1 NMS1522.11
srp
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 1522 OF 2011
IN
SUIT NO. 820 OF 2011
1. Siddhant Ice Creams Pvt. Ltd. & 2 Ors. ... Plaintiffs
Vs
1. M/s. Thanco Enterprises & 2 Ors.
... Defendants
Mr. Virag Tulzapurkar, senior counsel with Ms. Tanmayi Gadre,
Mr. Nishad Nadkarni Shailendra Bhadadare and Ms. Meghna
Chandurkar i/b Legasis Partners for the Plaintiffs.
Mr. Kevic Setalvad with Mr. Sanjay Sinha for the Defendants in
support of the Notice of Motion.
CORAM : S.J. VAZIFDAR, J.
Date of reserving MONDAY, 13TH JUNE, 2011
Date of pronouncement: MONDAY, 27TH JUNE, 2011.
ORAL JUDGMENT. :
1. With the consent of the parties, the Notice of Motion is
heard finally.
::: Downloaded on – 09/06/2013 17:24:07 :::
2 NMS1522.11
2. The defendants have filed this Notice of Motion,
purportedly under Order XXXIX, Rule 4 of the Code of Civil
Procedure, 1908, to set aside, discharge and/or vary an order dated
15th April, 2001, passed by a learned single Judge in Notice of Motion
No.1148 of 2011 in the above suit. The learned Judge restrained the
defendants from infringing the plaintiffs registered mark, a
predominant part whereof includes the word “NATURAL”, infringing
the plaintiffs copyright in the works which are exhibited to the plaint
and from passing off their goods and products as those of the
plaintiffs. The learned Judge also restrained the defendants from
transferring the registration of the impugned domain names.
3. The defendants initially filed Appeal (Lodging) No.281
of 2011 against the said order and judgment. By an order dated 3rd
May, 2011, the Division Bench noted that the defendants sought to
rely on certain documents which were not placed before the learned
single Judge. The Division Bench left it open to the defendants to
move “the learned single Judge with an appropriate application”.
::: Downloaded on – 09/06/2013 17:24:07 :::
3 NMS1522.11
4. The appropriate course for the defendants would have
been to file an application for review which would have been heard by
the same Judge who passed the order. Instead, they filed the present
Notice of Motion purportedly under Order XXXIX, Rule 4. I use the
word “purportedly” deliberately for what the defendants in fact seek,
is a review of the order. The defendants did not file a review petition
to avoid going before the same learned Judge who, being fully aware
of the case would have seen through the attempt to confuse the Court
immediately and without the necessity of going through the entire
case again. By this stratagem, to an extent the defendants have
succeeded in their attempt at having the Notice of Motion re-heard
and in delaying the implementation of the order.
5(A) As noted earlier, the learned Judge granted the defendants
four weeks time to comply with the order dated 15th April, 2011. The
Division Bench passed the order dated 3rd May, 2011 and the
defendants filed the present Notice of Motion.
(B) An application was made before the learned vacation
Judge who, by an order dated 11th May, 2011, noted that it would be
::: Downloaded on – 09/06/2013 17:24:07 :::
4 NMS1522.11
necessary for the plaintiffs to file a reply and passed directions for
completing the pleadings, listed the application on 16th May, 2011 and
extended the time granted by the learned single Judge to comply with
the order dated 15th April, 2011, till 16th May, 2011.
(C) On 16th May, 2011, another learned vacation Judge
extended the time till 24th May, 2011. By an order dated 20th May,
2011, the learned vacation Judge heard the matter and extended the
time for complying with the order dated 15th April, 2011, till 13th June,
2011.
The learned Judge indeed made certain prima facie
observations regarding the importance of the documents now sought
to be relied upon by the defendants. These, however, are only prima
facie observations made by the learned vacation Judge only for the
purpose of deciding whether to extend the time to comply with the
order dated 15th April, 2011, or not. It is important to note, however,
that the learned vacation Judge expressly held that the application was
really to review the order dated 15th April, 2011 and as such, the
Notice of Motion ought to be heard by the said learned Judge. Since,
however, it was not a review petition, the papers were directed to be
::: Downloaded on – 09/06/2013 17:24:07 :::
5 NMS1522.11
placed before the Hon’ble Chief Justice for appropriate orders. The
same was done.
