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Judgment
M.M. Sundresh, J.—The appellant in all these appeals, who is the defendant in the suit, has preferred these Original Side Appeals being
aggrieved against the common order dated 01.03.2013 passed by the learned single Judge in allowing the applications in O.A. Nos. 835 to 837 of
2012 in C.S. No. 649 of 2012 filed by the respondents herein. The facts in brief:
1.1 The first respondent herein is a Homeopathic Doctor having set up his practice in Bangalore. According to the first respondent, in the year
1998, he set up a Holistic Wellness Clinic in Bangalore in the name of ''SOUKYA''. The Centre caters to the customers and patients in each fields
of medicines. In the year 2002, the first respondent shifted his operations to ''Soukya International Holistic Health Centre''. In the year 2008, the
name of the company was changed to ''Soukya Indian Holistic Health Centre Private Limited, which is the second respondent herein. In the
meanwhile, the first respondent has filed two applications for registration of trade mark ''SOUKYA''. These two applications have been filed under
Class 16 and Class 05 respectively before the Registrar of Trade Marks. In the year 2005, the appellant has started his service in the name of
''SOWKHYA WAY2HEALTH Private Limited''. According to the appellant, it caters to the customers only in the field of Ayurvedic Medicine
alone. Its operation is restricted to Hills Resorts in the State of Tamil Nadu. After seeing the advertisement made by the appellant, the first
respondent has issued a legal notice, which was also replied to. Thereafter, an application was filed in Class 42 for registration by the first
respondent, which was granted on 22.08.2008. Seeking a decree for injunction on the ground of infringement and passing off, a suit was filed by
the first respondent in O.S. No. 7198 of 2006 on the file of the City Civil Court, Bangalore, against the appellant. The suit decree was set aside by
the High Court of Karnataka on the footing that inasmuch as the respondents mark was not registered in Class 42 at the time of filing the suit, the
same is liable to be dismissed for lack of jurisdiction. Thereafter, the respondent filed the present Original Side Appeals.
1.2. Pending the suit, the respondents filed three applications seeking orders of injunction on the ground of passing off, infringement and against
using the domain name ""www.sowkhya.com"". The learned single Judge allowed the applications filed on three grounds. The first ground is that the
respondents having registered the name ''SOUKYA'' is entitled for the injunction sought for. The second ground is that there was no delay in
moving the Court as the first respondent was pursuing the case before the City Civil Court, Bangalore, and thereafter, the High Court of
Karnataka. The third ground is that though the appellant is claiming to use the trademark ""SOUKYA WAY 2 HEALTH"", but the letter heads
show the word ''SOWKHYA'' in a prominent manner and the E-mail address is also deceptively similar. Therefore, based upon the said facts, the
orders of injunction was granted. The appellant has come before us challenging the said orders passed by the learned single Judge.
Submissions of the Appellant:--
The learned counsel appearing for the appellant would submit that the mark, which is the subject matter of the appeals, is a weak mark available
for common use. It is both generic and deceptive in nature. The words ""SOUKYA"" in Sanskrit, Tamil and English would mean ""well being"". The
said word is used commonly in trade and also by the public. Therefore, it is open to use and it is ""publici juris"". The appellant is entitled to use the
name as a description of goods. The marks used by both sides will have to be seen as a whole. The usage of the mark by the appellant is a bona
fide and honest one. There is no confusion of deception. This can be borne out by the proceedings of the Registrar of Trade Marks. The appellant
has been using the mark from the year 2005 onwards only for the Ayurvedic treatment, that too, in selected places in the hill area in the State of
Tamil Nadu. The respondents have not make out a case of ""passing off"" since the test of classical trinity has not been established and proved.
There are number of other concerns having the trade name of ""SOUKYA"", in other fields as well as in the field of Homeopathy. The respondents
have not taken any action on the same to show their bona fides. The appellant has also filed an affidavit agreeing to change the E-mail address and
reduce the font. The learned counsel appearing for the appellant has submitted that the learned single Judge has not adverted to various factual and
legal issues raised by the appellant. The question of generic or description and the application of Sections 9, 11, 12 and 34 of the Trade Marks
Act, 1999, have not been gone into. The learned counsel has also submitted that the order of the learned single Judge is liable to be set side by
applying Sections 28 to 30 of the Trade Marks Act, 1999. In support of his contention, the learned counsel appearing for the appellant has made
reliance upon the judgment of this Court in Orchid Chemicals and Pharmaceuticals Ltd. Vs. Wockhardt Limited, etc.
