- (1.) A piquant situation has arisen at the time of extending ad interim order passed on 12th May, 2016 by which the respondent was restrained from selling and/or offering for sale or marketing tea in the packet the labels of which containing 'Nowalty' being similar to or a colourable imitation of the petitioner's logo or product 'Lipton' or from passing off or committing to pass off causing or enabling or assigning to others pass off the products, not of the petitioner's manufacture and the products containing labels, style, get up and colour scheme of the petitioner's trade mark or any reproduction or colour imitation thereof. An argument was advanced from the petitioner's side that the respondent is marketing and selling its product through the mark 'Nowelty' on the packets in which the product is sold, which is similar and identical to the petitioner's label in trade design, graphics and colour combination. It was further argued before the Court that the word 'Lipton' is a registered trade mark written in a distinct artistic font in unique shape. What was argued on that day was that the respondent has not only infringed the trade mark but has also passed off its product in such get up and style which is deceptively similar to the trade design and get up of the petitioner's product. The relevant paragraph from the plaint was placed before the Court in convincingly manner that it is a case of an infringement of a trade mark and in view of Section 134 of the Trade Marks Act, 1999 the proceeding can be initiated before this Court as the plaintiffs are carrying on the business within the territorial jurisdiction thereof.
(2.) The respondent appeared after service of the notice as well as the injunction application and is represented by Mr.Ranjan Bachawat, the senior advocate who vehemently opposes the prayer of the petitioner for extension of the ad interim order. Mr.Bachawat is very much vocal in his submission that the suit for infringement of the Trade Mark is not maintainable before this Court in view of Sections 52 and 53 of the said Act as the registration of the mark 'Lipton' stands in the name of Unilever PLC, a company registered under the laws of England. According to him, there is no document annexed to this application evincing that the said trade mark is either assigned or a licence has been given to use the said trade mark by the petitioner. Mr.Bachawat vehemently submits that there has been a gross suppression of material facts and the attention of the Court was not drawn to the relevant paragraphs of the petition from where it would discern that the entire case is founded on an infringement of a trade mark and passing off. Mr.Bachawat, learned advocate for the respondent, invited the attention of the Court to several paragraphs of the petition where the petitioner has categorically stated that having the licence of the registered trade mark 'Lipton' and infringes the trade dress overall get up of the Lipton Tea. He thus submits that there is no fetter on the part of the Court in refusing or extending the ad interim order on the returnable date before inviting the respondent to disclose facts in the form of affidavit if the materials produced by the respondent are sufficient enough to demolish the case made out in the plaint as well as injunction application. Mr.Bachawat refers the definition of a trade mark assigned under section 2(zb) of the Act to mean a mark capable of being represented graphically and which is capable to distinguish the goods or service of a person from those of others and may include shape of goods, packging and combination of colours. He further draws the attention of the Court to a definition of the registered trade mark under Section 2 (w) of the Act to mean the trade mark which is actually on the register and remaining in force. On the case of passing off, Mr.Bachawat would contend that admittedly the respondent is carrying on the business outside the jurisdiction of the Court which would be apparent and evident from the cause title as it stands now and the plaint lacks pleading on cause of action for passing off having arisen within the jurisdiction of this Court. He further invited the attention of this Court to the report of the Special Officer appointed by this Court at the time of passing ad interim order of injunction that the petitioner exploited his recourses in securing the police assistance and help rendered to the Special Officer in carrying out the directions passed therein when the order does not indicate such police help.
(3.) The moment those arguments are advanced by the respondent, the learned advocate for the petitioner takes a rebound and drifted his stand in contending that the instant suit is filed for infringement of Copyright and not on the infringement of trade mark and passing off action. According to the petitioner section 62 of the Copyright Act 1957, confers the jurisdiction upon this Court and therefore, the suit based thereupon is maintainable. The learned advocate for the petitioner submits that by deed of assignment of copyright the artist have assigned the artistic work in favour of the petitioner and, thereafter the petitioner as a proprietor of such Copyright can initiate an action the moment the infringement is realised. Learned advocate for the petitioner now contends that the cause of action for infringement of a copyright is averred and pleaded and, therefore, the suit should not be construed to have been founded upon the infringement of trade mark and passing off.;