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AMICUS AI
Citation Codes
Equivalent Citations
citation codes
Case Number
Attorney(S)
  • Mr. S.K Bansal, Adv. with Mr Vikas Khera, Adv.
  • Mr. Sanjeev Singh, Adv.
Judges
  • Manmohan Singh, J.
Acts
  • Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 (hereinafter referred
  • Sections 134 & 135 read with Section 27(2) of the Trade Marks Act, 1999
  • Section 2(1)(zg) of the Trade Marks Act, 1999.4.
  • Section 2(c) of the Copyright Act, 1957
  • SECTION 51 COPYRIGHT ACT 1957
  • Order 39 Rules 1 and 2 CPC
  • Order XXXIX Rule 4 CPC
  • Order 39 Rule 4 CPC
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Cites
Cited by
Citation Codes
Equivalent Citations
citation codes
Case Number
Attorney(S)
  • Mr. S.K Bansal, Adv. with Mr Vikas Khera, Adv.
  • Mr. Sanjeev Singh, Adv.
Judges
  • Manmohan Singh, J.
Acts
  • Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 (hereinafter referred
  • Sections 134 & 135 read with Section 27(2) of the Trade Marks Act, 1999
  • Section 2(1)(zg) of the Trade Marks Act, 1999.4.
  • Section 2(c) of the Copyright Act, 1957
  • SECTION 51 COPYRIGHT ACT 1957
  • Order 39 Rules 1 and 2 CPC
  • Order XXXIX Rule 4 CPC
  • Order 39 Rule 4 CPC
See more information ...
Smart Summary

Structured Summary of the Opinion (Manmohan Singh, J.)

Factual and Procedural Background

The plaintiff, Smt. Raj Rani Aggarwal, sole proprietor of M/s Bios Laboratory, sued defendants M/s Parul Homoeo Laboratory (defendant No. 1) and M/s New Delhi Homoeo Pharmacy (defendant No. 2) seeking permanent injunctions for passing off and copyright infringement, rendition of accounts, damages and delivery up. The plaintiff alleged use of the trade mark/label "HEIGHTEX LABEL" since 1992, a trademark application (No. 744887) filed on 22.10.1996 (pending), and a registered copyright for the label (No. A-76798/2006). The plaintiff claimed distinctive packaging and wide advertising, and said the defendants were selling goods with an identical label that traded upon plaintiff's goodwill.

The suit was filed under Sections 134 & 135 read with section 27(2) of the Trade Marks Act, 1999 and Section 51 of the Copyright Act, 1957. The plaintiff said the cause of action arose on 17.12.2008 when the IPAB stayed the defendants' registration and in January 2009 when the plaintiff first encountered the defendants' goods.

Defendant No. 1 filed a written statement and a counter-claim seeking a permanent injunction restraining the plaintiff from using the mark HEIGHTEX. Defendant No. 1 claimed prior adoption and use since 1994, registration of its mark (No. 812628), statutory licences, and alleged the plaintiff had concealed prior dealings and litigation (including a legal notice dated 26.09.2003 and earlier rectification proceedings). Defendant No. 2 stated it was an independent retail shop and denied agency or complicity.

Several interlocutory applications were listed for decision: IA No. 1592/2009 (Order 39 Rules 1 & 2 CPC) by the plaintiff; IA No. 5967/2009 (Order 39 Rules 1 & 2 CPC) by defendant No. 1; IA No. 5968/2009 (Order 39 Rule 4 CPC) by defendant No. 1; and IA No. 9518/2009 (Section 151 CPC) by defendant No. 1. Issues in the main suit (CS (OS) No. 239/2009) were framed on 03.12.2009; parties were directed to file witness lists and produce evidence by affidavit, and the matter was ultimately directed to be listed for trial.