(D) As the learned Judge who passed the order dated 15 th
April, 2011, is now on a Division Bench, the matter was assigned by
the learned Chief Justice to me obviously on the basis that this was
not a review petition, but a Notice of Motion under Order XXXIX,
Rule 4.
6. Mr. Setalvad, the learned counsel appearing on behalf of
the defendants contended that at the hearing of the Notice of Motion
before the learned single Judge who passed the order dated 15th April,
2011, the plaintiffs had suppressed documents; that the defendants did
not then have these documents and that they obtained them after the
said order. These documents pertained to the registration of the
plaintiffs marks under Class-7, Class-29 and Class. According to him,
this had a material bearing on the outcome of the order and that,
therefore, the order ought to be recalled.
::: Downloaded on – 09/06/2013 17:24:07 :::
6 NMS1522.11
7. The application is without substance in law, on facts and
on merits for more than one reason.
8. As rightly contended by Mr. Tulzapurkar, it is impossible
to believe that the defendants were not aware of the documents, now
sought to be relied upon, when the Notice of Motion was heard by the
learned Judge. There is no explanation as to why the defendants did
not take search of the records which are in public domain before the
Notice of Motion was heard by the learned Judge. More important is
the fact that the plaintiffs had in paragraph 8 of the plaint, craved
leave to refer to and rely upon the documents which the defendants
now allege had been suppressed viz. the certificates of registration and
certified copies of the entry in the Register in respect of the
registration of the said marks in each class, when produced. The
defendants never asked for inspection of any of these documents. It
cannot, therefore, be said that the same were suppressed. They were
available had the defendants asked for the same. The present
application is an after-thought after having taken a chance before the
learned Judge.
::: Downloaded on – 09/06/2013 17:24:07 :::
7 NMS1522.11
When a party is aware of all the facts and/or could have
been aware of the same, it is a moot point whether in an application
under Order XXXIX, Rule 4, a Court ought to exercise discretion in
favour of a party that made efforts to obtain such information only
after the matter was heard and decided against it.
I have nevertheless dealt with the matter on merits as
well.
9.
Firstly, I will assume as correct Mr. Setalvad’s contention
that the registration of the plaintiffs marks under classes 7, 29 and 42
were subject to the limitation/condition that the same gave no right to
the plaintiffs to the exclusive use of the word “NATURAL”.
10. It is important to note that the registration under class 30
which is specifically in respect, inter-alia, of ice-cream does not
contain any limitation to the effect that the mark gives no right to the
plaintiffs to the exclusive use of the word “NATURAL” in relation,
inter-alia, to ice-cream.
::: Downloaded on – 09/06/2013 17:24:07 :::
8 NMS1522.11
11. On the basis of the registration under clause 30 alone, the
plaintiffs were entitled to succeed in their action for infringement of
the registered mark “NATURAL”. The respondents reliance upon the
advertisements before acceptance in respect of the application under
classes 7, 29 and 42 was nothing but an attempt to confuse the issue.
12. Faced with this, Mr. Setalvad relied upon section 30(2)(b)
of the Trade Marks Act, 1999, which reads as follows :-
“30 Limits on effect of registered trade mark.-
(1) ………(2) A registered trade mark is not infringed where –
(a) ………
(b) a trade mark is registered subject to any
conditions or limitations, the use of the trade mark in
any manner in relation to goods to be sold or otherwisetraded in, in any place, or in relation to goods to be
exported to any market or in relation to services for use
or available or acceptance in any place or country
outside India or in any other circumstances, to which,
having regard to those conditions or limitations, theregistration does not extend.”
13. Mr. Setalvad submitted that if a registered proprietor is
not entitled to the exclusive use of a part of a mark in respect of the
::: Downloaded on – 09/06/2013 17:24:07 :::
9 NMS1522.11registration under one class the limitation must also be held to apply
to the registration of the mark under another class although the same
does not contain any such limitation.
14. Firstly, this submission is founded upon a factually
unsustainable basis as I will demonstrate later.
