IMPORTANT POINTS
Arbitration agreement survives even after termination of the main agreement.
After conclusion of hearing and reserving judgment, it is not open to the High Court to allow any material to be brought on record, that too without giving opportunity to the other party.
Section 42 of the Specific Relief Act can be invoked for enforcing negative covenant in a Deed of Assignment. If it is not for restraining business or trade but only for trade mark, section 27 of Contract Act is not attracted.

Headnote:(a) Arbitration and Conciliation Act, 1996 – Section 9 – Respondent voluntarily executing assignment deed – Assigning right title and interest in the trade mark to the extent of 50% absolutely and forever – Even on revocation of assignment deed by virtue of the arbitration clause rights of the parties were required to be adjudicated – Court below rightly restraining respondent from marketing her products through any person, other than the Appellant till final decision in arbitral proceedings. (Para 31)
       (b) Arbitration and Conciliation Act, 1996 – Section 37 – High Court, after concluding hearing and reserving judgment allowing respondent to file affidavit – Relying on the same without giving opportunity to the appellant – Not proper. (Para 32)
       (c) Specific Relief Act, 1963 – Section 42 r/w section 27, Indian Contract Act, 1872 – Invoking section 42 for enforcing negative covenant in the Deed of Assignment – Not for business or trade but only for trade mark – Section 27 of Contract Act not attracted. (Para 33)
       Facts of the case:
       Suresh Dhanuka, the Appellant, and Sunita Mahapatra, the Respondent, entered into an agreement, whereby they agreed to jointly carry on business in the name and style of "Abhilasha". Sunita Mahapatra was carrying on business in the name and style of "M/s. Nature Probiocare Inc.", as the sole proprietress thereof. On 4th October, 1999, the Respondent herein applied to the Registrar of Trade Marks for registration of the Trade Mark "Naturoma Herbal".
       She also executed a Deed of Assignment on 1st October, 2000, assigning 50% of her right, title and interest in the said Trade Mark "Naturoma Herbal", with proportional goodwill of the business in favour of the appellant. Application was also made for recording the name of the Appellant as the Joint Proprietor of the Trade Mark.
       In 2006, the Appellant and his son floated a company by the name of "Naturoma Herbal (P) Ltd.".
       The Respondent filed a Suit under Sections 134 and 135 of the Trade Marks Act, 1999. The District Judge restrained the Appellant and his company from selling, distributing, manufacturing and marketing any of the products in the name of "Naturoma" or "Naturoma Herbal". On 4th September, 2007 the Respondent filed an application under Section 9 of the 1996 Act, also before the District Judge at Khurda.
       The appellant also filed an application under Section 9 of the 1996 Act.
       On 25th September, 2007, the Respondent cancelled the Agreement dated 1st April, 1999 and also revoked the Deed of Assignment dated 1st October, 2000.
       The Appellant’s application under Section 9 of the 1996 Act was dismissed.
       On 19th December, 2007, the Appellant filed a fresh application under Section 9 of the 1996 Act which was allowed and the Respondent was restrained from selling the products in question by herself or by any other person, save and except through the Appellant.
       Respondent’s appeal against dismissal of her application u/s 9 was allowed by the High Court.
       Finding of the Court:
       High Court erred in reversing the order of the court below u/s 9 of the Act 1996.
       Result: Appeals allowed.

JUDGMENT

Altamas Kabir, J.-Leave granted.

2. These appeals arising out of SLP(C) os.3391-3392 of 2011, are directed against the judgment and order dated 27th October, 2008, passed by the Orissa High Court in ARBA No.17 of 2008 and the order dated 28th September, 2010, passed on the Review Application No.21 of 2008.

3. The Appellant herein, Suresh Dhanuka, filed an application before the learned District Judge, Khurda, being ARB (P) No.576 of 2007, under Section 9 of the Arbitration and Conciliation Act, 1996, hereinafter referred to as the "1996 Act".

