P. Sathasivam, J.@mdashSince all these appeals are filed against the common order of the learned Additional District Judge cum Chief Judicial Magistrate, Coimbatore, they are being disposed of by the following common Judgment.
2. All these appeals arise out of a common order in I.A. Nos. 23 to 25 of 1999 in O.S. No. 2 of 1999 on the file of I Additional District Judge, Coimbatore. By the impugned common order dated 17.03.1999, the learned Additional District Judge had granted interim injunction restraining the defendants from interfering with the exclusive rights of the petitioner in I.A. No. 23 of 1999, restraining the defendants 2 to 6 from passing off their goods bearing the trade mark SUN-ARC in I.A. No. 24 of 1999 and restraining the defendants from making any transfers or assignments or encumbrance in respect of the trade mark SUNARC or emblem in I.A. No. 25 of 1999. The learned Additional District Judge has granted these interim orders until the disposal of the suit or the expiry of the agreement dated 27.01.1996, whichever is earlier. The learned Judge has not granted interim injunction against defendants 5 and 6. The appeals, namely, CMA. Nos. 593 to 595 of 1999 are filed by Wonderweld Electrodes Private Limited - 4th defendant in the suit. CMAs. 596 to 598 of 1999 are the appeals filed by defendants 1 and 2 and others. CMAs. 681 to 683 of 1999 are filed by the plaintiff in O.S. No. 2 of 1999 against the limitation of time fixed in the order passed by the learned District Judge and also for an injunction against defendants 5 and 6.
3. Though we are asked to consider the order of injunction granted by the learned Additional District Judge, in view of elaborate arguments made by the learned counsel, let us briefly state the case of the plaintiff and defendants as pleaded. For convenience, we shall refer the parties as arrayed in suit.
4. According to the plaintiff, it is a Public Limited Company incorporated in 1964 and it is engaged in the manufacture and supply of various types of welding electrodes. The first defendant till 1988 was a Partnership Firm and became a Private Company incorporated under the Companies Act in 1988. The first defendant also engaged in the production and supply of various types of electrodes and is the registered owner of the trade mark SUN-ARC as well as logo. The plaintiff entered into an agreement with the first defendant for the use of Trade name and Trade Mark from 1972 onwards. As per the agreement dated 01.01.1986, the plaintiff was conferred with the right to sell their products under the name SUN-ARC. This agreement was for a period of five years commencing from 01.04.1985 to 31.03.1990. Even before this agreement was entered into, the plaintiff and the then Partnership Firm Welding Rods Manufacturing Company were working together. On 16.02.1989, another agreement was entered into between the plaintiff and the first defendant. At that time, the first defendant became a Private Limited Company. Subsequently, another agreement dated 01.04.1990 was entered into between the plaintiff and the first defendant for a period of five years. As per Clause 3 (d) of the agreement, the plaintiff was given the right to use their trade name SUN-ARC. Thus, the plaintiff got the right to use the said trade name and emblem in their advertisements, letter heads, pamphlets, technical literature, hoarding etc., for their products. In order to protect their interest, a comprehensive agreement dated 27.01.1996 was entered into between the plaintiff and the first defendant and as per the said agreement the trade name SUN-ARC is the property of the first defendant and it belongs to them. It has also been mentioned in the agreement that the plaintiff has been using the said brand name and trade mark all along. The first defendant has also agreed not to sell their products in the areas of Tamil Nadu, Pondicherry, Goa, Kerala Karnataka, Andhra Pradesh, Orissa, West Bengal and Maharastra (except the Districts of Mumbai and Thane). The plaintiff has paid compensation of Rs. 50 lakhs to the first defendant under this agreement. The first defendant agreed that it will not give the right of usage of the brand name SUN-ARC to others without the consent of the plaintiff. As per Clause 6 of the agreement, the period of agreement was five years and it can be extended at the option of the plaintiff without any further payment of compensation. The agreement dated 27.01.1996 was followed by a supplemental agreement dated 25.06.1996. While so, the first defendant in collusion with the other defendants, got some rights on defendants 2 to 6 either by way of assignment or by some agreement regarding user in violation of Clause 3 of the agreement dated 27.01.1996. The plaintiff came to know through a publication in the "Trade Marks Journal" dated 01.01.1999 that the first defendant has purported to assign the trade name SUN-ARC to the second defendant. The defendants 1 and 2 have suppressed the material facts before the Registration authorities and obtained an illegal registration. Defendants 2 to 6 have engaged agents all over the country and they are making hurried attempts to pass of their goods under the name SUN-ARC, thereby prejudicing the rights of the plaintiff. The defendants are not the bona fide assignees or authorised users of the trade mark and trade name SUN-ARC. The plaintiff is entitled to the remedies which are provided under the Trade and Merchandise Marks Act, 1958 (in short "the Act") and also under common law. The suit is coming within the purview of common law. In spite of the arbitration clause, the plaintiff is entitled to maintain the present suit for injunction. The very same averments have been reiterated by the plaintiff in the affidavits filed in support of the applications for injunction.
