Sanju Panda, J.@mdashThis appeal is directed against the order dated 25th January, 2008 passed by the learned District Judge, Khurda in Interim Application No. 319 of 2007 (arising out of Civil Suit No. 26 of 2007) filed by the Plaintiff-respondents under Sections 134 and 135 of the Trade Marks Act, 1999 (hereinafter referred to as ''the Act'') read with Order 39, Rules 1 and 2 of the Code of Civil Procedure.
2. The facts, as narrated in the records, are as follows:
Respondent No. 1-Naturepro Biocare INC. represented through its proprietor Smt. Sunita Mohapatra, Respondent No. 2 as Plaintiffs filed Civil Suit No. 26 of 2007 before the learned District Judge, Khurda praying for the following reliefs:
(A) Defendants be permanently restrained from using the name NATUROMA HERBALS or NATUROMA or any other name similar to the words in any of their business transaction;
(B) Defendants be permanently restrained from indulging in any sale, marketing, distribution etc. of any product in the name of NATUROMA HERBALS Pvt. Ltd., or NATUROMA or NATUROMA HERBALS in any capacity either individually or as share holder/director/partner of any other Company or concern;
(C) Injunct Defendant No. 1 permanently along with Defendants 3 and 4 in pursing the application No. 150865 pending before the Trade Marks Authorities, Calcutta in which the same NATUROMA has been applied for;
(D) Issue appropriate order permanently prohibiting the Defendants from disposing of dealing with the products already in their possession in the market in the name of Defendant No. 1; using the brand name ''Naturoma'' or Naturoma Herbals'' or any other name similar to the same;
(E) Order the Defendants 1 to 4 to produce their authentic books of accounts which would reveal in terms of money, the business conducted in the name of NATUROMA or NATUROMA HERBALS;
(F) Injunct the Defendant No. 2 permanently from manufacturing any products using the name NATUROMA HERBALS or NATUROMA or any name similar to the above names;
(G) Issue appropriate direction/order to seize the stock in the custody of Defendants 1 to 4 carrying the brand name NATUROMA or NATUROMA HERBALS or in any other name similar to the aforesaid words and direct for destruction of the same;
(H) To grant such other reliefs etc.
3. The Plaintiffs specifically stated that Plaintiff No. 1 is the manufacturer of Cosmetic and Ayurvedic preparation in the name of "NARUROMA HERBAL" and it started its production in the year 1998 after getting necessary permission. On 1.4.1999 Defendant No. 5 M/S. Abhilasha, a proprietorship firm represented through its proprietor Suresh Dhanuka, entered into an agreement with the Plaintiffs wherein it was stated that Defendant No. 5 acquired right of marketing and distribution of the products of the Plaintiffs throughout India in the brand name of "NATUROMA HERBAL". The agreement was for a period of five years initially and it was subsequently extended for a period of another five years from 1.4.2004. Defendant No. 5 by virtue of the said agreement incurred all the expenditure related to selling, marketing, distribution, transportation, advertisement, publicity, etc. and the Plaintiffs were responsible for the quality of the products. Plaintiffs firm applied for registration under the Trade Marks and Merchandise Act, 1958 for the brand name "NATUROMA HERBAL" in the year 1999 and the application was filed in the name of Sunita Mohapatra- Plaintiff No. 2. The same was duly published and advertised by the Trade Marks Authorities before acceptance of the same, vide Annexure-8. The objective of the Act is to prevent use of mark which are identical with or deceptively similar to each other. A deed of assignment was executed between the Plaintiffs and Defendant No. 5 on 1.10.2000 and fifty per cent of right, title and interest in the said mark together with the goodwill of the business concern was agreed to be shared by the parties. At the same time it was also agreed to between them that Defendant No. 5 would not manufacture, distribute, assign any product of similar nature in the same or substantially the same brand/trademark. Both the parties also agreed that they would not market or cause to market any product of similar nature in the same or substantially the same brand/trademark and on the product the name of assignor and assignee be reflected as "manufactured by" and "marketed by". The agreement prohibited both the parties from passing off any unauthorized use of the trademark or any copy right attached thereto. They filed the said agreement before the Trademarks Authorities on 27.1.2001 bringing to their attention about the deed of assignment. After filing of the said application before the Registrar, Trademarks, the same was published in the Trademark Journal on 13.11.2003 indicating the application number, class conflicting mark journal number and proposed registration trademark in the name of ''NATUROMA HERBAL'' and in the name of ''NATUREPRO BIOCARE INC.'' as proprietor. The Plaintiffs found that an application No. 1508665 was filed by Defendant No. 1 along with others for registration of the trademark ''NATUROMA'' with the Registrar of Trademarks showing as ''NATUROMA HERBAL Pvt. Ltd.'' as the proprietor of the said trademark. The information appeared in the website of the Trademark Authorities.