Even assuming that the registration of the mark under
classes 7, 29 or 42 contained such a qualification or limitation, it
cannot apply or be extended to or read into the registration of the
mark under class 30. Marks are registered, inter-alia, qua the goods
and services stipulated in a given class. It is impermissible to read a
limitation or condition imposed by the Registrar regarding the use of a
mark in one class into the registration of the same mark in another
class. My attention was not invited to any authority to support this
submission. I am unable to accept it on principle.
15. Mr. Setalvad’s interpretation is contrary to the plain
language of section 30(2)(b). This is clear from the concluding
words: “to which, having regard to those conditions or limitations, the
registration does not extend.” The registration under one class, in any
::: Downloaded on – 09/06/2013 17:24:07 :::
10 NMS1522.11event, does not extend to goods or services under another class. This
is clear from section 28 itself. Section 30(2)(b) refers to conditions or
limitations placed by the Registrar in respect of the registration
granted by him which is in respect of a specific class or classes.
16. When the Registrar considers an application for
registration, he does so vis-a-vis the class under which the registration
is sought. He then decides whether with respect to the goods or
services falling under that class, the registration ought to be allowed
and if so, whether it should be subject to any condition or limitation.
The limitation or condition, if imposed, would then be with respect to
the goods or services that fall under that class. The Registrar does not
consider whether the registration of a mark sought under one class
ought to be subject to a limitation or condition in view of the effect of
the registration on goods or services under another class. This also
follows from the fact that the exclusive right under section 28 to the
registered proprietor of the trademark, inter-alia, to use the trademark
is in relation to the goods or services in respect of which the trade
mark is registered.
::: Downloaded on – 09/06/2013 17:24:07 :::
11 NMS1522.11
17. Let me illustrate this. A person obtains registration of a
mark comprising of an expression which includes the word “AUTO”
under class 12 in respect of vehicles and of the word mark “AUTO”
under class 15 in respect of musical instruments. The Registrar may
understandably impose a condition that the proprietor shall not have
the exclusive right to use the word “AUTO” in respect of the
registration for vehicles, but not place such a limitation in respect of
the registration of the word mark “AUTO” for musical instruments. If
Mr. Setalvad’s submission is accepted, the registered proprietor must
be denied the right under section 28 to the exclusive use of the word
“AUTO” even to musical instruments based on the limitation imposed
for the registration of the mark for automobiles. This would deny the
proprietor the benefit of the registration obtained for musical
instruments.
18. The submission is contrary to the plain language of
section 30(2)(b). It would render the registration in other classes in
such cases redundant.
The submission is, therefore, rejected.
::: Downloaded on – 09/06/2013 17:24:07 :::
12 NMS1522.11
19. That the proprietor of a mark may be entitled to file an action to
protect the mark on other grounds and with respect to other goods and
services including for passing off, is another matter altogether with
which I am not concerned in this case.
20. As stated earlier, Mr. Setalvad contended that the
plaintiffs had suppressed documents which, according to him,
subjected the registration of their marks under classes 7, 29 and 42 to
certain qualifications/limitations.
21(A) Mr. Setalvad relied upon Exhibit B-5 to the plaint which
is a copy of the on-line details provided on the website of the
Trademarks Registry in respect of the trademark registration No.
1143033 under Class-7. The same was for the following goods :-
“[CLASS-7]
electrical kitchen machine, ice cream machine, blender,
juicer, grinders for food processors, dish washing
machine, washing machine suving compact included in
class 7.”It is pertinent to note that ice-cream is not included in this
class. Any limitation or qualification, therefore, would not apply to
ice-cream.
::: Downloaded on – 09/06/2013 17:24:07 :::
13 NMS1522.11 (B) Mr. Setalvad relied upon the following endorsement inthe Trademark Journal entry relating to the registration of the
plaintiffs mark under Class-7 :-
“Registration of this Trade Mark shall give no right to
the exclusive use of the expression “Ice Cream Of Juhu
Scheme” appearing on the label.”The exclusion does not pertain to the word “NATURAL”
which also appears on the label. The exclusion is restricted only to
“Ice- Cream Of Juhu Scheme” appearing on the label.
