Appellant has hidden Settlement Deed from both trial Court, and present Court. Since, a material document has been withheld from both Courts, Appellant is disentitled from getting any relief from both Courts. Even if for sake of argument, it were accepted that goodwill belonged to Appellant’s father prior to his demise, even then, under Shariat Law, goodwill would devolve not just to Appellant, but more so, to all legal heirs, including his two sisters.

MIPR 2018 (1) 0098 = MANU/KA/2548/2017

 

IN THE HIGH COURT OF KARNATAKA AT BENGALURU

Shoaib Haroon, Bangalore

vs

Mohammed Hassan, Bangalore

MFA NO. 6734/2014 (I.P.R.) DECIDED ON: 03.11.2017

Judge

R.S. Chauhan, J.

Counsel

For Appellant/Petitioner/Plaintiff: Arun Sri Kumar, Adv. For Respondents/Defendant: T.V. Vijay Raghavan, Adv.

 

Code of Civil Procedure, 1908

.    Section 151

Order VI Rule 17

Order 39 Rule 1

Order 39 Rule 2

Order XL Rule 1

Indian Partnership Act, 1932

Section 44

Trade marks Act, 1999

Section 2(zc)

Section 39

HEAD NOTE

Trade mark – Interim injunction – Import of Sections 2(zc) and 39 of Trade marks Act, 1999/Act – Trial court was justified in dismissing Appellant’s application, as a litigant has to establish elements of prima facie case, balance of convenience, irreparable loss, before a temporary injunction can be granted in his favour. Therefore, it was imperative for Appellant to come to Court with clean hands, and to establish these three essential elements. Appellant claimed that his father had coined name “The Only Place”, and name was permitted to be used by partnership firm for a consideration. However, Appellant has not submitted any evidence to establish this plea even on a prima facie basis. According to Family Settlement Deed, goodwill of name “The Only Place” was to belong to “Haroon Sulaiman Sait Foundation”, a partnership firm created between Appellant and his two sisters. Interestingly, though Appellant relies on said Deed, though according to Deed, goodwill belongs to partnership firm, still Appellant persistently claims that goodwill belongs only to him in his individual capacity. But Settlement Deed belies Appellant’s case. Thus, it is a small wonder that Appellant has hidden Settlement Deed from both trial Court, and present Court. Since, a material document has been withheld from both Courts, Appellant is disentitled from getting any relief from both Courts. Even if for sake of argument, it were accepted that goodwill belonged to Appellant’s father prior to his demise, even then, under Shariat Law, goodwill would devolve not just to Appellant, but more so, to all legal heirs, including his two sisters. Therefore, Appellant cannot claim to be sole and exclusive inheritor of goodwill. Section 2(zc) read with Section 39 of Act, do not come to Appellant’s rescue. For the goodwill of name “The Only Place” would devolve down not only to Appellant, but even his two sisters in case Appellant’s plea that goodwill belonged to his father were to be accepted. Hence, Appellant has failed to establish a prima facie case in his favour. Since, first ingredient required for grant of temporary injunction is conspicuously missing, trial Court was justified in dismissing Appellant’s application for temporary injunction. Appeal is dismissed.

JUDGMENT

R.S.Chauhan,J.

  1. Aggrieved by the order dated 15th July, 2015, passed by the XXXI Additional City
    Civil and Sessions Judge, Bengaluru City, whereby the learned Judge has dismissed
    the Appellant’s application under Order 39, Rules 1 and 2 Code of Civil Procedure,
    the Appellant has approached this Court.
  2. According to the Appellant, his father, Mr. Haroon Sulaiman Sait had coined the
    name “The Only Place”. About fifty years ago, using the said name, his father had
    started a restaurant located at Brigade Road, Bengaluru. Since the restaurant, “The
    Only Place” used to serve mainly Western food, it acquired a goodwill in Bangalore.
    But as the Appellant’s father was getting old, and since Mota Arcade had been
    constructed, his father closed down the said restaurant.
  3. The Appellant and the Respondent are related to each other. Since the Respondent
    was unemployed, he and the Appellant decided to constitute a partnership firm in
    the name and style of “M/s. Aaaminah Steak and Pasta Company”. Therefore, on
    22nd October, 2003, they entered into a partnership at will. Further, according to the
    Appellant his father permitted the Appellant, and the Respondent to put the board
    of “The Only Place” at the premises of “Aaaminah Steak and Pasta Company”,
    located at No. 13, Museum Road, Bangalore. Since the father agreed to permit the
    use of the name “The Only Place “, the partnership firm agreed to pay him certain
    However, the unregistered Trade mark “The Only Place” was not brought
    into the partnership as a property of the partnership firm. The partnership used the
    name “The Only Place” to run a restaurant of its own.