4. The Plaintiffs pleaded that such action of Defendants 1,4 and 5 were highly unethical, illegal and contravened the stipulations/conditions in the agreement dated 1.4.1999 and the deed of assignment dated 1.10.2000.
5. It further appears that the Company Defendant No. 1 has been floated in the name and style of ''NATUROMA HERBALS PVT. LTD.'' by the Defendants 3 and 4. Copy of the Memorandum of Association has been filed along with the plaint. The said Memorandum of Association shows that Defendant No. 3 has gone for marketing, selling and manufacturing of herbal products which violated the agreement between the Plaintiffs and Defendant No. 3 that the said Defendant would not take up marketing of any other products in the same range or in the same nature as the above ''NATUROMA HERBAL''. However, Defendant No. 3 who is a share-holder in Defendant No. 1 Company, ''NATUROMA HERBALS PTV. LTD. committed violation of the Act as NATUROMA HERBALS PVT. LTD. has already sold in the open market the same products using the same brand name which are manufactured by the Plaintiffs and raised bills against the same as per Annexure-II. They also published advertisement in the name of NATUROMA HERBALS pertaining to cream, lotion, etc. which are also manufactured by the Plaintiffs in gross violation of the Act. The said advertisements were published in the magazine "The Telegraph" on 12.8.2007 and 19.8.2007 which were circulated along with "The Daily Telegraph". Copies of the same were filed as Annexures 12 and 12/ A. In the said advertisement, the names of the manufacturer and marketing agent had not been mentioned. A coloured brochure in the name of NATUROMA HERBAL was found in the stationary shop at Bhubaneswar on 13.8.2007 wherein the product manufactured by the Plaintiffs had been advertised by the NATUROMA HERBALS Pvt. Ltd. as if the said product belonged to Defendant No. 1. The copy of the said coloured brochure was filed as Annexure 13. The Plaintiffs also came across the samples given to the shop owners for advertisement and obtained some of them and produced those in the court. Defendants 1 to 4 in the process put the.plaintiffs to huge financial loss and gave an impression in the minds of the people as well as the traders as if the products are manufactured by NATUROMA HERBALS Pvt. Ltd. and not the Plaintiffs which affected the sale of the products of the Plaintiffs and it is likely to cause further damage to the business of the Plaintiffs and the entire goodwill of the business of the Plaintiffs has already been damaged and would be completely obliterated in the process. Defendant No. 3 was not entitled to commit violation of the contracts either individually or as proprietor of Defendant No. 5 or as a share holder of any other company or concern. The action of the Defendants are nothing but violation of business ethics and outcome of dishonesty to make use of the goodwill and reputation of the Plaintiffs which was a clear case of passing off their products as that of the Plaintiffs and a bare comparison of the product of the Plaintiffs with that of the Defendants clearly indicates overall similarity to the naked eye and therefore the ordinary customer is bound to be deceived and get confused. Therefore, he has filed the suit with the above prayer under Sections 134 and 135 of the Act.
6. In the said suit, the Plaintiffs filed Interim Application No. 319 of 2007 under Sections 134 and 135 of the Act read with Order 39, Rules 1 and 2 of the CPC praying for temporary injunction restraining Defendants 1 to 4 from selling, distributing, marketing and manufacturing of any product in the name of ''NATUROMA HERBALS'' or ''NATUROMA'' or in any other name similar or identical to the above names and further preventing Defendants 1 to 4 from pursuing any application for grant of Trademark in the name of ''NATUROMA''
7. Defendants 3 and 5 appeared refuting all the allegations made by the Plaintiffs. It is noted that Defendant No. 4 is the son of Defendant No. 3. In the interim application, they filed their objections which are as follows:
(a) The registration of the trademark of the Plaintiff No. 1 and Defendants 3 and 5 are opposed and still pending before the Trade Marks Authorities.
