Lakhara & Co. – Appellant v. Shivkaram Bhanwar Lal Kila – Respondent, Decided on 18.08.1994

Lakhara & Co. – Appellant v. Shivkaram Bhanwar Lal Kila – Respondent

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History

Cross Reference: 1994 IPRL 138 (Rajasthan High Court)

Rajendra Saxena, J.

NLS 1994 CR/Raj.

Civil Misc. Appeal No. 79 of 1992 from Order Dt. 8.1.1992 of District Judge, Churu in Misc. case No. 93/01, 18th August 1994.

JUDGEMENT

This Civil Misc. Appeal challenges the order dated 8.1.1992 passed by the learned District Judge, whereby he allowed plain­tiff‑respondent’s application filed under Order 39, R. 1, CPC and re­strained the defendant‑applicant through a temporary injunction till the final disposal of the related civil suit from selling the ‘Bidees’ with the photo, design and specialties having deceptive resemblance with the copyright trade mark of the label of ‘Bidees’, manufactured and sold by plaintiff‑respondent.

  1. Briefly the relevant facts are that on 12.11.1991, the respon­dent firm filed a suit in the court of learned District Judge, Churu against the appellant firm seeking the relief of perpetual injunction re­straining the latter from selling the ‘Bidees’ under a label, which may have a deceptive resemblance with the trade mark of label of ‘Bidees’, manufactured and sold by the respondent firm, which has been registered under the Copyright Act vide registration No. A‑39587/83. The respondent‑firm averred that the appellant‑firm has imitated its regis­tered label of Bidees with an intention to defraud the customers and got printed the label of ‘Battakh Chhap Bidi’, which has a deceptive resem­blance having similar photo, design, get up and the colour scheme and that the appellant firm is making infringement of respondent‑firm’s registered trade mark of ‘Hans Chhap Bidi’ which has acquired goodwill and reputation in the market. Thus, the act of the defendant firm is adversely affecting its business and has put it to financial losses. It was further averred that on 22.10.1991, the proprietor of the appellant‑firm came to Churu for selling the ‘Bidees’ manufactured by it bearing ‘Battakh Chhap Label’, that despite the protest of the respondent firm, the former sold its ‘Bidees’ to many shop keepers in the town of Churu. The respondent‑firm, therefore, prayed that the appellant firm be re­strained through a perpetual injunction from selling the ‘Bidees’ manu­factured by it under a label, which has deceptive resemblance with the registered trade mark of the respondent firm. Along with the suit, the respondent firm separately filed an application under Order 39, R. 1, CPC praying for temporary injunction, which was resisted by the appel­lant firm. The appellant firm pleaded its ignorance as to whether the plaintiff firm got the ‘Hans Chhap label’ registered under the provisions of the Copyright Act for selling the ‘Bidees’ manufactured by them and asserted that the appellant firm is carrying on its business of manufac­turing and selling band made Bidees since the year 1979, for which a licence has also been issued from the Central Excise Department, Bikaner, which has been renewed from time to time; that the appellant firm got approved its label of Bidees having ‘Battakh mark’ and the design, which was approved by the said Department and that since then, the appellant firm is selling, Bidees under the said label open],, and without interference in the town of Ladnu and other nearby vil­lages of district Nagpur. It was also asserted that as a matter of fact, since the trade mark and the label of ‘Battakh Chhap’ bad acquired goodwill and reputation in the market, the respondent firm imitated the ‘Battakh Chhap’ trade mark and label and got the trade mark and label of ‘Hans Chhap’ approved by the Central Excise Department and further, got the same registered under the Copyright Act without intimating the appellant firm. It was further asserted that the proprietor of the appel­lant firm did not come to Churu for selling its Bidees and that no cause of action arose in district Churu and as such the District Court had no jurisdiction to try the suit. The appellant firm maintained that it was its fundamental and civil right to carry on the trade of manufacturing and selling Bidees; that the respondent firm had no prima facie case in its favour and that the scales of convenience also did not tilt in its favour. On the other hand, if the respondent firm were not restrained through a temporary injunction from carrying on its business under the trademark and label of ‘Hans Chhap Bidi’, the appellant firm would incur irreparable loss.