Legal Issues Presented

  1. Whether interim relief in the form of injunction(s) under Order 39 Rules 1 & 2 CPC should be granted to the plaintiff or to defendant No. 1, given competing claims of prior user and the state of the record.
  2. Whether relief under Order 39 Rule 4 CPC (application filed by defendant No. 1) should be granted to restrain the plaintiff from using the trade mark in question.
  3. Whether IA No. 9518/2009 under Section 151 CPC (filed by defendant No. 1) should be allowed to permit filing of documents as prayed.
  4. Procedural question of sending the matter for trial and fixing dates for cross-examination of plaintiff's witnesses after earlier attempts at settlement and framing of issues.

Arguments of the Parties

Plaintiff's Arguments

  • Uses the trade mark/label "HEIGHTEX LABEL" on medicinal and pharmaceutical preparations since 1992.
  • Applied for trademark registration (No. 744887) on 22.10.1996 (pending).
  • Claims the label is an original artistic work under Section 2(c) of the Copyright Act and is the registered copyright owner (No. A-76798/2006).
  • Asserts the product packaging has a distinctive colour scheme and layout and the mark/label is well-known (cites Section 2(1)(zg) of the Trade Marks Act, 1999).
  • Alleges defendants used an identical mark, trading on plaintiff's goodwill, thus infringing copyright and passing off; seeks permanent injunctions, rendition of accounts, damages and delivery up.

Defendant No. 1's Arguments

  • Claims prior adoption and continuous use of the trade mark HEIGHTEX since 1994 and holds relevant licences (drug licence, sales tax registration) and registrations to run the business.
  • Contends the plaintiff's suit is false, frivolous and misconceived and that plaintiff concealed material facts and prior litigation.
  • States defendant served a legal notice dated 26.09.2003 calling on the plaintiff to desist; plaintiff replied claiming prior user; plaintiff's rectification petition was dismissed as premature on 05.11.2004; thereafter defendant's mark was registered (No. 812628).
  • Alleges plaintiff filed a caveat and obtained an ex-parte order in December 2008 which plaintiff purportedly concealed to obtain inequitable relief; points to a Division Bench order in FAO (OS) No. 379/2009 that vacated the ex-parte order dated 04.02.2009.
  • Asserts the plaintiff did not have drug licences in the early 1990s and therefore plaintiff's claimed use for those years is false.
  • Has filed counter-claim seeking injunction restraining the plaintiff and applications under Order 39 (both for and against interim relief) and an application under Section 151 CPC to file documents.

Defendant No. 2's Arguments

  • States that defendant No. 2 is an independent homeopathic medicines retail shop, not an agent or dealer of defendant No. 1, and was unaware of the dispute prior to receiving the suit documents.

Table of Precedents Cited

The opinion cites prior interlocutory orders between the parties; only those items explicitly referenced are listed below.

Precedent Rule or Principle Cited For Application by the Court
FAO (OS) No. 379/2009 (Division Bench) Referred to as an order in which the Division Bench vacated an ex-parte order dated 04.02.2009. The court noted the defendant's counsel referred to this Division Bench order to show that an earlier ex-parte order in favour of the plaintiff had been vacated. The opinion records this reference but does not treat it as determinative of the present interlocutory applications.

Court's Reasoning and Analysis

The court addressed multiple interlocutory applications after considering pleadings and documents placed on record and the oral statements made in court. The analysis proceeded on the following factual and legal observations explicitly recorded in the opinion:

