GA No.2485 of 2017 CS No.161 of 2017 IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction BENGAL WATERPROOF LIMITED Versus BENGAL RUBBER COMPANY LIMITED & OTHERS BEFORE: The Hon'ble JUSTICE SOUMEN SEN Date : 23rd August 2017.
Appearance: Mr.Anindya Kr.
Mitra, Sr.Advocate Mr.Jishnu Saha, Sr.Advocate Mr.Rudraman Bhattacharya, Advocate Mr.Prithviraj Sinha, Advocate Mr.Ishan Saha, Advocate Mr.Devajyoti Bhattacharya, Advocate Mr.Surajit Sen, Advocate ...for the petitioner.
Mr.Ratnanko Banerjee, Sr.Advocate MRS.Lopita Banerjee, Advocate Mr.R.N.
Vyas, Advocate ...for respondent Nos.1 and 3.
Mr.Surajit Nath Mitra, Sr.Advocate Mr.S.K.
Kanodia, Advocate Ms.Sananda Mukhopadhyay, Advocate ...for respondent Nos.2, 5, 6, 7 and 8.
The plaintiff has filed this action for infringement of the trade mark “Duckback”.
The plaintiff is a pioneer in manufacturing waterproof products like gumboots, raincoats, rubber cloths and the like.
The plaintiff was established in the year 1920 by renowned Bose family of Bengal.
The fiRs.subsidiary of the plaintiff.
defendant was promoted is also into a The fiRs.defendant was incorporated in the year 1971 and it set up a plant at Ranchi.
defendant as manufacturing waterproof The fiRs.iteMs.The products of the plaintiff were and are being sold under the trade mark “Duckback”.
synonymous with The the plaintiff members of claims the descendants of the original foundeRs.by the plaintiff since inception.
that Bose “Duckback” family who are is the The said trade mark is used In order to protect the right of the plaintiff in relation to such products, the plaintiff as owner of the trade mark “Duckback” applied for registration of the word mark and as a label mark in the year 1942.
The said registrations are still valid and subsisting.
Initially the dispute arose between the plaintiff and the defendants with defendant No.1.
regard to the control and management of the This has given rise to two suits, one filed by the defendant No.2 and the other by the plaintiff.
The defendant No.2 in its suit sought, inter alia, for a decree for perpetual injunction restraining the present plaintiff and the defendant No.1 from revoking or terminating the registered user agreement dated 25th February 2008 as modified by the agreement dated 20th dated 26th February 2010 issued by the plaintiff to the defendant No.2.
The February 2010 read with the letter of undertaking defendant No.2 in the suit also prayed for specific performance of an agreement dated 25th February 2010 alleged to have been entered into between the defendant No.2 and the defendant No.1.
The defendant No.2 in the said suit has also prayed for an order of injunction restraining the defendants from interfering with the defendant No.2’s right to use the trade mark “Duckback” through the instrumentality of the defendant No.1.
The plaintiff in the instant suit has filed a subsequently suit being CS No.156 of 2011 praying, inter alia, for declaration that certain Board meetings allegedly held on 24th May 2011 and 4th June 2011 by the defendant No.1 is to be declared null and void and for other consequential reliefs.
The second suit was essentially for management of the defendant No.1.
On 13th April 2011, in an interlocutory application filed by the defendant No.2, an interim order was passed in terms of prayer (d) of the petition, which reads:“(d) An order of injunction be passed restraining the respondents and each one of them from issuing any further shares in the said respondent No.3 and/or from changing the capital structure of the respondent No.3 in any way or manner whatsoever;” The said order records that the defendant No.2 claimed that “the agreement of February 26, 2010 envisaged that following the increase in the paid up capital of the third defendant company contemplated thereby, the plaintiff would be allotted the majority shares in the third defendant company and the fiRs.defendant company would have the right to buy the shares allotted in favour of the plaintiff and/or its nominees within a specified time.
The plaintiff claims that upon the time expiring, the fiRs.defendant was obliged to sell its entire holding in the third defendant company to the plaintiff and/or its nominees.
The plaintiff refeRs.in particular, to Clause (m) of the agreement which provides for the fiRs.defendant executing an agreement that would permit the third defendant company to use the mark ‘Duckback’ till the year 2020 as a registered user thereof.” On 11th May 2011, in addition to the order passed on 13th April 2011, Justice defendant Sanjib meaning surrendering the Banerjee thereby Bihar registered user further restrained Rubber Company agreement in the third Limited relation from to the trade mark “Duckback” and Bengal Waterproof Limited was restrained from terminating such registered user defendant, Bihar Rubber Company Limited.
agreement of the third Both the interlocutory applications were disposed of by a common judgment and order by Justice Harish Tandon on 7th March 2017 on the following terms:(i) All the parties are restrained from issuing any further shares of BRC and/or from changing the capital structure of the said company in any way or manner whatsoever; (ii) BWL and BRC are restrained from revoking, cancelling or terminating the registered user agreement dated February 25, 2008 as modified by the agreement dated February 26, 2010 read with the letter of undertaking dated February 26, 2010 issued by the BWL to GVL till 25th February, 2020; (iii) The directors GVL are and BRC and restrained their from agents, selling, assigns and/or transferring, alienating and/or mortgaging the immovable assets of BRC; (iv) The Joint Special Officers appointed by the Division Bench in the order dated 6th February, 2012 shall continue to function and discharge their duties in the manner as indicated in the said order.
shall In addition thereto, the Joint Special Officers submit the accounts in the form of report on half yearly basis till the disposal of the suit; (v) BRC is further restrained from inducting any new directors into the Board of Directors till the disposal of the suit.
