C.S. Agencies vs Kalaimahal and Others

P.B. Suresh Kumar, J.—The order on I.A. No. 1817 of 2014 in O.S. No. 5 of 2014 on the file of the Court of the Additional District Judge-V, Kollam, is under challenge in this appeal.

The plaintiff in the suit is the appellant. O.S. No. 5 of 2014 is a suit filed under Sections 134 and 135 of the Trade Marks Act, 1999 (''the Act'' for short), seeking a decree of permanent prohibitory injunction restraining the defendants, their agents, dealers, employees, stockists, distributors, sellers and persons directly or indirectly associated or connected with them, from selling, disposing of, dealing with, or marketing their goods by using the trade description or trade mark "Kera Pump" or containing trade mark similar or identical to and or deceptively similar to that of "Kera Pump".

The case of the plaintiff is that they are manufacturing mono-block, centrifugal and submersible pumps under the trade mark "Kera Pumps" from 2002 onwards; that they have obtained registration of their trade mark; that they are selling the products with the label "Kera Pumps" engrossed in a particular manner and that therefore, they have the exclusive right to use the trade mark "Kera Pumps" for the trade of the aforesaid motor pumps. According to the plaintiff, in the year 2009, at the request of the first defendant, the manufacturing of the pumps was entrusted to them on condition that the manufacturing of the pumps under the said trade name shall be exclusively for them. It is their case that though the arrangement entered into with the first defendant for the manufacturing of the pumps was stopped with effect from 1.4.2014, it has come to their notice that the first defendant is deceptively using the plaintiff''s trade mark by suffixing a word "Company" in the pumps manufactured by them to make it appear that the pumps manufactured by them are the products of the plaintiff. The conduct of the first defendant in using the name "Kera Pumps" for the products manufactured by them, according to the plaintiff, amounts to infringement of the trade mark of the plaintiff and hence the suit.

Along with the suit, the plaintiff filed I.A. No. 1817 of 2014 seeking an order of temporary injunction restraining the defendants and others from doing the acts sought to be prevented by the decree of injunction claimed in the suit.

An objection was filed by the first defendant to I.A. No. 1817 of 2014. In the objection, it was contended that they have established an industrial unit in the year 2009 in the name "Kera Pump Company" for manufacturing motor pumps; that they are manufacturing motor pumps in their unit ever since 2009 and that therefore, they are entitled to use the name "Kera Pump Company" as the name of their manufacturing concern in the products manufactured by them. It was also contended by them that their use of the name "Kerala Pump Company" for the products manufactured by them is known to the plaintiff and the plaintiff has not objected to such user till 2014.

The documents produced by the plaintiff were marked for the purpose of the application for injunction as Exts. A1 to A14 and the documents produced by the defendants were marked for the said purpose as Exts. B1 to B6.

The court below, on an elaborate consideration of the materials on record, came to the conclusion that the plaintiff has not made out a prima facie case for injunction and consequently dismissed I.A. No. 1817. As noticed above, it is aggrieved by the said decision of the court below that the plaintiff has come up in this appeal.

Heard Sri M.C. Sen, the learned Senior Counsel for the appellant and Sri Binoy Vasudevan, the learned counsel for the respondents.

The learned Senior Counsel, relying on the provisions in sub-sections (1) and (5) of Section 29 of the Act contended that in so far as the plaintiff has obtained registration for the trade name "Kera Pumps" for manufacturing of mono-block, centrifugal, submersible and borewell pumps, the conduct of the first defendant in using their registered trade name as part of the name of their manufacturing concern would amount to infringement of the trade mark obtained by the plaintiff.

Per contra, the learned counsel for the respondents, relying on the decision in Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel and Others, AIR 2006 SC 3304 : (2006) 8 JT 393 : (2006) 33 PTC 281 : (2006) 8 SCALE 631 : (2006) 8 SCC 726 : (2006) AIRSCW 4988 : (2006) 7 Supreme 224 , contended that even going by the case set up by the plaintiff, the first defendant has been using the disputed trade name as a part of the name of their manufacturing concern from 2009 onwards and the plaintiff has not objected to such user and therefore, it cannot be contended that the plaintiff has made out a prima facie case for injunction. He has also, relying on the decision of the Apex Court in Wander Ltd. and Another Vs. Antox India P. Ltd., (1990) 2 ARBLR 399 : (1990) 1 SCC 727 Supp : (1990) SCC 727 Supp , contended that in so far as the trial court declined the order of temporary injunction sought for by the plaintiff, this Court shall not reverse the said decision and grant the injunction claimed by the plaintiff.

