In case of unauthorized used of trade mark damage can be claim only on submission of proof of damage

IN THE HIGH COURT AT CALCUTTA

ORDINARY ORIGINAL CIVIL JURISDICTION

(ORIGINAL SIDE)

Present:The Hon’ble Justice Nadira Patherya

G. A. No. 463 of 2010

C. S. No. 360 of 2009

HAHNEMANN LABORATORY LTD. & ORS.

VERSUS

THE HAHNEMANN INDIA LABORATORIES (BN) & ORS.

For the Petitioner:Mr. S.N.Mitra,

                                    Mr. Sayantan Bose,

                                    Mr. Sourav Moitra.

For the Respondent:Mr. Sudip Deb,

                                   Mr. A.K.Gandhi.

Heard on:24.8.10, 26.08.10, 27.08.10 & 30.08.10

Judgment on:3rd February, 2012.

Patherya, J. :

In a suit for a decree of perpetual injunction restraining the defendants from infringing the trademark “Arnimax” and passing off goods under the said trademark, this application has been filed for interim reliefs.

The case of the petitioner is that it is a family concern and is the owner of the registered trademark “Arnimax” for its medicinal and pharmaceutical preparation under Clause- 5 of the fourth Schedule since 2003.

The silhouette of the lady with black hair has come to be identified with the product of the petitioner and the said registered trademark “Arnimax”. In fact by virtue of the aforesaid the petitioner has acquired a copyright in the artistic work of the trade dress.

In the 1st week of October, 2009, the petitioner came to know that the respondents have infringed its trademark by using the word “Arnimax” on its products coupled with the trade dress and thereby has infringed the registered trademark and passed off its products as that of the petitioner. Accordingly, C.S. 360 of 2009 was filed and an interim order passed on 19th February, 2010 restraining the respondent from dealing with, offering for sale, advertising, marketing or publicising the impugned trademark “Arnimax”. Such order was continued on 8th April, 2010 and direction given for filing affidavits. An affidavit has been filed and a No Objection Certificate dated 9th December, 2002 has been relied upon by the respondent. Such No Objection Certificate was given by one Das Homoeo Laboratory (P) Ltd. No certificate of the petitioner has been produced. In fact on a comparison of the signature of the person who is the signatory to the certificate with the signature in the Indenture of Lease dated 25^th March, 1988 the said signature will not tally. The licence given to Das Homoeo Laboratory (P) Ltd. by the owners of the registered trademark did not include the registered trademark “Arnimax”. Therefore, neither Das Homoeo Laboratory (P) Ltd. nor anyone deriving a right thereunder could have issued the No Objection Certificate. No document evidencing sale, registration or user has been produced by the respondent therefore the case of infringement made out subsists and the order dated 19th February, 2010 and subsequent orders passed be confirmed.

Counsel for the respondent opposing the said applications submits there has been suppression of facts as the No Objection Certificate to use the mark “Arnimax” so also dealership has not been disclosed.

Reliance is placed on 2010 2 SCC 114 for the proposition that in case of suppression of facts the interim orders passed be vacated and application dismissed. Ranjit Kumar Das and Rewati Ranjan Das started the business of Das Homoeo Laboratory (P) Ltd. and issued a No Objection Certificate on 9^th December, 2002 in favour of Ajay Kumar Agarwal and allowed the user of the

mark “Arnimox” by them. On the basis of the said No Objection Certificate Agarwal since 2002 has been selling the said products in Bihar.

In fact the petitioner had knowledge that the mark “Arnimox” was being used by Agarwal in Bihar and by Das Homoeo Laboratory (P) Ltd. pursuant to such Certificate. As the petitioners have acquiesced in such user, they are not entitled to challenge the same. Reliance is placed on 1981 2 AER 650 and 2006 8 SCC 726. The said was known to the petitioner for over 5 years and having acquiesced the petitioner is estopped from seeking remedies under Section 115 of the Evidence Act on the ground of delay alone. “Arnimax” is a generic word and therefore use by an honest concurrent user will not give rise to an infringement action. Reliance is placed on 2010 2 SCC 142 and 1993 3 SCC 61. There are other users of the word “Arnimax” and as the petitioner has not taken any proceeding against such users therefore, the orders passed be vacated. Reliance is placed on 2010 2 SCC 114. The suit was filed in 2009 and the application filed in 2010. From the report of the Receiver, it will appear that the factory is lying shut and there is no manufacture. Therefore, the interim order passed be vacated and accounts be directed to be maintained.