4. The facts leading to the filing of the said application reveal that on 1st April, 1999, Suresh Dhanuka, the Appellant herein, and Sunita Mahapatra, the Respondent herein, entered into an Agreement, whereby they agreed to jointly carry on business in the name and style of "Abhilasha". Sunita Mahapatra was carrying on business in the name and style of "M/s. Nature Probiocare Inc.", as the sole proprietress thereof. The said Agreement was for a period of five years from 1st April, 1999 to 31st March, 2004, which was subsequently extended till 31st March, 2009. On 4th October, 1999, the Respondent herein applied to the Registrar of Trade Marks, Kolkata, in Form No.TM-1 under the Trade and Merchandise Marks Act, 1958, for registration of the Trade Mark "Naturoma Herbal", under Application No.879695.

5. During the first five-year period of the original Agreement dated 1st April, 1999, the Respondent, Sunita Mahapatra, executed a Deed of Assignment on 1st October, 2000, assigning 50% of her right, title and interest in the said Trade Mark "Naturoma Herbal", with proportional goodwill of the business concerned in the goods in respect of which the Mark was permanently used, interalia, on the following terms and conditions, namely,

(a) All goods manufactured by the Respondent under the said Trade Mark would be marketed solely by the Appellant herein;

(b) On the termination of the Joint Venture, neither the assignor nor the assignee would be entitled to use or register the Mark in its own name or jointly with some other party;

Soon thereafter, on 28th February, 2001, M/s. S. Majumdar & Co., the authorized Trade Mark agent of the Respondent, filed an application in Form No.TM-16, along with the Deed of Assignment, with the Trade Mark authorities, together with the fee of Rs.20/- for recording the name of the Appellant as the Joint Proprietor of the Trade Mark. The application for registration of the Trade Mark was advertised in the Trade Mark Journal on 13th November, 2003. While the same was pending, the Agreement dated 1st April, 1999, was extended by mutual consent till 31st March, 2009. It appears that during the period 2003-2007, the sale of the product increased from Rs.19,99,808/- to Rs.1,88,70,143/-. Meanwhile, the Agreement dated 1st April, 1999, was extended by mutual consent till 31st March, 2009, as indicated hereinbefore.

6. It appears that on 19th July, 2004, one Food Ingredients Specialties S.A. filed an opposition No.KOL-167256 to the Trade Mark application of the Respondent wherein a joint reply was filed, which was affirmed by both the parties. It is alleged that, thereafter, in 2006, the Appellant and his son floated a company by the name of "Naturoma Herbal (P) Ltd.". It is the case of the Appellant that the Appellant and his son floated the company with the name of "Naturoma Herbal (P) Ltd.". According to the Appellant, his son floated the company with the consent of the Respondent, who, subsequently, declined to participate in the management thereof. On 31st August, 2006, the Appellant resigned from the company despite the fact that the company had not started manufacturing activities until then, as was certified by the Chartered Accountant. On 21st August, 2007, the Respondent herein filed a Suit, being CS No.26 of 2007, before the District Judge at Khurda, under Sections 134

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Judicial Analysis

SupremeToday

2011 Supreme(SC) 1118

SUPREME COURT OF INDIA ALTAMAS KABIR, SURINDER SINGH NIJJAR & GYAN SUDHA MISRA, JJ.SURESH DHANUKA - Appellant VERSUS SUNITA MOHAPATRA - Respondent Civil Appeal Nos.10434-10435 of 2011 (Arising out of SLP(C) Nos.3391-3392 of 2011)-Decided on 02-12-2011.

Judicial Analysis

SUPREME COURT OF INDIA
ALTAMAS KABIR, SURINDER SINGH NIJJAR & GYAN SUDHA MISRA, JJ.
SURESH DHANUKA - Appellant
VERSUS
SUNITA MOHAPATRA - Respondent
Civil Appeal Nos.10434-10435 of 2011 (Arising out of SLP(C) Nos.3391-3392 of 2011)-Decided on 02-12-2011.