- (1.) THE Order of the Court was as follows : Original Application Nos. 84 of 1992, Application praying that this court be pleased to grant a temporary injunction, pending disposal of the suit restraining the respondent by itself its partners, proprietor, servants, agents, distributors, stockiests or any of them in any manner infringing the applicant's Copyright in the artistic work'dilkush'label having a red colour heart device with the word'dilkush'written across. Original Application No. 85 of 1992 Application praying that this Court be pleased to grant a temporary injunction, pending disposal of suit restraining the respondent by itself, its partner/proprietor, servants, agents distributors, stockiests or any of them from in any manner passing off or enabling others to pass-off their goods as and for the goods of the Appellant by use of purchase complained of bearing the trade mark'dilkush'and device ofa heart in red colou r in respect of tea or any deceptively similar mark or device, or in any other manner denoting a connection with the Applicant. Both the applications have been taken out by the plaintiff in C. S. No. 105 of 1992. It will be convenient to notice the plaint averments for understanding the scope of the applications. I will refer to the parties in the applications by their nomenclature in the suit. THE plaintiff is a well-known Company carrying on large-scale business in the manufacture, sale and export of Tea, Coffee and spices and other goods. THE registered office of the plaintiff is located at Calcutta , and the principal place of business is said to be in Bangalore. THE total turnover of the plaintiff's company for the year 1990-91 is said to be in the range of Rs. 650 crores. THE plaintiff hasa branch office at Madras and it is said to have 35 percent of the All India sales turnover.
(2.) THE plaintiff is the proprietor of certain trade marks in respect of coffee blended with chicory coffee briquettes. THE following are the registered trade marks of the plaintiff: "the Plaintiff is the proprietor of the trade mark dilkush and the device of a heart registered under number 397363 dated 6th november, 1982 in Class 30 in respect of coffee blended with chicory. THE registration has been duly renewed and it is still valid and subsisting. This mark has been registered with MADRAS Trade Marks Registry. THE Plaintiff is the proprietor of the trade mark DILKUSH written within a brand across the device of a heart under No. 8204 dated 14th november, 1942 in Class 30 in respect of coffee briquettes. THE registration has been duly renewed and it is still valid and subsisting. THE Plaintiff is the proprietor of trade mark DILKUSH in a label registered under number 85021 dated 24th August, 1943 in Class 30 in respect of coffee blended with chicory. THE registration has been duly renewed and it is still valid and subsisting. THE Plaintiff is the proprietor of the trade mark DILKUSH with the device of a heart registered under number 309908 dated 11th November 1975 in Class 30 in respect of coffee. THE registration has been duly renewed and it is still valid and subsisting. " It will be seen that the above registration are inter-associated. The plaintiff claims that the essential feature of all the above registrations is the trade mark'dilkush'written across a heart device. The plaintiff claims to be using the trade marks in respect of coffee from the year 1943. In or about August, 1990, the plaintiff started using the trade mark 'dilkush'with the device of a heart in respect of tea also. The artistic work of a pouch having a distinctive colour scheme and get up containing the device of a heart in red colour and the trade mark'dilkush'written across is said to have been created by an employee of the plaintiff. The plaintiff's name Brooke Bond and its House Marks leaf device and the words "dust Tea" are written in white letters. The plaintiff claims to be the proprietor of the copyright in the artistic work of a distinctive pouch containing the device of a heart in red colou r and the word'dilkush'written the device of the heart. This artistic work is said to have been published in August, 1990. The said trade mark has become distinctive and is exclusively associated with the plaintiff's goods. While so, in or about january, 1992, the plaintiff came to know that the defendant was selling Tea under an identical trade mark'Dilkush'and device of heart in red colour. It is stated that the defendant has only one sales outlet and the area of the defendant's sale of tea is confined to Kalyan Town . It is admitted that the trade mark'dilkush'Tea is written in Marathi language. It is the case of the plaintiff that the defendant has deliberately adopted a similar label with the identical trade mark'dilkush'and a device of a heart. The plaintiff calls the action of the defendant as a slavish imitation of the plaintiff's trade mark. In respect of tea the plaintiff states that they have been using the trade mark'dilkush'and a device of the heart from August, 1990 onwards. The action of the defendant amounts to passing off their goods as goods of the plaintiff by adopting the trade mark'dilkush'and a device of a heart in red colou r. The plaintiff is said to have suffered and is likely to suffer loss in trade and reputation on account of wrongful activities of defendant. The plaintiff has therefore, sought for a perpetual injunction restraining the defendant in any manner infringing the plaintiff's copyright in the artistic work'dilkush'label having a red colou r heart device with the word'dilkush'written across, a perpetual injunction restraining the defendant from passing off their goods as the goods of the plaintiff, for accounts, for the destruction of the goods with the infringing trade mark Application No. 84 of 1992 is for a temporary injunction restraining the respondent from infringing applicant's copyright in the artistic work and application No. 85 of 1992 is for a temporary injunction restraining the respondent from passing off their goods using by infringing the trade mark. The