S.N Variava, J.— This is an appeal against the judgment of the Division Bench of the Delhi High Court dated 28-7-2000 in FAO (OS) No. 242 of 1998.
2. Briefly stated, the facts are that pursuant to an agreement dated 21-12-1984 between the appellants and the 1st respondent, the 1st respondent was permitted to form a private company and use the name “Baker” as part of its corporate name. Thus the 2nd respondent Company was incorporated. The appellants had 40% shareholding in this Company. Clause 8.3 of this agreement provided as under:
“8.3. In the event of Baker holding less than 40% of the paid-up equity capital of the said Company, if the word ‘Baker’ is part of the name of the said Company, the said Company shall not be entitled to retain the said word as part of its name; the intention being that the said word shall be used as part of the name of the said Company by virtue of the permission of Baker and that the said Company shall have no property interest in the said word; and if Baker so requires the said Company shall change its name to a name not including the word ‘Baker’ or any similar word. If Baker so desires, the parties shall ensure that Baker and the said Company shall enter into an agreement in a form and substance satisfactory to Baker so as to ensure observance and implementation of this condition by the said Company.”
3. In 1994 the appellants sold their share in the 2nd respondent Company and called upon the 2nd respondent Company to stop use of the name “Baker”. As the 2nd respondent refused to delete the name “Baker” from its corporate name the appellants filed the suit seeking an injunction against the respondents from using the name “Baker” as part of their corporate name or in any other manner. In the suit, the learned Single Judge granted an ad interim injunction restraining the 2nd respondent from using the name “Baker” as part of their corporate name. The 2nd respondent Company has also been directed to make an application to the Registrar of Companies for deleting the name “Baker” from its corporate name. In granting the above injunction, the learned Single Judge kept in mind the well-established principles which govern grant of injunction in an action of passing off. The learned Single Judge held that the appellants had transborder reputation and had goodwill in the name in India. It was held that use of this name by the respondents is likely to cause confusion and deception and that the appellants would suffer damages if the interim relief was not granted.
4. The Division Bench, by the impugned judgment, has set aside the order of the learned Single Judge and vacated the interim injunction. The main ground on which the interim injunction has been vacated is that the right of the appellants (herein) under clause 8.3 of the agreement dated 21-12-1984 was not enforceable. The Division Bench held that the agreement had not been placed before the Government of India and was thus illegal and unenforceable.
5. Prima facie, it appears to us that the Division Bench has erroneously interfered with the well-reasoned judgment of the learned Single Judge. The application, which had been made by the 1st respondent to the Government of India, itself shows that the appellants had a very huge turnover; that they are regularly supplying equipment to parties in India. As per this letter they had reputation in India. At the interim stage this admission of the 1st respondent had to be taken note of. The 2nd respondent Company could thus use the name “Baker” only if there was permission, or an agreement, by which the appellants permitted them to use the name “Baker”. In the absence of any such agreement or permission, the 2nd respondent would be guilty of passing off its goods as those of the appellants and an injunction would have to follow on the basis of well-settled principles governing grant of injunction. It has to be remembered that the goods are identical. The technical know-how agreement does not contain any clause which permits user of the name “Baker”, nor does the technical know-how agreement contain any provision for grant of a 40% shareholding in the 2nd respondent Company. These provisions are contained only in the agreement dated 21-12-1984. The fact that the 2nd respondent Company could be incorporated with the name “Baker” as part of its corporate name and the fact that 40% shareholding was given to the appellants in the 2nd respondent Company prima facie shows that the agreement dated 21-12-1984 was acted upon and accepted even by the 2nd respondent. The minutes of the Board meeting held on 3-9-1993 also prima facie shows that even on this date the respondents accepted this agreement to be binding.
6. The execution of this agreement is not denied by the respondents. What has been claimed is that this agreement was not to be acted upon and/or that as this agreement was not put before the Government of India, the agreement was illegal and unenforceable. This argument has found favour with the Division Bench. Prima facie, it appears to us that this is a self-defeating argument. If the agreement was not to be acted upon, then there is no right in the 2nd respondent Company to use the name “Baker”. In spite of questions from this Court no other permission or licence to use the name “Baker” could be shown to us. If the agreement is unenforceable then the entire agreement is unenforceable. In that case the 2nd respondent has got no right to use the name “Baker”. On the reasoning that this agreement was illegal and unenforceable the interim injunction should have been confirmed. The goods being identical there was likelihood of confusion and/or deception if the respondents were permitted to carry on using this name.
7. In the above view, the order of the Division Bench would have had to be set aside and that of the learned Single Judge restored. However, we are informed that the trial court has fixed 16-7-2004 as the date for trial of the suit. The parties state that they will not ask for an adjournment. The trial court is directed to take up the suit for hearing on that date and proceed with the trial on a day-to-day basis. The trial court shall not grant any adjournment and will dispose of the suit as expeditiously as possible and in any event within two months from today.
8. We clarify that all observations made by us are prima facie and will not be taken into consideration by the trial court. The trial court will undoubtedly dispose of this suit on its merit uninfluenced by the observations in the impugned judgment or in the judgment of the learned Single Judge.
9. We adjourn this matter for a period of three months from today to be treated as part-heard.