A suit for permanent injunction against defendant for issuance  of    groundless threats of legal proceedings in the form of circulars, advertisements or proceeding for infringement of a trade mark even if claimed to be registered trade mark under section 142 of the Trade Marks Act, 1999 shall be maintainable

2018  (73) PTC  509 (HIGH COURT OF MADHYA PRADESH)

Ahilya Vedaant Education Welfare … vs K. Vedaant Education Society on 30 January, 2018

1                            F.A.No.236/2017                     HIGH COURT OF MADHYA PRADESH                           BENCH AT INDORE                           First Appeal No.236 of 2017         Ahilya Vedaant Education Welfare Society and another                                        Vs.                 K. Vedaant Education Society and another—————————————————————————————

Trade Marks Act, 1999 Section 29, 142 .

Civil Procedure Code, 1908 . Injunction .  Threats .

A suit for permanent injunction against defendant for issuance  of    groundless threats of legal proceedings in the form of circulars, advertisements or proceeding for infringement of a trade mark even if claimed to be registered trade mark under section 142 of the Trade Marks Act, 1999 shall be maintainable unless, the defendant/first mentioned person satisfies the Court that the trade mark is registered and that the acts in respect of  which the proceedings were threatened, constitute, or, if done, would constitute an infringement of the trade mark;

Shri Amit Agrawal, learned Senior Advocate assisted by Shri RohitMangal, learned counsel for the appellant.

Shri R.S.Chhabra, learned counsel for the respondents.—————————————————————————————

Whether Approved for reporting: Yes—————————————————————————————

Law Laid down:

(1) A suit for permanent injunction against defendant for issuance  of    groundless threats of legal proceedings in the form of circulars, advertisements or proceeding for infringement of a trade mark even if claimed to be registered trade mark under section 142 of the Trade Marks Act, 1999 shall be maintainable unless, the defendant/first mentioned person satisfies the Court that the trade mark is registered and that the acts in respect of  which the proceedings were threatened, constitute, or, if done, would constitute an infringement of the trade mark;      (2) Order 7 rule 11 CPC – Only plaint averments are to be seen  while addressing the question that the suit falls within the mischief of Order 7 rule 11(d) CPC as barred by law . Significant paragraphs : 3, 4, 5, 7 to 23           Appeal allowed.                            ______

Reserved on: 18/01/2018

JUDGMENT

( 30 /01/2018)

Rohit Arya, J

Heard on the question of admission and final disposal wilth the consent of parties.

This appeal by plaintiff under section 96 CPC is directed against the order dated 18/05/2017 dismissing the suit No.172-A/2017 as barred by section 142 of the Trade Marks Act, 1999 (For short, ‘the Act, 1999) while allowing application of defendants filed in that behalf under Order 7 rule 11 CPC.

