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2019 Supreme(Mad) 1282
IN THE HIGH COURT OF JUDICATURE AT MADRAS
S. VAIDYANATHAN, J.
Petitioner
Versus
Respondent
Application Nos. 2576 & 2577 of 2018 in O.A. Nos. 171 & 172 of 2019 in Civil Suit No. 149 of 2019
Decided On : 10-06-2019
The rights of prior user, as recognized under Section 34 of the Trade Marks Act, are superior to registration rights and are unaffected by registration under the Act.
Headnote:
KASI - Trademark Dispute - Trade Marks Act, 1999, Section 34 - The court discussed the provisions of Section 34 of the Trade Marks Act, recognizing the rights of prior user as superior to registration rights. The court emphasized that the action for passing off, based on the rights of prior user generating goodwill, shall be unaffected by any registration under the Act.
Fact of the Case:
The Applicant, Kasi Group of Companies, sought to vacate an interim injunction order granted to the Plaintiff, Palson Enterprises, in a trademark dispute. The Applicant's father had purchased a property and developed it, including a theatre named 'Kasi'. The Applicant later sold the land and theatre to the Respondent. The dispute arose when the Respondent continued to use the 'Kasi' mark for the theatre, despite the Applicant's objections.
Finding of the Court:
The court vacated the interim injunction, citing the Respondent's delay in seeking relief and the lack of continuous usage of the 'Kasi' mark by the Applicant. The court emphasized that the issue of mark ownership and usage needed to be decided after trial.
Issues: The issues revolved around the ownership and continuous usage of the 'Kasi' mark, the validity of the interim injunction, and the delay in seeking relief by the Respondent.
Ratio Decidendi: The court's decision was based on the principles of prior user rights under Section 34 of the Trade Marks Act, emphasizing that the action for passing off based on prior user's goodwill shall be unaffected by registration.
Final Decision: The court vacated the interim injunction, highlighting the need to decide the mark ownership and usage issues after trial.
1. These Applications are filed to vacate the interim order of injunction dated 19.03.2019 granted in O.A.Nos.171 and 172 of 2019 in the above Suit.
2. The Applicant 'Kasi Group of Companies' is the Defendant in the Suit and the Respondent herein viz. Palson Enterprises is the Plaintiff.
3. According to the Applicant, originally, his father Late Kasi Nadar had purchased a property measuring an extent of 23.40 acres in the year 1958 from one T.R.Bhavanishankar Joshi vide Sale Deed dated 27.01.1958. The said land was developed by the Applicant's father and a portion of the land was acquired by Tamil Nadu Housing Board for development of Housing project, leaving an extent of 8.41 acres to the Applicant's father and the said extent of land was later developed by the Applicant into housing plots, commercial and industrial plots after obtaining necessary approval from the authorities concerned. Around 80 plots were sold to various customers for their own use and all the documents were given to the prospective buyers in the name and style of “Kasi Estate”. The entire layout consisting around 140 grounds were part and parcel of Kasi Estate and it thus became a landmark and streets were also named as “Kasi Estate Streets”.
4. It is further stated by the Applicant that during the period 1984 to 1985, he had constructed a theatre in the land situated in Kasi Estate and he named the theatre as “Kasi” theatre in memory of his father. The Applicant developed the said theatre into a prominent Cinema Hall in Chennai. Since, it is situated in Kasi Estate, the theatre had gained popularity by the trademark “Kasi” and the Applicant had obtained Form “C” Licence and other necessary approvals in his name and had been successfully running the business. While so, in the year 2002, due to financial instability, the Applicant was constrained to sell the land and theatre building alone to the Respondent.
5. It is the case of the Applicant that pursuant to the sale of the land and theatre building, though he had been repeatedly advising the Respondent to change the name of the Theatre, the Respondent was evading his request under one pretext or the other and had been operating the theatre under the name “Kasi”. It is the further case of the Applicant that merely because the Respondent had registered the mark “Kasi” under the Trademark Act, he cannot claim absolute ownership of the mark “Kasi”, as the same is the family surname of the Applicant and is a generic term.
6. The Applicant went on to state that the trademark “Kasi” has been created by him and he is in continuous usage of the mark and that he has been carrying on business in the entertainment and media industry for the past several years. He also stated that he is carrying on business in the name and style of “Kasi Communication and Media Works Pvt. Ltd.”, which has been registered with the Registrar of Companies and therefore, the Respondent cannot claim exclusive right over the term “Kasi”.
7. Mr. M.S. Krishnan, learned Senior Counsel appearing for the Applicant/Defendant submitted that as per Section 34 of the Trade Marks Act, M.K. Mathivathanan is the prior adopter of the mark KASI and his rights over the said mark ought to be protected. Drawing reference to the Sale Deed, learned Senior Counsel submitted that the recitals of the Sale Deed clearly bring out the fact that M.K. Mathivathanan had only sold the land and building to the Respondent and not the mark “KASI” and there are no documents filed by the Respondent/Plaintiff to show that the mark “KASI” was assigned or licensed in favour of the Respondent/Plaintiff.
8. It is the contention of the learned Senior Counsel appearing for the Applicant that M.K.Mathivathanan did not assign or transfer Goodwill and the mark “KASI” to the Plaintiff and even assuming that the on-going business was transferred, in the absence of transfer of goodwill and assignment of the mark, the Respondent/Plaintiff cannot claim any better right than the Applic
