@JUDGMENTTAG-ORDER
V. Ramasubramanian, J.@mdashThalappakatti Naidu Anandha Vilas Biriyani Hotel, Dindigul represented by its partner N. Dhanapalan came up with the suit C.S. No. 203 of 2007, seeking (i) a decree of permanent injunction restraining the Defendant therein from committing infringement of the Plaintiff''s trademark and also (ii) a decree of permanent injunction restraining the Defendant from passing off their food products as that of the Plaintiff''s. Pending suit, the Plaintiff moved two applications for injunction in O.A. Nos. 298 and 299 of 2007, one for infringement and another for passing off. Both the applications for injunction were allowed by me by an order dated 7.11.2007. Challenging the common order passed in both the applications, the Defendant in C.S. No. 203 of 2007 filed two appeals in O.S.A. Nos. 223 and 224 of 2008. In the course of hearing of the appeals, both parties agreed to an interim arrangement, as suggested by the Division Bench, without prejudice to the contentions of each other. As per the said interim arrangement, the Defendant in C.S. No. 203 of 2007 was permitted to change their name as "Chennai Rawther Thalappakattu Biriyani". The appeals were accordingly disposed of on 19.11.2008 with a direction to expedite the trial of the suit.
2. Thereafter, the Defendant in C.S. No. 203 of 2007 filed a written statement in June 2009 and issues were framed on 3.7.2009. The suit was posted for trial and documents on the side of the Plaintiff were marked in September 2010. However, the cross-examination of PW-1 did not proceed.
3. But in the meantime, the Defendant in C.S. No. 203 of 2007, who originally had only 4 outlets in the City of Chennai, started expanding its business and opened 9 more outlets (in addition to the 4 already in existence). The Defendant also hosted a website with the name "Thalappakattu".
4. Even before the institution of the above suit, the Plaintiff in C.S. No. 203 of 2007 had applied for registration of the trademark "Thalappakatti" under application No. 1408388. The Defendant in that suit had also applied for registration under application No. 1385141. By an order dated 22.9.2010, the Deputy Registrar of Trade Marks allowed the application of the Plaintiff and issued a Certificate of Registration on 23.9.2010. By another order of the same date, the Defendant''s application was refused.
5. Therefore, on the basis of the registration obtained by them, the Plaintiff filed applications in M.P. Nos. 1 and 1 of 2010 in O.S.A. Nos. 223 and 224 of 2008, seeking a modification of the order passed in O.S.A. Nos. 223 and 224 of 2008 dated 19.11.2008. But the applications were later allowed to be withdrawn with liberty to file appropriate application in the suit itself, by a common order passed by the Division Bench of this Court dated 6.1.2011.
6. With the liberty so granted, the Plaintiff in C.S. No. 203 of 2007 filed (i) O.A. Nos. 48 and 49 of 2007 in C.S. No. 203 of 2007 for interim orders of injunction restraining the Defendant from opening further retail outlets/restaurants by using the offending trademark and restraining the Defendant from continuing to use the offending trademark and (ii) C.S. No. 32 of 2011 for infringement and passing off, based upon the subsequent cause of action viz., the opening of more outlets by the Defendant and the registration of the trademark of the Plaintiff. Along with C.S. No. 32 of 2011, the Plaintiff has also moved O.A. No. 54 of 2011 for an interim injunction restraining the Defendant from committing infringement of the Plaintiff''s registered trademark.
7. Thus, I have on hand, two fresh applications for injunction in the first suit viz., C.S. No. 203 of 2007, where the reliefs are confined to further opening of outlets using the offending trademark and committing further infringement of the registered trademark. I also have on hand, a fresh suit C.S. No. 32 of 2011 instituted on the basis of the subsequent cause of action viz., the opening of more outlets and the registration of the trademark of the Plaintiff.
8. I have heard Mr. R. Muthukumaraswamy, learned Senior Counsel for the applicant/Plaintiff and Mr. Arvind P. Datar, learned Senior Counsel for the Respondent/Defendant.
