended still
more in favour of the Defendants.”
11. Nor do we find well founded the respondents’ contention
that this argument cannot hold good in view of the fact that the
proprietor of the mark State Express 555 had not initiated any action.
The answer to this is also found in the judgment of the Full Bench,
which rejected a similar argument in these terms :-
“But it is urged that though the objections, which I have
set forth, might have been of weight at one time, that isno longer so, because Stephens and Sons have taken no
further steps nor have Waterlow and Sons or Lyons or
Hollidge ever taken proceedings ; therefore, it is urged,that to which they might have objected has become
publici juris. But even if this argument were well
founded, it contains its own reputation, for what is
publici juris for the plaintiff, is also such for the
defendant. The result is that in my opinion the marks ofthe plaintiff are not such as to entitle them to the relief
of an injunction. I would, therefore, reverse the decree
under appeal and dismiss this suit with costs
throughout.”
12. Thus the ratio would apply irrespective of the fact that the
third party whose mark has been infringed by the plaintiffs has not
taken any action against the plaintiffs. Even on principle this must be
so. The basis of the ratio is to deny an infringer a right based on the
mark or work which infringes the mark or work of another. That being
so, it matters not in an action against another whether or not the
proprietor has taken any action against the plaintiff.
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13. It is obvious, however that nothing prevents the proprietor of
the mark from initiating successfully an action for infringement or
passing off against the parties to this action.
14. The learned single Judge has however not held anything to
the contrary. He has, with respect, rightly come to the conclusion that
the appellants had not established the case on facts in this regard. It was
necessary for the appellants to establish that the third party was in fact
the proprietor of the mark 555 and that the respondents had infringed
the same.
The respondents in their affidavit in rejoinder denied the
allegations that they had infringed the mark of State Express 555. This
denial therefore required the appellants to produce some evidence in
support of this contention. However, in the affidavit in sur rejonder, the
appellants merely alleged:- “firstly, it is undisputed and/or a matter of
common public knowledge that “State Express 555”, is a globally
renowned, reputed and well known name/mark. The “State Express
555” mark, packaging and/or carton is globally well known, renowned
and/or has transborder reputation. To dispute the ownership of the
“State Express 555″ intellectual property, is to say the least, dishonest
and fallacious.” No material in support of theses allegations was
produced even in the sur-rejoinder. The matter did not end there. The
respondents in their sur sur rejoinder expressly stated that save and
except bald words which were allegedly not true to the personal
knowledge of the deponent of the sur rejoinder filed on behalf of the
appellants, no material whatsoever had been produced to show the
goodwill, reputation in India prior to 1976. The appellants were
therefore, once again put to notice in this regard. They did not avail of
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the opportunity of adducing evidence in support of their contention.
15. In paragraph 4.1 of the affidavit in reply, it is merely alleged
that the respondents are neither the proprietors, nor the owners of the
said cartons ; that the respondents’ cartons are nothing but a slavish
flagrant imitation and copy of the carton of the globally renowned
cigarette ; that the respondents’ cartons are not artistic works and do not
contain any originality and that therefore, no action can lie at the
instance of the respondents. The copies of the relevant cartons/packets
of the State Express 555 are annexed to the affidavit.
There are no averments, much less is there any evidence, to
indicate that the respondents’ marks/cartons/labels are an imitation of
the mark State Express 555. It is significant to note that there is no
evidence whatsoever to the effect that the third party has used the mark
555 or created the labels/cartons or marks prior to the creation of and
use by the respondents of these marks/labels and cartons which may
have persuaded the Court to come to the conclusion that the respondents
had infringed the mark. Even assuming that we are entitled to do so, we
are reluctant to rely upon our personal knowledge, if any we may have
in this regard. The appellants ought to have adduced evidence in respect
of their case that the respondents had themselves infringed the mark 555
which belongs to another. We are not inclined therefore to interfere with
the conclusions of the learned single Judge in this regard.
16. The learned Judge has held that the allegedly well known
mark is in relation to cigarettes and not playing cards manufactured by
the parties. If it is established that the mark is a well known mark, the
mark being used in respect of different goods may make no difference.
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Also necessary for consideration is whether the principle would not
apply, where it is not a well known mark merely because it is used in
respect of the different goods. In other words in the event of the
appellants establishing that the respondents had infringed the mark, two
further questions would require consideration. Firstly, whether the
principle would apply even if the mark is not established to be a well
known mark. Secondly, whether the principle would apply if such a
mark i.e. not a well known mark, infringed by the respondents is
applied to different goods. We do not consider it appropriate to express
any opinion in respect thereof. Nor do we consider it necessary to invite
the counsel to argue the same before us. The learned Judge has
considered the fact that the parties have applied the mark to different
goods as relevant. Suffice it to say that the question of similarity of
goods must be considered in the context of several factors. The goods
need not be identical even if a well known mark is not involved. We do
not rule out the possibility of a nexus between cigarettes and playing
cards sufficient to cause deception by the application of deceptively
similar marks on the products. The same however is also a question of
fact or a mixed question of law and of fact. The appellants have not
produced any evidence, and the pleadings are insufficient, to hold that
the goods are such as to cause deception. Thus the appellants must fail
on facts.
17. This brings us to a consideration of Mr.Bhatt’s submission
that the respondents are not the owners of the copyright. He submitted
that the respondents’ case itself is that one Yusuf Kayum Khumri
created the same in the year 1971. The said Yusuf Kayum Khumri was
not under a contract of service with the respondents and that therefore,
he would retain the ownership of the copyright in the artistic work. The
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respondents, therefore, have no cause of action based on the same.
18. According to the respondents their predecessor-in-title
engaged one Yusuf Kayum Khumri, a freelance artist and graphic
designer who designed and created the labels for the cartons in which
the playing cards under their various marks including 555 were packed.
The said Khumri designed the labels and has been paid for the same.
The respondents acquired by the assignment the copyrights and the
labels.
19.
The respondents have also relied upon the certificates issued
by the said Yusuf Kayum Khumri on 26.11.2009 to the effect that he
had created the artistic work for M/s.Parksons Printers and that he had
been paid for the same. It is possible to contend that the relationship
between them was in respect of a contract for service and not a contract
of service. However all the facts and circumstances taken together,
indicate that even if it was a contract for service, the said Yusuf Kayum
Khumri assigned his rights in the year 1971 itself to M/s.Parksons
Printers. This is indicated by the fact that he had never made any claim
to the artistic work for now almost 40 years and the fact that he issued
the said certificates on 26.11.2009 without contending that he continues
to remain the proprietor of the artistic work. We are unable in these
circumstances to find any error in the prima-facie view taken by the
learned Judge.
20. The appeal is, therefore, dismissed. There shall be no order
as to costs.
If the appellants are able to produce evidence to establish
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that the respondents have themselves infringed the mark of another and
apply to the learned single Judge for a review or modification of the
impugned order, needless to add that the same shall be decided on its
own merits. All the contentions between the parties including as to the
maintainability of such proceedings are kept open.
The order is stayed for a period of four weeks from today.
CHIEF JUSTICE
S.J. VAZIFDAR, J.
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