  1. Plaintiffs have filed a suit for permanent injunction seeking restraint order against defendants for issuance of groundless threats of legal proceedings, declaration and damages under section 142of the Act, 1999 inter alia pleading in the suit that the plaintiff No.1 M/s Ahilya Vedaant Education Welfare Society; a registeres society having its office at H-62, MIG Colony, Indore runs the school under the name “VEDAANTA THE GLOBAL SCHOOL”. The plaintiff No.2 is President of the plaintiff No.1 society, (hereinafter referred to as ‘the plaintiff’) with the trade mark/trade name/institution with mono since long continuously and uninterruptedly in distinctive getup, makeup and lettering style. The artistic features of the said trade mark are original artistic work (within the meaning of Indian Copyright Act,1957). The plaintiff is the owner and the proprietor of the copyright therein. The plaintiff has already filed application numbers 3450411, 3465105, 3465106 and 3467936 in class 41 for registration of the said representation of the trademark/tradename/institution name under the Act, 1999 in respect of educational services and the said applications are pending adjudication. The plaintiff has gained a valuable and vast recoginition under the said representation of the trade mark/trade name/institution name for the said services. The plaintiff has been promoting its services through various means and modes including advertisements, distribution of trade literature and publicity materials, hoardings, etc., The plaintiff is also promoting its school and the educational services on the basis of said representation of the trade mark/trade name/institution name through social and electronic modes. Accordingly, the plaintiff has already spent substantial sum of money on publicity and trade promotion activities, etc., The plaintiff has pleaded that under the said representation of the trade mark/trade name/institution name, the plaintiff enjoys solid, enduring and indelible reputation at the national and international level.
  2. In paragraphs 11, 12 and 13 of the plaint, it is pleaded that the defendant No.1 is a society and the defendant No.2 is its President (hereinafter referred to as ‘the defendant’). The defendant claim to be the proprietor of the representation of the trade mark/trade name/institution name, “VEDAANT” alleged to be registered under the Act, 1999 in respect of play, pre-school, nursery school, kids club, etc., The defendant has been using entirely different representation of the trade mark/trade name/institution name in relation to the impugned services. Out of blue, the plaintiff received threats of dire consequences from the defendant in case the plaintiff could not stop using the representation of the trade mark/trade name/institution name. The defendnat No.2 has filed a wrongful police complaint at the Police Station, Kanadia, Indore claiming that it is the registered proprietor of the alleged representation of the trade mark/trade name/institution name, “VEDAANT” with further claim that plaintiff’s representation of the trade mark/trade name/institution name “VEDAANTA THE GLOBAL SCHOOL” is similar to that of the defendant’s representation of the trade mark/trade name/institution name. The defendant has been extending the threats to the plaintiff which tantamounts to an illegal, unlawful and groundless threats under the provisions of the Act, 1999. In paragraph 13, it is further pleaded that the plaintiff’s said representation of the trade mark/trade name/institution name is completely different from the representation of the trade mark/trade name/institution name of the defendant. They are different in colour, combination, artistic work, strcuturally, phonetically and visually in every respect. The representation of the trade mark/trade name/institution name of the plaintiff and defendant are completely different and there is no confusion or deception of any kind of the general public and the beneficiary society. Despite such variation, the defendant has issued illegal, unlawful and groundless threats by which defaming the plaintiff in the society.
  3. In paragraphs 15 and 25, it is pleaded that the plaintiff became aware of the defendant’s illegal and unlawful registration of the impunged representation of the trade mark/trade name/institution name when the defendant started threatening the plaintiff by filing the aforesaid police complaint. The defendant’s impugned activities tantamount to unfair and unethical trade practice and competition which on its face are illegal and contrary to law and, therefore, the plaintiff is aggrieved. The cause of action arose against the defendant in the last week of January, 2017 when the plaintiff came to know about the impugned police complaint through the telephonic call from the Police Station, Kanadiya, Indore and also plaintiff received illegal and groundless threats from the defendant. With the aforesaid averments, the suit has been filed seeking a decree for declaration declaring that the plaintiff to be the proprietor of the representation of the trade mark/trade name/institution name in relation to the services described in the plaint including imparrting the educational services and also providing consultancy relating to educational servies and a decree of permanent injunction restraining the defendant from issuing such groundless threats as illegal, unlawful and unjustified.
  4. The defendant at the first instance has filed an application under Order 7 rule 11 CPC inter alia contending that the suit under section 142of the Act, 1999 is not sustainable in view of the fact that the first mentioned person “defendants” satisfies the Court that the trademark is registered and the acts in respect of which the proceedings were threatened, constitute or, if done, would constitute, an infringement of the trademark, referring to the averments made in paragraphs 11, 12, 13, 14 and 15 of the plaint.
  5. The trial Court has justified rejection of the plaint on the premise that the trademark “Vedaant” with similar spelling since is registered in the name of the defendant, the use thereof by plaintiff for educational services; an unregistered trademark as apparent from the pleadings of the plaint tatanmount to infringement of the registered trademark as contemplated under section 29of the Act, 1999.
  6. Learned senior counsel appearing for the plaintiff taking exception to the impugned order contends that the trial Court has not appreciated the contents of paragraphs 11, 12, 13, 15 and 18 of the plaint in right perspective, regard behing had to the provisions of section 142of the Act, 1999. It is the case of the plaintiff that the defendant claim to be the proprietor of the representation of the trade mark/trade name/institution name “Vedaant” and the representation of the trademark as claimed by defendant is even otherwise entirely different in script, style, logo, colour scheme having altogether different get up in colour combination, artistic work, structurally, phonetically and visually. It is not capable of causing any kind of confusion or deception. Besides, specific pleadings have been made aginst the threat extended by defendant by filing a police complaint and the relief of declaration in relation to the services rendered under the trade mark alongwith permanent injunction against groundless threats of legal proceedings are pleaded. As such, the plaint averments are well in conformity with the provisions of section 142of the Act, 1999 and its ingredients are fulfilled to bring an action against the defendant.
  7. Threats of a persons with an action or proceeding for infringement of a trade mark which is registered or alleged to be registered either by means of circulars, advertisements or otherwise gives raise to a person aggrieved to bring an action against such person whether the person making threats is or is not the registered proprietor or the registered user of the trade mark and may obtain a declaration to the effect that the threats are unjustifiable, and claim injunction against such continuance of the threats and may also recover damages. Threat perceptions are esentially questions of fact and can be addressed after parties go to the trial with their respective pleadings.