(b) The product which were alleged to be marked by Defendants 1,2 and 4 are under the name and design of ''SAFFIRE'' which was neither deceptively similar or identical to the product of the Plaintiffs.
(c) Defendant No. 3 initially was a share-holder of Defendant No. 1 Company but he has retired from the Company in the meantime.
(d) Mere filing for registration of Trademark does not create any right to enforce under law.
(e) Defendants 3 and 5 neither violated any terms of the contract nor infringed/passing off the trademark as alleged by the Plaintiff''.
and stated that the Plaintiffs'' application for interim injunction was not maintainable and any financial loss alleged by the Plaintiffs can be compensated.
8. It is noted that Defendant No. 3 filed an application u/s 9 of the Arbitration and Conciliation Act in the court of the District Judge, Alipore stating, inter alia, that basing on the agreement/assignment, Defendant No. 3 had made substantial investment in the Department of Promotion and Marketing for which the product achieved high target and the breach of the agreement gave rise to the dispute between the parties. As per the express arbitration clause, a proceeding was filed which is pending for consideration and the Plaintiff unilaterally terminated the agreement/assignments by letter dated 6.9.2007 which was never received by Defendant No. 3. The learned District Judge, Alipore passed an interim order restraining the Plaintiffs from selling, marketing, distributing or advertising the products under the trademark "NATUROMA HERBAL" or "NATUROMA" through any other person. The said order was challenged by the Plaintiffs before the High Court of Calcutta. The impugned order was set aside by the Calcutta High Court by order dated 16.10.2007 on the assurance given by the parties that they would not sell any item with the brand name "NATUROMA", unless it is manufactured by the Appellant and sold through the Respondent and the arrangement would continue till disposal of the arbitration proceeding. In the meantime, the arbitration proceeding was dropped on the ground of jurisdiction. Another proceeding was initiated by the Plaintiffs u/s 9 of the Arbitration and Conciliation Act before the learned District Judge, Khurda.
9. Considering the rival submissions of the parties, the learned District Judge, Khurda vide order dated 25.1.2008 allowed the interim application on contest but without cost restraining Defendants 1 to 4 from selling, distributing, manufacturing and marketing of any product in the name of "Naturoma Herbals'' of ''Naturoma'' or in any other name similar or identical to the said names till disposal of the suit on the ground that the Petitioners had prima facie case in their favour and the balance of convenience lay more in favour of the Petitioners and the Petitioners would suffer irreparable loss if opposite parties were not restrained from selling and marketing the products using the brand name/trademark ''Naturoma Herbals'' which is similar or identical to the brand name/trademark of the Petitioners.
10. The Learned Counsel appearing for the Appellants in FAO No. 88 of 2008 submitted that the learned District Judge, Khurda by order dated 25.1.2008 restrained Appellant No. 1 and Respondents 3 to 5 from selling, distributing, manufacturing and marketing of any product in the name of ''Naturoma Herbals'' or ''Naturoma'' or in any other name similar or identical to the said names till disposal of the suit which was illegal and contrary to the order passed by him on 22.12.2007. He submitted that admittedly when the Appellant is fifty per cent co owner in the trademark pertaining to cream, lotion, etc., the suit itself is not maintainable against a co-owner in the trademark in question. In view of the admitted fact that the trademark applied for by Respondent No. 2-Sunita Mohapatra is pending before the Trade Mark Authorities and it has been objected by some companies, the suit as well as interim application was not maintainable and the financial loss sustained by Respondent-plaintiff can be compensated by way of money. Therefore, the impugned order is liable to be set aside. He further submitted that on 1st July, 2008 in Trade Mark Journal No. 1395, Regular, the names of the partner was corrected to read as (1) Sunita Mohapatra and (2) Suresh Dhanuka and the same was published in the said journal. Therefore, it could safely be concluded that both the parties are fifty per cent share holders in their business. Hence, the injunction order is liable to beset aside as it was passed against fifty per cent share holders.