Submissions of the Respondent:--
Per contra, the learned counsel appearing for the respondents, would submit that Section 34 of the Trade Marks Act does not have any
application. Admittedly, there is a phonetic similarity. The word ""SOUKYA"" cannot be termed as generic name as it has to be tested in the field in
which it is used. The benefit u/s 35 of the Act cannot be extended to a company. Merely because no action has been taken against some other
concern, an order of injunction cannot be rejected. Even assuming that there is a delay, the same cannot be a sole ground to reject the application
for injunction. In support of his contention, the learned counsel has made reliance upon the following judgment.
(i) Ashok Leyland Limited Vs. Blue Hill Logistics Pvt. Ltd. and Dilip Chhabria Design Private Limited,
(ii) Kirloskar Diesel Recon Pvt. Ltd. and another Vs. Kirloskar Proprietary Ltd. and others,
(iii) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.,
(iv) Montari Overseas Limited Vs. Montari Industries Limited, etc.;
DISCUSSION:
3.1. Before us, both the counsels have made reliance upon number of documents and made submissions on facts and law. We have also perused
the order of the learned single Judge in extenso. As narrated above, the learned single Judge, after noting all the contentions, did not consider and
answer relevant issues both in respect of facts and law, but granted injunction mainly on the ground that the respondents'' mark has been registered
and the E-mails and the letter head of the appellant would prove lack of bona fides. Before us, both the learned counsels have sought to raise
various contentions, which have not been dealt with by the learned single Judge.
3.2. Admittedly, the mark of the respondents has been registered. However, the question for consideration is as to whether the said mark is
generic or deceptive in nature. Unfortunately, the learned single Judge has not gone into the said aspect. The questions regarding the common use,
publici juris and the usage for trade and by public have also not been looked into by the learned single Judge. Further more, the applicability of
Sections 12 and 35 of the Trade Marks Act, 1999, has also not been considered. Even on facts, the learned single Judge did not go into the rival
contentions made by the parties. The appellant has been running his concern in a selected places in the State of Tamil Nadu, whereas, the
respondents are having their concern in the State of Karnataka. The registration under Class 42 has been done in the year 2008. The relevancy of
these facts will have to be certainly gone into by the learned single judge while deciding the application. Merely because a mark is registered u/s 17
of the Act, the protection under the Trade Marks Act, 1999, would not follow automatically. Further more, the learned single Judge did not
consider the question regarding passing off except by making some reference about the letter head and E-mail belonging to the appellant. The
judgments relied upon by the learned counsels appearing for both sides were also not considered by the learned single Judge. The learned single
Judge has also not considered the effect of the various concerns running in the name and style of ""SOUKYA"" and other related names. Having
noted the above, we do not wish to take up the said exercise, instead we feel that interest of justice would require if the orders passed are set
aside and remitted back to the learned single Judge to decide the issue raised by the parties in accordance with law.
3.3 In such view of the matter, we do not wish to dwell much into the submissions made by the learned counsels both on facts and law. We feel
that when the appellant has raised many contentions both in law and facts, the non consideration of the same would vitiate the orders passed. In
such view of the matter, we hereby set aside the orders passed by the learned single Judge to be decided once over on merits. While passing this
order, we make it clear that all the issues are left open to the parties to be raised before the learned single Judge, including those incidental issues
decided earlier in the orders under challenge before us. We also further make it clear that we are not expressing anything on the merits of the
applications and our observations are to be meant only for the purpose of remitting the applications to be decided by the learned single Judge on all
issues. It is also open to the learned single Judge to take into consideration of the affidavit filed by the appellant apart from the contentions on
merits. Accordingly, these Original Side Appeals are allowed and the applications are remitted to the learned single Judge to be decided in
accordance with law. We also request the learned single judge, who is dealing with the applications, to expedite the disposal of the applications
early and if possible, within a period of three months from the date of receipt of a copy of this order. No costs.