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HIGH COURT OF CALCUTTA
G. N. Das, Guha
ABINASH CHANDRA - Appellant
Versus
MADHUSUDAN MAJUMDAR - Respondent
A. F. O. D. 41 Of 1950
Decided On : FEBRUARY 9, 1951
TRADE MARK - PASSING OFF - INFRINGEMENT - TITLE TO TRADE MARK - COMMON LAW OF ENGLAND - USER OF TRADE MARK - SALE OF BUSINESS - GOODWILL - ESTOPPEL - WAIVER - ACQUIESCENCE - DELAY - TRADE MARKS ACT, 1940, SECTIONS 20(1), 20(2).
Fact of the Case:
The plaintiff, a manufacturer of storage batteries, sued the defendant for passing off the defendant's batteries as the plaintiff's batteries by using the trade mark 'sakti'. The defendant claimed that he had acquired the right to the trade mark from the Sakti Batteries Ltd., which had purchased the business of the plaintiff's company, the Battery Manufacturing Company. The plaintiff contended that he had never transferred the right to the trade mark to the Battery Manufacturing Company and that the Sakti Batteries Ltd. had therefore not acquired any right to the trade mark.
Finding of the Court:
The court found that the plaintiff had invented the trade mark 'sakti' and had first used it on his batteries. The court also found that the plaintiff had never transferred the right to the trade mark to the Battery Manufacturing Company and that the Sakti Batteries Ltd. had therefore not acquired any right to the trade mark. The court further found that the defendant had passed off his batteries as the plaintiff's batteries by using the trade mark 'sakti' and that the plaintiff was entitled to an injunction restraining the defendant from doing so.
Issues: 1. Whether the suit could proceed in the face of the certificate of registration granted to the defendant in respect of the trade mark in suit? 2. Whether the suit was barred by the principles of estoppel, waiver and acquiescence? 3. Whether the plaintiff was the inventor of the alleged trade mark 'sakti'? Has he manufactured and sold in India storage battery under the name of 'sakti' battery with the words and letters 'sakti' embossed on them? 4. Has the plaintiff No. 1 been using continuously his alleged trade mark 'sakti' from about 1932? Has the plaintiff acquired a right of property in the alleged trade mark? 5. Are the judgments passed in T. S. 230 of 1940 of the 3rd Munsif Court, Alipore, and the appeals arising therefrom conclusive between the parties?
Ratio Decidendi: 1. The court held that the suit could proceed even though the defendant had obtained a certificate of registration for the trade mark 'sakti' because the defendant had not acquired any right to the trade mark in the first place. 2. The court held that the plaintiff was not estopped from asserting his title to the trade mark 'sakti' because his conduct in allowing the Sakti Batteries Ltd. to use the trade mark did not amount to a representation that the Sakti Batteries Ltd. owned the trade mark. 3. The court held that the plaintiff was the inventor of the trade mark 'sakti' and had first used it on his batteries. 4. The court held that the plaintiff had acquired a right of property in the trade mark 'sakti' by continuous user. 5. The court held that the judgments passed in the earlier suit between the plaintiff and the defendant were not conclusive between the parties because the earlier suit was not competent to try the present suit.
Final Decision: The court dismissed the defendant's appeal and granted the plaintiff an injunction restraining the defendant from passing off his batteries as the plaintiff's batteries by using the trade mark 'sakti'.
( 1 ) THIS is an appeal by the defendant, Abinash Chandra Chowdhury and is directed against the judgment and decree dated 21st December 1949 passed by Mr. M. M. Bhattacharjee, 1st Extra Additional District Judge, Alipore, District 24-Pergunnahs in Title Suit No. 65 of 1945.
( 2 ) THE suit out of which this appeal arises, was for a permanent injunction restraining the defendant from passing off the batteries of plaintiff No. 1 as the defendant's batteries by the use of the trade mark 'sakti' and by issuing handbills advertisements etc. , claiming a right to the said mark, for delivery up to the plaintiff for destruction of all stocks, signboard, cards, handbills etc. , bearing the mark Sakti or in the alternative for an order on the defendant to efface such marks and for accounts of illegal profits made by the defendant from the commencement of his sales of batteries with the mark Sakti.
( 3 ) THE defendant contested the suit. The substance of the pleadings has been set in the judgment under appeal and appears sufficiently from the facts stated in the two appeals judgments wherein have just now been delivered.
( 4 ) ON the pleadings, 15 issues were raised for trial.
( 5 ) IN view of the points raised in this appeal, we are concerned with issues (5), (8), (9), (10), (14 ).
( 6 ) THE suit was filed in the court of the District Judge on the 21st September 1945. After the suit became ready for hearing, it was transferred to the extra 1st Court of the Additional District Judge by an order dated 5th November 1949 passed by the District Judge.
( 7 ) AS a result of his findings, the court below decreed the suit in part in favour of the plaintiff No. I on contest with half costs. The defendant was restrained from passing off his goods as those of the plaintiff by putting the mark Sakti on any of the storage batteries or similar goods i. e. from sale of any such goods marked with the mark Sakti with or without any differentiating words. Delivery up of the existing stock of such goods was refused but the defendant was directed to conceal the mark on his own existing batteries by soldering on them metal plates either blank or marked with some other trade name in the presence of the plaintiff and officer of the court to the satisfaction of the plaintiff. The defendant was also restrained from printing the word 'sakti' henceforth in any of his business papers. The prayers for account of profits or damages were refused.
( 8 ) THE defendant preferred this appeal.
( 9 ) NO appeal or cross-objection was filed by the plaintiffs.
( 10 ) I shall now set out issues Nos. (5), (8), (9), (10) and (14 ). (5) Can the suit be proceeded with in the face of the certificate of registration granted to the defendant in respect of the trade mark in suit? (8) Is the suit barred by the principles of estoppel, waiver and acquiescence? (9) Is the plaintiff the inventor of the alleged trade mark 'sakti'? Has he manufactured and sold in India storage battery under the name of 'sakti' battery with the words and letters 'sakti' embossed on them? (10) Has the plaintiff No. 1 been using continuously his alleged trade mark 'sakti' from about 1932? Has the plaintiff acquired a right of property in the alleged trade mark? (14) Are the judgments passed in T. S. 230 of 1940 of the 3rd Munsif Court, Alipore, and the appeals arising therefrom conclusive between the parties?
( 11 ) THE Court below found the issues in favour of the plaintiffs.
( 12 ) I shall first deal with the finding of the Court below on issue No. (14 ).
( 13 ) MR. Mitter has assailed the finding of the Court below on the ground that the 3rd Court of the Munsif was not competent to try the present suit.
( 14 ) THE pecuniary jurisdiction of the 3rd Munsif, Alipore at the date of the earlier suit was limited to Rs. 1000/- only. The value of the present suit is Rs. 2100/ -. Prima facie, therefore, the Munsif, 3rd Court, was not competent to try the present suit and his decision is not res jud
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