CMPM(O) No. 340/2016. Case: D.P. Jagan Hardware Private Limited Vs D.P. Jagan & Sons and Ors.. Himachal Pradesh High Court

Case NumberCMPM(O) No. 340/2016
Party NameD.P. Jagan Hardware Private Limited Vs D.P. Jagan & Sons and Ors.
CounselFor Appellant: Mohan Singh, Advocate and For Respondents: P.S. Goverdhan, Advocate
JudgesTarlok Singh Chauhan, J.
IssueCode of Civil Procedure, 1908 (CPC) - Order VII Rule 11; Trade Marks Act, 1999 - Sections 134, 134(1)(c), 27, 27(2), 28, 28(1), 28(3), 29, 34
Judgement DateMarch 08, 2017
CourtHimachal Pradesh High Court

Judgment:

Tarlok Singh Chauhan, J.

  1. By medium of this petition, the petitioner has prayed for setting aside the order passed by the trial court on 2.4.2016 whereby the application filed by it for rejection of the plaint came to be dismissed.

  2. The bare minimal facts, as are necessary for determination of this petition, are that the plaintiff-respondent filed a suit for permanent injunction restraining the petitioner-defendant from using the name of "M/s. D.P. Jagan Hardware Pvt. Ltd." or any similar name in any manner as the name M/s. D.P. Jagan & Sons, which was being used by the plaintiff since 1985 and in addition thereto damages of Rs. 20 lakhs were also claimed.

  3. The petitioner preferred an application under order 7 rule 11 of the of the Code of Civil Procedure with a prayer to reject the plaint filed by the respondent mainly on the ground of maintainability as according to it, the plaint was not maintainable in view of the provisions contained in the Trade Marks Act, 1999 (for short the "Act").

  4. Learned trial court vide impugned order upheld the contention of the petitioner qua the applicability of section 134 of the Act, but concluded that the plaint could not be rejected but was required to be returned to be presented to the court of competent jurisdiction. It is this order, which has been assailed by the petitioner on the ground that the learned trial court ought to have rejected the plaint instead of ordering return of the same.

  5. I have heard the learned counsel for the parties and have gone through the record of the case.

  6. Learned counsel for the petitioner would heavily bank upon the provisions of section 27 of the Act to contend that the suit filed by the plaintiff-respondent is not at all maintainable. What appears to have been ignored is sub-section (2) of section 27 of the Act and, therefore, it is necessary to reproduce the entire section 27, which reads thus:

    "27. No action for infringement of unregistered trade mark.

    (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

    (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

  7. From the reading of sub-section (2) of section 27 of the Act, it is clear that the right of action of any person for passing off the goods/services of another person and remedies thereof are not affected by the provisions of the Act. Thus, the rights in passing off emanate from the common law and not from the provisions of the Act and they are independent from the rights conferred by the Act. This is evident from the reading of opening words of sub-section (2) of section 27) which are "Nothing in this Act shall be deemed to affect rights...."

  8. Similar issue came up recently before the Hon'ble Supreme Court in S. Syed Mohideen vs. P. Sulochana Bai, (2016) 2 SCC 683, wherein the Hon'ble Supreme Court has been held as under:

    "[24] Effect of registration is provided in Chapter IV of the Act in Section 27. This Section provides that no infringement will lie in respect of an unregistered trade mark. However, Section 27(2) recognises the common law rights of the trade mark owner to take action against any person for passing of goods as the goods of another person or as services provided by another person or the remedies thereof. Section 27 reads as under:

    "27. No action for infringement of unregistered trade mark.

    (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

    (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

  9. Section 28 which is very material for our purpose, as that provision confers certain rights by registration, is reproduced below in its entirety:

  10. Rights conferred by registration.-(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

    (2) The exclusive right to the use of a trade mark given under Sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

    (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor."

  11. A bare reading of this provision demonstrates the following rights given to the registered proprietor of the trade mark.

    "(i) Exclusive right to use the trade mark in relation to the goods or services in respect of...

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