The application, therefore, on the basis of Exhibit-C to
the plaint not containing the above exclusion, is misconceived. It
makes no difference to the plaintiffs case.
22(A) Mr. Setalvad then referred to Exhibit B-4 to the plaint
which is the certificate of registration in respect of the plaintiffs
trademark in Class-29 in respect of :-
“FRIED-CHIPS, CHIPS, WAFERS AND NAMKEEN,
PRESERVED, DRIED AND COOKED FRUITS AND
VEGETABLES, JELLIES, JAMS, MILK AND OTHER
OTHER PRODUCTS, EDIBLE OILS AND FATS,
PRESERVES, PICKLES INCLUDED IN CLASS 29.”It must be noted that ice-cream is not included in this list.
::: Downloaded on – 09/06/2013 17:24:07 :::
14 NMS1522.11 (B) Mr. Setalvad relied upon the following endorsement inthe advertisement before acceptance relating to the application for
registration of the plaintiffs mark under Class-29 :-
“REGISTRATION OF THIS TRADE MARK SHALL
GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE
WORDS “NATURAL” AND “ICE CREAM OF JUHU
SCHEME” AND OTHER DESCRIPTIVE MATTER
APPEARING ON THE LABEL.”(C) However,ig it is pertinent to note the following
endorsement in the true copy of the entry in the Register of Trade
Marks for use in legal proceedings relating to the registration of the
plaintiffs mark under class 29 :-
“REGISTRATION OF THIS TRADE MARK SHALL
GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE
WORDS “NATURAL ICE CREAM OF JUHU
SCHEME” AND OTHER DESCRIPTIVE MATTER
APPEARING ON THE LABEL.”23. The limitation does not give the plaintiffs the right to the
exclusive use of the expression which contains the word
“NATURAL” in respect of the above goods. The limitation does not
pertain to ice-cream, which is not included among the above goods.
The limitation in the endorsement pertains to the expression “Natural
Ice Cream Of Juhu Scheme” and not to the product, ice-cream. In
::: Downloaded on – 09/06/2013 17:24:07 :::
15 NMS1522.11other words, the limitation is not to the use of the expression in
respect of ice-cream.
The reliance upon this document, therefore, is irrelevant.
24. Mr. Setalvad lastly referred to Exhibit B-4 which is the
certificate of registration of the trademark under clause 42, which
provides for :-
“PROVIDING OF FOOD AND DRINK, ICE CREAMS,
HOTELS, RESTAURANT, BAR AND CATERINGSERVICES, TEMPORARY ACCOMMODATION,
MEDICAL, HYGIENIC AND BEAUTY CARE,VETERINARY AND AGRICULTURAL SERVICES,
LEGAL SERVICES, SCIENTIFIC AND INDUSTRIAL
RESEARCH, COMPUTER PROGRAMMING SERVICES
THAT CANNOT BE CLASSIFIED IN OTHER
CLASSES.”Mr. Setalvad relied upon the advertisement before
acceptance under section 20 which, at the end, stated as follows:-
“REGISTRATION OF THIS TRADE MARK SHALL
GIVE NO RIGHT TO THE EXCLUSIVE USE OF
WORD NATURAL.”
25. The reliance upon this document is totally irrelevant.
This was the advertisement before acceptance. What is important,
however, is the registration itself which is carried out after considering
::: Downloaded on – 09/06/2013 17:24:07 :::
16 NMS1522.11
the objections of the parties. As Exhibit-1 to the affidavit in reply to
this Notice Motion, the plaintiffs have annexed the certificate issued
“FOR USE IN LEGAL PROCEEDINGS ONLY” of the entry in the
Register of Trademarks relating to the registered mark in class 42.
The same does not provide for the limitation or condition which was
mentioned in the advertisement before acceptance. This certificate,
which is annexed as Exhibit-1 to the affidavit in reply, contains the
following condition and limitation :-
“Condition & Limitation: REGISTRATION OF THIS
TRADE MARK SHALL GIVE NO RIGHT TO THEEXCLUSIVE USE OF ALL DESCRIPTIVE MATTER.”
