(1.) By consent of parties, both these appeals are taken together for hearing and decision at the stage of admission.
(2.) Being aggrieved by the order dated 28.7.2016 passed below Exh.5 in Regular Civil Suit No.7 of 2011 and order dated 28.7.2016 passed below Exh.5 in Regular Civil Suit No. 8 of 2011, by the District Judge-2, Kopargaon, the original defendant in both the suits has preferred these two separate appeals. (For the sake of convenience, hereinafter, the parties are referred by their original status in the suits.)
(3.) Brief facts giving rise to these two appeals are as follows:-
i) The plaintiff manufactures sugar and molasses as a byproduct and in the said process the plaintiff manufactures rectified spirit from molasses and in turn, from such, manufactures the country liquor. As per the plaintiff's case, the plaintiff owns the brand, name "fHkaxjh la=k" since 1979. The plaintiff claims that the liquor products, bearing said artistic labels "la=k] fHkaxjh la=k" have acquired reputation for its quality and there is much sale of the product under the said label throughout the State of Maharashtra. The plaintiff claims to be the first owner of such copyrights in the original artistic work/label "fHkaxjh la=k". In the year 1986, the plaintiff requested one M/s Shama Fine Arts, Offset Printers, having their printing press at Mumbai to design for its country liquor having orange flavour a label, inter-alia, containing therein "ns'kh nk: fHkaxjh la=k" and other descriptive matters in Devnagari. Accordingly, one Shri V.L. Kale of M/s. Shama Fine Arts prepared art work of the said label, got it approved from the plaintiff and printed the same for the first time on or about 18.5.1986 under the contract of service for plaintiff and issued certificate to that effect. According to the plaintiff, since 1986 the plaintiff has been regularly and extensively using the said artistic label "fHkaxjh la=k" in respect of its country liquor sold in certain districts of Maharashtra. The plaintiff has also obtained registration of label "fHkaxjh la=k" under the provisions of Copyrights Act 1957, from Deputy Registrar of Copyrights, New Delhi. The plaintiff has also registered the label "fHkaxjh la=k" under the Trade and Merchandise Marks Act 1958 w.e.f. 11.1.1996 and the said registration is valid and subsisting under the Trademarks Act 1999. The said registration has been renewed under the Trademarks Act 1999 for further period of 10 years from 11.1.2003. It has also contended that by a deed of assignment dated 31.12.2012, executed by (1) Smt. Nayana Vishwanath Kale, as one legal heir and legal representative of Late Vishwanath Kale and as a person on whom the copyright in the aforesaid labels, if any, belonging to late Vishwanath Kale devolved on his death, and also as the sole proprietress of M/s. Shama Fine Art and (2) Mrs. Shalaka Prashant Pathak, as the another legal heir and representative of said late Vishwanath Kale and have assigned and transferred to the plaintiff the copyright and all other rights, title and interest, if any, in or to the aforesaid artistic work / trademark labels, including work / label "fHkaxjh la=k".
ii) The defendant is a private limited company carries on similar business of distillery, manufacture and sell of country liquor. The plaintiff has instituted a Trade Mark Suit No.5 of 2010 in the Court at Nagpur against one Konkan Agro Marine Industries Pvt. Ltd. (hereinafter referred to as the "KAMIPL") for challenging the acts of infringement of copyrights and trademark committed by the said KAMIPL by its label "la=k 999", which is deceptively similar to the plaintiff's label "fHkaxjh la=k". In the said suit, KAMIPL has filed affidavits dated 17.2.2011 and 22.3.2011 along with certain documents. The said documents include the labels "yko.kh la=k" "Lavni Santra" "fQjdh la=k" "Firki Santra" and "la=h 1000" (deceptively similar to the plaintiff's label "fHkaxjh la=k") of the defendant and certain approval orders in regard to the same. The plaintiff thereafter called upon the defendant to stop usage of the said labels, which the defendant has refused to do so. The plaintiff inter-alia, challenged the act of infringement of its Copyright under the provisions of Copyright Act 1957 in the label "fHkaxjh la=k" committed / being committed by the defendant by virtue of the label "yko.kh la=k". According to the plaintiff, the labels "fQjdh la=k" and "la=h 1000" are not registered under copyrights and trademarks laws, whereas the plaintiff's label "fHkaxjh la=k" is duly registered under copyright and trademark laws.