5. In the counter statement filed by the respondent - first defendant, M/s. Welding Rods Private Limited, it is stated that from 1968 onwards they have been manufacturing and selling welding rods under the trade marks SUN-ARC and the Emblem on a continuous and on extensive basis. They had duly registered the said trade marks under the Trade and Merchandise Marks Act, 1958 and secured statutory protection to the said trade marks. In or about March, 1972 the plaintiff requested the first defendant to grant a licence to use the said trade marks. Accordingly, by an agreement and royalty dated 03.03.1972, the first defendant granted to the plaintiff a licence to use the said trade marks for a period of 10 years and on such terms and conditions as set out in the said agreement. In 1982, the first defendant granted yet another licence to one M/s. Wonderweld Corporation, the predecessors-in-title and the business of 4th defendant to use the said trade marks in respect of the said goods. Since then, the 4th defendant has been manufacturing and selling the goods bearing the said trade marks on a continuous and extensive basis, but as a licensee of the first defendant. The licence dated 03.03.1972 granted by the first defendant in favour of the plaintiff came to an end on 02.03.1982. However, the plaintiff continued to manufacture and sell the said goods bearing the said trade marks pending negotiations for renewal of the licence. The said negotiations culminated into an agreement of royalty dated 01.01.1996 between the first defendant and the plaintiff, wherein the plaintiff continued to manufacture and sell the said goods bearing the said trade marks. The said agreements of royalty were followed by subsequent similar agreements. In between the aforesaid period, the said M/s. Welding Rods Manufacturing Company was converted into a Private Limited Company, namely M/s. Welding Rods (P) Ltd., which Company took over the business and assets of the erstwhile firm and continued to carry on the business of the erstwhile firm. Thus, between 1946 and 1998, the first defendant sold the said goods bearing the said trade marks. So also, after 1982, the 4th respondent as licensee of the first defendant, manufactured and sold the goods bearing the said trade marks. The plaintiff, who verified and declared the plaint stated that Mr. P.M. Patel is fully aware of the aforesaid facts. On 11.10.1998, the first defendant has assigned and transferred the said trade marks together with the goodwill to the second defendant for a consideration and on the terms and conditions contained in the Deed of Assignment dated 13.10.1998. Pursuant to the application on Form 23 dated 13.10.1995 made by the first defendant and the second defendant to the Registrar of Trade Marks u/s 44 of the Trade and Merchandise Marks Act, 1958, the Registrar of Trade Marks has allowed the said application and entered the name of the second defendant as the subsequent proprietary of the said trade marks. The second defendant has thus acquired the statutory rights in the said trade marks. There is no privity of contract between the plaintiff and the second defendant and as such the licence granted by the first defendant to the plaintiff came to an end and the plaintiff is not entitled to claim any relief under the licence granted by the first defendant to the plaintiff in respect of the said trade marks in dispute. In any event, by separate notice dated 06.02.1999, defendants 1 and 2 have terminated the Agreement dated 27.01.1996 between the first defendant and the plaintiff. The first defendant as well as its other licensee, namely 4th defendant has been using the said trade marks since 1966 and 1982 with the knowledge of the plaintiff. Further, the District Court, Coimbatore does not have jurisdiction to try and entertain the suit. Accordingly, the interim applications are also liable to be dismissed in limine.