  1. The court acknowledged that defendant No. 1 had filed the documents it had prayed for; consequently IA No. 9518/2009 (under Section 151 CPC) was allowed.
  2. The court observed that both parties had, on earlier listings, orally stated they had mutually settled their disputes and had supplied a draft application suggesting an intention to enter into a co-existence agreement; yet no such application was ultimately filed despite several adjournments.
  3. The court noted factual conflicts about prior use: both parties claimed long use of the mark HEIGHTEX LABEL (claimed use for more than 17 years). Defendant No. 1 had issued a legal notice on 26.09.2003 and there was prior litigation and proceedings (including rectification proceedings and a Division Bench order) which the plaintiff had not fully disclosed in her pleadings, particularly in the paragraph of cause of action.
  4. The court emphasized lacunae in plaintiff's pleadings: the plaintiff did not disclose receipt of the 2003 legal notice in her cause of action and failed to record whether she had obtained drug licences in 1992, 1993 and 1994. The court noted the proposition that pharmaceutical goods cannot be sold without appropriate drug licences and found force in defendant's submission that the plaintiff had not obtained such licences in the early 1990s (based on the record at this stage).
  5. Given that both sides assert prior user status and that defendant No. 1 had produced documents supporting its claim to prior use, and because defendant No. 1 had an active counter-claim, the court found it inappropriate at the interlocutory stage to grant exclusive interim relief to either party. The court concluded that these competing factual claims needed to be tested at trial.
  6. On the basis of the foregoing, the court declined to pass interim orders in favour of either the plaintiff or the defendants and disposed of the interlocutory applications without granting interim relief (subject to the specific allowance of IA No. 9518/2009 noted above).
  7. Regarding progress of the main suit (CS (OS) No. 239/2009), the court recorded that original documents had been filed, issues had been framed on 03.12.2009, directions given for witness lists and affidavit evidence, and that despite earlier attempts at settlement the parties had failed to resolve the dispute. Consequently, the court directed that the matter be sent for trial and listed it before the Joint Registrar to fix dates for cross-examination of the plaintiff's witnesses.

Holding and Implications

Core Rulings:

  • IA No. 9518/2009 (Section 151 CPC) — Allowed. The court allowed the application because the defendant No. 1 had already filed the documents as prayed.
  • All other interlocutory applications (including applications under Order 39 Rules 1 & 2 CPC and Order 39 Rule 4 CPC) — Disposed of without any interim orders. The court declined to grant interim injunctions either in favour of the plaintiff or the defendants.
  • Procedural direction: The main suit (CS (OS) No. 239/2009) was directed to be placed for trial; the matter was listed before the Joint Registrar on 12 October 2011 to fix the date for cross-examination of the plaintiff's witnesses.

Implications: The direct effect is that no interim injunctions were granted and the parties will have their conflicting claims of prior use and ownership tested at trial. The court's order does not purport to create a new legal precedent; it disposes of the interlocutory applications on the record and procedural posture specific to these parties and sends the dispute for adjudication on merits.

This summary is confined strictly to the contents and statements made in the provided opinion. No information has been added beyond what the opinion itself records.

Show full summary ...

    Smt. Raj Rani Aggarwal Trading v. Parul Homoeo Laboratory

    MANMOHAN SINGH, J.

    1. By this order, I shall dispose of the following applications filed by the parties:

    a) IA No. 1592/2009 under order xxxix rules 1 & 2 of the code of civil procedure, 1908 (hereinafter referred to as the CPC) filed by the plaintiff.

    b) IA No. 5967/2009 under order xxxix rules 1 & 2 cpc filed by the defendant No. 1.

    c) IA No. 5968/2009 under Order XXXIX Rule 4 CPC filed by defendant No. 1.

    d) IA No. 9518/2009 under Section 151 CPC filed by the defendant No. 1.

    2. In view of the fact that the defendant No. 1 has already filed the documents, as prayed, the application, being IA No. 9518/2009, is allowed.

    3. The plaintiff has filed the suit under sections 134 & 135 read with section 27(2) of the trade marks act, 1999 as well as under Section 51 of the Copyright Act, 1957 for permanent injunction restraining passing off, infringement of copyright, rendition of accounts, damages and delivery up against the defendants, namely, M/s Parul Homoeo Laboratory and M/s New Delhi Homoeo Pharmacy.