iii) According to the plaintiff, pursuant to the malafide and dishonest intention to grab the plaintiff's established market, the defendant had made an application sometime in the year 2004 to the Commissioner for approval of label "ukxiqjh fHkaxjh" (deceptively similar to the label "fHkaxjh la=k". The plaintiff objected to the said label. Thereafter, the Commissioner heard the plaintiff and defendant and upheld the said objection and rejected the said label by order dated 7.4.2004. The defendant did not challenge the order dated 7.4.2004, which has attained finality. According to the plaintiff, earlier to that the defendant was carrying on business in the name and style as M/s. Nagpur Distillers, which was a partnership firm. The defendant, even prior to coming out with the aforesaid infringing label "ukxiqjh fHkaxjh", had made applications for approval of the labels "yko.kh la=k", "fQjdh la=k" and "la=h 1000" (deceptively similar to label "fHkaxjh la=k" to the Commissioner. The plaintiff was not aware whether the said labels were notified on the notice board of the Commissioner's office for inviting objections or if notified, then whether the same were properly displayed thereon or not. Despite the said labels being deceptively similar to the label "fHkaxjh la=k" and despite being aware of the plaintiff's rights therein, the Commissioner's Office completely ignored the plaintiff's aforesaid rights and without issuing any notice, approved the said labels.
iv) According to the plaintiff, the plaintiff is entitled to a permanent order of injunction from the court restraining the defendant and their respective servants, dealers, distributors, retailers and agents from infringing the plaintiff's statutory right under Copyright Act, 1957 in its artistic work / label, as the plaintiff has suffered and is likely to suffer irreparable loss and injury to its trade and reputation on account of infringement and passing off committed by the defendant. It has also been contended that the goods sold by the defendant under the impugned labels are of inferior quality and traders and consumers are being confused and deceived and/or are likely to be confused and deceived into buying the goods of the defendant as and for the plaintiff's well known goods. By reason of the said Act of infringement by the defendant, the plaintiff suffered heavy loss and the defendant is liable to pay for the same.
v) The plaintiff has therefore, instituted R.C.S. No. 7 of 2011 praying therein that the defendant by itself, its servants, dealers, distributors, retailers, and agents be restrained by a permanent order of injunction from infringing the plaintiff's copyright in its artistic work/level "fHkaxjh la=k" under Copyright Act 1957, in any manner, whatsoever, including by reproducing the same in the material form or by printing, publishing, copying, communicating it to the public or using the impugned label "yko.kh la=k" or any other work which is in an imitation of the plaintiff's said artistic work / label or any prominent features/ substantial part thereof or any word / sign/ image having a meaning deceptively similar to the word "fHkaxjh"
vi) The plaintiff, in the similar set of facts, inter alia challenged the act of infringement of Copyright and Trademark committed/ being committed by the defendant by virtue of label "fQjdh la=k" and "la=h 1000" which are deceptively similar to the plaintiff's label "fHkaxjh la=k". According to the plaintiff, the said labels are in breach of the plaintiff's right under the Trademarks Act 1999 and Copyright Act 1957.
vii) According to the plaintiff, in the impugned labels, the defendant has thus lavishly copied all the distinctive features of the plaintiff's label "fHkaxjh la=k" and has merely substituted the mark "fHkaxjh la=k" by the marks "fQjdh la=k" and "la=h 1000", with addition of said logo in both the impugned labels. The defendant has copied some of the essential features of the plaintiff's mark and label in such a fashion as is really likely to cause confusion. The plaintiff therefore, constrained to institute another copyright Suit No. 8 of 2011 with prayer that the defendant by itself, its servants, dealers, distributors, retailers and agents be restrained by a permanent order and injunction from infringing the plaintiff's copyright in its artistic work/label "fHkaxjh la=k" under the Copyright Act 1957 in any manner whatsoever, including by reproducing the same in material form or by printing, publishing, copying, communicating it to the public or using the impugned label "la=h 1000" or any other work which is in imitation of the plaintiff's said artistic work/ label or any prominent features / substantial part thereof or any work / sign/ image having meaning deceptively similar to the work "fHkaxjh la=k".