In reply counsel for the petitioner submits that in the event “Arnimax” is a generic word for having acquired distinctiveness a passing off action will be maintainable. The No Objection Certificate has been issued by Ranjit Kumar Das and Rewati Ranjan Das who along with Rashmay Das started the business of Das Homoeo Laboratory (P) Ltd. For the No Objection Certificate to be valid the signature of Rashmay was necessary. A partition suit is pending and the no objection which has been relied on has been given in the personal capacity and not on behalf of the Private Ltd. Company. Therefore, no credence be given to such certificate. There has been no suppression as the petitioners were aware of the No Objection Certificate issued. No document has also been produced to evidence conduct of business by producing advertisement or balance sheet. “Arnimax” is being used by two companies as per the respondent. As against Hahnemann Laboratory (Healthcare) which used the word “Arnimax”, an order of injunction has been passed. As user by Zenith was not known, the petitioner will take steps if the same is true. The decision reported in 2010 2 SCC 142 is distinguishable so also 2010 2 SCC 114. No document of permission granted by the petitioners has been produced. Das Homoeo Laboratory (P) Ltd. which has given the permission had no right over the label, therefore permission could not be given. The decisions reported in 1981 2 AER 650 and 2006 8 SCC 726 are not applicable as the petitioner had no knowledge.

Having considered the submissions of the parties, the petitioner is the registered owner of the trademark “Arnimax” since 2003. Such trademark along with the get-up and trade dress of the label has come to be identified with the petitioner’s products.

The respondent is claiming user under a No Objection Certificate given to it by Das Homoeo Laboratory (Pvt.) Ltd. on 9th December, 2002. Initially the respondent No.2 carried on business under the name and style of Shree Annapurna Bhandar in Hajipur, Bihar. A dealership was given in their favour by the petitioners which expired in 1999. Subsequent thereto in 2002 the No Objection Certificate was issued by Das Homoeo. Das Homoeo is a private limited Company and Rewati Ranjan Das, Ranjit Kumar Das and Rashmay Das were its Directors. Das Homoeo under a licence from the petitioner No. 1 was allowed to market some of the petitioner No 1’s products. From the documents produced use of the registered trademark “Arnimax” was not assigned or licensed to Das Homoeo. Therefore, the No Objection Certificate issued by Das Homoeo also could not give a right to the respondent which it did not have. The No Objection Certificate has been issued by two of the Directors of Das Homoeo. The signature of the 3rd Director is absent. Being a private limited company a resolution was to be taken, no copy of such resolution has been annexed. In fact on a comparison of the signatures of Rewati Ranjan Das and Ranjit Kumar Das even assuming that Ranjit Kumar Das put a short signature, the signature of Rewati Ranjan Das is questionable when compared to his signature in the Lease Deed executed on 25th March, 1988.

Therefore, the case of user under a license on the basis of which the respondent seeks to justify the get-up and trade dress of its label cannot be accepted.

On the contrary, the petitioner is the owner of a registered trademark with which the get-up and trade dress of its label has come to be identified and this therefore entitles the petitioner to confirmation of orders dated 19^th February, 2010 and 8th April, 2010.

Another reason for passing this order is that an unwary illiterate common man customer is likely to be misled by the respondent’s product as that manufactured by the petitioner.

2010 2 SCC 114 is not applicable in the facts of this case as there has been no suppression of facts.

2010 2 SCC 142 is not applicable to the facts of the case as in case “Arnimax” is a generic word, there would have been no need to obtain a no objection certificate from Das Homoeo by the respondents.

There is no dispute with the principles laid down in 1993 3 SCC 161 with regard to recording of reasons and weighing the balance of convenience and inconvenience.

2006 8 SCC 726 is a case of acquiescence. No document has been executed by the petitioner in favour of the respondents permitting them either to use the registered trademark “Arnimax” or the get-up or trade dress. Therefore, the question of waiver or acquiescence does not arise. Delay of 5 years will not amount to acquiescence as the petitioner came to know of the respondents acts

only in October 2009 and the suit was filed immediately thereafter. The decision, therefore, has no application to the facts of the instant case. For the same reasons 1981 2 AER 650 will also have no application. More so as the plaintiff’s action therein was dismissed as no evidence of damage could be shown. In the instant case the respondents have accepted the fact of user under a licence which is not borne from the documents annexed to the pleading and the respondent has admitted that its business is restricted to Bihar.

For all the said reasons, the order dated 19th February, 2010 so also order dated 8th April, 2010 whereby a Receiver was appointed in terms of prayer (f) of the Notice of Motion are confirmed.

(Patherya, J.)