    3. The brief facts are that the plaintiff Smt. Raj Rani Aggarwal, the sole proprietor of M/s Bios Laboratory, is engaged in the business of manufacturing and marketing of medicinal and pharmaceutical prepartions under the trade mark HEIGHTEX LABEL from the year 1992. The plaintiff filed an application for registration of the trade mark bearing No. 744887 as on 22.10.1996 in class 5 which is still pending for registration. It is also stated in the plaint that the trade mark HEIGHTEX LABEL which plaintiff is using on its products is original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiff is the owner of the same. The said copyright is duly registered bearing No. A-76798/2006 in its favour. The said product is sold in a distinctive packing having a unique and distinctive colour scheme, design, get up and layout. The said packing consists of red, blue and yellow colour represented in a special and particular manner. The plaintiff has widely advertised the label/trade mark HEIGHTEX LABEL through different medias and the said trade mark/label is a well known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

    4. The allegations made by the plaintiff against the defendant No. 1 are that defendant No. 1 is also engaged in the business of manufacturing and marketing the pharmaceutical and medicinal preparations. The defendant No. 1 is at Kanpur and the defendant No. 2 is the dealer/agent of defendant No. 1 who is acting in connivance with the defendant No. 1 and selling the infringing goods bearing the similar trade mark/label HEIGHTEX LABEL in order to trade upon the tremendous goodwill and reputation of the plaintiff. The trade mark/label used by the defendants is identical to the trade mark/label of the plaintiff and the defendants were aware about the reputation of the plaintiff's trade mark from the very beginning. Therefore, the plaintiff has established a case against the defendants for infringing of copyright and passing off their goods as that of the plaintiff.

    5. The plaintiff has stated that cause of action of this case arose on 17.12.2008 when the IPAB stayed the registration of the impugned trade mark of the defendants. It further arose in the first week of January, 2009 when the plaintiff for the first time laid hands on the goods of the defendants and it continued from day to day till the filing of the present suit.

    6. Both the defendants have filed separate written statements. The defendant No. 2 has filed the written statement stating that the defendant No. 2 is an independent homeopathic medicines retail shop and has nothing to do with the business of defendant No. 1. The defendant No. 2 is just a stranger and is not an agent of the defendant No. 1 and was not even aware about the subject matter of the dispute prior to receiving the documents in the present suit.

    7. On the other hand, the defendant No. 1 has filed the written statement as well as the counter claim against the plaintiff for permanent injunction restraining the plaintiff from using the said trade mark HEIGHTEX. The defendant No. 1 has also filed an appliation under Order 39 Rule 4 CPC as well as an application for injunction under Order 39 Rules 1 and 2 CPC restraining the plaintiff from using the trade mark in question.

    8. The main case of the defendant No. 1 is that the suit filed by the plaintiff is false and frivolous as the said trade mark HEIGHTEX belongs to defendant No. 1 which is being used since 1994 continuously, regularly and extensively. The defendant No. 1 has also obtained drug licence, sales tax registration and all requisite licences from the government authorities to run the said business. It is also stated by the defendant No. 1 that the suit filed by the plaintiff is totally misconceived and the plaintiff has concealed various material facts from this Court. The knowledge of filing of the present suit by the plaintiff is also denied by the defendant No. 1 on the ground that in September 2003, the defendant No. 1 received information from its dealer that the plaintiff is involved in the marketing of inferior quality homeopathic medicines beairng identical trade mark/lable HEIGHTEX and immediately defendant No. 1 served a legal notice dated 26.09.2003 calling upon the plaintif to desist forthwith using the said trade mark. The said notice was replied by the plaintiff through its counsel wherein the plaintiff claimed to be prior user of the trade mark/label HEIGHTEX. After receiving the notice dated 26.09.2003, the plaintiff filed rectification petition of the registered trade mark of the defendant No. 1 which was dismissed vide order dated 05.11.2004 being pre-mature petition. Thereafter, the trade mark of the defendant No. 1 was registered bearing No. 812628 and the plaintiff filed the rectification petition again on the similar grounds. Not only that, the plaintiff also filed a caveat petition before this Court and obtained an ex-parte order in the month of December, 2008 and the caveat petition was knowingly concealed by the plaintiff from this Court in order to obtain inequitable relief.