  1. The learned District Judge, Chure, after perusing the pleadings and the documents and hearing the parties held that the respondent firm bad a prima facie case in its favour; that the balance of conve­nience as also the factor of irreparable loss also were in its favour and accordingly, by his impugned order, restrained the appellant firm through a temporary injunction in the manner detailed above. Hence, this appeal.
  1. I have heard Mr. R.M. Bhansali, learned counsel for the appel­lant and Mr. Bhagwati Prasad, learned counsel appearing for the re­spondent at length and carefully perused the record of the learned lower Court.
  1. The main contention of Mr. Bhansali is that the plaintiff firm has suppressed material facts in its pleadings to the effect that the appellant firm was carrying on the Bidi business since the year 1979 and selling Bidees under the trademark and label of ‘Battakh Chhap’. Ac­cording to him, the respondent firm has started its trading of Bidees much later and that after imitating the trade mark and design of appel­lant firm started selling Bidees under the trade mark and label of ‘Hans Chhap Bidees’ and got the same design and label registered in the year 1983 under the Copyright Act. Thus, the respondent firm has not come with clean hands, and, as such, the learned District Judge, Churu has committed an illegality in granting the equitable relief in its favour. His another limb of argument is that there is no deceptive resemblance in the design of the label of ‘Battakh Chhap Bidi’ and that the design and label of “Hans Chhap Bidi and ‘Battakh Chhap Bidi’ are distinct and separate, which are easily detectable. He has also contended that the suit filed by the respondent firm also suffers from laches because the appellant firm is carrying on its business of selling Bidees under the label of ‘Battakh Chhap’ since the year 1979. Mr. Bhansali has, there­fore contended that the respondent firm neither has a prima facie case in its favour nor the balance of convenience and factor of irreparable loss lean in its favour and the impugned order deserves to be quashed.
  1. Mr. Bhagwati Prasad has reiterated the reasonings given by the learned District Judge.
  1. I have given my thoughtful consideration to the rival submissions. The respondent firm has filed the copy of the extracts from the Register of Copyright Office, Govt. of India, New Delhi. A close perusal hereof prima facie discloses that the respondent firm got the trade mark (Bidi No. 7) Hans Chhap Bidi Label’ registered under the Copyright Act (in short, ‘the Act’) in the year 1983. Section 48 of the Act proclaims that the Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copie­s of any entries therein, or extracts therefrom certified by the Regis­trar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without further proof or produc­tion of the original. The copy of the label of ‘No. 7 Hans Chhap Bidi’ has also been filed, which is duly certified by the Dy. Registrar, The Copyright Office, bearing his seal. The design of the said label is in rectangular form, wherein on the left side ‘Bidi No. 7 Hamesha Peejive’ hag been printed in Hindi. In the middle, there is a big circle, wherein a rising sun and the diagram of a duck has been shown and just below the duck, in another circle photograph of a person has been shown. On the right side of the label “Badhiya Zarde Ki Bani Hui No. 7 Hans Chhap Bidi” has been printed in Hindi. On the lower side of the em­blem of the label, Shivkaran Bhanwarlal Keela, Keela & Co., Churu, Rajasthan has been printed. The label has a red broader. There is a yellow background on its left and right side as also in the circle depict­ing the duck and the rising sun, the duck and hills are in white colour, while the rising sun is printed in red colour. The lower portion of the label showing the name of the respondent firm has a blue background. The trademark label used by the appellant firm is also in rectangular form having a red border. On its left side “Bidi No. 7 Hamesha Peejive” and on its right side ‘Badhiya Zarde Ki Bani Hui No. 7 Battakh Chhap Bidi” have been printed having yellow background. Similarly, in the cen­tre of the label in a big circle, the rising sun has been shown in red having a yellow background. Then, there is a diagram of duck and hills in white colour and below it, in another circle; there is a small photo­graph of a male person. In lower portion of the label, the name of Basheer Mohammed Lakhara, Lakhara and Co., Ladnu (Raj) has been printed having a blue background. Thus from a bare look prima facie, there exist striking similarities between the two labels in respect of their design, colour scheme, the emblems of the duck and ‘Hans’, the rising sun hills and colour of border and on a visual impression, the two sets of labels prima facie appear to be quite similar. The Bidi smokers are generally villagers, who are rustic and illiterate and the design of the lable/trade mark of the appellant firm’s Bidi No. 7 Battakh Chhap is likely to deceive an unwarry and illiterate purchaser in accepting those as ‘Bidi No. 7 Hans Chhap’ marketed by the respondent Firm under its registered Copyright label. Hence prima facie, there is a likelihood of confusion in the mind of the purchaser, who wants to purchase the ‘Hans Chhap Bidi’. To my mind in the two labels, prima facie there exists general similarity, which may result in deception. Therefore, prima facie the trademark label of the respondent firm registered under the Copyright Act and the unregistered trademark label of Bidi No. 7 Battakh Chhap of the appellant firm have a deceptive resemblance, which are likely to misguide and deceive the Bidi smokers, which infringes the rights of the respondent firm.
  1. The respondent firm has also submitted bills of Shakti Offset Works, Nagpur dated 3.5.1977, 19.3.1979, 21.5.1981 and 15.3.1986, which prima facie show that M/s. Shivkaran Bhanwarlal Keela, Bidi Manufacturers, Churu got lacs of ‘Hans Chhap Bidi’ labels and that they were selling the ‘Hans Chhap Bidees’ since the year 1977. Bhanwarlal, the proprietor of the respondent firm is the son of Shivkaran. He has specifically pleaded in his plaint that initially, he was carrying on the business of manufacturing and selling the hand­made Bidees with his father since the year 1979 and, that thereafter, in the year 1983, he separately started the respondent firm and got registered the Bidi No. 7 Hans Chhap’ label under the Copyright Act.
  1. In Hindustan Lever Limited, Bombay v. Nirma Private Limited, Ahmedabad, AIR 1992 Bom 195, it has been held that where dissimi­larities in the trade mark are totally inadequate to wipe out general impression of unwary purchaser and where essential features of the trade mark have been imitated and there is colourable imitation of label, then the infringement of the Copyright of the label is prima facie proved. Therefore, minor and insignificant changes in the colour scheme, design and general get up are of no material consequence. A person has certainly a vested right in the registered trademark, which means the general features of the trademark and if those are infringed, he is entitled for a temporary injunction in his favour. Thus, the learned Dis­trict Judge has rightly held that the respondent firm has shown a strong prima facie case in its favour.
  1. The balance of convenience also appears to be leaning in favour of the respondent firm, because as per pleading, prima facie, it appears that the proprietor of the respondent firm along with his father Shivkaran was initially carrying on business of manufacturing the hand­made ‘Bidees’ and trading thereof under the trade mark ‘Bidi No. 7 Hans Chhap’ since the year 1979 and that thereafter, be started his independent business under the same trade mark and got the same reg­istered under the Copyright Act. Thus, prima facie, it does not appear that the respondent firm has imitated the trademark and design of “Bidi No. 7 Battakh Chhap”.
  1. Mr. Bhansali has relied on the case of Prem Singh v. M/s. Ceeam Auto Industries, AIR 1990 Delhi 233. In that case, the plain­tiff himself was not originator of design and he was shown to have opted or imitated trade mark/copy right of the third party. It was held that since the plaintiff was shown to be pirator of the disputed design and not the originator, he was not entitled for the relief of temporary injunction for restraining the defendant from infringing his trademark. Apparently, such are not the facts of the case in hand. Therefore, Prem Singh’s case (supra) is not at all applicable to the facts of the instant case.
