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2016 Supreme(Del) 3343
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN SINGH, J.
M/S JOHNSON APPLIANCES (P) LTD. - Plaintiff
versus
H.E. INDUSTRIES & ORS. - Defendants
CS(OS) No.816 of 2008
Decided On : 06-09-2016
For the Appellant : Mrs. Prathiba M. Singh, Sr. Adv. with Ms. Archana Sahadeva and Ms. Rukma George, Advs.
For the Respondent: Mr. S.K.Bansal, Adv. with Mr. Pankaj Kumar, Adv.
Headnote:
Trade Marks Act, 1999 - Section 44 - Identical mark - Infringement - Passing off - Legal Proceeding Certificate showing the name of plaintiff as the subsequent proprietor Plaintiff is the proprietor of the trademark - Same description of items cannot be permitted to defendant No.4 - It would amount to infringement and passing off - No party can be allowed to use the identical mark in any style whatsoever - Defendant No.4 has no rights in respect of it with respect to electric water heaters - Exclusive License entered into between defendant Nos.3 and 4 does not even relate to the mark "JOHNSON"
- Defendants have no right over the mark "JOHNSON" in relation to the electric water heaters - Cause of action is of recurring nature.
Trade Marks Act, 1999 - Section 44 - Injunction - Trademark - Associated mark - Assignment - Passing off - Scope of - Suit for infringement of registered trademark "JOHNSON" - Use of the mark "JOHNSON'' by the defendants - Trademark "JOHNSON" was originally adopted by and registered in the name of M/s Jain Industries, predecessors-in-interest of the plaintiff-Company in the year 1960 - Defendant No.4 or its assignee never protested or raised any objection - Trademarks No. 197998 and 319955 are associated - Associated trademarks have to be assigned as a whole and not separately - By virtue of the Deed of Assignment, they were assigned together - Held, defendant No.4 has no rights in the mark "JOHNSON" - Defendant No.4 was aware of the assignment and takeover of M/s Vidyut Udyog by the plaintiff - Defendant was one of the Directors in the plaintiff-Company at that point of time - Defendant had resigned from the directorship of the plaintiff-Company - Defendant is claiming rights for the goods did not take any action against the plaintiff.
Trade Marks Act, 1999 - Section 44 - Trademark - Assignment - Effect of - Defendant No.4 enjoys rights for the mark "JOHNSON" for various other electric appliances - Sporadic instances of the use of the mark "JOHNSON" by the defendant No.4 never came to the knowledge of the plaintiff - There are several parties manufacturing "storage type water heaters" for the defendant - Defendant No. 4 is being paid royalty for the same by the defendant No.3 - No proof of improper Assignment Deeds - By virtue of assignment - Defendant No.4 may have lost the description of goods - Once the assignment is complete, the documents cannot be treated as invalid document.
MANMOHAN SINGH, J.
1. The plaintiff has filed the abovementioned suit for infringement of registered trademark "JOHNSON", passing off, rendition of accounts, damages etc. against the defendants.
2. The plaintiff is a Company existing under the Indian laws. The plaint is signed by Mr. Rakesh Jain who is one of the Directors of the plaintiff-Company who claims to be competent and authorized to sign and verify the present plaint and institute the suit on behalf of the plaintiff. The Board Resolution in favour of Shri Muni Lal Jain who is the father of Shri Rakesh Jain has been exhibited as Ex.PW-1/1. The averments made in the amended plaint and written statement have been reiterated in the deposition of the witnesses of the parties i.e. PW-1 and DW-1. In addition, only documents are exhibited/ mentioned in their respective affidavits which are filed by both the parties as evidence.
3. The defendant Nos.1 and 2 are engaged in the manufacturing of the electric water heaters (excluding the instant type geysers) under the mark "JOHNSON" which are being marketed by the defendant Nos. 3 and 4. Defendant No.5 is one of the distributors of defendant No.3. Defendant No.3 claims to be the licensed user of the mark “JOHNSON” in relation to the aforesaid goods by virtue of an alleged exclusive License/Permitted User Agreement dated 27th May, 2006 executed in its favour by defendant No.4 M/s Johnson Enterprises, who in turn claims to have acquired the rights in the said mark by virtue of an Assignment Deed dated 1st April, 1999 from M/s. Classic Equipments Pvt. Ltd. A copy of the exclusive License/Permitted User Agreement dated 27th May, 2006 entered into between defendant Nos. 3 and 4 has been exhibited as Ex.P-4.
4. The present suit relates to the use of the mark "JOHNSON'' by the defendants in relation to electric water heaters (excluding the instant type geysers). The trademark "JOHNSON" was originally adopted by and registered in the name of M/s Jain Industries, predecessors-in-interest of the plaintiff-Company in the year 1960. On 14th September, 1960, the mark "JOHNSON" was registered in the name of plaintiff's predecessor in respect of Hot Plates, Toasters and Water Boilers. The details of the said registration are as under:
Registration No.
197998-B
Date of Registration
14.09.1960
Registrant
Shri Chain Lal Jain and Shri Muni Lal Jain trading as Jain Industries
Class
11
Goods
Hot Plates, Toasters and Water Boilers
Copy of the said Registration Certificate has been exhibited as Ex.PW-1/D1.
5. M/s Jain Industries was originally a partnership firm consisting of two partners, Sh. Chain Lal Jain and Sh. Muni Lal Jain. Subsequently, two more partners were included in the partnership firm namely Sh. Satish Kumar Jain and Sh. Subhash Chand Jain. The said firm was dissolved on 1st April, 1967 by virtue of Dissolution Deed dated 1st April, 1967 whereby the fourth partner Sh. Subhash Chand withdrew from the said firm.
6. On the same date i.e. 1st April, 1967, a new partnership was constituted with 3 partners. Sh. Chain Lal Jain, Sh. Muni Lal Jain and Sh. Satish Kr. Jain. Sh. Chain Lal Jain was the father of Sh. Muni Lal Jain and Sh. Satish Kr. Jain. The said firm continued its business under the mark "JOHNSON" in respect of electric water heaters and hot plates etc. A copy of the Partnership Deed dated 1st April, 1967 which was admitted by the contesting defendant No.4 has been exhibited as Ex.P-5.
7. By Trust Deed dated 26th June, 1979, a Trust by the name of M/s Jain Youngsters Trust was constituted. A copy of the Trust Deed dated 26th June, 1979 as admitted by defendant No.4 has been exhibited as Ex.P-6. The said Trust took over the running business of M/s Jain Industries and by a Deed of Assignment d