6. The 4th defendant has also filed a counter statement raising similar contentions as raised by the first defendant in the injunction applications.
7. Defendants 5 and 6 also filed a counter statement in the said applications stating that they have been using the trade mark SUN-ROD, which is distinct and distinguishable from that of SUN-ARC.
8. The plaintiff filed a reply statement reiterating the averments made in the plaint.
9. We heard the arguments of Mr. P. Chidambaram and Mr. A. L. Somayaji, learned senior counsel for the appellants (defendants 1 to 4) in CMA Nos. 593 to 598 of 1999 and Ms. C. Gladys Daniel, learned counsel for appellants (plaintiff) in CMA. Nos. 681 to 683 of 1999.
10. The following issues are to be considered by this Court:
1. Whether the Agreement dated 27.01.1996 stands terminated?
2. Whether the renewal of the Agreement on 11.08.2000 by the plaintiff is valid?
3. In the light of the Assignment dated 13.10.1998 from the first defendant to second defendant, whether any right survive in favour of the plaintiff, more particularly whether the Agreement dated 27.01.1996 still survives ?
4. Whether the plaintiff has established prima facie case and balance of convenience in their favour and the Court below is justified in granting injunction till the disposal of the suit or expiry of Agreement dated 27.01.1996, whichever is earlier?
5. Whether the court below committed an error in restricting the injunction order and whether the plaintiff is entitled for injunction against D.5 and D.6 also?
11. The admitted facts are as follows:
An agreement dated 27.01.1996 - Ex.P.5 was entered into between the plaintiff and the first defendant, in and by which the plaintiff was granted the licence to use the trade mark SUN-ARC. The said agreement was with effect from 01.10.1995 and it expires on 30.09.2000. This agreement is connected with the technology agreement dated 25.06.1996 - Ex.P.5 entered into between the plaintiff and the first defendant. This agreement expired on 31.03.1999. Both the agreements are included in the documents paper book Volume II. The first defendant has assigned the trade mark SUN-ARC to and in favour of the second defendant by a deed of agreement dated 13.10.1998 Ex.R.12. A copy of the deed of agreement is also available in documents paper book Volume I. The plaintiff has filed O.S. No. 2 of 1999 for permanent injunction seeking to restrain the defendants from interfering with the plaintiff''s exclusive right to use the trade mark SUN-ARC; to restrain the defendants from passing off their goods bearing the trade mark SUN-ARC and also to restrain the defendants from creating any transfers or assignments or encumbrance in respect of the trade mark SUN-ARC and emblem. The learned Additional District Judge by the impugned order dated 17.03.1999, after considering the materials placed before him has concluded that the Agreement dated 27.01.1996 - Ex.P.5 is in force only for a period of five years and would expire on 13.09.2000; it has jurisdiction to entertain and try the suit; the Deed of Assignment dated 13.10.1998 - Ex.R.12 is contrary to the earlier Agreement dated 27.01.1996; the rights of the first defendant in the trade mark SUN-ARC are subject to the conditions in Agreement dated 27.01.1996; the Deed of Assignment dated 13.10.1998 is subject to the Agreement dated 27.01.1996 and the second defendant has to act within the limit and scope of the Agreement dated 27.01.1996. The licence agreement dated 07.08.1995 granted from first defendant to 4th defendant is for a period of 10 years from 01.04.1994 up to 31.03.2004, granting licence to the 4th defendant to use the trade mark SUN-ARC and the fourth defendant has never manufactured the product bearing the trade mark. On the other hand, the 4th defendant has been manufacturing the products only on the basis of the orders placed by the plaintiff; the Agreement dated 07.08.1995 between the first defendant and the fourth defendant was not a legal transaction and the injunction was granted mainly on the ground that the Deed of Agreement dated 13.10.1998 is contrary to the conditions in the Agreement dated 27.01.1996. The learned District Judge has not accepted the argument of the defendants and held that the proprietor of trade mark can assign the mark at any time and can terminate the licence agreement.
