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High Court Of Delhi
KISAN INDUSTRIES - Appellant
Versus
PUNJAB FOOD CORPORATION - Respondent
Decided On : 12/21/1982
TRADEMARK - ASSIGNMENT - VALIDITY - JURISDICTION - INJUNCTION - PASSING OFF - PRIOR USER - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 37, 38.
Fact of the Case:
Plaintiffs, a partnership firm, filed a suit for passing off and infringement of their trademarks KISAN and SOHNA against the defendants, alleging that the defendants were using deceptively similar trademarks and labels. The defendants claimed that they were the prior users of the trademarks, having acquired them through an assignment from a third party, and that the plaintiffs had copied their trademarks. The trial court granted a temporary injunction restraining the defendants from using the trademarks and labels in question.
Finding of the Court:
The High Court held that the trial court erred in finding that the plaintiffs were the prior users of the trademarks. The Court found that the defendants were the prior users, having acquired the trademarks through a valid assignment from a third party. The Court also held that the plaintiffs' suit was not maintainable in Delhi, as the cause of action did not arise there. The Court set aside the temporary injunction granted by the trial court and directed the defendants to maintain accounts and file the same in the trial court.
Issues: 1. Whether the assignment of the trademarks from a third party to the defendants was valid. 2. Whether the plaintiffs were the prior users of the trademarks. 3. Whether the plaintiffs' suit was maintainable in Delhi.
Ratio Decidendi: 1. The Court held that the assignment of the trademarks from a third party to the defendants was valid, as it complied with the requirements of Section 38 of the Trade and Merchandise Marks Act, 1958. 2. The Court held that the defendants were the prior users of the trademarks, as they had acquired them through a valid assignment from a third party. The Court also noted that the defendants had been using the trademarks since 1976, while the plaintiffs had only started using them in 1977 and 1978. 3. The Court held that the plaintiffs' suit was not maintainable in Delhi, as the cause of action did not arise there. The Court noted that the plaintiffs and the defendants carried on business in different cities, and that the only connection between the two was that the defendants' agent allegedly sold the infringing goods in Delhi.
Final Decision: The High Court accepted the appeal, set aside the temporary injunction granted by the trial court, and directed the defendants to maintain accounts and file the same in the trial court.
( 1 ) THIS first appeal challenges the judgment and order of the Additional District Judge dated 29th March, 1982 restraining the appellant-defendant No. 2 from selling the products under the trade mark kishan and suhna or any other deceptively similar trade mark and from using the design/art work of the plaintiff existing under the title sohna and from infringing the copyright in the kisan label and from trading under the name kisan INDUSTRIES or any other deceptively similar copyrights and trade name amounting to infringement and/or passing off till the decision of the suit,
( 2 ) BRIEFLY the facts are that M/s. Punjab Food Corporation, a partnership firm, (plaintiff-respondent No. 1) on 5th May, 1981 instituted a suit for passing off Cattle Poultry Feed under the trade name kisan or sohna and infringing the copyright besides rendition of accounts. The plaintiffs have alleged that they have been carrying on business of manufacturing Cattle Poultry Feed since 1977 and using distinctive trade mark kisan and a distinctive label consisting inter alia, of the word kisan , the device of Buffalow and the words Cattle Feed in circles, that they have filed an application for registration of their trade marks KISAN and sohna , that they have been using trade mark kisan since 1977 and trade mark sohna since 1978, that trade mark sohna had been registered under the Copyright Act, 1957 on 20th Nov. , 1979, that their goods under the aforesaid trade marks and labels have acquired goodwill and reputation in the market because of its excellent and superior quality, that they have spent huge amounts on advertisement, that M/s. Kandi Gharoli Dairy Farm (defendant No. 1-respondent No. 2) is the agent of M/s. Kisan Industries (appellant-defendant No. 2 for Cattle and Poultry Feed under the trade marks kisan and sohna being manufactured by the appellant at Ludhiana, that the adopted trade mark kisan and sohna are deceptively similar to their well known trade mark, that they came to know of the defendants infringing the trade mark in the first week of February, 1981 and therefore sent a notice dated 10th February 1981 calling upon them to desist from using their trade mark and copyright, that defendant No. 1 on 4th May, 1981 sold the spurious and inferior quality goods under the infringing trade mark and copyright kisan and sohna to the plaintiffs. Along with the suit the plaintiffs filed an application for temporary injunction. An ex parte injunction was issued by the trial Court on 5th May, 1981. The appellant filed an application under O. 39, R. 4 of the Civil Procedure Code for vacation of the ex parte injunction order. They also filed reply to the injunction application. The trial Court confirmed the ex parte order on 16th July, 1981. An appeal was filed in this Court which was accepted by Yogeshwar Dayal, J. on 15th Oct. , 1981 and the matter regarding grant of temporary injunction was remanded to the trial Court. The trial Court again issued the aforesaid temporary injunction by judgment and order dated 29th March, 1982.
( 3 ) THE case of the appellants-defendants is that the trade marks kisan and sohna were being used by Sant Ram, Proprietor of M/s. Sant Ram and Sons, Ludhiana, that Sant Ram by means of an agreement dt. 6th March, 1979 assigned the trade marks kisan and sohna along with the goodwill of the business to Virender Kumar, a partner of the appellants firm, that Sant Ram and Sons have been using the said trade mark since 1976 and since assignment the appellants have been using the same, that the appellants being the prior users of the said trade marks cannot be restrained by any injunction or otherwise, that they made applications before the Registry of the Trade Marks with respect to the said trade marks which are still pending, that in fact the plaintiffs have copied the trade marks and have thus infringed their rights. The appellants have further alleged that after the as
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