9. Before proceeding to consider the rival submissions, it is necessary to take note of the following facts:
(i) The case of the Plaintiff in the first suit was that way back in the year 1957, one P. Nagaswamy Naidu, the father of N. Dhanapalan, one of the partners of the Plaintiff-firm started a hotel business in Dindigul, which became famous for the Biriyani prepared and served at the hotel; that the said P. Nagaswamy Naidu was known as Thalappakatti Naidu and hence the hotel became popularly known as Thalappakatti Naidu Biriyani Hotel; that after the death of the father P. Nagaswamy Naidu in 1978, his son adopted the name and style of Thalappakatti Naidu Anandha Vilas Biriyani Stall with the picture of his father wearing a Turban; that after running the business as a Proprietor from 1978-2002, N. Dhanapalan converted the business into a partnership; that the partnership business expanded to Coimbatore and Thiruppur; that the trademark and trading style of the Plaintiff gained wide reputation through print and electronic media; and that when the Defendant started using the same name for the hotels run by him at Anna Nagar and Vadapalani, the Plaintiff was compelled to come up with the first suit.
(ii) In the applications for injunction filed in the first suit, the Defendant filed a common counter affidavit contending (1) that his grandfather Hussain Rowther was the Chief of the Horse Regiment in the palace of the Rajah of Sivaganga, who used to wear a Turban which is called in Tamil Nadu as "Thalaipagai", (2) that the forefathers of the Respondent were called Thalappakattu Rowthers in Chettinadu; (3) that as a mark of respect for his forefathers, the name Thalappakattu was adopted by the Defendant and the Defendant had applied for registration of the mark under application No. 1385141 in Class 30; (4) that in the year 2006, many persons were found using the trade mark Thalappakattu, which forced the Defendant to issue cease and desist notices to them; (5) that while the Defendant filed an application for registration of the trademark in September, 2005, the Plaintiff filed an application only subsequently; and (6) that the trademark of the Defendant had already been published in the Trade Marks Journal and the statutory period for filing objections having already lapsed, the application for registration is deemed to have been accepted.
(iii) In O.A. Nos. 298 and 299 of 2007 in C.S. No. 203 of 2007, the Plaintiff filed a set of 36 documents and the Defendant filed a set of 24 documents.
(iv) On the basis of the pleadings and the documents, I came to the conclusion in my order dated 7.11.2007 that the Plaintiff is the prior user of the trademark "Thalappakatti Naidu"; that an article written in a newspaper way back on 20.10.1995 proved that the trademark and trading style was adopted by P. Nagaswamy Naidu in 1957 itself, attracting many political leaders and film personalities to their shop; and that the articles published in various magazines and newspapers in 1995 and 1996 established the adoption and use of the trademark and trading name "Thalappakatti" by the Plaintiff for nearly 50 years. Therefore, in paragraph 14 of the order dated 7.11.2007, I recorded a finding (1) that the Plaintiff is the prior user of the trademark and the trading style; (2) that the dispute is in respect of the same name and not similar name; and (3) that the use of the trademark and trading style is in respect of the same goods and services.
(v) A contention was raised in the first round of litigation that the Plaintiff had not established the acquisition of great reputation and goodwill and that the use of the trademark by the Plaintiff was not continuous but only disjuncted. But I rejected these contentions.
10. As stated earlier, my order dated 7.11.2007 became the subject matter of 2 appeals in O.S.A. Nos. 223 and 224 of 2008. But the Division Bench did not upset any of the findings recorded in the order dated 7.11.2007. On the contrary, the parties agreed to an interim arrangement, for whatever reasons that we cannot now probe into. The order of the Division Bench reads as follows:
The present appeals are directed against the common order dated 7.11.2007 made in O.A. Nos. 298 and 299 of 2007 respectively in C.S. No. 203 of 2007 whereunder the learned Single Judge has granted interim injunction prohibiting the present Defendant/Appellant to continue the same trade mark as claimed by the Respondent/Plaintiff.
2. This Court, while entertaining the above appeals, passed an order dated 11.9.2008 to the following effect:
Heard the learned Counsel for the parties. Let the matter be taken up by the Third Bench on 20th October 2008. In the meantime, the Appellant will run its outlets with the Name Board that it is selling "Chennai Thalappakattu Biriyani". This of course is without prejudice to the rights and contentions of the parties.
3. In the course of the hearing, it was suggested by us that any decision on the relative merits of the contentions of either party is likely to prejudice the contention of other party in dispute and therefore, it would be more appropriate to make the interim arrangement without prejudice to the right of both the parties. Accordingly, it has been suggested by the learned Senior Counsel for the Appellant that as an interim measure, the Appellant shall use the expression "Chennai Rawther Thalappakattu Biriyani" in the place of the present name and all such letters will be of equal prominence.