The copies of the pleadings and the documents relied on by the parties were made available to me. Ext. A1 is the certificate of registration of the trade mark obtained by the plaintiff. It is seen from Ext. A1 that the plaintiff has obtained registration of the trade mark "Kera Pumps" for manufacturing mono-block pumps, centrifugal and submersible pumps with effect from 24.5.2002. Ext. A3 is the letter addressed by the plaintiff to the first defendant requesting her to stop manufacturing of pumps for them with the trade name "Kera Pumps". Ext. A4 is the reply sent to Ext. A3 letter. In Ext. A4, it is stated that since the plaintiff wanted to terminate the contract and stop using the brand name, she does not want to keep the products of the plaintiff in her premises, indicating that the plaintiff should forthwith remove their products from the premises of the first defendant. It is evident from Ext. A3 that till March, 2014, the first defendant was manufacturing motor pumps using the trade name "Kera Pumps" for the plaintiff. It is also evident from the recitals in Ext. A4 that the first defendant admits that the plaintiff is the proprietor of the trade name "Kera Pumps". The first defendant has no case that they were manufacturing pump sets using the trade name "Kera Pumps" prior to the arrangement entered into with the plaintiff in 2009. They have also no case that after they entered into the arrangement with the plaintiff for the manufacturing of the pump sets, they have manufactured pump sets with the said trade name for someone else. The materials on record thus indicate beyond doubt that the first defendant was manufacturing pumps exclusively for the plaintiff under their trade name as contended by the plaintiff. Sub-sections (1) and (5) of Section 29 of the Act reads thus;

"29. Infringement of registered trade marks--(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

x x x x x x x x x x x x x x x x

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in foods or services in respect of which the trade mark is registered."

It is admitted by the first defendant that they are using the registered trade name of the plaintiff for the products manufactured by them as part of the name of their manufacturing concern. Going by the provision contained in Sub-section (5) of Section 29 of the Act, the said conduct would amount to infringement of the trade mark of the plaintiff. In the circumstances, I am of the view that it is a case where the plaintiff has made out a prima facie case for injunction. The balance of convenience is also in favour of the plaintiff. I am also satisfied that if the injunction sought for by the plaintiff is not granted, irreparable injury would be caused to them.

It is settled that where a discretionary jurisdiction is exercised by a court of the first instance, their decision shall not be substituted except in cases where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the court had ignored the settled principles of law regulating grant of an interim injunction. This principle has been reiterated by the Apex Court in Wander Ltd. and another v. Antox India P. Ltd. (supra). The court below found that the first defendant was manufacturing motor pumps for the plaintiff from 2009. The court below also found that after the termination of the arrangement with the plaintiff, the first defendant is manufacturing the very same products, showing the name of the manufacturer as "Kera Pump Company". According to the court below, the first defendant is using a different trade name, viz., "UKS" for the motor pumps manufactured by them and that therefore, it cannot be said that the registered trade name of the plaintiff is infringed. The said view of the court below is against the provisions in section 29 of the Act. That apart, it cannot be disputed that the use of the name "Kera Pump Company" by the first defendant as the name of their manufacturing concern would give an impression to the general public that the products have some connection with the plaintiff. The aforesaid view of the court below, in the circumstances, is illegal and perverse.

In the result, the appeal is allowed, the impugned order is set aside and an interim order of injunction is granted to the plaintiff as prayed for by them in I.A. No. 1817 of 2014. It is made clear that the interim order of injunction granted to the plaintiff will not preclude the first defendant from manufacturing and selling any product other than the products covered by the certificate of registration of the plaintiff. In the peculiar facts of the case, I am of the view that there shall be a direction to the court below to dispose of the suit finally, on or before 30.6.2015, untrammelled by the observations contained in this judgment and it is ordered accordingly.