12. Based on the agreement dated 27.01.1996 between the first defendant and the plaintiff, the plaintiff claims exclusive right to use the trade mark SUN-ARC and emblem logo. In the licence agreement, the plaintiff has admitted that the brand name SUN-ARC belongs to him and is the property of the first defendant. In para 2 of the agreement, it is stated that,
"The brand name of SUNARC belonging to and being the property of welding rods enjoys high reputation in various states all over India ....."
In the next paragraph of the agreement, the plaintiff has also admitted that the agreement is entered into to permit them to use the Brand name SUN-ARC. No doubt, the first party, namely, the first defendant agreed not to sell their products in the area of Tamil Nadu, Pondicherry, Goa, Karnataka, Andhra Pradesh, Orissa, West Bengal, Maharastra (except the Districts of Bombay and Thana) on payment of lump sum consideration of Rs. 50.00 lakhs by the plaintiff to the first defendant. In consonance with the agreement the plaintiff has admitted that he is a bona fide authorised user of the trade mark and the trade name SUN-ARC. Though there is no documentary evidence that the plaintiff was a registered user within the meaning of Sections 48 and 49 of the Trade and Merchandise Marks Act, 1958, various averments in the plaint clearly show that the plaintiff has recognised and acknowledged that the first defendant is the proprietor of the trade mark SUN-ARC, device, logo and emblem and the plaintiff is licensed to use the mark. It is also not disputed that the agreement dated 27.01.1996 has come into force with effect from 01.10.1995 and expired on 30.09.2000. This period has been specifically stated in the agreement itself.
13. As per Clause 5 of the agreement, the products should be manufactured only under technology agreement. It is seen that the Technology Agreement dated 25.06.1996 expired on 31.03.1999. Since under Clause 6 of the agreement, the license agreement is in operation for a period of five years. Learned senior counsel for the appellants (defendants) would contend that inasmuch as the agreement dated 27.01.1996 was terminated by defendants 1 and 2 separately by their letters dated 08.02.1999, in view of the fact that the termination is not challenged by the plaintiff by any legal proceedings and the plaintiff has not filed suit for specific performance of the agreement or a declamatory suit declaring that the termination of the agreement is null and void, the plaintiff cannot be permitted to pursue the present suit. However, it is the case of the plaintiff that they have renewed the agreement by their notice dated 11.08.2000, which is admittedly subsequent to the filing of the suit and the same has not been placed before the Additional District Judge while considering the injunction applications. We have already referred to the admitted case of the plaintiff that it is only a licensee to use the trade mark . Accordingly, after expiry of the period of five years, the agreement dated 27.01.1996 stands terminated. This aspect has not been considered by the learned Additional District Judge. If at all the plaintiff is aggrieved that the agreement dated 27.01.1996 is still subsisting and that the 1st defendant has caused breach and violation of this agreement and because of that, it had sustained loss or damages, it is always open to the plaintiff to take appropriate steps before appropriate forum.
14. Now, we shall consider the Deed of Assignment dated 13.10.1998 - Ex.R.12, in and by which the trade mark SUN-ARC, device, emblem, logo was assigned by the first defendant in favour of the second defendant. It is brought to our notice that the Deed of Assignment was recorded and the second defendant was brought on record as subsequent proprietor by Registrar of Trade Marks official letter dated 03.11.1998. The same was notified in the Trade Marks Journal dated 01.01.1999. As rightly contended by the learned senior counsel for defendants 1 to 4, the certified copy of the trade mark SUN-ARC, is a prima facie proof of any entry made in the register of Trade Marks u/s 115 of the Act. Mr. P. Chidambaram, learned senior counsel for defendants 1 to 4 by drawing our attention to Sections 2(1)(m), (c); 2(1)(s); 28, 36, 44, 48(i) & (ii) and 49(i) (ii) & (iii) of the Act would contend that the registered proprietor has absolute right in the Trade Mark and the second defendant was brought on record as subsequent proprietor by Registrar of Trade Marks and the same was notified in Trade Marks Journal dated 01.01.1999.
"Section 2(i)(m)(c):
2 (1) (m) "permitted use", in relation to a registered trade mark, means the use of a trade mark -
(i) (a)....
(b)....