Likewise, the person against whom action is brought, i.e., the first person has right to satisfy the Court that the trade mark is registered and that the acts in respect of whcih the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark (within the meaning of section 29 of the Act, 1999).

Nevertheless, this exercise is also essentially a question of fact which can be addressed after parties go to the trial with their respective pleadings.

  1. The “trade mark” as defined under section 2(zb)of the Act, 1999 involves various factors to be looked into to ascertain its capability of distinguishing the goods or services of one person from those of others graphically and may include shape of goods, their packaging and combination of colours, etc., As such, the defintion of trade mark is very wide and inclusive in nature.
  2. The trial Court while rejecting the plaint has jumped to the conclusion that the alleged infringement of the registered trade mark on the basis of mere assertion of the defendant in the application applying the first principle but little understanding the dimensions and scope of section 142of the Act, 1999 reached to such conclusion whereas it was required to record its satisfaction after parties place on record occular and documentary evidence for and against the alleged act of groundless threats of legal proceedings and also the alleged infringments of trade mark. The trial Court as a matter of fact remained oblivious of the principles underlying in Order 7 rule 11 CPC while rejecting the plaint. The Hon’ble Supreme Court in the cases of Bhau Ram Vs. Janak Singh and others (2012) 8 SCC 701, Prem Lala Nahata and another Vs. Chandi Prasad Sikaria (2007) 2 SCC 551, P.V.Guru Raj Reddy, Rep. By GPA Laxmi Narayan Reddy and another Vs. P. Neeradha Reddy and Ors., etc. AIR 2015 SC 2485, Radhika Prasad Vs. Nuruddin Khan and others (2005) 4 MPLJ 406. Kuldeep Singh Pathania Vs. Bikram Singh Jaryal (2017) 5 SCC 345 has ruled that only plaint averments are required to be seen by the trial Court to ascertain that the suit falls within the mischief of Order 7 rule 11(d) CPC as barred by law .
  3. Section 142of the Act, 1999 entittles the plaintiff to bring an action against the groundless threats of legal proceedings by a person making threats whether he is or he is not the registered proprietor or the registered user of the trade mark. Hence, the conclusion of the trial Court that since the defendant is a registered proprietor of the trade mark as asserted in the application under Order 7 rule 11 CPC, the use thereof by the plaintiff tantamount to infringement of trade mark. The trial Court dismissed the suit on totally erroneous conclusion based on misreading of the provision of section 142 of the Act, 1999. With the aforesaid submissions, learned senior counsel prays for setting aside the impugned order.
  4. Per contra, learned counsel for the respodents/defendant supports the impugned order with the contention that as the defendant satisfied the trial Court being a registered user of the trade mark, ‘Vedaant” and the acts in respect of which the proceedings were thereatened constitutes infringement of the trade mark as claimed and reitereted in the application filed under Order 7 rule 11 CPC, the trial court was justified while dismissing the suit.
  5. Before adverting to rival contentions, it is considered apposite to quote relevant parts of definition of section “2(zb) trade mark” and section 142of the Act, 1999:

“2. (zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and–

(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark; (zc) “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment;”

“142. Groundless threats of legal proceedings.–(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.