4. The learned Senior Counsel for the Respondent stated that this order should only be considered as an interim arrangement and without prejudice to the contentions which have been raised by the Respondent/Plaintiff in the suit.
5. Accordingly, instead of going into the merits of the contention of either of the parties, we dispose of the appeals with an observation that the Appellant will be permitted to change the present name in the Name Boards, Wrappers as well as Pamphlet as mentioned below in English and in Tamil and such letters will be of equal prominence:
CHENNAI RAWTHER THALAPPAKATTU BIRIYANI"
6. It is made clear that this is purely an interim arrangement without prejudice to the contention of both the parties in the suit as well as before the Trademark Registry. The Appellant is directed to effect necessary changes in the name in the Board, Wrappers, Pamphlets etc., on or before the end of this month.
7. Keeping in view the urgency expressed and the nature of dispute involved in the case, we request the learned Single Judge to dispose of the suit on merits, as expeditiously as possible, preferably within a period of three months.
11. In pursuance of the aforesaid order of the Division Bench dated 19.11.2008, the previous suit C.S. No. 203 of 2007 was also taken up for trial and it is pending without much progress, for reasons best known to both parties, who blame each other. Therefore, in the normal circumstances, if there had been no change of circumstances and no subsequent developments, the parties should be directed to work out their remedies only in the said suit, on the basis of the principle of finality to litigation, since the order of the Division Bench had attained finality as between the parties. However, the Plaintiff has come up not only with two fresh applications for injunction in the previous suit, but has also come up with a fresh suit on the basis of two subsequent events viz., (i) the opening of additional outlets/restaurants by the Defendant and (ii) the grant of registration of the Plaintiff''s trademark and the rejection of the Defendant''s application for registration. According to the Plaintiff, these events constitute (i) a fresh cause of action and (ii) a change of circumstance.
12. In the background of the above facts, it is contended by Mr. Arvind P. Datar, learned Senior Counsel for the Defendant (i) that neither the fresh applications in the previous suit nor the fresh suit, are maintainable in law after the order of the Division Bench; (ii) that after the withdrawal of the application from modification of the order of the Division Bench, it was not open to the Plaintiff to seek the same remedy before the Single Judge, as it would result in a conflict of opinion; (iii) that the present suit is nothing but a mere repetition of the previous suit except with some cosmetic changes, as the application for registration of the trademark was pending even at the time when the first suit was filed and hence the suit is also barred by principles enunciated in Order II, Rule 2, Code of Civil Procedure.
13. Since the scope of the dispute on merits, is lesser than the scope for dispute on the above technical objections, let me first deal with the above technical objections.
MAINTAINABILITY:
14. The objections with regard to the maintainability of the fresh applications for injunction in the old suit as well as to the maintainability of the fresh suit, are not really well founded. The first suit C.S. No. 203 of 2007 was based upon the cause of action that the Plaintiff had in respect of passing off. There is no dispute about the fact that the Plaintiff had not obtained registration of the trademark in 2007, at the time of institution of the first suit, though the application for registration was pending at that time. But after the order of the Division Bench dated 19.11.2008, the Plaintiff had obtained registration of the trademark. The registration is certainly a fresh cause of action. While the cause of action for the first suit is passing off, the cause of action for the second suit is infringement. While an action for passing off is a common law remedy, an action for infringement is a statutory remedy. Section 27 (1) of the Trade Marks Act, 1999, bars the remedy of a suit for infringement in respect of an unregistered trademark. However, Sub-section (2) of Section 27 makes it clear that an action for passing off is not barred by virtue of Section 27(1). Section 28 of the Act, lists out the rights conferred by a registration of the trademark. Under Sub-section (1) of Section 28, the registration of a trademark gives to the registered Proprietor, the exclusive right to the use of the trademark and to obtain a relief in respect of an infringement. The right conferred by Section 28(1) of the Act, crystallised to the Plaintiff, only upon the registration of their trademark on 22.9.2010.
15. Upon the registration of the trademark on 22.9.2010, the Plaintiff had two alternatives on hand viz., (i) to file an application for amendment of the pleading in the first suit C.S. No. 203 of 2007 so as to include the factum of registration and the factum of infringement or alternatively (ii) to file a fresh suit on the subsequent cause of action.