(c) for which he is registered as registered user; and "
"Section 2(1)(s) denotes "registered user" means a person who is for the time being registered as such u/s 49;"
Section 28 speaks about the rights conferred by registration. It is clear from Sub-section (1) of Section 28 that the Registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided under the Act.
Section 36 and 44 enables the registered proprietor to assign and give receipts.
Sub-section (1) and (2) of Section 48 speaks about the registered users.
Section 49 (1) (2) and (3) speaks about an application for registration as registered users.
These provisions make it clear that u/s 28 of the Act, the registered proprietor has absolute right in the trade mark; u/s 36 the registered proprietor has right to assign the trade mark and u/s 44 of the Act the Registrar records the assignment. We have already referred to the admitted case of the plaintiff that it is a licensee to use the trade mark SUN-ARC and has recognised the first defendant as the registered proprietor of the trade mark SUN-ARC. Accordingly, the plaintiff cannot question the statutory right vested in favour of the first defendant to assign the mark in favour of the second defendant or any one. It is also brought to our notice that though the plaintiff challenged the validity of Deed of Assignment by filing a petition u/s 109 of the Act before the Gujarat High Court at Ahmedabad, in fact he withdrew the Appeal No. 3 of 1999. In the absence of reason for such withdrawal and the order therein, as rightly argued, the plaintiff cannot sue for injunction in these proceedings. It is not the plaintiff''s case that the licence is irrevocable . Further, as rightly contended, inasmuch as the assignment was properly recorded by the Registrar of Trade Marks and notified in the Trade Marks Journal, the aggrieved person can file an appeal before the High Court having jurisdiction against the order of the Registrar of Trade Marks. We have already referred to the fact that in our case the Trade Mark SUN-ARC was registered with Ahemadabad and the aggrieved person can file an appeal before the Ahemadabad High Court.
15. Now, we shall consider whether the Assignment dated 13.10.1998 - Ex.R.12, executed by the first defendant in favour of the second defendant is valid or not. Here again, as rightly pointed out, the Trade and Merchandise Marks Act, 1958, which is the law governing the registration, protection, maintenance, licensing, infringement, assignment and renewal of trade marks. We have already referred to the fact that the assignment of trade mark SUN-ARC from first defendant to second defendant is registered in accordance with the provisions of the said Act and inasmuch as the Act contains provisions for appeal, the validity of the Deed of Assignment and recordal thereof can be agitated by the aggrieved person including the plaintiff in the form provided under the Act. Though Ms. Gladys Daniel has brought to our notice that the said registration of the Trade Mark and Trade Mark Certificate by the concerned authority is a dishonest act, we are of the view that such question can be considered only by the forum provided under the Act and not by the District Court or by this Court. The contentions relating to registration of trade mark SUN-ARC, publication in the Trade Mark Journal are to be raised and considered by filing an appeal before the appropriate forum. We have already referred to the fact that the first defendant has statutory right to assign the Mark in favour of the second defendant and he becomes the statutory proprietor of the trade Mark SUNARC having exclusive right to use the said Trade Mark.