11. Along with the appeal memo, the Appellants filed Misc. Case No. 173 of 2008 with a prayer to injunct Respondents 1 and 2 from manufacturing, selling, marketing and distributing any product under the trademark ''NATUROMA HERBALS'' till final adjudication of the appeal. They specifically stated that in view of the terms and conditions of the agreement dated 1.4.1999 entered into between the Appellants and Respondents 1 and 2, both the parties should not have dealt with the product since the agreement has been terminated and in view of the arbitration clause, they would manufacture and produce the products after the arbitration is closed.
12. The Learned Counsel appearing for Respondents 1 and 2 submitted that an application was filed before the Trade Mark Authorities under the Act for registration of the name ''Naturoma Herbals'' and the same was published and advertised by the Trade Mark Authorities before acceptance of the same, as would be evident from Annexure-8. During the course of argument, he produced a document regarding cancellation of Corrigenda published in TMJ No. 1395(R) dated 1.7.2008 and made available to the public on 1.7.2008 relating to Regd. T.M. No. 879695 in class 3. The Assistant Registrar of Trade Marks specifically stated therein that the corrigenda published in TMJ No. 1395(R) dated 1.7.2008 had been inadvertently published and the same was being cancelled and the corrigenda regarding the cancellation was to be published in the next journal. Respondent No. 2 filed an affidavit on 12.9.2008 along with the documents showing that the copy of the certificate of resignation granted in her favour in the month of November, 2007. From the document issued by the" Registrar of Trade Marks, it appears that the Trademark No. 87969 dated 4.10.1999 has been registered in the name of Mrs. Sunita Mohapatra trading as Naturepro Biocare Inc., Abhisek Apartment, Neelakantha Nagar, Bhubaneswar, Trade description Manufacturers and Merchants, Work Mark- NATUROMA HERBAL, LEAF (DEVICE) (LABEL). She also filed another letter dated 11.8.2008 issued by Joint Registrar of Trade Marks, Kolkata through Examiner of Trade Marks wherein it was specifically stated that for use in legal proceedings only under the Trade Marks Act, 1999 (Act 47 of 1999). The said document shows the Proprietor Details- name Sunita Mohapatra, Category- Single Firm, Trading As: NATURE PRO BIOCARE INC., Trade Description- Manufacturers and Merchants, Registration Date 4.10.1999, issued on 27.11.2007, used since 15.3.1997, Trade Mark Type: WORD, Word Mark: NATUROMA HERBAL, LEAF (DEVICE) (LABEL). He submitted that since the Trade Marks Registry permitted Respondent No. 2 to use the Word Mark: NATUROMA HERBAL, LEAF (DEVICE) (LABEL), it could not.be used by others as it was not issued in joint names. Therefore, the Appellants were not entitled to use that word mark which was issued in her favour and the learned District Judge rightly issued injunction order against them after hearing both the parties and perusing the records.
13. The Learned Counsel appearing for the Appellants in FAO No. 128 of 2008 submitted that in January, 2007 they applied for another registration number of Trade Mark ''Saffire'' which was duly approved by the Registrar after scrutiny. They also lunched new premium cosmetic range under the brand name ''Saffire'' with Naturoma Herbals marks on product. The Naturoma'' mark is the duly approved mark by the Registrar of Trade Mark and different from any applied Trademark by any other company or entity. In the month of September, 2007, they came to know that a case has been filed by one ''Naturepro Biocare Inc.'' who threatened different dealers and sellers not to deal in the brand ''Saffire'' and the mark ''Naturoma Herbals''. Their Trademark was different than the Trademark issued to Naturepro Biocare Inc. The Respondent did not file any application of opposition as required u/s 21 of the Trade Marks Act, 1999 read with Rule 47 of the Trade Marks Rules, 2002 before the Registrar of Trade Marks. Therefore, in absence of any objection application by the Respondent before the Registrar of Trade Mark, the application filed before the learned District Judge, Khurda was premature and without any cause of action. They did not transact the business in any part of Orissa or at Bhubaneswar; they are only transacting the business in West Bengal, Bihar and Jharkhand. Therefore, there was no cause of action against them so far as the Plaintiffs are concerned. The Plaintiffs claim that a ''passing off right'' is not similar or identical to that of the Appellants'' Trademark applied for. Since the Trademarks are not identical or similar, there is no occasion for confusing/deceiving any customer while buying the product of the Plaintiffs. As there is no chance of confusing any of the customers, the Plaintiffs are not entitled to the relief of injunction and the order passed by the learned District Judge, Khurda restraining the Appellants from manufacturing and marketing the product is misconceived and liable to be set aside.
