Back
IN THE HIGH COURT OF JUDICATURE AT MADRAS
M. SUNDAR, J.
N. Ranga Rao & Sons Private Ltd, Chennai - Applicant
Versus
Mahendra T. Thakkar Trading as Prakash Trading Co, Gujarat & Another - Respondents
A. Nos. 7341 & 7342 of 2018 in O.A. Nos. 470 & 471 of 2018 in C.S. No. 294 of 2018
Decided On : 20-12-2018
Civil Procedure Code,1908 - Order XXXIX - Rule 2-A - Applications - Suit for complaining of wilful disobedience of orders - Infringement of suit - Business of manufacture and sale of safety matches - Is registration of Trademark Cycle for safety match - Product that is nucleus of this lis is matches or in other words match boxes - Plaintiff is primarily in agarbathi industry and Court is informed that a trademark with a bicycle registered in favour of plaintiff is house mark of plaintiff - As agarbathi and matches go hand in hand plaintiff has been selling some of its agarbathis along with a complementary match box attached to agarbathi carton - It is plaintiffs specific say that match box/matches given along with plaintiffs agarbathi carton is complementary - In other words a customer /consumer purchasing agarbathis of plaintiff gets match box free as an accompaniment which is attached to agarbathi carton - For this purpose plaintiff has obtained registration of its aforesaid house mark in Class for safety matches - This registration of plaintiff of its house mark Cycle for safety matches is with a rider/limitation that it is only for purpose of being given as a complementary product with agarbathis - However besides this registration it is submitted that plaintiff has not less than trademark registrations for agarbathies and several other products in four different classes namely Classes - Defendants are admittedly in business of manufacture and sale of safety matches - Therefore central theme of main suit is registration of Trademark Cycle for safety matches by plaintiff and therefore same shall hereinafter be referred to as suit TM - Plaintiff claims that they have copyright also in artistic work in suit TM - Plaintiff Sons Private Ltd has benefit of a Trademark registered in year and at that time business name of plaintiff was & Sons - Trademark registration was - Subsequently it has become a private limited company and has been marketing business in selling carrying Agarbathies under Trademark Cycle Brand - In plaint plaintiff has given details of various forms of mark which have been registered for its products - Cycle logo is an exclusive Trademark of plaintiff - Plaintiff has built up substantial reputation and goodwill and that is evident from sales of plaintiffs product which in plaint has been stated as being on increasing scale from year to year - Plaintiff is doing extensive business across country and also all over world - Fact is that plaintiff has a registered Trademark - Owing to such registration they have acquired recognised rights for protection from passing off and also protection from infringement - It is alleged that defendants are passing off their products as if products are that of plaintiff - Products of defendants are safety matches - It is pointed out that even plaintiff manufactures safety matches under Trademark Cycle Brand and along with Agarbathies gives as compliment to each one of customers a packet of safety matches with Trademark of Cycle Brand - Whether it forms part of inventory or not and also irrespective of whether it is found at place/s which he has already visited or not - whether they belong to defendants or not - Whether trial court acted appropriately while issuing a restraint order to prevent a labour strike organised by coal miners - Held, General principle that violation of an interim or interlocutory order should be viewed seriously and if it is not viewed seriously it will have wide spread deleterious effect on authority of Courts to implement their interim or interlocutory orders and compel their adherence - Be that as it may in judgment of Division Bench of Allahabad High Court reported in V State authored by Hon’ble Justice as His Lordship then was it was that provisions of Order XXXIX Rule 2-A and principles governing an application under Order XXXIX Rule 2-A of CPC are akin to proceedings under Section 12 of Contempt of Courts Act and proceedings/provisions for violation of orders of Court are intended to preserve majesty of Court and to ensure utmost respect and honour for Rule of Law - Principle is unsullied stream of justice cannot be disturbed in any manner by violation of orders of Court as that would have a direct and deleterious effect on majesty of rule of law - In Century Floor Mills Ltd Vs reported this Court that violation of orders of an order of injunction granted by a Civil Court or any disobedience qua injunction granted by a civil Court is such that it is duty of Court as a matter of judicial policy to undo wrong done owing to such disobedience of Court’s order - This Commercial Division notices that this view is a phenomenon in jurisprudence in this regard across country - This commercial Division has no difficulty in accepting submissions that Order XXXIX Rule 2-A CPC and other analogous provisions are indented to maintain majesty of judicial order to preserve rule of law and to ensure faith of litigants in administration of justice - There can be no two opinions about position that such provisions are sanctus and its purpose is to ensure that directions of Court are implemented and disobedience of orders are remedied by ensuring restoration of status-quo - In light of aforesaid context counsel for plaintiff insisted that punitive damages should be levied on defendants and added that it can go to credit of any charitable cause at discretion of this Court - Advocate Commissioner should only take inventories and not seize alleged offending material - In light of orders in instant applications now it is deemed appropriate that jurisdictional police authorities have to seize offending material - As it is necessary to identify offending material same Advocate Commissioner who was appointed earlier namely Advocate Additional Law Chambers High Court Buildings Chennai is appointed again to identify offending material in accordance with inventories and also in any other place where it is found irrespective of whether it forms part of inventory or not and also irrespective of whether it is found at place/s which he has already visited or not - Remuneration for Advocate Commissioner shall be and this shall be paid by plaintiff subject to outcome of other interlocutory applications and/or main suit - Entire exercise of seizing offending materials shall be completed within three weeks from date of this order being pronounced in open Court. Registry shall communicate this order to Director General of Police Tamil Nadu who shall instruct jurisdictional District Superintendent/s of Police to do needful to seize offending material identified by Advocate Commissioner - Director General of Police Tamil Nadu shall also send necessary communications to his counter part in Gujarat and also do all that is required for seizure in Gujarat - To be noted seizure is by law enforcing agency by police and not by Advocate Commissioner - Applications Disposed Of
JUDGMENT :