16. Mr. P. Chidambaram, learned senior counsel heavily relied on the Division Bench decision of the Allahabad High Court in the case of BDA Limited vs. State of Uttar Pradesh and others reported in 1996 IPLR 93. By pointing out the above decision, learned senior counsel would contend that in view of the Deed of Assignment, the licence agreement dated 27.01.1996 stands automatically terminated. In the case before the Allahabad High Court, one Cruickshank and Company Ltd., granted a license to Karamchand Thapar and Brothers for using the trade marks. Then Cruickshank and Company Ltd., assigned the trade marks in favour of BDA Ltd., This assignment was during the subsistence of the agreement between Cruickshank and Company Ltd., and Karamchand Thabar. BDA asserted its rights successfully in the trade marks over Karamchand Thapar. Karumchand Thapar still applied for renewal of their Excise Licence for the trade marks of BDA. This was ordered. Challenging the same, BDA filed a writ petition. The High Court held that the license granted by the licensor is terminated automatically as soon as the assignment is made. It is settled law that once there is a transfer of property, the license granted by the owner / transferor for use of the property stands automatically terminated. The said principle is not only applicable to immovable property right, but also apply in respect of movable property as well. Learned counsel for the plaintiff - Ms. Gladys Daniel argued that the consideration for deed of assignment was Rs. 12 lakhs, whereas the royalty for use of Mark under the agreement dated 27.01.1996 was Rs. 50 lakhs with an undertaking that the first defendant will not permit anybody else to use the Trade Mark, they will not sell welding electrodes in 10 different specified areas in India and they will not ask for any further payment of compensation. To meet the above contention, learned senior counsels for the defendants would contend that u/s 25 of the Contract Act, adequacy of consideration does not invalidate the contract. They further contended that the act does not provide for valuation of trade mark and a consideration for which a trade mark should be assigned. It is also brought to our notice that Trade Marks Act passed by every member country of Paris Convention does not contain provision prescribing the consideration for which a trade mark should be assigned. According to them, trade mark can be assigned even for a nominal consideration of Re. 1 or one US $. In such a circumstance, we are unable to appreciate the argument that the Deed of Assignment is a sham transaction and was entered into only to bye-pass the agreement dated 27.01.1996. The materials placed prima facie show that the Deed of Assignment from first defendant to second defendant is valid. Further, the challenge regarding Deed of Assignment in Appeal No. 3 of 1999 before the High Court, Gujarat has been withdrawn by the plaintiff.
17. Now, we shall consider the right of the second defendant relating to the Trade Mark SUN-ARC and LOGO. We have already referred to the fact that the second defendant is a registered proprietor of Trade Mark SUNARC and LOGO under registration No. 351008, 413779, 470321 and 530658. In respect of all these registrations, the second defendant has been registered as subsequent proprietor of the marks with effect from 13.10.1998. The certified copies of those registers have been produced before us. In terms of Section 28 of the Act, the second defendant has got the exclusive right to use the mark and further proof that the second defendant is the registered proprietor of the mark. It is the argument of the learned senior counsel for the defendants that the statutory rights vested with the second defendant as absolute owner of the Trade Mark SUNARC and LOGO cannot be restrained and cannot also be taken away in a suit filed by a co-licencee. Learned counsel for the plaintiff projected her argument stating that Orion Steel Corporation - second defendant secured registration illegally which was the trade mark licence of plaintiff''s Jopper, namely Wonder Welding - 4th defendant. As observed earlier, the question regarding validity of registration can be considered only before the appropriate forum and not by way of suit for bare injunction.
18. We have already referred to the admitted position of the plaintiff that the plaintiff is only a licencee to the registered proprietor of the trade mark and never claimed to be the proprietor of the trade mark. As rightly contended by the defendants that the licencee cannot claim any goodwill in the trade mark. Learned counsel for the plaintiff contended that the plaintiff is entitled to use the trade mark SUN-ARC, as it is an honest and concurrent user. Inasmuch as the plaintiff being a licencee and accepting the title of the owner of trade mark and using it under a permission granted to it to use it, they cannot claim better right than the defendants. It is also the claim of the plaintiff that it was the plaintiff, which gave job work to 4th defendant to manufacture welding electrodes bearing the trade mark SUN-ARC logo. It is also brought to our notice that the plaintiff had given a job to one M/s. Sharp Electrodes, Coimbatore to manufacture welding electrodes bearing the trade mark SUN-ARC, the stand taken and the particulars furnished by the plaintiff show that they do not have facility to manufacture electrodes and have never manufactured electrodes on their own. Considering these factual details, we are of the view that the plaintiff''s interest would not affect in any manner by refusal of the interim injunction. It is also brought to our notice that by entrusting the work, namely manufacture of welding electrodes bearing trade mark SUN-ARC to other person, the plaintiff has violated and breached the agreement dated 27.01.1996.
