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2014 Supreme(Del) 3388
IN THE HIGH COURT OF DELHI
RAJIV SHAKDHER, J
Manmohan Plastic Pvt. Ltd. - Appellant
Versus
Ganpati Plastic Industries - Respondent
Cs(OS) 1528 of 2013
Decided on : 08-09-2014
Advocate Appeared:
For the Appellant :Sandeep Sethi, Sr. Advocate and Kapil Wadhwa, Advocate
For the Respondent:C.M. Lall, Nancy Roy and Anuj Nair, Advocate
The defense of prior user can override the principle of 'one mark, one source' in trademark disputes.
Headnote:
Trademark Dispute - Code of Civil Procedure - Section 151 - [FACT OF THE CASE] The plaintiff company seeks injunctive reliefs based on the ownership rights it claims in the registered trademark 'MONICA GOLD'. The suit involves a family dispute and corporate overtones. [FINDING OF THE COURT] The court found that the defendants had been using the mark 'MONIKA' openly and concurrently without objection by the plaintiff company. The court also noted that the plaintiff failed to disclose vital facts in the plaint and that the pleadings gave rise to several triable issues. [ISSUES] The issues included prior user rights, the effect of the family settlement, and the use of the trademark 'MONIKA' by the defendants. [RATIO DECIDENDI] The court held that the principle of 'one mark, one source' did not apply due to the defense of prior user. The court also emphasized the importance of maintaining status quo and the need for parties to shun obfuscation when seeking an injunction. [FINAL DECISION] The court declined to grant an injunction and ordered the defendants to maintain accounts of sales made under the trademark 'MONIKA' for all its products, including PVC and HDPE pipes.
JUDGMENT :
Rajiv Shakdher, J.
By this order, I propose to dispose of the plaintiff company's application under Order 39 Rule 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (in short the CPC). Though there are corporate overtones to the dispute, it is essentially a family dispute. The plaintiff company seeks injunctive reliefs, pending the disposal of the suit against the defendants, based on the ownership rights it claims in the registered trademark "MONICA GOLD". The registration qua the said mark was obtained on 28.06.2005, which relates back to the date of its application i.e., 20.01.2003.
1.1 User is claimed by the plaintiff company since 23.11.1997. Notably, the registration has been obtained in Class 19 qua all types of rigid PVC Pipes.
2. Defendant no.1 is a proprietorship concern owned by defendant no.2. Defendant no.2 (Mr. Rajeev Jain) is the sibling of the main protagonist in the plaintiff company, who is also its Director i.e., one Sh. Sanjeev Jain. The suit has been instituted on behalf of plaintiff company by his wife, Mona Jain.
3. The record discloses that the matter was referred for mediation which, evidently, failed.
4. It would therefore be necessary to briefly delineate the broad contours of the dispute, which have emerged from a perusal of the record:-
4.1 The patriarch of the family is one, Sh. Manmohan Jain, who is the father of Sh. Sanjeev Jain, the Director and as stated above, the main protagonist of the plaintiff company, and Sh. Rajeev Jain i.e., defendant no.2. Evidently, in 1986, the father, Sh. Manmohan Jain had set up a business enterprise for manufacturing, buying, selling, importing and exporting, etc. all types of plastic pipes including PVC pipes, under the name and style of Monika Plastic Pipes Pvt. Ltd. (in short Monika Plastic). The promoter directors of the said company were : Sh. Manmohan Jain; his wife, Ms. Chanchal Jain and Sh. Sanjeev Jain.
4.2 Since, business expanded, Manmohan Jain's family incorporated another company, this time in the father' name i.e., Manmohan Plastics Pvt. Ltd. (in short Manmohan Plastics). This company was incorporated in 1992. In this company, the promoter directors were defendant no.2 i.e., Sh. Rajeev Jain, Sh. Rajesh Jain, yet another son of Manmohan Jain, and Ms. Mona Jain wife of Sh. Sanjeev Jain, who, as indicated above, is also a director in the plaintiff company. As per the version given by the defendants in the written statement, this company manufactured and sold PVC pipes used in water supply, under the trademark, 'MOHAN PIPES'.
4.3 In 2000, Sh. Manmohan Jain incorporated yet another company under the name and style of Monika Telecom Pipes Pvt. Ltd. (in short Monika Telecom). The promoter directors of this company were Sh. Manmohan Jain, Ms. Chanchal Jain, defendant no.2 i.e., Sh. Rajeev Jain and his wife, Ms. Ritu Jain. Once again, as per the version set out by the defendants in their written statement, this company, was in the business of manufacture and sale, inter alia, of : HDPE pipes, PVC pipes, and steel pipes; under the trademark, 'MONIKA'.
4.4 It may be important to note, a fact, which has come through during the course of arguments (which is not disputed before me), is that, the name 'MONIKA', which has become the subject matter of the dispute amongst the parties is, the name of the daughter of Sh. Manmohan Jain, which is how, it was adopted by him qua the two companies incorporated in 1986 and 2000.
4.5 Evidently, there was a dispute amongst the members of the family which, resulted in a family settlement being drawn up in April, 2003. Though the parties are not clear as to the number of memorandum of understanding drawn up, it is accepted by both sides that it resulted in separation of business. The result of which was that, Manmohan Plastics came to be controlled by Sh. Sanjeev Jain and his wife, Mona Jain while, the other companies Monika Plastic and Monika Telecom came under the wings of defendant no.2, Sh. Rajeev Jain and hi
