Court Receiver, High Court, Bombay vs R. R. Ommerbhoy Pvt. Ltd. & others

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2003 Supreme(Bom) 519

IN THE HIGH COURT OF BOMBAY
Bobde S.A., J.
Court Receiver, High Court, Bombay .... Plaintiff.
Versus
R.R. Ommerbhoy Pvt. Ltd. others.... Defendants.
Notice of Motion No. 566 of 2003 in Suit No. 547 of 2003, decided on 25/28-4-2003.
Advocates appeared :
H.W. Kane with Rahul Kadam, for plaintiff.
Dr. Virendra Tulzapurkar with Salil Shah i/b. Gajaria Co., for defendant No. 1.
R.M. Kadam with B.B. Saraf i/b. Solomon Co., for defendant No. 2.
S.V. Mehta with Kalpesh Joshi i/b. Malvi Ranchhoddas Co., for defendant No. 3.

Headnote:Trade and Merchandise Marks Act, 1958 - Sections 28 and 29 - Trademark - Exclusive right to use it - Infringe- ment of - Receiver bringing suit for legal relief against infringement of - Maintainability of - Held - Receiver stands in shoes of owner - Entitled to do all acts necessary to preserve and protect the property including trademarks - All powers of owner conferred on Receiver - Receiver can bring a suit for legal relief in case of infringement of trademarks of his owner. - Even if it is true that it is essential for the existence of the trademark that there should be some connection between the registered owner and the mark an that the connection is essential, it does not follow that the Receiver cannot bring the suit for protection of the trademark in the absence of such a personal connection with the trademark because the property in the registered trademark subsists. In law and for all practical purposes, the Receiver stands in the shoes of the owner and must be held entitled to do all such acts necessary for the preservation and protection of the property, including trademarks, for which he is appointed a Receiver. What is important is that on the Receiver are conferred all the powers of an owner. There fore, if the owner has the power to bring a suit, the Receiver must also be taken to have that power.
Trade and Merchandise Marks Act, 1958 - Section 106 - Passing off - Injunction against - Dissolution of partner- ship firm - Plaintiff seeking injunction against passing off - Held - Despite dissolution of firm and registration certificate in favour of all erstwhile partners, registered trademark not removed from Register of Trademarks - Winding up of company incomplete - Passing off action based on existence of goodwill is business not disputed - Plaintiffs business not required to be in operation - If business goodwill existed that can be invaded - Plaintiff entitled to protect it by seeking action in passing off. - Relying on statement coupled with the fact that there is no statement in the plaint that the partnership firm is going to resume business, it was contended that the plaintiff is disentitled for an injunction since there is no chance of the defendants passing off their goods as those of the plaintiff which are non-existent. In support of this proposition, he relied on the decision of the English Court in Pink v. J.A. Sharwood and Co. Ltd. (supra). It is not possible to accept the contention that because the plaintiff is not trading in the goods, she is not entitled to an injunction on the grounds of passing of simply because the defendants goods cannot be confused with non-existent goods of the plaintiff. In the first place, the action of passing off is not based on the property in the mark name or get up improperly used by the defendants. It is a remedy against invasion of the property in the business or goodwill likely to be injured by the misrepresentation of the defendant that his goods are those of plaintiffs. Therefore, if such goodwill in the business can be shown to exist, then obviously that business or goodwill can be invaded and the plaintiff can protect it by seeking an action in passing off.

Judgment

BOBDE S.A., J.:---This Notice of Motion has been taken out by the plaintiff for an injunction restraining the defendant Nos. 1 and 8 to 11 from infringing the registered trade mark "Mastaan" by the use of the trade mark "Mastman" and for an injunction restraining the defendants from manufacturing and selling edible oil under the trade mark "Mastman" so as to pass off their goods as edible oil being sold under the trade mark "Mastaan". The registered proprietor of the trade mark "Mastaan" is M/s. Ahmed Oomerbhoy, a partnership firm under dissolution. The plaintiffs also seeks an injunction restraining the defendants from infringing the registered trade mark "Postman" of the partnership firm, M/s. Ahmed Oomerbhoy (hereinafter referred to as the "partnership firm") by the use of the trade mark “Postiano” and for an injunction restraining the defendants from manufacturing and selling edible oil under the trade mark "Postiano" so as to pass off their goods as the edible oil being sold under the trade mark "Postman".

2. The suit is instituted by the Court Receiver who has been appointed as Receiver of the assets of the partnership firm in Suit No. 4913 of 2000 filed by the defendant No. 2 against the defendant Nos. 3 to 7 for dissolution of the firm. In that suit, this Court by an order dated 6-10-2000 appointed the Court Receiver as Receiver of the partnership business and assets. By order dated 30-7-2001 this Court recorded the agreement of the parties that the assets of the firm are to be sold by inviting bids as under:---

"19. It is also agreed that the partners of the suit firm shall not carry on any business on the basis of the trade marks of the suit firm. The Court Receiver shall however be entitled to take steps that may be necessary to safeguard the trade marks of the firm as also take action against the persons who may be unauthorisedly using the trade marks of the firm."

3. Thereafter, one of the partners-the defendant No. 2 noticed that the defendant No. 1 had started selling packaged edible oil with the trade mark "Mastman" and finding it to be deceptively similar to the trade mark "Mastaan" took out a Notice of Motion on 8-11-2001 seeking to restrain the defendant No. 1 from using the trade mark "Mastman". The defendant No. 1 is a company which is admittedly controlled by the defendant No. 3, the erstwhile partner of the firm in which shares are held by the defendant No. 3, his wife, son and daughter. On this Notice of Motion, this Court passed an order dated 30-11-2001, the relevant part of which is as follows:

"Receiver has already been appointed. The Court Receiver is directed by consent of the parties to engage Mr. H.W. Kane, as Advocate, to initiate proceedings in respect of what the plaintiff alleges is infringement of the firms trade mark and of actual passing of goods of the firm against respondents to these proceedings."

After this order was passed, the defendant No. 2 noticed that the defendant No. 1 had commenced manufacture and distribution of marketing of packaged refined groundnut oil with the trade mark Postiano". "Postiano" was being sold in bottles and containers whose design, colour scheme, lay out, get up, which according to the "Postman". The defendant No. 2 once again moved this "Postman". The defendant No. 2 once again moved this Court for modification of the earlier order. On 18-12-2001 this Court passed an order directing that the opinion of an Advocate designated by the Court i.e. Mr. H.W. Kane be sought. Based thereon, the Receiver was directed to take appropriate proceedings, in accordance with law. This suit is thus filed thereupon by the Receiver.

4. Dr. Tulzapurkar, learned Counsel for the defendant No. 1 company, raised a preliminary objection to the maintainability of the suit itself. According to the learned Counsel, the suit for infringement of a registered trade mark can only be filed by the registered proprietor of the mark and, in no case, by the Receiver who has no proprietory r

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