 

  1. The partnership firm functioned from 22nd October, 2003 to 30* April, 2013. On
    30th April, 2013, the Respondent sent a notice to the Appellant clearly indicating his
    resolve to dissolve the partnership firm. Since the partnership was at will, the firm
    stood dissolved with effect from 30th April, 2013.
  2. Furthermore, the premises, from where the restaurant “The Only Place” was
    being run by the partnership firm, the lease of the said premise came to an end on
    31st March, 2013. Therefore, the Respondent entered into a new lease with the
    Moreover, the Respondent continued to run the restaurant in the name
    and styled of “The Only Place” at the said premises even after the partnership firm
    was dissolved on 30th April, 2013.
  3. According to the Respondent, even after the dissolution of the partnership firm,
    the Appellant continued to interfere with the running of the restaurant, “The Only
    Place “. Therefore, the Respondent instituted a civil suit for dissolution of the firm,
    for permanent injunction against the Appellant, and for a decree for accounting of
    partnership business for the Accounting Year 2012-2013. Along with the plaint, the
    Respondent also filed a temporary injunction application under Order 39 Rules 1
    and 2 of the Code of Civil Procedure.
  4. In turn, the Appellant filed a counter-claim for declaration and permanent and
    injunction against the Respondent.
  5. During the course of the proceedings, while the Respondent filed LA. No. I, under
    Order 39 Rules 1 and 2 of the Code of Civil Procedure, he also filed LA. No. VI under
    Order VI Rule 17 read with Section 151 of Code of Civil Procedure, for amending his
    Meanwhile, the Appellant filed LA. No. Ill under Order 39 Rules 1 and 2 of
    the Code of Civil Procedure, for restraining the Respondent from carrying on his
    business under the name and style of “M/s. Aaaminah Steak and Pasta Company”.
    The Defendant also filed LA. No. IV under Order 39 Rules 1 and 2 Code of Civil
    Procedure, for restraining the Respondent from carrying on the business in the
    name and style of “The Only Place”. The Appellant also filed LA. No. V under Order
    XL, Rule 1 of Code of Civil Procedure, read with Section 44 of the Indian Partnership
    Act, for an appointment of Receiver. By a common order dated 15th July, 2014, the
    learned Judge has decided all the interim applications. As mentioned above, the
    learned Judge has dismissed the Appellant’s Interim Application No. IV, under
    Order 39, Rules 1 and 2 Code of Civil Procedure, for restraining the Respondent
    from running his restaurant in the name and style of “The Only Place”. Hence, this
    appeal before this Court.
  6. Arun Sri Kumar, the learned Counsel for the Appellant, has raised the following
    contentions before this Court:-

Firstly, the Appellant had all the three ingredients for the grant of temporary injunction in his favour, namely the existence of a prima facie case, balance of convenience, and irreparable loss which would be caused to him, if the temporary injunction were not granted in his favour. But despite the existence of these three ingredients in favour of the Appellant, the learned Judge has dismissed the Appellant’s temporary injunction application. Thus, the learned Judge has caused grave injustice to the Appellant.

Secondly, in his counter-claim, the Appellant had clearly pleaded that the name “The Only Place”, was coined by his father, was used by his father for

 

running a restaurant. His father’s restaurant, “The Only Place” had earned a tremendous goodwill in Bangalore. For, the restaurant was well known for serving Western food. Therefore, the goodwill of the unregistered Trade mark “The Only Place” belonged to his father.

Thirdly, when the Appellant and the Respondent created the partnership firm “M/s. Aaaminah Steak and Pasta Company”, the Appellant’s father permitted the partnership firm the use of the unregistered Trade mark “The Only Place” for a consideration paid by the Firm. Thus, the unregistered Trade mark “The Only Place” was not brought into the partnership firm as a property of the partnership. The said unregistered Trade mark continued to be the property of the Appellant’s father.

