Translate
Text Highlighter

Bookmark

PDF

Share

Report a problem
AMICUS AI
Citation Codes
Equivalent Citations
citation codes
Acts
Are you a practicing lawyer?
Enhance your digital presence and reach by creating a Casemine profile.
Upload pleading to use the new AI search
Cites
Cited by
Citation Codes
Equivalent Citations
citation codes
Acts
Smart Summary

Factual and Procedural Background

This opinion concerns an application for interim injunction and other interim reliefs in a suit for perpetual injunction. The plaintiff relies on two registered trade marks, Popular Crown and Super Crown (Nos. 315915 and 315916), related to Overlock Machines and Chain Stitching Machines and parts. The plaintiff alleges that the defendants have started using identical trade marks on the same types of machines and parts, prompting the claim for an interim injunction to restrain such use. The defendants filed a reply affidavit claiming ongoing rectification proceedings to remove the plaintiff's trade marks, which are subject to oppositions filed by the defendants in the suit. The defendants also moved an application for stay under section 111 of the Trade and Merchandise Marks Act, which was not properly stamped or supported and was returned for compliance. The application remains pending.

Legal Issues Presented

  1. Whether an interim injunction can be granted restraining the defendants from using the trade marks Popular Crown and Super Crown pending the outcome of rectification proceedings.
  2. The effect of pending rectification proceedings under section 111 of the Trade and Merchandise Marks Act on the grant of interim relief in the suit.
  3. The scope of the court’s jurisdiction regarding interlocutory matters, including injunctions and security for costs, during the pendency of rectification applications.
  4. The validity of the plaint with respect to court-fee stamping and jurisdictional valuation.

Arguments of the Parties

Plaintiff's Arguments

  • The plaintiff has been using the trade mark "CROWN" since 1967.
  • The defendants have started using the same trade marks on identical goods, causing confusion and infringement.
  • Interim injunction is necessary to prevent deception and protect the plaintiff’s rights.
  • Security should be ordered from the defendants to ensure compliance and safeguard plaintiff’s interests.

Defendants' Arguments

  • The defendants claim to have started using the trade marks since 1971, suggesting concurrent innocent use.
  • Rectification proceedings are pending to remove the plaintiff’s trade marks, which should stay the suit under section 111.
  • The plaint is inadequately stamped and thus challenges the court’s jurisdiction.
  • The defendants contend that sales are very small and oppose furnishing security.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
Section 111 of the Trade and Merchandise Marks Act Mandates stay of suits involving pending rectification proceedings; permits the court to deal with interlocutory matters such as injunctions. The court acknowledged the mandatory stay of suits but noted that interlocutory reliefs, including injunctions, may still be granted. The court proceeded to consider the injunction application despite pending rectification.
Order 7 Rule 11 of the Code of Civil Procedure Governs rejection or return of plaints on grounds such as inadequate stamping or valuation. The court found prima facie no ground to return the plaint at this stage despite defendants’ objection on stamping and valuation, allowing the suit to proceed.
Order 39, Rules 1 and 2 of the Code of Civil Procedure Empowers the court to grant injunctions and order security for costs in interlocutory applications. The court refused a total injunction due to pending rectification but ordered the defendants to furnish security for costs, linking it to reconsideration of injunction if security is not furnished.

Court's Reasoning and Analysis

The court recognized that the plaintiff’s registered trade marks are subject to pending rectification proceedings initiated by the defendants, which under section 111 of the Trade and Merchandise Marks Act mandates a stay of the suit. However, subsection (5) of section 111 allows the court to entertain interlocutory matters, including injunction applications. The court therefore proceeded to consider the interim injunction application.

The court noted the plaintiff’s earlier use of the "CROWN" mark since 1967 and the defendants' claim of use since 1971, indicating possible concurrent innocent use in different regions. The risk of deception was considered significant enough to justify some interim relief. The court expressed a preference to grant an injunction to avoid confusion caused by two manufacturers using the same mark on identical goods.

Nevertheless, due to the pending rectification applications which might lead to de-registration of the plaintiff’s marks, the court exercised caution. Granting a total injunction would severely impact the defendants’ business, so the court refrained from granting a full injunction.

Regarding the defendants’ objection to the plaint’s stamping and jurisdiction, the court held that the plaint appeared properly valued and stamped at this preliminary stage and that any defects could be addressed later. The court did not find grounds to reject the plaint under Order 7 Rule 11 at this time.

Since a full injunction was declined, the court considered alternative relief. It ordered the defendants to furnish security of Rs. 10,000 and mandated the filing of accounts every two months regarding sales. Failure to furnish security would prompt reconsideration of the injunction application. This approach balanced the plaintiff’s interest in protecting its trade marks with the defendants’ right to continue business pending final adjudication.

Holding and Implications

The court disposed of the application for interim injunction by refusing to grant a total injunction due to pending rectification proceedings but ordered the defendants to furnish security of Rs. 10,000 and to regularly file accounts of sales.

The direct effect of this decision is that the defendants may continue using the disputed trade marks temporarily but under the condition of furnishing security and maintaining accounts. The injunction application may be reconsidered if the security is not provided. The court’s decision does not establish new precedent but reflects a cautious balancing of interests in the context of pending rectification proceedings.