  1. In John Richard Brady v. Chemical Process Equipments P. Ltd., AIR 1987 Delhi 372, a suit for permanent injunction to re­strain the defendants from infringing copyrights of plaintiff and an appli­cation for interim injunction against the defendants restraining them from manufacturing, selling their products and dealing in machines that were substantial imitation of design of plaintiffs unit were filed. The de­fendants denied and disputed the jurisdiction of the Court. It was held that it was a mixed question of law and fact and could not be decided at the stage of deciding the application for temporary injunction and for that, only the averments in the plaint could be seen. In view of this proposition of law, a bare perusal of the plaint discloses that the respon­dent firm has pleaded that the cause of action accrued in the town of Churu. Therefore, the contention of Mr. Bhansali that the District Judge, Churu bad no jurisdiction to try the suit is not tenable at this stage, because this is a mixed question of fact and law and that can only be decided after the parties have adduced their evidence.
  1. Mr. Bhansali has then relied on the case of Jammu Forest Co. v. State of Jammu and Kashmir, AIR 1968 J & K 86, wherein it has been held that while granting temporary injunction, the matter for consideration is whether it is a fit case in which an injunction should be issued and this has to be determined on its own merits. How­ever, the interest of the opposite party is as important as the interest of the party asking for interim injunction. In that case, an application under Section 20 of the Arbitration Act for filing an arbitration agree­ment and for making an order of reference to the arbitrator was filed before the High Court and during that proceeding, an application under 0.39, R. 1, CPC was also filed for seeking the relief of temporary in­junction. Apparently, the facts of the instant case are distinguishable and therefore, Jammu Forest Co.’s case (supra) has no application.
  1. Another case cited by Mr. Bhansali is that of the Regional Transport Officer v. N.V. Motor Service, Kozhikode, AIR 1973 Ker 219, wherein it has been observed that the court before granting an in­terim injunction must consider whether the plaintiff has been honest and if be comes to the Court with a very material averment which turns out to be false, then the Court should be slow in exercising its power in issuing interim injunction in his favour. There cannot be any dispute about this well crystallized principle of law, but Mr. Bhansali has miser­ably failed to show as to how the respondent firm has concealed certain material facts or has not come with the clean hands so as to disentitle him for the equitable relief. To my mind, prima facie, the respondent has disclosed all material and substantial facts and has not concealed any significant fact. It also does not appear to have come with tainted bands. Therefore, this contention of Mr. Bhansali on this count is devoid of any substance and the same is hereby repelled.
  1. Mr. Bhansali has placed reliance on the case of A.R. Gangadhara and Co. v. Firm of Police Mallaih, AIR 1962 Andh Pra 510, wherein it has been held that where a suit for infringement of a trade mark is stayed under Section 111 of the Trade and Merchandise Marks Act, 1958, it is open to the Court to pass any interlocutory order to safeguard the interest of the parties before it pending decision of the Registrar and the disposal of the suit; that the Court can make inter­locutory orders not granting injunction but direct the accounts to be kept, appointing a receiver or attaching any property pending the suit and hence as a general rule, the Court is not bound to issue only ail order of injunction restraining the defendant from using the mark pend­ing disposal of the suit. Suffice it to say that in the case on band, there is no dispute as to who is entitled to the mark whether the re­spondent firm or the defendant firm. Here, it stands firmly established that the respondent firm has got its trade mark registered under the Copyright Act and the only controversy involved in the case is whether the mark which is being used by the appellant‑firm is a colourable imitation of the respondent‑firm’s mark or is deceptively similar to the mark registered in its favour and whether the appellant firm has in­fringed the right of the respondent firm. Therefore, A.R. Ganadhara’s, case (supra) renders little assistance to the appellant firm.
  1. Hence in the facts and circumstances of the case, the learned District Judge has not committed any illegality in holding that the scales of convenience tilt in favour of the factor of irreparable loss is also in its favour. Therefore, the impugned order does not warrant any interference.
  1. The upshot of the above discussion is that this appeal is meritless, which is hereby dismissed.

Appeal dismissed.

Cross Reference:  1994 IPRL 138 (Rajasthan High Court)

 

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