viii) In both the suits, the plaintiff has filed an application Exh.5 seeking relief of temporary injunction against the defendant in consonance with the prayers made in the original suit restraining thereby the defendant for causing alleged act of infringement till disposal of suits.
ix) The defendant has strongly resisted the said application Exh.5 filed in Copyright Civil Suit No. 7 of 2011 by filing reply at Exh.14. It has been contended that the instant suit and application Exh.5 fail to disclose that the label of defendant impugned in the suit bearing the mark "ykx.kh la=k" is the subject matter of trademark registration under the provisions of Trademark Act 1999 and hence incapable of being impugned in a trademark infringement suit in view of provisions of Trademark Act 1999. It has been contended that the defendant is registered proprietor of the impugned mark "ykx.kh la=k". It has been also contended that the plaintiff was well aware of the trade labels and trade dresses used by other country liquor manufacturers in the State of Maharashtra, including the trade dress and label of the defendant, wherein the word "la=k" has been used widely and extensively. The plaintiff was also aware of the fact that the trade labels and/or trade dress used by the defendant were already registered under the provisions of Trade and Merchandise Marks Act 1958 and/or any subsequent statutory enactments thereto. In spite of being aware of such specific user by the defendant, the plaintiff has categorically represented the Registrar of Copyrights to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under the Trade and Merchandise Marks Act 1958. Based on the said representation made by the plaintiff, the Registrar of Copyrights, registered the copy right in "fHkaxjh la=k" artistic work/label. According to the plaintiff, some such trade labels / trade dresses have already been registered under the provisions of Trade and Merchandise Act 1958. The defendant has given a list of such registered trade labels / trade dresses in the reply submitted to applications Exh.5. The defendant thus, submitted that the plaintiff has not approached the Court with clean hands and is guilty of making false statement in the plaint. The plaintiff is not entitled for equitable reliefs and the plaintiff's prayer for injunction is liable to be rejected solely on this ground. It has also contended that the plaintiff's suits and the applications should also be dismissed.
x) The defendant further contended that the defendant has been granted approval by the Commissioner of Prohibition, State of Maharashtra, sometime in or around 5.2.1991 in respect of the impugned label and since then the defendant has been using the same at Nagpur and adjoining area/ districts widely and extensively along with the products of the plaintiff. The plaintiff has been well aware of the impugned label of the defendant and has acquiesced to such use and should now be estopped or barred from alleging to the contrary and / or impugning the said label of the defendant on any ground whatsoever. It is submitted that neither the provisions of Trademarks Act 1999 nor the provisions of the Copyright Act 1957 lay down any rights with regard to speculated acts of infringement and the instant suit has been filed merely to vex and/or harass the defendant.
xi) The defendant further submitted that the present suit is a clear case where the plaintiff has slept over his alleged rights for such a long period of time. In the year 1991, the plaintiff had applied to the Commissioner of State Excise for cancellation of the labels of the defendant involved in the present suit, which the plaintiff alleges to be infringing labels. After show cause notice to the defendant and after hearing the defendant, the Commissioner, vide its order dated 19.9.1991 was pleased to cancel the label of the defendant "yko.kh la=k" which label impugned in the present suits by the plaintiff. Against the said order of the Commissioner, the defendant carried out an appeal to the State Government, which appeal was allowed by the State Government by its order dated 5.2.1992. By the aforesaid order, the order of the Commissioner, cancelling the labels of defendant was set aside and the matter was remitted back to the Commissioner of State Excise for fresh decision. Thereafter, the matter is pending before the Commissioner for State Excise, as per the information of the defendant. The plaintiff is aware of the label of the defendant "yko.kh la=k" since 1991 and despite the order of the State Government, dated 5.2.1992, the plaintiff took no steps either to have the matter reheard by the Commissioner or to file the suit which the plaintiff has chosen to file now.