16. In
17. But I do not agree. The decision in A. Abdul Karim Sahib arose out of an application for amendment, dismissed by the trial Court. On revision to the High Court, the amendment was allowed on the ground that the actions for passing off and infringement could be telescoped into each other. For holding so, the learned Judge took note of the fact that the suit was instituted on 24.9.1962 and that within two days of the institution of the suit, the Plaintiff secured registration of his trademark and that the amendment sought was a pre-trial amendment.
18. But the CPC underwent a sea change in 1976, 1999 and 2002 and the decision in A. Abdul Karim Sahib was prior to 1976. After Amendment Act 22 of 2002, the Court''s powers to allow an application for amendment has been curtailed by virtue of the proviso to Rule 17 of Order VI, if the trial had already commenced. In the case on hand, the trial had already commenced, by the time the registration of the trademark was granted on 22.9.2010. Therefore option of seeking amendment of the plaint was a risky one.
19. Moreover, an application for amendment would have only resulted in a rewinding of the entire sequence of events and putting the Plaintiff back to square one. Therefore, the Plaintiff has chosen the second option. So long as there is no bar for the second alternative, the suit instituted on the fresh cause of action and the fresh applications for injunction filed in the previous suit cannot be said to be not maintainable.
20. As a matter of fact, an application for amendment was prone to be objected to by the Defendant on the ground that the same was based upon a new cause of action and that it was barred by the proviso to Rule 17 of Order VI. Today the Defendant appears to be taking a very charitable stand, by contending that the Plaintiff could have simply sought an amendment of the pleading in the previous suit itself. But I do not think that this charity would have been extended if an application for amendment had actually been filed.
21. In so far as the fresh applications for injunction filed in the previous suit are concerned, a careful perusal of the prayers therein would show that they are confined only to further infringement of the trademark, over and above the interim arrangement agreed to before the Division Bench. Therefore, those applications cannot also be said to be not maintainable in law. Hence, the first objection relating to the maintainability of the fresh suit as well as the maintainability of the fresh applications for injunction in the old suit, is rejected.
WITHDRAWAL OF THE APPLICATIONS FOR MODIFICATION BEFORE THE DIVISION BENCH:
22. It is true that after obtaining registration of the trademark, the Plaintiff herein filed two miscellaneous petitions in M.P. Nos. 1 and 1 of 2010 in O.S.A. Nos. 223 and 224 of 2008, praying for a modification of the order passed in those appeals, by restraining the Respondent from using the name "Thalappakattu". The petitions for modification were also based upon the subsequent events viz., (i) the opening of 9 outlets in addition to the existing 4 and (ii) the grant of registration of the Plaintiff''s trademark and the rejection of the application of the Defendant for registration of the trademark.
23. However, on 6.1.2011, the miscellaneous petitions were withdrawn with liberty to move this Court in accordance with law. Therefore, the Division Bench passed an order on 6.1.2011 which reads as follows:
Learned Counsel for the Petitioner seeks permission of this Court to withdrawn the abovesaid miscellaneous petitions with liberty to file an application before the learned single Judge.
Permission granted and these miscellaneous petitions are dismissed as withdrawn with such liberty.
24. The filing of the miscellaneous petitions before the Division Bench and their withdrawal with liberty to approach the original Court, cannot bar the Plaintiff either from filing the fresh applications in the old suit or from filing the fresh suit. The reasons are as follows:
(i) After the disposal of the appeals in O.S.A. Nos. 223 and 224 of 2008, by order dated 19.11.2008, the Division Bench was not seized of any matter, to enable the Plaintiff to move the Division Bench. Petitions for modification of a final order passed by consent, are not maintainable at all. The only manner in which the Plaintiff could have lawfully invoked the jurisdiction of the Division Bench, was by filing review applications and not by filing petitions for modification. But review applications were also not maintainable, in view of the fact that the order dated 19.11.2008 passed by the Division Bench, was a consent order and a review of the said order would not satisfy any of the requirements of Order 47, Rule 1, Code of Civil Procedure. Therefore, the Plaintiff was prudent enough to withdraw an application filed imprudently. Hence, this cannot bar the Plaintiff from seeking remedy before this Court.