26. Thus, two things must be noted. Firstly, class 42 refers to
services and not goods. It is a service mark. Secondly, whereas the
advertisement before acceptance gives no right to the exclusive use of
the word “NATURAL”, the actual registration gives no right to the
exclusive use of “ALL DESCRIPTIVE MATTER”. There is no
limitation to the exclusive use of the word “NATURAL”.
27. The reliance, therefore, upon the advertisement before
acceptance is not only irrelevant, but also misleading. It is essentially
on this basis that the defendants pursuaded the learned vacation
::: Downloaded on – 09/06/2013 17:24:07 :::
17 NMS1522.11
Judges to extend the stay in their favour.
28. Thus, even if I was entitled to consider the Notice of
Motion de-novo, I would, with respect, come to the same conclusion
as the learned Judge.
29. There was, therefore, no attempt on the plaintiffs part to
suppress relevant information. Even if the registration in respect of
the goods and/or services under classes 7, 29 and 42 are not
considered, it would have made no difference in view of the
registration under class 30 which contains no exclusions or
qualifications or limitations.
30. This is apart from the fact that, as noted earlier, the
plaintiffs had, in any event, relied upon even these documents and that
the defendants did not even call upon them to furnish the same. There
could, therefore, in any event, be no question of the plaintiffs having
suppressed the documents.
::: Downloaded on – 09/06/2013 17:24:07 :::
18 NMS1522.11
31. Mr. Setalvad stated that the fact that the registration
under classes 7, 29 and 42 were relied upon solely for the purpose of
misleading this Court. He submitted that there was no other purpose
for relying upon the registration under the said classes.
32. The submission ignores a plain reading of the plaint
itself. The action is for infringement and passing off. The plaintiffs
were entitled to maintain the action for infringement solely on the
basis of the registration under clause 30. The reference to the
registration under the other classes was to establish that the mark was
well-known mark associated entirely with the plaintiffs. A reference
to paragraph 23 of the plaint is sufficient. The plaintiffs have averred
that they had generated an enormous reputation and goodwill in their
goods which were sold under the said mark and that as a result of the
popularity “NATURAL” is one of the well-known and famous marks
in India and “NATURAL” and the exclusive features associated with
Natural Ice-creams are associated with the plaintiffs alone and have,
therefore, acquired secondary meaning and are associated exclusively
with the plaintiffs.
::: Downloaded on – 09/06/2013 17:24:07 :::
19 NMS1522.11
33. In any event, the learned Judge has also upheld the plea
of passing off. Thus, even if I were to take a different view on the
question of infringement, I would not be entitled to grant the order
which also upholds the application on the basis of passing off.
34. In this view of the matter, it is not necessary to consider
the various other contentions raised by Mr. Tulzapurkar.
35.
This application not being bona-fide, the defendants
cannot retain the benefit obtained by them by having the time to
comply with the order dated 15th April, 2011, extended. A view to the
contrary would endorse speculative litigation encouraging
applications which are an abuse of the process of Court. By the said
order, the learned Judge had granted the defendants, a period of four
weeks to comply with the order. They were, therefore, bound to
comply with the order with effect from 15th May, 2011. The
defendants are, therefore, directed to furnish on affidavit on or before
19th July, 2011, accounts of all their dealings, including the sale of
products, using the said mark from the date on which the order and
judgment dated 15th April, 2011 was to be complied with viz. 15th
::: Downloaded on – 09/06/2013 17:24:07 :::
20 NMS1522.11
May, 2011 to date.
The defendants shall, on or before 19th July, 2011, deposit
in this Court, the entire/gross proceeds of sales of products using the
said mark during the period 15th May, 2011, to date. The Prothonotary
& Senior Master shall invest the same in fixed deposit of a
Nationalized Bank initially for three years and, thereafter, for like
periods of three years each. The amount shall abide by the order
passed at the final hearing of the suit.
36. Further, the Notice of Motion is dismissed with costs
fixed at Rs.15,000/-, to be paid on or before 19th July, 2011. It is
clarified that the order dated 15th April, 2011, shall come into effect
forthwith. The application for stay is rejected.
::: Downloaded on – 09/06/2013 17:24:07 :::