19. It is further seen that the 4th defendant in the suit, namely M/s. Wonderweld Electrodes (P) Ltd., - appellant in CMA. Nos. 593 to 595 of 1999 is another licencee of the first defendant. Learned senior counsel appearing for the 4th defendant demonstrated before us that the licence granted to the 4th defendant was co-existing of the licence granted to plaintiff and the clause in the agreement where the plaintiff''s permission being necessary to the grant of any licence to any other party does not apply to 4th defendant, as even prior to the agreement between the plaintiff and first defendant, the 4th defendant was a licencee to the first defendant. It is also brought to our notice that the 4th defendant has obtained approval from ISI to use the mark with respect of electrodes manufactured by them. It is also demonstrated before us that P.M. Patel, who signed and verified the plaint filed by the plaintiff has involved actively in the affairs of the 4th defendant. We have already referred to the agreement between the first defendant and the 4th defendant dated 07.08.1995, which is well prior to the agreement between the plaintiff and the first defendant. This aspect has been referred to and admitted by the plaintiff in their reply affidavit. In such a circumstance, the contention of the plaintiff that the 4th defendant is only a job worker of the plaintiff cannot be accepted. In other words, as rightly stated that there is no privity of contract between the 4th defendant and the plaintiff. Though learned counsel for the plaintiff has vehemently contended that considering the fact that the plaintiff is the prior user of the trade mark and entitled to the injunction against the defendants, in the light of the fact that the plaintiff being a licencee and the licence granted for a particular period and after the assignment of trade mark SUN-ARC in favour of the 4th defendant, the plaintiff cannot claim that it is the prior user of trade mark and entitled to the injunction.
20. It is well established principle that the Court has to protect the property in dispute until the suit is finally disposed off. Though the Court below while granting interim injunction has stated that prima facie case is in favour of the plaintiff and considered the balance of convenience and irreparable loss, inasmuch as the plaintiff is not the registered proprietor of the registered trade mark SUN-ARC and logo and the plaintiff is only a licencee, we are unable to accept the said conclusion. We are of the view that the licencee cannot restrain the statutory rights vested in the registered proprietor of the mark and the licencee cannot prevent the use of the mark by any other licencee. More so, the other licencee was entered into prior to the agreement relied upon by the plaintiff. Like wise, though the plaintiff has put forth their case stating that perceptual licence was granted in their favour, the said claim cannot be accepted in the light of various documents filed by both parties.
21. Regarding the balance of convenience, we have already referred to the case of the plaintiff that it has not been using the trade mark and they are giving only job works to various companies, including the 4th defendant. On the other hand, it is demonstrated before us that the second and 4th defendant are extensively using the trade mark SUN-ARC and logo. We are satisfied that the second and 4th defendant are extensively using the trade mark Sun-ARC and logo and enjoying great reputation and goodwill. Accordingly, we are satisfied that the balance of convenience is in favour of the defendants.
22. Regarding the appeals, namely CMA. Nos. 681 to 683 of 1999, the counsel for the plaintiff did not argue those appeals and also not prayed any orders in the said appeals. Accordingly, the same are liable to be dismissed.
23. Though both side relied on several decisions in support of their respective claim, in view of the fact that we are considering the interim injunction granted till the disposal of the suit and the main suit is still pending, we are of the view that it is unnecessary to refer all those decisions. Likewise, though various documents have been pressed into service before us by the learned counsel for the plaintiff, for the simple reason that they were not placed before the Court below, we are not inclined to consider the same at this juncture.
24. We conclude that the plaintiff has failed to make out a prima facie case that it is also a proprietor of the registered trade mark SUN-ARC and logo and being a licencee, after expiry and after assignment of the trade mark SUN-ARC in favour of the other defendants, the licencee cannot seek an order to restrain the statutory rights vested in the registered proprietor or the mark. We are also satisfied that the balance of convenience is only in favour of the defendants and against the plaintiff.
In the light of what is stated above, we set aside the common order dated 17.03.1999 granting injunction in I.A. Nos. 23, 24 and 25 of 1999 in O.S. No. 2 of 1999 on the file of Additional District Judge cum Chief Judicial Magistrate, Coimbatore. Consequently, CMA. Nos. 593 to 598 of 1999 are allowed; CMA. Nos. 681 to 683 of 1999 are dismissed. However, there shall be no order as to costs. We make it clear that the present conclusion of ours is prima facie conclusion for the disposal of these appeals filed against the order made in injunction applications. Accordingly, the learned Additional District Judge is expected to dispose of the suit uninfluenced by any of the conclusion / observation made in these appeals within a period of six months from the date of receipt of a copy of this order.
