RAJES KUMAR, J. - (1.) THE present appeal is directed against the order dated 9.10.2002 passed by Additional District Judge, Court No. 2, Gorakhpur in Original Suit No. 1 of 2002 by which the Additional District Judge, has refused to grant injunction against the respondent in favour of appellant.
(2.) BRIEF facts of the case are that the appellant has filed a suit for permanent injunction restraining the defendant -respondent, their servants, agents, dealers, representation and all others acting for and on behalf of the defendant from using trade mark 'Madam' and reproducing any of the artistic features of the plaintiffs label filed with the plaint and marked as 'A' under the Copyright Act, 1957 under title 'Madam' including the design, get up, lay out, placement, colour combination etc. And from using the impugned label/packing amount to infringement of the plaintiff's copyright under title Madam under the Copyright Act, 1957. The admitted case of the plaintiff appellant is that he was carrying on business of manufacturing and sale of nail polish under the name and style of 'Madam' and in respect of the design, layout, colour placement, registered under the Copyright Act, 1957. It is claimed that the business is being carried on since 1999. It is alleged that the appellant has filed application for the registration of 'Madam' label trade mark No. 872280 in class 3 on 19.8.1999 under the provision of Trade and Merchandise Marks Act, 1958. The said application is still pending. It is also claimed that the appellant has got the registration under the Copyright Act on 8.11.2001. The appellant has also contended that the disputed design of label and trade mark, was prepared by Mr. Lokesh Vij of Jawahar Printing Press, 11033, Gali Peepal Wali, Motia Khawa, Delhi 110065. The appellant is carrying on business in the name of 'Madam' w.e.f. 1.1.2002. It is submitted that in the year 1999 -2000 turnover at Rs. 63,510, in 2000 -2001 at Rs. 82,380 and in the year 2001 -2002 turnover at Rs. 1,15,220 was disclosed. It is alleged that the defendant respondent is illegally selling the similar product, nail polish, using the label and packing of the similar trade mark and design which the appellant is using, therefore, the appellant prayed for permanent injunction against defendant respondent from using the trade mark 'Madam' and the design etc. The respondent defendant filed written statement. In the written statement it has been contended that they were carrying on business of nail polish In the name of 'Madam' at Sadipuram Karol Bagh, New Delhi since 1982 and for which registered under the Drugs and Cosmetics Act, 1940 and hold the license No. 1110820 under the said Act. They are also registered under the Sales Tax Act It is contended that since 1985 and prior to 26.7.1988 it was holding a licence for manufacturing of nail polish in the name of Lady Club and Shelco which was surrendered and in 1988 has taken permission for selling Nail Polish in the name of 'Madam'. The said licence was renewed by Drugs Controller by letter dated 12.8.1988 which is valid up to 2006. It has been further stated that since 1992 they were carrying on business of manufacturing and sales of nail polish in the name of 'Madam'. It is also stated that they have moved an application dated 8.3.2002 for registration of trade mark. Photocopy of the trade mark register has also been filed as Annexure -4 to the affidavit before the court below. Defendant respondent has also prayed that the plaintiff be restrained from using label bearing 'Madam'. The defendant has also filed an affidavit which is letter No. 32 -Ga along with Annexures -1 to 4. A list No. 35 -GA along with documents relating to Drugs Licence No. 329/82 which was renewed time to time was also filed. Vide paper No. 37 -G the sale Bills for the period from 3.8.1990 to 18.7.1994 was filed by which the nail polish in the name of 'Madam' was sold. Further by paper No. 38G/IT, the counter -foil of the sale for the period 1991 to 2000 was filed.
(3.) ON the basis of the material on record, the trial court observed that the plaintiff was selling nail polish in the name of 'Madam' since 20.8.1999 which was changed on 1.1.2002 and in respect of which the application was given on 25.1.2002. It has been observed that the permanent injunction was sought in respect of the design and trade mark which is paper No. 31G. The trial court observed that the application moved by the plaintiff for the registration of the trade mark under the Trade and Merchandise Marks Act, 1958 which is filed on 25.1.2002 and for the registration application certificates No. 57337, dated 27.3.2002 is pending. The court below observed that the plaintiff is using the disputed label 'Madam' from 1.1.2002 for which the application was moved on 25.1.2002 and which is registered on 27.3.2002 and is still pending for consideration. The court below also observed that the label in respect of which the registration under the trade mark has been sought is entirely different than the label used since in 1999. Court below observed that prima facie it appears that monogram in the name of 'Madam' which was used in 1999 was changed and the different monogram Annexure -8 has been produced in which in the place of B.K., Bee Key is mentioned and admittedly before the Registrar under the Trade and Merchandise Marks Act, 1958 is pending. It has also been observed that the application before the Registrar which was filed on 8.1.2002 is pending. The court below has further observed that the defendant respondent using the label in which manufacturing licence No. 329, New Delhi is printed it was issued on 1988 by Licence Drugs Controller in which trade mark 'Madam' was used and for permission for adding 'Madam' name has also been sought and the said licence was renewed upto the period 2006. In the circumstances, the Court below found that the application of both the parties under the Trade and Merchandise Marks Act are pending and the application of the plaintiff is of a later date than the application of the defendant respondent. The court below found that the prima facie on the basis of the material on record it can be inferred that the defendant was manufacturing and was carrying on business from 12.8.1988 and for which using 'Madam'. With regard to the infringement of right under the Copyright Act, court below has held that in view of proviso of Section 45(1) of the Copyright Act, it is necessary that along with application for registration under the Copyright Act, the certificate of registration issued under Trade and Merchandise Marks Act is to be enclosed otherwise the application is treated as premature and as the application under the Trade and Mechandise Marks Act is still pending, the plaintiff could not get any right under the Copyright Act. Keeping in view the fact that the defendant respondent was carrying on business since 1982 and haying licence since 1988 under the Drugs and Cosmetics Act and had a permission to manufacture and sale the product in the name of 'Madam' since 1988 and the sales bills from the year 1991 to 1992 shows that the defendant -respondent was selling product in the name of 'Madam' since long than the business being carried on by the plaintiff -appellant, the court below did not find any justification in granting the interim injunction against the defendant -respondent.;