(2) ….                   ….         …             (3) …                     …          …             (4) …                    …        …”                                        (Emphasis supplied)

  1. The word “trade mark” means a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade or rendering the services between them and some person having the right as proprietory right of mark. A trade mark is a composite frame revealing a mark capable of being represented graphically and also capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, packaging, combilnation of colours and the services to indicate to the eyes of the purchaser or hirer (services). The source of such goods or services which have come from and through which they pass on their way to the market; [Referred to; Sumat Prasad Jain Vs. Sheojanan Prasad (Dead) by L.Rs., and State of Bihar, AIR 1972 SC 2488)].
  2. Section 142of the Act, 1999 entitles the person to bring an action or proceeding for infringement whether the person making the groundless threats of legal proceedings is or is not the registered proprietor or registered user of the trade mark, bring a suit against the first mentioned person and may obtain a declation to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first mentioned person satisfies the court that the trade mark registered and that the acts in respect of whcih the proceedings were threatened, constitute , or, if done, would constitute, an infringement of the trade mark.

(Emphasis supplied)

  1. The law as regards the scope and jurisdiction of the Court while dealing with the application under Order 7 rule 11 CPC is no more res integra. The Court is required to look at the plaint averments to decide whether the suit is barred by law under Order 7 rule 11(d) CPC.
  2. In the case in hand, plaintiff has prayed for permanent injunction restraining the defendant from issuing groundless threats of legal proceedings, with the pleadings that it runs Schools and other educational Institutions/services under the name Vedaanta Global School, with the trademark/trade name/ Institution name with mono specific since long, continuously and uninterruptedly in distinctive getup, make-up and lettering style. The artistic features of the said trade mark are original artistic work (within the meaning of Indian Copyright Act, 1957). The plaintiff is the owner and Proprietor of the copy right work. Plaintiff has already filed application under clause 41 for registration of the said representation of trademark/ trade name/ Institution name under the Act of 1999 in respect of educational services and the said application is pending adjudication. It is further pleaded that defendant claims to be Proprietor of the representation of trademark/ trade name/ Institution name “Vedaant”, alleged to be registered under the Act of 1999 in respect of playgroup / pre-school / nursery school, kids club etc. It is also pleaded that defendant has been using entirely different representation of trademark/ trade name/ Institution name in relation to impugned services. There is no comparison between the two monograms in the context of shape, size, color continuation or graphics and it is not capable of causing any kind of confusion or deception in the minds of the public at large. Such groundless threats being issued by the defendant has given rise to filing of the instant injunction proceedings against the defendant. In the circumstances, in the opinion of this Court, sufficient relevantpleadings have been placed on record fufilling the requirement / ingredients of section 142of the Act, 1999 to bring the action for injunction.

Nevertheless, the defendant may take recourse to satisfy the Court that the trademark is registered in its name and the acts in respect of which proceedings were threatened, constitute, or if done would constitute, infringement of trademark.

  1. The aforesaid requirement of law contemplates that burden of proof first is on the plaintiff to establish groundless threats of legal proceedings by defendant, the first-mentioned person, by means of circulars, advertisements or otherwise alleging infringement of trade mark registered/unregistered. As such, there is certain ample scope of an enquiry by the Court through the process of trial. Likewise, the burden lies on the defendant, first-mentioned person to establish that the acts in respect of which the proceedings were threatened, constitute, or if done would constitute, infringement of trade mark by bringing relevant evidence on record through the process of trial. It is only thereafter the stage for recording satisfaction by the Court shall arrive to reach conclusion of infringement of trade mark under section 29of the Act, 1999.
  2. The trial Court appears to have been impressed with the contention of defendant that the trade mark “Vedaant” since is registered in the name of defendant though disputed and denied by plaintiff, therefore, the alleged use thereof by the plaintiff for educational services shall tantamount to infringement of trade mark as a result concluded that the suit is barred by law.
  3. In the opinion of this Court, the trial Court has neither appreciated the provisions of section 142of the Act, 1999 in right perspective nor applied the principles of settled law in the context of jurisdiction of the Court under Order 7 rule 11(d) CPC. Hence, the impugned order is palpably erroneous in the eyes of law and, therefore, cannot be sustained.
  4. In view of the above, this appeal is allowed. The impugned order is set aside. The trial Court is directed to decide the suit on merits, in accordance with law.
  5. Before parting with the case, it is considered apposite to observe that any observations on facts made in this order are only for the purpose of deciding this appeal. The trial Court shall decide the suit on merits independently.

(Rohit Arya) Judge 30- 01-2018 b/-

 

 

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