1. This common order will govern both these applications i.e., A. Nos. 7341 of 2018 and 7342 of 2018.
2. Both these applications have been filed by the sole plaintiff in the main suit complaining of wilful disobedience of orders of this Court dated 28.04.2018 made in O.A.Nos.470 and 471 of 2018 (continued until further orders on 13.08.2018 and operating now). Both these applications have been filed inter alia under Order XXXIX Rule 2-A of 'The Code of Civil Procedure, 1908' ('CPC' for brevity). Defendants 1 and 2 in the main suit are Respondents 1 and 2 respectively in both these applications.
3. From here on, parties in these two applications shall be referred to by their respective ranks in the main suit for the sake of convenience and clarity.
4. To be noted, parties will be referred to by their respective ranks in the main suit and in O.A.Nos.470 and 471 of 2018 also as sole plaintiff and two defendants are applicant and two respondents respectively in those two original applications also.
5. Product that is the nucleus of this lis is 'matches' or in other words, 'match boxes'. Plaintiff is primarily in agarbathi industry and Court is informed that a trademark with a bicycle (cycle) registered in favour of plaintiff, is the house mark of the plaintiff. As agarbathi and matches go hand in hand, plaintiff has been selling some of its agarbathis along with a complementary match box (matches) attached to the agarbathi carton. It is plaintiff's specific say that match box/matches given along with plaintiff's agarbathi carton is complementary. In other words, a customer /consumer purchasing agarbathis of the plaintiff, gets the match box free as an accompaniment, which is attached to the agarbathi carton. For this purpose, plaintiff has obtained registration of its aforesaid house mark (cycle) in Class 34 for safety matches. This registration of the plaintiff of its house mark Cycle for safety matches is with a rider/limitation that it is only for the purpose of being given as a complementary product with the agarbathis. However, besides this registration, it is submitted that plaintiff has not less than 14 trademark registrations for agarbathies and several other products in four different classes, namely Classes 3, 35, 41 and 43.
6. Defendants are admittedly in the business of manufacture and sale of safety matches.
7. Therefore, the central theme of the main suit is registration of Trademark 'Cycle' for safety matches by the plaintiff and therefore, the same shall hereinafter be referred to as 'suit TM'. Plaintiff claims that they have copyright also in artistic work in the suit TM.
8. According to plaintiff, defendants started applying a deceptively similar / identical mark i.e., Cycle on their safety matches leading to infringement of suit TM, Copyright in suit TM and passing off qua suit TM. Seeking injunctive reliefs with regard to these three aspects i.e., infringement of suit TM, infringement of Copyright in suit TM, passing off qua suit TM (besides other incidental and ancillary reliefs), main suit has been filed by the plaintiff. Considering the limited scope of the instant applications, which are essentially applications under Order XXXIX Rule 2-A of CPC, suffice to set out that a typical trademark registration of the plaintiff qua suit TM is as follows:
9. A typical depiction of the suit TM by the plaintiff on its safety matches carton is as follows:
10. Alleged offending mark used by the defendants on their safety matches and typical match boxes of defendants in this regard are as follows:
11. At the time of inception of suit, along with the main suit, plaintiff took out the aforesaid two interlocutory applications being O.A.Nos.470 of 2018 and 471 of 2018 with interim injunctive relief prayers with regard to infringement of suit TM and passing off qua suit TM respectively. Another application regarding infringement of copyright being O.A.No.469 of 2018 was also taken out, but this is stated only for completion of
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