(ii) In any case, the Division Bench had granted liberty to the Plaintiff, while dismissing as withdrawn, the applications for modification. Therefore, there was no impediment for the Plaintiff.
(iii) It is a misconception to think that the order passed by consent, on 19.11.2008, by the Division Bench, was sought to be modified by the Plaintiff by filing these applications. When the Division Bench passed orders on 19.11.2008, on the consent of both parties, the Defendant had only 4 shops. The order of the Division Bench discloses that the consent reached between the parties before the Division Bench, was in pursuance of a suggestion made by the Court itself. Therefore, the consent given by the Plaintiff could be taken to be limited only to the circumstances prevailing at that time. It is an elementary principle of the Law of Contract that the consent of a party would be valid only when the parties are ad idem. The parties have agreed upon the same thing in the same sense at that time. If one of the parties attempts to do something which infringes upon the free nature of the consent given by the other, the latter cannot be left remediless. The situation prevailing at the time when consent was reached between the parties before the Division Bench, was that the Defendant was only running 4 shops. But after the consent order, the Defendant had started 9 more shops, taking it for granted that they now have a license. In such circumstances, I do not think that the Plaintiff can be non-suited on the basis of the order of the Division Bench.
(iv) As pointed out earlier, the Plaintiff is not now going back on the consent given before the Division Bench. The reliefs now sought by the Plaintiff are confined only to those shops, over and above the 4 shops which were functioning at the time when the Division Bench passed the order. Though the fresh suit filed by the Plaintiff is for infringement, based upon the registration of their trademark, the reliefs sought in the interim applications in the old suit are restricted to the opening of fresh outlets, other than the 4 covered by the order of the Division Bench. Therefore, the Plaintiff cannot be said to be seeking a modification of the order of the Division Bench, before a single Judge. All that the Plaintiff is now seeking, is that the consent order of the Division Bench should be restricted only to the shops that were in existence as on 19.11.2008, the date on which the Division Bench disposed of the original side appeals. It is not the case of the Defendant that even on 19.11.2008, all the 13 shops were in existence. Therefore, the second contention of the Defendant is on a misunderstanding of the scope of the present applications and hence it is liable to be rejected.
(v) It is needless to point out that even a consent decree does not operate as res judicata in the strict sense of the term. It may, for all intents and purposes, have the same effect, as a decree passed "in invitum". It only raises an estoppel (See
BAR UNDER ORDER II, RULE 2, Code of Civil Procedure:
25. The third contention of the Defendant is that the fresh suit is barred by the principles enunciated in Order II, Rule 2, Code of Civil Procedure. This contention is based upon the fact that the old suit C.S. No. 203 of 2007 itself was filed by the Plaintiff, both for infringement and for passing off. This was despite the fact that the application for registration of the trademark was merely pending, but registration had not been obtained. Therefore, it is the contention of the learned Senior Counsel for the Defendant that the second suit is also based upon the cause of action pleaded by the Plaintiff in the first suit and that therefore, the second suit is barred.
26. It is further contended by the learned Senior Counsel for the Defendant that the registration of a trademark relates back to the date of the application. The application for registration was made by the Plaintiff even before the institution of the first suit. Therefore, according to the learned Senior Counsel, the subsequent grant of registration would relate back to the date of filing of the application, thereby curing the defect in the original institution of the suit as one for infringement.
27. In support of the above contention, the learned Senior Counsel for the Defendant relied upon a decision of the Allahabad High Court in
The writ for infringement may be issued before registration of the mark, provided that registration has been applied for, since the registration is dated back to the application.
Therefore, in the light of Section 23 read with Section 131 of the 1958 Act and following the decision of this Court in
28. But the above contention loses sight of one important fact. The "doctrine of relation back", incorporated in Section 23 of the Trade Marks Act, is by way of a deeming fiction. Relatio est flictio juris et intenta ad unum. It means that "relation is a fiction of law and intended for one thing". What is intended for one thing cannot be applied for everything. A deeming fiction can put something back in point of time for various purposes. But a cause of action cannot be created through a deeming fiction. "Fiction" is antithesis to "action" and cause of action cannot be converted into cause of fiction.