xii) The defendant further submitted that in the month of March, 2003, the plaintiff as well as the defendant objected to the label of one Subhash Liquor Pvt. Limited, Pune by name "Hkojk la=k" on the ground that it was identical and was deceptively similar to the labels of plaintiff as well as the defendant. The hearing in the said matter took place on 1.4.2003. The objections of the plaintiff and defendants were rejected on 28.5.2003. Being party to the proceeding, it is palpably a false statement made by the plaintiff that the plaintiff was not aware of the allegedly infringing label of the defendant which he seeks to impugn in the suit. The defendant further submitted that in other proceedings, one M/s Vidarbha Bottlers Pvt. Limited, Nagpur had applied for approval of its label "ykx.kh la=k". In the said proceeding, the objections were filed by the plaintiff, the defendant herein and one M/s. Vidarbha Distillers and one M/s. Meher Distillers on the ground that the labels in respect of which the approval was sought were deceptively similar. The approval sought for was rejected by the Joint Commissioner of State Excise, Mumbai by order dated 9.3.2005. The said order clearly discloses that it was a case of the defendant in those proceedings that label of M/s. Vidarbha Bottlers "ykx.kh la=k" was deceptively similar if not identical to its label "yko.kh la=k". It is difficult to believe that the plaintiff who had already objected to the approval of the said label in the said proceedings, despite being represented by a lawyer would not come to know of the defendant's label "yko.kh la=k" which was put forth as a ground of objection by the defendant before the Commissioner.
xiii) The defendant accordingly submitted that the dishonest litigant like the plaintiff has no right to seek any equitable relief. The plaintiff has lost its right to seek any equitable relief of injunction on the ground of its own conduct as narrated herein above. The plaintiff's suits as well as the applications seeking relief of injunction are liable to be dismissed on the ground that the plaintiff has made false representations, suppressed material facts and has not approached the court with clean hands. On all these grounds, the defendant has prayed for rejection of application Exh.5.
xiv) Almost on similar grounds, the defendant has resisted the application filed at Exh.5 in Copyright civil Suit No. 8 of 2011 by filing reply Exh.15 and prayed for rejection of application Exh.5.
xv) The learned District Judge-2, Kopargaon by separate order below Exh.5 in the aforesaid suits bearing R.C.S. No. 7 of 2011 and R.C.S. No. 8 of 2011, respectively, on 28.7.2016 allowed the said application Exh.5 and thereby restrained the defendant by temporary inunction from using the artistic label "yko.kh la=k" (produced at Exh.3/102) for selling it's country liquor, until disposal of R.C.S. No.7 of 2011 and also allowed application Exh.5 thereby restrained the defendant by injunction from using the artistic label "fQjdh la=k" and "la=h 1000" (produced at Exh. 3/103, 3/104) for selling it's country liquor, until disposal of R.C.S. No. 8 of 2011.
xvi) Being aggrieved by the same, the defendant has preferred Appeal from Order No. 56 of 2016 against the order passed below Exh.5 in R.C.S. No. 7 of 2011 and Appeal from Order No. 57 of 2016 against the order passed below Exh.5 in R.C.S. No. 8 of 2011. 3. Learned counsel for the appellant submits that there was absolutely no order of any kind in the form of status quo or ad-interim injunction or of any kind whatsoever to restrain the appellant from using the said label right from filing of suits in the year 2011 till passing of impugned order i.e. 28.7.2016. It is thus apparent that after lapse of such huge period, the applications seeking temporary injunction themselves were frustrated and become infructuous. The respondent has suppressed from the trial court, the fact that the respondent was aware about usage of the label for years together, which is apparent from the proceedings fought by them as well as amongst them and the same is also apparent from various orders passed by the authorities. Thus, the alleged claim of the respondent that for the first time it came to know about infringement of label by the appellant in the year 2011 is out-rightly false and baseless. The learned Judge of the trial court ignored all these material aspects and passed the impugned order.;