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2009 Supreme(Mad) 2332
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE M. JEYAPAUL
BSA-Regal Group Ltd.
Versus
Tube Investments of India Ltd., rep by its Vice President-Legal & Company Secretary
Application No.1391 of 2009 & O.A.Nos.31 and 32 of 2009 in C.S.No.42 of 2009
Decided on: 14-07-2009
For the Applicant:C.A. Sundaram, Senior Counsel, A.A. Mohan, Advocate.
For the Respondent: Kasthuri Rangan, Senior Counsel Rights & Marks.
Headnote:A. TRADE MARKS ACT, 1999 - SECTION 134(2) - Apprehension of action Infringement of trade mark and passing off - Suit for - Jurisdiction of High Court - Defendant having office outside India - Defendant sent two communications through letters to plaintiff threatening to invade the statutory and common law rights vested in plaintiff - Suit filed by plaintiff in Madras High Court in whose territorial jurisdiction it carries on business - Defendant’s contention that no suit could be filed without leave of court and place of receipt of letter cannot constitute either infringement or passing of and that Territorial jurisdiction as contemplated under letters Patent Act have been given a go-by under Section 134(2) of Trade Marks Act 1999 contention rejected - HELD, Plaintiff established that it carries on business within territorial jurisdiction of Madras High Court - Plaintiff is entitled to maintain suit (Paras 7 & 8).
B. TRADE MARKS ACT, 1999 - SECTION 134(2) - Infringement of trade mark and passing off - Suit for - Maintainability of - Defendant having office outside India - Defendant sent two communications through letters to plaintiff threatening to invade the statutory and common law rights vested in plaintiff and as such suit is not maintainable - HELD, it is true that mere communications through letters would not confer jurisdiction to lay suit, but the two communications are found to be seminal for putting up challenge before Madras High Court - Plaintiff is entitled to maintain suit (Paras 7 & 8).
C. TRADE MARKS ACT, 1999 - SECTION 134(2) r/w SECTION 28 - Apprehended and threatened infringement and passing of - Plaintiff, an Indian Company, claimed as assignee and proprietor of trade mark BSA form BSA Cycles Limited in respect of Cycles/Motorcycles etc. - Plaintiff using trade mark BSA for cycles for several decades started manufacturing motorcycles using trade mark BSA - Defendant, a foreign company, claiming to be owner of trade mark BSA for motorcycles sent two communications protesting user of trade mark BSA by plaintiff - Plaintiff filed suit for apprehended and threatened acts of infringement and passing off by defendant - Plaintiff based its claim on the strength of assignment and passing by BSA cycles Limited - Defendant proved that assigner (BSA Cycles) of trade mark BAS had got assigned from original trade mark proprietor (Birmingham Small Arms Company Limited) for Pedal cycles, Pedal Tricycles and parts and it did not have right in respect of motorcycles - Defendant claimed that as successor to Birmingham Small Arms Company Limited it is proprietor of trade mark BSA for Motorcycles - HELD, Plaintiff was not vigilant in verifying proprietorship claimed by BSA cycles limited with respect to trade mark for motorcycles - Birmingham Small Arms Company Limited retained proprietary right over motorcycles and parts thereof - Plaintiff got assignment of disputed trade mark for motorcycles from a company which did not have any lawful domain over it - Applications have been filed by plaintiff to stall entry of defendant into India to - establish their unassailable proprietorship over disputed trade mark for motorcycles - Plaintiff cannot be permitted to assert its right over trade mark for motorcycles as against real proprietor of trade mark - Plaintiff got apparently defective proprietorship over trade mark BSA - Defendant who has demonstrated that it retained its original trademark BSA for motorcycles and parts has very right to enter into India on proper registration by trade mark registry - No injunction can be granted as against real proprietor of trade mark.
Result : Application and OA dismissed.
Application No.1391 of 2009 is filed praying to reject the plaint. Interim reliefs are sought in O.A.Nos.31 and 32 of 2009 seeking to restrain the respondents from infringing the applicants trade marks and from passing off the motorcycles, motorcycle parts, components and accessories by use of the applicants trade marks.
2. For the sake of clarity, the applicants in O.A.Nos.31 and 32 of 2009 are referred as plaintiffs and the applicants in Application No.1391 of 2009 is referred as defendants.
3. The case of the plaintiff, in brief, is as follows:-
The plaintiff carries on an established business as manufacturers and marketers of various goods including bicycles and components thereof. One of the plaintiffs divisions M/s. T.I. Cycles has been engaged in manufacturing and marketing bicycles under the leading brand names BSA and Hercules. The plaintiff has been using the trade mark BSA for cycles and its related goods for the past five decades. The plaintiff is the proprietor of the trade mark BSA in class 12. The trade marks BSA and BSA with device were assigned by BSA Cycles Limited, England. BSA Cycles Limited assigned the registration of trade mark Piled Arms Device, BSA (word), Piled Arms Device with letters BSA in respect of cycles, motorcycles and side cars, fore cars and trailing cars and Piled Arms Device with letters BSA in respect of Pedal bicycles, tricycles, propelled wholly by the rider. The deed of assignment was duly recorded by the Registrar of Trade Marks. The plaintiff has become the subsequent proprietor of the aforesaid trade marks. M/s. Derby International Corporation, the successor in business of BSA Cycles Limited and other group companies filed a suit in C.S.No.739 of 1993 on the file of this court as against the plaintiff. The said suit ended in compromise decree on 26th April 1995 whereby the plaintiff has been declared as the absolute owner of the trade mark BSA and BSA with device. The plaintiff has made extensive sales of BSA Cycles for the last several decades. It has also incurred substantial loss towards advertising and sales promotion of their BSA brand. By virtue of long and continuous and extensive use, coupled with statutory rights, the trade mark BSA has become distinctive and the same is immediately identified by the trade and public with the products manufactured and marketed by the plaintiff. In India, the trade mark BSA is exclusively associated with the plaintiff alone and no one else. The plaintiff entered into motorised vehicle/motorcycle segment in or about September 2008 and launched electric scooters/motorcycles under the trade mark BSA through one of its division BSA Motors. Neither the defendant nor its predecessor in interest has been manufacturing motorised vehicles over the last thirty years. The defendant does not have trade mark rights in India. Its trade mark also has not been used by any meaningful manufacture. Therefore, trafficking any such trade mark is clearly impermissible and unacceptable in India. The defendant has no statutory right or common law in respect of motorcycles or any other goods falling in class 12 in the territory of India. The defendant does not have any trans-border reputation not having used the trade mark BSA atleast for the last thirty years all over the world. There is an intimate trade connection between bicycles and motorcycles as these goods fall under the same class and are of similar description. There is bound to be a confusion in the minds of the customers and traders as to the origin and source of the defendant which would ultimately lead to deception. Therefore, the plaintiff is entitled to interim injunction as prayed for. The defendant, in their communications dated 111. 2008 and 212. 2008, threatened to invade the statutory and common law rights vested in the plaintiff. The suit itself is filed for the apprehended and threatened acts of infringement and passing off by the defendant. The communication sent by the defendant