29. Moreover, the passage extracted by the Allahabad High Court from the 10th Edition of Kerly''s Law of Trade Marks and Trade Names, does not tally with paragraph 14-122 at page 395 of Kerly''s Law of Trade Marks and Trade Names, 14th Edition (London 2005 and South Asian Edition 2007). It reads as follows:
Date from which rights are conferred -The rights of the Proprietor have effect from the date of filing of the application for registration. But no infringement proceedings may be began before the date on which the trademark is in fact registered. In this respect, the position is the same as under the old law.
Therefore, what is extracted by the Allahabad High Court, from Kerly''s Law of Trade Marks and Trade Names, does not tally with what is contained in the 14th Edition of the book.
30. Cause of action as pointed out by various Courts, is a bundle of facts and not a mixture of facts and fiction. Fact is different from fiction. Therefore, a deeming fiction cannot be elevated to the level of a fact, so as to make it a cause of action. The cause of action for a suit for infringement should comprise of a minimum of two facts viz., (i) the registration of the trademark and (ii) some action of the Defendant, amounting to infringement. If a person is held entitled to file a suit for infringement, merely on the basis of the pendency of his application for registration and solely on an anticipation that the trademark would be registered, one of the above two facts would be in existence on the date of institution of the suit. But the other fact which forms part and parcel of the same cause of action viz., the registration, would arise subsequently and the suit would become maintainable, only if the deeming fiction available in respect of registration, is also made available to a cause of action. Moreover, the application of the principle of deeming fiction available in Section 23 of the Act, to causes of action, would create lot of confusion. By way of example, let me take a case where the Plaintiff could not get registration till the disposal of his suit for infringement. The Court would naturally dismiss the prayer for infringement, if registration is not obtained till the date of disposal of the suit. But if registration is obtained during the pendency of the appeal, the Plaintiff would then be entitled to seek a decree in the Appellate Court, if the contention of the Defendant is accepted. This will lead to an anomalous situation. In
31. As a matter of fact, the expression "registered proprietor" is defined u/s 2(1)(v) of the Trade Marks Act, 1999 to mean the person for the time being entered in the Register as Proprietor of the trademark. The rights conferred by Section 28(1) for proceeding against someone for infringement, are only on the "Registered Proprietor". If on the date of institution of the suit, the Plaintiff was not the registered proprietor, within the meaning of Section 2(1)(v) of the Act, he would have no right to institute a suit for infringement u/s 28(1) at all.
32. The issue has to be looked at, from another angle also. u/s 124 (1) of the Act, the Defendant in an action for infringement is entitled to seek a stay of the suit, if he satisfies the conditions laid down in Clause (a) or (b). This opportunity will arise for the Defendant, only after the Plaintiff obtains registration. If the deeming fiction available in Section 23, is also extended to the cause of action, the occasion for the Defendant to invoke Section 124 may arise even after the trial of the suit. Similarly, Section 134(2) of the Trade Marks Act, 1999, entitles the registered proprietor of a trademark to institute the suit for infringement in the Court within whose jurisdiction the person instituting the suit resides or carries on business. This facility is not available to a person filing a suit merely for passing off. If the deeming fiction contained in Section 23 is extended, even to causes of action, an unregistered proprietor may institute a suit for infringement and passing off in a wrong Forum and thereafter, try to take advantage of Section 134 (2) on the basis of subsequent registration. Therefore, the interpretation to Section 23 should be in consonance with the other provisions of the Act and the interpretation should be confined only to the purpose for which the fiction was created. In
33. Again in
34. In
35. Coming to Order II, Rule 2, Code of Civil Procedure, it is needless to point out that to invoke the same, both suits must have been on the same cause of action. As pointed out by the Supreme Court in
36. The following passage from
61. (1) The correct test in cases falling under Order 2, Rule 2, is ''whether the claim in the new suit is in fact founded upon a cause of action distinct from that which was the foundation for the former suit'' (Moonshee Buzloor Ruheem v. Shumsoonnissa Begum (1867) 11 MIA 551 (PC).
(2) The cause of action means every fact which will be necessary for the Plaintiff to prove if traversed in order to support his right to the judgment {Read v. Brown (1888) 22 QBD 128}.
(3) If the evidence to support the two claims is different, then the causes of action are also different (Brunsden v. Humphrey (1884) 14 QBD 141).
(4) The causes of action in the two suits may be considered to be the same if in substance they are identical (Brunsden v. Humphrey (1884) 14 QBD 141).