Fourthly, with the demise of the Appellant’s father, the goodwill of “The Only Place” became part of his father’s estate. Therefore, the goodwill devolved down to the Appellant and his two sisters. Moreover, relying on Section 2(zc) read with Section 39 of the Trade marks Act, 1999 (“the Act”, for short), the learned Counsel has pleaded that an unregistered Trade mark may be assigned or transmitted with, or without the goodwill of the business concerned. Furthermore, a transmission may be “by operation of law, devolution on the personal representation of the deceased person, and by any other mode of transfer, but not being an assignment”. Thus, as the personal representative of his late father, the Appellant is justified in claiming that the goodwill of the unregistered Trade mark, “The Only Place” has been transmitted to him with the death of his father.

Fifthly, on 21st January, 2010, the Appellant, and his two sisters entered into a Family Settlement which was reduced into writing. According to the Family Settlement, the goodwill of “The Only Place”, was to belong to the Appellant. Therefore, the Appellant has the exclusive right to use the name “The Only Place”. Hence, the Respondent did not have the right to use the unregistered Trade mark “The Only Place”, and to run his restaurant in the name and style of “The Only Place”. Moreover, since the unregistered Trade mark did not belong to the partnership, after the dissolution of the partnership firm, the unregistered Trade mark could not be used by the Respondent.

Sixthly, since the unregistered Trade mark belongs to the Appellant, the balance of convenience is in his favour. Moreover, after the dissolution of the firm, the Appellant has also started a restaurant using the name “The Only Place” in another part of the city. If the Respondent were permitted to continue to use the unregistered Trade mark, “The Only Place”, it would cause irreparable loss to the Appellant. Therefore, the Appellant had succeeded in proving all the three essential ingredients for being granted a temporary injunction in his favour. However, still the learned Judge has dismissed his application for temporary injunction.

Lastly, the learned Judge has erred in observing that since the name “The Only Place” was an unregistered Trade mark, the said name could be used by anyone and everyone. Thus, the Respondent could continue to use the said name in order to run his restaurant. According to the learned Counsel, the said observation made by the learned Judge ignores the common law, and the provisions of the Act, which prohibit passing off. Since the Respondent is

 

using the words “The Only Place”, which is also used by the Appellant for his restaurant, clearly the Respondent is violating the law against passing off. Therefore, the impugned order deserves to be interfered with.

  1. On the other hand, Mr. T.V. Vijaya Raghavan, the learned Counsel for the
    Respondent, has raised the following counter-arguments:-

Firstly, the Appellant has failed to establish a prima facie case in his favour. Although he claimed that his father had permitted the partnership firm to use the name “The Only Place”, for a consideration, he has failed to submit any evidence to support this plea.

Secondly, although he had claimed that the name and goodwill of the “The Only Place” devolved down to him, through a Family Settlement, yet he has not submitted a copy of the Family Settlement. Thus, he has failed to establish a prima facie case in his favour.

Thirdly, the Appellant has not approached the learned Trial Court with clean hands. For, according to the Family Settlement, a copy of which was submitted by the learned Counsel for the Respondent before this Court, the name “The Only Place” were to belong to a new partnership firm to be known as “Haroon Sulaiman Sait Foundation”. The said partnership firm was constituted between the Appellant and his two sisters. Since the name belongs to the said Foundation, the Appellant has intentionally hidden the Family Settlement Deed from the Trial Court.

Fourthly, even if it were accepted, for the sake of argument, that the goodwill of the name “The Only Place” belonged to the Appellant’s father, even then, the goodwill would devolve down to all the legal heirs of Mr. Haroon Sulaiman Sait, including the Appellant’s two sisters. Therefore, the Appellant is not justified in claiming that the goodwill of the name, the unregistered Trade mark, would devolve only down to him. Hence, the Appellant has failed to establish any prima facie case in his favour.

Fifthly, according to the Appellant himself, his father had closed his restaurant in the name of “The Only Place” long time ago. Even when the Appellant tried to get the name “The Only Place” registered as a Trade mark, from the Registrar of Trade marks, objections have been filed. Therefore, the balance of convenience does not lie in the Appellant’s favour.

Lastly, since the essential ingredients for grant of temporary injunction do not exist in favour of the Appellant, the learned Judge was justified in dismissing his application for temporary injunction. Hence, the learned Counsel has supported the impugned order.