respondent/defendant has filed a detailed counter-affidavit to the said applications. The respondent is a Proprietary concern of which the deponent of the counter-affidavit is the sole proprietor. The deponent is a partner of the firm M/s. DILKUSH TEA DEPOT, a registered partnership firm carrying on business at the Kalyan Town . The said firm had been doing business in packing and marketing tea since the year 1962. From the year 1962 they have been marketing their goods in the name of'dilkush'. In June, 1988, the defendant started selling tea in pouches under the name'dilkush'. The said pouches were designed by a professional artist. The name'dilkush'is in marathi language because the business of the defendant is confined to Thane, Ratnagiri , Nasik and Raigadh Districts of Maharashtra State . So far as the allegations in the plaint, it is stated that the registered trade mark contained a disclaimer so far as the word'dilkush'and the device of a heart is concerned. Admittedly, the plaintiff had been selling tea in the name of'dilkush'only from August, 1990. It is contended that the mark'dilkush'is associated with the tea sold by the defendant in the said Districts of Maharashtr a State. The defendant claims to be a long, honest and concurrent user of the mark and, therefore, the plaintiff is not entitled to any relief. The following sentence in the counter affidavit is of some importance as will be seen later in the judgment: - "it would here be relevant to state that the respondent runs a small business built-up painstakingly through hard industry. The only product sold by the Respondent is tea under the name DILKUSH. While so, the effect of any injunction would be literally close down the business of the Respondent who does not have the finance and infrastructure of the applicant to sell the product under a wholly different name. While so, the balance of conveience would be against the continuance of the Order of Injunction. " ; It is also contended that the plaintiff has no cause of action within the jurisdiction of this Court. No part of the cause of action for the suit arise within the jurisdiction of this court. Similarly defendant's residence and place of business are outside the jurisdiction of this Court. The plaintiff has apparently sought to rely on section 62 of the Copyright Act, 1957, only for the purpose of filing the suit in this Court. According to the defendant, there is no breach of provision of the Copyright Act. It is only with a view to harass the defendant that the suit has been filed in this Court. A similar attempt of the plaintiff in C. S. No. 79 of 1989 to get a decree against the Balaji Tea India private Limited was rejected by this Court on 18-7-1989. As in the said case the plaintiff is now invoking Section 62 of the Copyright Act and Clause 14 of the Letters Patent to sustain their suit in this Court.
(3.) THE defendant denies that the plaintiff is the proprietor of any copyright in artistic works. In any event under Section 15 of the Copyright Act the right, if any, ceases to exist after the label or wrapper had been produced for more than 15 times by the industrial process. It is pointed out that the goods Tea and Coffee are of different description. So far as Tea is concerned the defendant is a prior user of the word'dilkush'. In fine, the defendant denies the infringement of any trade mark or alleged acts of passing-off by the defendants. Mr. R. Krishnamoorth y learned counsel for the plaintiff/applicant contends that the plea based on jurisdiction and the reliance of the defendant/respondent in the judgment of Srinivasa n , J. in BROOKE BOND INDIA LIMITED v. BALAJI TEA (INDIA) LIMITED (1989-2 Law Weekly 551) by submitting that the said judgment has been appealed against, and the appellate court has also granted a stay of operation of the said judgment. So far as the reliance placed on Section 15 of the Copyright Act, he relies on Section 2 (5) of the Designs Act to suggest that section 15 of the Copyright Act will not apply to the facts of this case. The argument is that the plaintiff claims a right only in the artistic work created by their employee. Section 15 (2) of the Copyright Act says that the copyright in any design which is capable of being registered under the Indian Designs act, but which has not been so registered, shall cases as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or with his licence , by any other person. But the plaintiff has not produced any material to show that the artistic work has been registered under the Indian Designs Act, 1911. Before dealing with the merits of the case it would be better to dispose of the plea of jurisdiction and the applicability of the copyright Act. It is clear from a reading of the plaint that the plaintiff is invoking the Copyright Act with the sole object of taking umbrage under sub-section (2) of Section 62 of the Copyright Act. It is only the sub-section (2) of Section 62 which enables the plaintiff to file the suit within the local limits of whose jurisdiction the person instituting the suit, resides or carries on business. Clause 14 of the Letters Patent enables the plaintiff to join the different causes of action in one suit. This is precisely the manner in which the plaintiff filed the suit in C. S. No. 79 of 1989, which was the subject matter of 1989 II Law Weekly, 551 (cited supra ). Srinivasa n , j. has categorically held that the plaintiff in the said case was guilty of misuse and abuse of process of the court in filing the suit in Madras by invoking Section 62 (2) of the copyright Act. In that view of the matter learned Judge refused to give the equitable relief of injunction prayed for, pending disposal of the suit. I have perused the entire judgment and I am in respectful agreement with the learned judge. All the same, I am not inclined to rest my decision in this case on the basis of maintainability of the suit because admittedly, the said judgment is under challenge before an appellate court. I would therefore, proceed to decide this case as if the suit is maintainable. ;