    9. According to the defendant No. 1, the defendnt No. 1 is the prior adopter and user of the said trade mark. The plaintiff on the other hand has no goodwill and reputation and in fact has never used the said lable in respect of the goods as claimed by the plaintiff. Since the plaintiff has approached this Court suppressing the material vital facts with a view to override and to obtain undue advantage by seeking the interim order against the defendant No. 1, the suit is, therefore, bad and is not maintainable.

    10. The contention of the defendnat No. 1 is that it has been done by the plaintiff willfully just to obtain the ad-interim order. Otherwise, the plaintiff in the cause of action ought not to have made an incorrect statement about its knowledge about the year 2008 when there was a legal notice and litigation pending between the parties in the year 2003-2004. It is also contended by the defendant No. 1 that the claim of the plaintiff is totally false and frivolous as the plaintiff has never used the trade mark in the year 1992 or 1999 as alleged as no drugs licence has been obtained by the plaintiff for manufacturing of drugs/medicines bearing the trade mark HEIGHTEX LABEL and without drug licence no medicine can be manufactured.

    11. As regard the copyright and registration, it is stated by the defendant No. 1 that the rectification proceedings are being initiated and same registration is to be rectified. The learned counsel for the defendant No. 1 has also referred to the order passed in the appeal filed by the defendant No. 1 beween the parties passed by the Division Bench in FAO (OS) No. 379/2009 which was filed against the ex-parte order dated 04.02.2009 and the ex-parte order was vacated by the Division Bench of this Court.

    12. It is a matter of fact that when the pending applications were listed from time to time, both the parties had made an oral statement before the Court that they have mutually settled all their disputes. Even a copy of draft application was handed over to the Court which indicates that the parties had intention to enter into an agreement of co-existence in relation to the impugned trade mark. But, it is not understood why the said application was not filed by the parties despite of taking many adjournments from the Court in this regard.

    13. After having considered the pleadings on merit, coupled with documents placed on record by the parties, I am not inclined to pass interim order either in favour of the plaintiff or the defendants because of the reason that it appears from the documents that the said trade mark HEIGHTEX LABEL is being claimed to have been used for more than 17 years. The defendant had issued a legal notice on 26.09.2003, the parties have had various litigations prior to the filing of the present suit in paragraph of cause of action. The full details of the said litigations have not been disclosed by the plaintiff. Even in paragraph of cause of action, the plaintiff has failed to disclose having received the legal notice received by her in the year 2003. The plaintiff has also not disclosed as to whether she had obtained any licence issued in her favour for the year 1992, 1993 and 1994. Therefore, this Court finds that at this stage, there is a force in the submission of the defendant No. 1 that the plaintiff had not obtained the drug licence in the year 1992 or 1994 as the pharmaceutical goods cannot be sold without obtaining the drug licence from the authority. Since both the parties are claiming prior user against each other and the defendant No. 1's counter claim against the plaintiff is also pending, it is not appropriate at this stage to pass an interim order sought by the plaintiff against the defendant No. 1 or by the defendants. Even the defendant No. 1 is also able to prove his clear case of prior user claimed by way of documents produced. Unless the pleas raised by the parties are tested in trial, this Court is not inclined to issue any interim order in favour of either party due to peculiar circumstances. Thus, all the applications are disposed of without any interim orders.

    CS (OS) No. 239/2009

    The parties have already filed the original documents. Issues in the matter were framed on 03.12.2009 and the time was granted to the parties to file list of witnesses and direction was also issued to produce the evidence by way of affidavits. The plaintiff has already filed two affidavits in this regard along with the list of witnesses. Despite the said direction, the parties were trying to resolve the matter since 03.012.2009 as appears from the orders sheet. In fact, both the parties have prolonged the matter for one and half years without any progress. Since now they are not inclined to resolve their disputes, therefore, the matter must be sent for trial. List the matter before the Joint Registrar on 12th October, 2011 for fixing the date of cross-examination of the plaintiff's witnesses.

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    Comments

    Smt. Raj Rani Aggarwal Trading v. Parul Homoeo Laboratory
    (Jul 4, 2011)