Decided on July 03,2007



Prafulla C. Pant, J. - (1.)1. By means of this petition, moved under Article 226 read with Article 227 of the Constitution of India, 1950, the petitioner has sought writ in the nature of mandamus, commanding respondent No. 1 to withdraw permission/licence bearing No. 2/C/UA/2005 dated 05.02.2005, granted in favour of respondent No. 2 to manufacture cosmetics under the trade mark 'JOLEN'. It is further prayed in the writ petition that said permission/approval, granted in favour of respondent No. 2, be quashed and cancelled.
(2.)Heard learned counsel for the parties and perused the record.
(3.)Brief facts of the case are that petitioner had been engaged in business of manufacturing and marketing of cosmetic products for several years. It earned goodwill and fame in India by using its registered trade mark 'JOLEN'. It is alleged in the petition that the petitioner is registered owner of said trade mark bearing No. 434499 dated 25.02.1985 under the Trade and Merchandise Marks Act. Apart from the said trade mark, the petitioner has Trade Mark No. 555920 dated 06.08.1997 for manufacturing the cosmetics. It is further alleged in the writ petition that respondent No. 3-M/s. Jolen Inc. has no registration of trade mark 'JOLEN', granted by Registrar of Trade Marks, in India, as such, its objections to the trade mark given to the petitioner have already been dismissed by the Registrar of Trade Marks, and also by Intellectual Property Appellate Board (hereinafter referred to as 'IPAB'). After the petitioner's trade mark JOLEN was registered in India in 1985, the petitioner obtained licence/permission from Drugs Controller, Delhi for manufacturing of cosmetics under trade mark 'JOLEN' in the year 1987 and continued to market his products with said trade mark since 1987 to 2004. In the year 1993, the petitioner issued caution notices in the leading newspapers against imitation of trade mark JOLEN and also filed a suit in Delhi High Court against Doctor & Co. In the year 1994, petitioner and his sons incorporated a company by the name of Jolen International Limited under the Indian Companies Act, 1956. Respondent No. 3-M/s. Jolen Inc., who claims to be incorporated in United States of America, filed an Application No. 522509 on 05.01.1990, for registration of trade mark JOLEN in India. Said application of respondent No. 3 after hearing the objections of the petitioner was rejected by the Registrar of Trade Marks in the year 1999. On this, respondent No. 3 filed an appeal before the Delhi High Court but the same was transferred to the Intellectual Property Appellate Board by operation of law. IPAB heard the appeal and dismissed the same on 12.01.2005. Dissatisfied with this order of IPAB, the respondent No. 3, filed a writ petition before Delhi High Court and obtained a stay order. Respondent No. 3, on being unsuccessful, in establishing its trans-border reputation to market cosmetics with trade mark JOLEN, instituted a Suit No. 397 of 2000 in Madras High Court and obtained ex parte injunction against the petitioner. At present, vide order dated 30.04.2004, passed by Madras High Court, the petitioner is restrained from using trade mark JOLEN till the disposal of suit. The said interim order was passed subject to condition that respondent No. 3 would purchase the unsold cartons and containers from the petitioner at cost price but respondent No. 3 did not comply with said condition. However, a special leave petition, filed by the petitioner before the Apex Court, was dismissed with the direction that the Madras High Court would decide the suit preferably within one year. Till 2004, the petitioner used the registered trade mark but thereafter due to the interim injunction, it has stopped the work. Meanwhile, respondent No. 3 allegedly appointed respondent No. 2-Kundan Personal Care Products Ltd., as its agent in India and allegedly started manufacturing the sale of cosmetics under the trade mark JOLEN in India. The petitioner has further stated that since respondent No. 3 was denied registration of trade mark JOLEN, the permission/licence granted by respondent No. 1-Drugs Controller, Uttarakhand to respondent No. 2-Kundan Personal Care Products Ltd., the alleged agent of respondent No. 3, is illegal and perverse. It was duty of the Drugs Controlled (respondent No. 1) that before granting licence it should have sought search report from Registrar of Trade Marks. Due to the permission granted by respondent No. 1 to respondent No. 2, now the petitioner is running from pillar to post. It is alleged by the petitioner that the respondents are bent upon to completely ruin and wipe out the petitioner from the business. It is further alleged that the false first information report was got lodged against the petitioner and its employees by planting a customer by the respondents, which was challenged by the petitioner before Delhi High Court and the interim orders were passed therein. Alleging that the act on the part of respondent No. 1, granting licence to respondent No. 2 to manufacture cosmetics (with trade mark JOLEN) is illegal, the petitioner filed Writ Petition No. 869 (M/B) of 2006, which was permitted to be withdrawn by this Court's order dated 22.08.2006 with permission to file a fresh writ petition as the permission/licence bearing No. 2/C/UA/2005 dated 05.02.2005, granted to respondent No. 2 could not be obtained earlier for getting it quashed. Under Right to Information Act, after the necessary papers were obtained, this fresh petition is filed before this Court.

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