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2012 Supreme(Bom) 769
High Court of Judicature at Bombay
S.J. VAZIFDAR
Hem Corporation Pvt. Ltd. & Others
Versus
ITC Limited
Notice Of Motion No. 3940 Of 2009 In Suit No. 2808 Of 2009
Decided on: 11-04-2012
For the Plaintiffs:Virendra Tulzapurkar, Senior Counsel with Salil Shah, & Ramesh Gajria i/b M/s. Gajria & Co., Advocates.
For the Respondent:Iqbal Chagla, Senior Counsel with Sanjay Kher, Ms. Tanmayi Rajadhayaksha, Nimesh Kothare, Ms. Vijayalaxmi Kulkarni Advocates & Anup Lahoti i/b M/s. Nanu Hormasjee & Co., Advocates.
Headnote:Trade Marks Act, 1999 - Section 29 - Infringement of trade mark - If a sub-brand is used as a mark, it does not fall outside ambit of a trade mark.
The intention to use a mark as a trademark is not the only factor that constitutes infringement. A registered trademark is infringed by a person if he uses it in such a manner as to render the use of the mark likely to be taken as a trademark.
In other words the use of a registered trademark would constitute an infringement if it indicates a connection in the course of trade between the person and his goods or services irrespective of his intention.
Trade Marks Act, 1999 - Section 29 - Infringement of trade mark - Where a person, uses a registered trade mark in such a manner as to render use of mark likely to be taken as a trade mark then such use of mark constitutes an infringement.
A sub-brand does not fall outside the ambit of a trademark if it is used as a mark. In fact, a reference to it as a sub-brand would indicate that it is a brand name/mark.
The test is not whether a person terms the use of a mark as a brand name or a sub-brand. If the use of a mark is to distinguish or is capable of distinguishing the goods or services of a person, it is a trademark amenable to the provisions of the Act.
That, it is a sub-brand makes no difference. A view to the contrary would virtually erode, not merely the value of trademarks, but their very existence by the simple expedient of an infringer adding to his "main brand" any embellishment constituting it then as a "sub-brand". The Act knows no such thing as a sub-brand.
1. This is an application for the usual interim reliefs in an action for infringement and passing off. I have granted interim reliefs against infringement but not against passing off. I am unable to consider the plaintiff's action for passing off at this stage by reason of certain orders I will refer to later.
2. Plaintiff No.1 claims to be the registered proprietor of the marks “MADHUR GULAB”,
“MADHUR” and the word “MADHUR” written in devnagiri script pursuant to proceedings under Chapter IX of the Companies Act. Plaintiff Nos.2, 3 and 4 were impleaded pursuant to an order dated 4th October, 2011, on the application of plaintiff No.1.
3. The defendant has challenged the first plaintiffs proprietorship of the marks as well as its right to maintain this action for infringement. It is necessary, therefore, to trace the title to the marks as well as consider whether the first plaintiff is the registered proprietor of the marks.
4(A) Plaintiff Nos.2, 3 and 4 alongwith one Mrs. Ratanben Lalji Shah (Ratanben) carried on business as partners in the firm, name and style of M/s. Hem Agencies on the terms and conditions contained in a deed of partnership dated 8th August, 1980.
(B) The mark “MADHUR GULAB” was registered as of 15th September, 1984, under class 3 in the name of plaintiff Nos.2, 3 and 4, trading as Hema Agencies. In view of the contentions raised by Mr. Chagla, it is necessary to note two things. The registration was under Part-B of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the “1958 Act”). The name of the firm is typed in the certificate of registration as Hema Agencies and not Hem Agencies.
(C) By a supplementary deed dated 15th November, 1997, the name of the firm M/s. Hem Agencies was changed to M/s. Hem Corporation.
(D) By a deed of retirement dated 1st April, 1998, the said Ratanben retired from the firm. Thus, as of 1st April, 1998, plaintiff Nos.2, 3 & 4 were the only partners of the firm M/s. Hem Corporation. By the said deed of retirement, Ratanben declared that she had no right, title, claim or interest in any of the assets of the firm, including trademarks, licence and goodwill, and that she would be entitled only to the amount standing to the credit of her account in the books of the firm. Plaintiff Nos.2, 3 and 4 took over the running business with all its assets and liabilities on an `as is where is' basis. Clause 10 provided that all other terms of the earlier partnership deed would continue to apply between the remaining partners.
(E) With effect from 7th November, 2001, the word mark “MADHUR” and the device mark “MADHUR” written in devnagiri script were registered. Each of the certificates dated 7th November, 2001, has inter-alia the following details :-
“Name: KISHORE LALJI SHAH
Category: Partnership Firm
Partners: UDAY LALJI SHAH, HEMANT LALJI SHAH
Trading As: HEM CORPORATION”
The certificate in respect of the word mark “MADHUR” states that the mark had been used since 31st December, 1981. The certificate in respect of the device mark “MADHUR” states that the mark had been used since 1st December, 1981. As on 7th November, 2001, plaintiff Nos.2, 3 and 4 were the only partners of M/s. Hem Corporation, the said Mrs. Ratanben Shah having retired with effect from 1st April, 1998.
(F) By a supplementary partnership deed of admission dated 1st April, 2004, four more persons joined as partners of M/s. Hem Corporation.
(G) The plaintiffs admit that neither Ratanben's name nor the names of the four new partners who joined the firm on 1st April, 2004, were ever mentioned in the records of the Registrar of Trademarks.
4. On 5th January, 2005, the partners of M/s. Hem Corporation decided to register the firm into a private company, limited by shares under the provisions of Part IX of the Companies Act, 1956, for continuing and carrying on the business of the firm. This was under section 566 of the Companies Act, 1956. A Memorandum of Association made on 26th March, 2006, between th