    S. Karam Singh v. Master Machine and Service and Ors.

    JUDGMENT

    D.K. Kapur, J.

    1. This is an application for interim injunction and other interim reliefs in relation to a suit brought for perpetual injunction. The plaintiff has relied on two registered Trade Marks which are Popular Crown and Super Crown being Nos. 315915 and 315916, respectively. These trade marks are in relation to Overlock Machines and Chain Stitching Machines and parts. There are also some other marks pending for registration according to the plaint. According to the claim of the plaintiff, the defendants have started the using same trade marks in relation to the same type of machines, i.e., Overlock Machines and Chain Stitching Machines and there parts. On this basis, an interim injunction is claimed to re strain the defendants from using the same marks on the same goods. A reply has been filed to the injunction application which is in the form of affidavit of Shri Suresh Kumar. It is claimed that the trade marks on which the plaintiff has relied are being sought to be removed and certain documents have been filed to show this. I have examined the same. It appears that some rectification proceedings are pending in relation to these very trade marks and those oppositions have been moved by the defendants in this very suit. On this basis, an application for stay under section 111 of the Trade and Merchandise Marks Act has also been moved by the defendants. That application has not been registered and is on record. It is not properly stamped nor supported by an affidavit. It is directed to be returned for being properly stamped and for filing an affidavit along with same. It will be taken up in due course.

    2. Assuming that rectification applications are pendings, then section 111 of the Trade and Merchandise Marks Act makes it mandatory for the Court to stay such suits. However, sub-section (5) of Section 111 of the Act permits the court to deal with interlocutory matters including applications for injunction, to get an account and so on. Hence, even if the trade marks on which the plaintiff sues are under challenge, it does not preclude the Court from giving relief in the intervening period. So, I proceed to deal with the application.

    3. According to the plaintiffs, they have been using the trade mark 'CROWN' since 1967' whereas the defendants claim to have started using the name since 1971. Assuming that there is a concurrent innocent user during the period the trade marks were not registered and assuming that the trade marks are being used and were being used in different portions of the country, the possibility of deception is so great that some interim relief has to be given. Personally, I would have liked to have given an injunction as it is preferable that the goods should not be manufactured by two different manufacturers applying the same trade mark on the same type of goods. The possible loss or gain by one party or the other party is so difficult to compute in such a case that the only proper relief is to grant an injunction. However, as the rectification applications are pending, there is always the possibility that the registered trade marks may be de-registered and for this possibility the Court has to make some allowance while granting interim relief. The grant of a total injunction to restrain the defendants from manufacturing the machines in question using the same trade marks would make it most difficult for the defendants to carry on business in future therefore, I refrain from passing an order granting an injunction.

    4. Before considering the matter of other relief, I note one objection of the defendants which relates to the jurisdiction of this Court. It is claimed that the plaint is inadequately stamped. This contention is based on the fact that the amount claimed on accounts is Rs. 1,00,000/-, but for court fee the stamp is paid on Rs. 1,000/-. Unfortunately, the law permits a party to put court fee on an assumed value in such cases. When the eventual decree is given, i.e., after the accounts have been taken, then the court-fee has to be fixed on the accounts actually taken. Prima facie there seems to be nothing wrong with the manner in which the value for court-fee and the value for jurisdiction has been computed in the plaint. But, as I am not deciding the validity of the plaint at this stage, the defendants may raise further contentions on this matter when the suit is taken up on the merits, prima facie the plaint does not appear to be one which has to be returned under Order 7 Rule 11 of the Code of Civil Procedure at this stage. If it is found that the plaint is inadequately stamped or otherwise requires amendment, the Court will pass appropriate orders at the right time. Having come to the conclusion that the plaint has to be proceeded with and the application has to be decided and having also ascertained that this is not a fit case for grant of an injunction because of the pendency of the rectification proceedings relating to the trade marks relied upon in suit, I think that the only relief that can be granted is maintaining of accounts and the filing of statements regarding the same. Learned counsel for the plaintiff stresses that some security should be ordered. Counsel for the defendants says that the sales are very small. The counsel for the plaintiff states that merely furnishing an inadequate account, the defendants will escape scot-free and also infringe the trade marks which really amounts to giving a licence to the defendants. I am not sure of the Court's power to grant an order directing the defendant to furnish security, but the counsel for the plaintiff relies on Order 39, Rules I and 2 of the Code, and in view of the fact that an injunction has been refused because of the pendency of the rectification applications. I think that least that the court can order is that the defendants should furnish some security at least for costs etc. I would therefore, direct the defendants to furnish a security in sum of Rs. 10,000/-. Failing the furnishing of such security, the question of grant of injunction will be re-considered. To enable the security to be furnished, the case will be listed in any case on 28th September, 1981, so the security may also be furnished by that date to the satisfaction of the Registrar of this Court. The accounts to be furnished every two months regarding sales. This application is disposed of.

    Use AI to get other relevant cases.

    Comments

    S. Karam Singh v. Master Machine and Service and Ors.
    (Sep 5, 1979)