(5) The cause of action has no relation whatever to the defence that may be set up by the Defendant nor does it depend upon the character of the relief prayed for by the Plaintiff. It refers ... to the media upon which the Plaintiff asks the Court to arrive at a conclusion in his favour (Chand Kour v. Partab Singh (1887) 15 IA 156). This observation was made by Lord Watson in a case u/s 43 of the Act of 1882 (corresponding to Order 2, Rule 2) where Plaintiff made various claims in the same suit." (IA pp. 139-140).
If the above tests are applied, it will be clear (i) that the grant of registration is a fact, which actually happened after the institution of the first suit (ii) that such registration alone gave rise to a cause of action for infringement and (iii) that therefore, the subsequent suit is not barred by the principles underlying Order II, Rule 2, Code of Civil Procedure.
MERITS OF THE CASE:
37. Once the preliminary technical objections raised by the Defendant are rejected, the question to be considered then is as to whether the Plaintiff has made out a prima facie case and the existence of balance of convenience in his favour.
38. As pointed out earlier, it was held by me even in O.A. Nos. 298 and 299 of 2007 in C.S. No. 203 of 2007 (i) that the Plaintiff is the prior user of the trademark and the trading style (ii) that the dispute is in respect of the same name and not similar name and (iii) that the use of the same trade name and trading style are also in respect of the very same goods and services. Those findings were recorded even in the action for passing of. Those findings were not set aside by the Division Bench, but the parties entered into a compromise.
39. Today the Plaintiff has also obtained registration of the trademark and the application of the Defendant for registration of their trademark stands dismissed by an order dated 22.9.2010. Though it is contended by the Defendant that they have filed two appeals and a rectification application, there is no stay of the order. In an additional counter affidavit filed by them, the Defendant has raised suspicion about the manner in which the Certificate of Registration was issued to the Plaintiff. But there can be no presumption in law that a statutory authority could not have performed his duties properly.
40. The Defendant has also contended that they had filed one more application for registration under Class 42. But the same cannot make the Defendant entitled to commit infringement till their application for registration is disposed of.
41. Once it is found (i) that the Plaintiff is the registered proprietor of the trademark (ii) that the Plaintiff was the prior user of the trademark, far ahead in point of time than the use by the Defendant (iii) that the Defendant''s attempt to get the same mark registered failed before the Registrar (iv) that at the time when an interim arrangement was reached by consent before the Division Bench, the Defendant had only 4 outlets, but started 9 more outlets thereafter and (v) that the case is one of same marks and not similar marks, applied on the very same type of goods and services, an injunction should automatically follow. This is the mandate of the Apex Court in
5. The law on the subject is well settled. In cases of infringement either of trademark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
42. In
43. By showing the existence of factors indicated in the preceding paragraphs, the Plaintiff has established a prima facie case. The consent given by the Plaintiff before the Division Bench, for buying peace, purely by way of a temporary arrangement, appears to have been understood as a sign of weakness and misused by the Defendant. The opening of more outlets and the use of the name by the Defendant, is certainly an onslaught on the registered trademark and would dilute and weaken the registered mark. Therefore, the balance of convenience is also in favour of the Plaintiff.
44. In para 124 of its decision in Ramdev (cited supra), the Supreme Court pointed out that if the first two prerequisites (prima facie case and balance of convenience) are fulfilled, in trademark actions, irreparable loss can be presumed to have taken place. Therefore, the Plaintiff is entitled to an order of injunction.
45. In view of the above, all the applications for the injunction are allowed, granting a limited order of injunction, in favour of the Plaintiff, restraining the Respondent from using the name "Thalappakattu" in any of the restaurants/shops, opened after 19.11.2008, the date on which a consent order was passed before the Division Bench in O.S.A. Nos. 223 and 224 of 2008. In other words, the Defendant is entitled to use the name, in respect of the 4 shops that were in existence, as on the date 19.11.2008, in the manner as agreed to before the Division Bench. But the benefit of the consent given by the Plaintiff before the Division Bench, would not be available to the Defendant, in respect of the shops/restaurants opened after 19.11.2008. In other words, the Defendant is prohibited from using the name "Thalappakattu" or any other name deceptively similar to the registered trademark of the Plaintiff, in the shops/restaurants opened after 19.11.2008. There will be no order as to costs.
