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1989 Supreme(Cal) 270
High Court Of Calcutta
U. C. BANERJEE
BIJOLI GRILL SPENCERs PRODUCTS - Appellant
Versus
SPENCER PURE DRINKS PVT.LTD. - Respondent
Matter No. 651 of 1988
Decided On : 05/18/1989
B.K.BACHAVAT, R.P.MITRA, S.B.MOOKERJEE
A valid assignment of a trademark gives the assignee the exclusive right to use the trademark and to prevent others from using it without its consent.
Headnote:
TRADEMARK - SPENCER'S - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 17, 27, 47 - INJUNCTION - ASSIGNMENT OF TRADEMARK - VALIDITY - GOODWILL - ABANDONMENT - INTERLOCUTORY RELIEF - PRINCIPLES.
Fact of the Case:
Spencer Pure Drinks Pvt. Ltd. assigned its trademark 'Spencer's' to the plaintiff in 1980. The defendant, Amar Dutta, began using the same trademark in 1988. The plaintiff filed a suit for injunction to restrain the defendant from using the trademark. The defendant claimed that the assignment was invalid and that he had the right to use the trademark.
Finding of the Court:
The court held that the assignment of the trademark was valid and that the defendant had no right to use the trademark. The court also held that the plaintiff had a prima facie case for an interlocutory injunction.
Issues: 1. Whether the assignment of the trademark was valid? 2. Whether the defendant had the right to use the trademark? 3. Whether the plaintiff had a prima facie case for an interlocutory injunction?
Ratio Decidendi: 1. The court held that the assignment of the trademark was valid because it was made by the registered proprietor of the trademark and was entered in the register of trademarks. 2. The court held that the defendant had no right to use the trademark because he had not obtained the consent of the registered proprietor. 3. The court held that the plaintiff had a prima facie case for an interlocutory injunction because it had shown that it had a valid trademark, that the defendant was using the trademark without its consent, and that it would suffer irreparable harm if the defendant was not restrained from using the trademark.
Final Decision: The court granted an interlocutory injunction restraining the defendant from using the trademark 'Spencer's'.
( 1 ) IN this interlocutory application the petitioner has prayed for an order of injunction restraining the Spencer Pure Drinks Pvt. Ltd. and one Amar Dutta from selling and offering for sale or advertising or utilising otherwise the trade name and mark 'spencer's' and the labels or any colourable imitations thereof in relation to the mineral and aerated water and other non-alcoholic beverages in any manner whatsoever.
( 2 ) ON the factual score it appears that one Sm. Bhakti Dutta carried on business of manufacture and sale of mineral, aerated water and other non-alcoholic beverages under the trade mark and name "spencer's". The nark "spencer" was registered on 6th October 1942 bearing Registration No. 6108 and the register maintained by the Registrar of Trade Marks recorded "sm. Bhakti Dutta" as the registered proprietor for the mark.
( 3 ) ON the 1st September 1961 Sm. Bhakti Dutta assigned the trademark, trade name and label in favour of "spencer's Aerated Water Factory Private Limited" now in liquidation being the defendant No. 3 herein of which defendant No. 2 was the Managing Director. The said assignment was also entered in the register of trademark. Since however 1963 the defendant No. 3 continuously used the trade mark, trade name and associated trade marks and labels in relation to mineral and non-alcoholic drinks which became a part of the good will and assets and property of the defendant No. 3. On 23rd September 1975, however, the defendant No. 3 was directed to be wound up and the Official Liquidator was appointed as the liquidator of the defendant No. 3. In a suit being Suit No. 754 of 1979 by the defendant No. 3 against M/s. Bijoli Grill Caterers this Court directed the official liquidator to assign and transfer the good will, trade name, trading style and trade mark of the defendant No. 3 in favour of the plaintiff herein and in terms whereof by a registered deed of assignment the official liquidator on 21st February 1980 transferred and assigned to the plaintiff the good will, the right to use as part of a trading style, the name "spencer" with the option to the plaintiff to use its existing trading style, its trade marks and labels.
( 4 ) ON the factual score, however, it appears that in a suit instituted by Spencer and Co. in the High Court at Madras, the Madras High Court on 14th December 1979 passed an order of injunction restraining the plaintiff from using trade mark, "spencer's". Subsequently on 24th September 1980 the plaintiff herein instituted a suit being Suit No. 861 of 1980 (Bijoli Grill Spencer Products vs. Spencer Co. Ltd. , Madras) and the defendant No. 3 inter alia for a declaration that the defendant No. 3 was the registered proprietor of the trade marks, the associated trade marks and the trade name "spencer" and that it was entitled to use its trade name containing the words, "spencer" in relation to mineral waters. On an interlocutory application in the above-noted Suit No. 861/80 by the plaintiff herein S. K. Roy Chowdhury, J. was pleased inter alia to direct that the plaintiff would be entitled to use the words "spencer's" for the purpose and trade name "spencer" and other trade mark, if any, in West Bengal only. Subsequently in October 1980, the defendant No. 2 instituted a suit being Suit No. 943/80 in this Court for a declaration that the order dated 25th September 1979 was illegal, void and a nullity together with a prayer for declaration that the Deed of Assignment was illegal, and null and void. The plaintiffs application, however, in Suit No. 861 of 1980 came up for final disposal before P. Khastagir, J. and on 21st July 1982 the application of the plaintiff was dismissed and an appeal was taken as against the order of Khastagir, J. being Appeal No. 251/82 and the Appellate Court on 6th August 1982 granted a stay of operation of the order dated 21st July 1982 passed by Khastagir, J. till the disposal of the application. The interlocutory application in th
