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2020 Supreme(Guj) 534
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
N.V. Anjaria, Ashokkumar C. Joshi, JJ.
Maharshi Packaging Machines Pvt. Ltd. - Petitioner
Versus
M/s Maharshi Udyog Thru. Partner, Bhagvat Vitthaldas Shah - Respondent
R/Special Civil Application No. 19408 of 2018
Decided On : 23-06-2020
For the Petitioner: Mr. Jatin Y. Trivedi, Pratik K. Chaudhary.
For the Respondent: Mr. R.H. Bhansali, Mr. Saurin Mehta With Mr. Tejas S. Trivedi.
Point of Law:
That, to protect such reputation and goodwill and also to get statutory rights and protection under The Trade Mark Act, 1999, the plaintiff has filed trade mark application for registering its distinctive trade mark MAHARSHI in respect of goods fall in Class-07. The plaintiff submits that the plaintiff has followed legal procedure before The Trade Marks Registry and become the registered proprietor of mark MAHARSHI under registered Trade Mark No.1086660 in Class-07 under the provisions of The Trade Marks Act, 1999.
Headnote:
Trademarks Act, 1999 – Code of Civil Procedure, 1908 – Order XIV - Trademark – Copyright – “Whether the plaintiff’s registration over the trademark Maharshi Udyog is valid”. The said prayer for framing of the issue came to be rejected – Held, When the pleadings did not permit the trial court to raise the issue on the validity of registration of the trademark, since such assertion on that count by the plaintiff was not found to have been denied by the defendant, the order passed by the Commercial Court refusing to frame the issue was justified. The decision in Patel Field Marshal Agencies (supra) would not automatically therefore apply. The framing of issue was to be based on the pleadings in that regard to be present in the background. When necessary pleadings to raise the issue were not found, the issue on the validity of registration was rightly not framed and application Exh.116 could be said to have been rightly rejected - Petition is dismissed
Facts of the Case:
Respondent No.1-the plaintiff herein M/s.Maharshi Udyog, a partnership firm, instituted aforesaid Commercial Suit, praying for permanent injunction against the defendants from using the mark containing “Maharshi” and/or any other name or mark identical or deceptively similar to the plaintiff’s registered trademark “Maharshi”. Injunction was also prayed for from using the similar name or mark in manufacturing or marketing the goods and services, and further to restrain the defendants from committing the act of passing-off. Also was the prayer seeking rendition of accounts and for praying compensation for loss and damages claim to have occurred to the plaintiff because of the use of the said name/mark by the defendants.
Finding of the Court:
When the pleadings did not permit the trial court to raise the issue on the validity of registration of the trademark, since such assertion on that count by the plaintiff was not found to have been denied by the defendant, the order passed by the Commercial Court refusing to frame the issue was justified. The decision in Patel Field Marshal Agencies (supra) would not automatically therefore apply. The framing of issue was to be based on the pleadings in that regard to be present in the background. When necessary pleadings to raise the issue were not found, the issue on the validity of registration was rightly not framed and application Exh.116 could be said to have been rightly rejected.
Result: Petition is dismissed
JUDGMENT :
N.V. ANJARIA, J.
Heard learned advocate Mr. Pratik K. Chaudhary for the petitioner and learned advocate Mr. Saurin Mehta for respondent No.1, at length. None appeared for respondent Nos.2 to 4, though served.
2. The challenge in this petition is directed against order dated 30th November, 2018 passed by learned Judge, Commercial Court at City Civil Court, Ahmedabad below Exh.116 in Commercial Trademark Suit No.20 of 2017. The application below Exh.116 by the petitioner-defendant was to get framed an additional issue in the suit as – “Whether the plaintiff’s registration over the trademark Maharshi Udyog is valid”. The said prayer for framing of the issue came to be rejected.
3. Respondent No.1-the plaintiff herein M/s.Maharshi Udyog, a partnership firm, instituted aforesaid Commercial Suit, praying for permanent injunction against the defendants from using the mark containing “Maharshi” and/or any other name or mark identical or deceptively similar to the plaintiff’s registered trademark “Maharshi”. Injunction was also prayed for from using the similar name or mark in manufacturing or marketing the goods and services, and further to restrain the defendants from committing the act of passing-off. Also was the prayer seeking rendition of accounts and for praying compensation for loss and damages claim to have occurred to the plaintiff because of the use of the said name/mark by the defendants.
3.1 The plaintiff firm was engaged in the business of manufacturing and marketing of lebelling machines, that is, stickers and wet glue and other tools and machines and allied goods and services. The case of the plaintiff was inter alia that the said goods and services manufactured and marketed by it were sold in the market using the trade name “Maharshi”, openly and uninterruptedly for which the reputation was acquired. As per the plaintiff it was using the trade name since 1989, and in the year 1997 plaintiff’s website was registered as www.maharshi.com. It was averred that the trade name Maharshi was its business identification, which was infringed.
3.2 It was stated that the plaintiff had occasion to institute Civil Suit No.257 of 2014 before the City Civil Court, Ahmedabad for infringement and passing-off action for the said trademark. In the said suit, consent terms were filed. Defendant No.4 undertook not to adopt and use the identical and deceptively similar mark “Maharshi” which was that of plaintiff. The decree was accordingly passed in favour of the plaintiff. It was contended that however recently between 19th May, 2016 to 21st May, 2016 all the defendants, in collusion of one another, again started using the identical name Maharshi for their goods and services. It was inter alia contended that the registration of the plaintiff’s aforesaid mark was in force and valid till date.
3.3 The commercial suit instituted as above was opposed by defendant No.1-Maharshi Packaging Machines Private Limited only and was not contested by other defendants. The contesting defendant No.1 filed its written statement to raise various contentions inter alia to contend that the word “Maharshi” was common and well-known and was in use in the various commercial and institutional fields by the business groups in the market. It was contended that the word Maharshi was not registered or applied for registration by the plaintiff and the trademark registered was “M/s.Maharshi Udyog”. It was contended that the trade name Maharshi was generic and several other prior users had been using the mark Maharshi giving no exclusive right to the plaintiff and that the word was not registered in the name of the plaintiff. It was stated that the trademark Maharshi Udyog was in no way identical or similar to Maharshi Packaging Machines Private Limited. As regard the earlier suit, it was stated that defendant No.1 was not party to the suit. Various other contentions were raised which are necessary to elaborate here.
3.4 The petitioner-defendant No.1 had preferred a re