  1. In rejoinder, Mr. Arun Sri Kumar has pleaded that the Haroon Suliman Sait
    Foundation has not come into existence so far. Till the partnership firm established
    by the Appellant and his two sisters comes into being, the goodwill of the name
    “The Only Place” belongs only to the Appellant.
  2. Heard the learned Counsel for the parties and perused the impugned order.
  3. Needless to say a litigant must approach the Court with clean hands. The litigant
    has to establish the elements of prima fade case, balance of convenience, irreparable
    loss, before a temporary injunction can be granted in his favour. Therefore, it was

 

imperative for the Appellant to come to the Court with clean hands, and to establish these three essential elements.

  1. As mentioned above, the Appellant claimed that his father had coined the name
    “The Only Place”, and the name was permitted to be used by the partnership firm
    for a consideration. However, the Appellant has not submitted any evidence to
    establish this plea even on a prima facie
  2. The Appellant had also claimed that the goodwill of the name “The Only Place”
    formed part of his father’s estate. Therefore, the goodwill devolves to him at the
    demise of his father. However, this plea overlooks the Islamic Law of inheritance
    where the daughters have a share with the brothers in the property belonging to the
    Therefore, the Appellant is not justified in claiming that the goodwill will
    devolve only to him, and not to his two sisters.
  3. Although both before the learned Trial Court and before this Court the Appellant
    has harped on the Family Settlement Deed, but he has failed to submit the same
    before both the Courts. Therefore, the Appellant is intentionally hiding a document,
    in fact, a most relevant document, as his entire plea is based on it. Hence, the Appellant
    has approached neither the learned Trial Court, nor this Court with clean hands.
  4. Since the Family Settlement Deed has been produced by the Respondent, and
    since its genuineness has not been questioned by the Appellant, this Court has
    perused the said document. According to the Settlement Deed, the goodwill of the
    name “The Only Place” was to belong to the “Haroon Sulaiman Sait Foundation”,
    a partnership firm created between the Appellant and his two sisters. Interestingly,
    though the Appellant relies on the said Deed, though according to the Deed, the
    goodwill belongs to the partnership firm, still the Appellant persistently claims that
    the goodwill belongs only to him in his individual capacity. But the Settlement Deed
    belies the Appellant’s case. Thus, it is a small wonder that the Appellant has hidden
    the Settlement Deed from both the Trial Court, and this Court. Since a material
    document has been withheld from both the Courts, the Appellant is disentitled from
    getting any relief from both the Courts.
  5. Although the learned Counsel for the Appellant has tried to feebly argue that
    since the Haroon Sulaiman Sait Foundation, as a partnership firm has not come into
    existence, so far, therefore, the goodwill of the name still belongs to him. Even the
    said plea is highly misplaced. Even if for the sake of argument, it were accepted that
    the goodwill belonged to the Appellant’s father prior to his demise, even then, under
    the Shariat Law, the goodwill would devolve not just to the Appellant, but more so,
    to all the legal heirs, including his two sisters. Therefore, the Appellant cannot
    claim to be the sole and exclusive inheritor of the goodwill.
  6. A bare perusal of the counter-claim filed by the Appellant clearly reveals that he
    has filed the counter-claim for declaration, that is to declare him as the owner of the
    name “The Only Place”. Again, even if his plea were to be accepted for the sake of
    argument that his father did have the goodwill of the said name, even then, a
    declaration of ownership cannot be granted to the Appellant as both of his sisters
    have share in the goodwill. Since the main relief cannot be granted, obviously, the
    interim relief cannot be granted.
  7. Though the learned Counsel for the Appellant has relied upon Section 2(zc) read
    with Section 39 of the Act, but even the said provisions of law do not come to the

 

Appellant’s rescue. For, as mentioned above, the goodwill of the name “The Only Place” would devolve down not only to the Appellant, but even his two sisters in case the Appellant’s plea that the goodwill belonged to his father were to be accepted. Hence, the Appellant has failed to establish a prima fade case in his favour.

  1. Since the first ingredient required for grant of temporary injunction is conspicuously
    missing, the learned Judge was justified in dismissing the Appellant’s application for
    temporary injunction. Moreover, since this appeal can be decided on the ground of
    non-existence of a prima fade case in favour of the Appellant, this Court need not
    discuss the other pleas raised by the Appellant and countered by the Respondent.
  2. For the reasons stated above, this Court does not find any merit in the present
    It is, hereby, dismissed.
  3. However, it is clarified that the observations made in this order are merely
    preliminary. Therefore, they should not affect the final outcome of the suit. The
    learned Trial Court is expected to decide the suit, strictly in accordance with law.

Add a Comment

Your email address will not be published. Required fields are marked *