14. Considering the rival submissions of the Learned Counsel for the parties in both the appeals, it is to be seen whether the Plaintiffs'' grievance is infringement of their Trademarks and copy rights in trade literature and register design by the company floated by the Plaintiffs.
15. Defendants 1,2 and 4''s plea is that their trademarks is not confusing with that of the Plaintiffs'' company and the plea of Defendants 3 and 5 is that they are share holders as a co-owner with fifty per cent share holders of the company. Therefore, Plaintiffs had no cause of action against them. However, it is the settled principle of law relating to Trademark that there can be only one mark, one source and one proprietor. It cannot have two origins. Therefore, the claim of Defendant No. 3 that he is a co-owner is impermissible. From the LCR and the documents filed by the parties before this Court it appears that the Plaintiffs are the manufacturer and proprietor and Defendant Nos. 3 and 5 are only marketing the said products. The documents filed by the Plaintiffs before this Court on 12.9.2008 clearly show that the certificate of registration was issued in her favour in respect of NATUROMA HERBAL, LEAF (DEVICE) (LABEL) and that registration is valid upto 4.10.2009 and the Trademark type: Word was allowed under the Word Mark NATUROMA HERBAL, LEAF (DEVICE) (LABEL). This shows prima facie case in favour of the Plaintiffs.
16. As regards the claim of the Appellants that they are declared as co-owners and their names have already been published in the Trade Mark Journal since the corrigenda published in TMJ No. 1395(R) dated 1.7.2008 and made available to the public on 1.7.2008 relating to Regd. T.M. No. 879695 in class 3 has been cancelled by the Trade Marks Registry vide letter dated 26.9.2008, the Appellants have no prima facie case and the Appellants in FAO No. 88 of 2008 are only entitled to market the product of the Plaintiffs and devise the products. However, Respondents 1 and 2 are manufacturing the products and they are the proprietor. If any order is passed restraining Respondents 1 and 2, they will sustain heavy loss and the status and position of the product in the market will be lost if they will be restrained to manufacture the said products which were floated in the market since 1999. Therefore, balance of convenience is in favour of Respondents 1 and 2.
17. So far as irreparable loss is concerned, the Appellants in FAO No. 88 of 2008 are only marketing the product and devising the products in the journal. Therefore, they can be compensated by money, but the Respondents will suffer irreparable loss if their product will not be manufactured and marketed and they will sustain irreparable loss and the company''s reputation will not be revived after closure of arbitration.
18. So far as the Appellants in FAO No. 128 of 2008 is concerned, since the Plaintiffs have obtained the Trademark ''NATUROMA HERBAL, LEAF (DEVICE) (LABEL)'' and are using the same prior to the Appellants, i.e. from 4.10.1999, and their registration is valid upto 4.10.2009 and the Appellants company came into existence only in November, 2006, the Plaintiffs have a ''passing off right'' being the earlier user of the said Trademarks. Therefore, balance of convenience is in favour of the Plaintiffs and they will suffer irreparable loss.
19. As the Plaintiffs have a prima facie case, balance of convenience and they will suffer irreparable loss, this Court is not inclined to interfere with the impugned order passed by the learned District Judge, Khurda.
20. The Plaintiffs'' business shall run with the Trademark ''NATUROMA HERBAL, LEAF (DEVICE) (LABEL)'' and the said Trademark came into existence prior to that of the Defendants and the Trademark adopted by the Plaintiffs acquired goodwill in the market. Therefore, the Plaintiffs are entitled to protect the goodwill attached to the name of their business and they are also entitled to action of ''passing off right'' against the Defendants'' company as the Defendants'' action is intended and calculated to device and to divert the business for which there is likelihood to injure the Plaintiffs'' business.
21. Accordingly, the appeals are dismissed being devoid of Merit. No costs.