Thereafter, the plaintiff alleging that the defendant No.1 is acting in derogation of the registered user agreement dated 25th February 2008 in trying to represent before the Trademark Registry as owner of the said mark which is an act in derogation of Clause 10 of the registered user agreement, filed the instant suit.
Mr.Anindya Kumar Mitra, the learned senior counsel appearing on behalf of the petitioner submits, after referring to the various application filed by the defendant No.1 or by the other defendants before the Trademark Registry claiming ownership of the said mark, submits that such actions on the part of the defendants are contrary to Clause 10 of the registered user agreement.
submitted that although some of the marks have been It is duly registered in favour of the defendant No.1 on the basis of such misrepresentation and/or disregarding the rectification applications filed by the plaintiff, but any future action would clearly jeopardize and interfere with the valuable right of the plaintiff to use the said mark “Duckback”.
Mr.Mitra has referred to page 797 of the petition to show that the respondent Nos.5, 6 and 7 in breach and violation of the terms of the Memorandum of Agreement dated 26th February 2010 and of the registered user agreement dated 25th February 2008 attempted to register diveRs.trade marks “Duckback”.
have been / label marks containing the petitioner’s mark The applications for registration of the label marks made in 37 different classes.
Mr.Mitra has also referred to a Single Bench decision of the Hon’ble Bombay High Court dated 30th January 2015 in which Bihar Rubber Company Limited was restrained from giving effect or further effect or taking any steps in pursuance to the orders dated 21st October 2014 and 22nd October 2014 passed by the Registrar of Trade Mark, Mumbai in relation to the Trade Mark Registration Nos.1515089 and 1515090 respectively.
The writ petition relates to two marks namely “Duckback Rider” (Label) and “Duckback Champ” (Label) registered in the name of the defendant No.1.
Mr.Mitra contends that the said registration by the Registrar of Trade Mark was in derogation of the registered user agreement and the Learned Single Judge of the Bombay High Court being satisfied with the case made out by the plaintiff passed an order in terms of Clause c-(ii) of the writ petition, which reads:“C (ii) restrain, injunct and/or prohibit Respondent Nos.1 and 2, their respective servants, officers and/or agents from in any manner (directly and/or indirectly) giving effect or any further effect to or taking steps in pursuance of the orders dated 21st October, 2014 and 22nd October, 2014 passed by the Respondent no.1 in relation to the Trade Mark Registration nos.1515089 and 1515090 respectively.” Mr.Mitra accordingly has prayed for an order of injunction restraining the respondents to act in derogation of clause 10 of the registered user agreement.
Mr.Ratnanko Banerji, learned Senior Counsel representing the defendant No.1 submits that no ad-interim order can be passed at this stage since on earlier occasion the Court had the occasion to consider such registered user agreement and no order was passed against the defendants restraining them from using the said marks.
Mr.Banerjee has referred to Annexure-R at page 302 and submits that it would be evident from the disclosure made by the plaintiff that a large number of trade marks bearing the word ‘Duckback’ were registered in favour of the defendant No.1 between November 2011 and April 2015 when the earlier suits were pending and it was never alleged by the plaintiff that the said defendant or the other defendants are acting in derogation of the registered user agreement.
The conduct of the said plaintiff, according to Mr.Banerjee, should constitute waiver and at least without seeking an explanation from the plaintiff as to why no step was taken contemporaneously, at this stage no ad interm order can be passed.
Mr.Surajit Nath Mitra, learned Senior Counsel representing the defendant No.2 submits that in an appeal pending before the Hon’ble Division bench arising out of an order passed by Justice Tandon dated 7th March 2017, it was the desire of the Division Bench that the matter should be settled and although the terms of settlement was sent to the plaintiff but the plaintiff did not respond to such terms of settlement.
It is submitted that the desire of the Division Bench was that the parties should try and settle their disputes.
Mr.Mitra submits that there is no fresh cause of action for the plaintiff to file the suit inasmuch if the plaintiff is aggrieved that there has been any violation of any terms of the registered user agreement, the remedy would have been to apply in the pending proceedings and not by filing a fresh suit.
In short, it is submitted that there is no fresh cause of action for the plaintiff to institute the suit and pray for the reliefs as claimed.
There cannot be any doubt that the plaintiff is the owner of the mark “Duckback”, both as a word mark and a label mark.
The plaintiff has uninterruptedly been using the since 1942.
The said mark defendants right through the registered user agreement.
continuously are deriving and their The said registered user agreement in clause 10 prohibits the registered user to claim any ownership or proprietorship interest over the intellectual property of the plaintiff.
It is plain from the reading of the clause 10 of the said agreement.
The Court also considers the respective plaints of the earlier suits and on scrutiny of the said plaints, it appears that the scope of both the suits are entirely different.
The suit filed by Vanijya as would be evident from the earlier narration of facts is with regard to protecting its right in relation to the registered user agreement and so far as the earlier concerned, it is suit filed with by regard Bengal to the Waterproof internal Limited management is and administration of the defendant No.1.
There cannot be any doubt that any use of the mark “Duckback” in any form in derogation of the registered user agreement cannot be sustained and/or further precipitated.
It is no explanation in an infringement action injunction belatedly.
that the plaintiff has applied for Mere delay cannot defeat the valuable right of the plaintiff to protect its intellectual property.
Although the plaintiff may be required to explain the reason for not taking immediate steps either for cancellation or for preventive order against the defendant No.1 in relation to about 21 marks appearing at page 302 being Annexure-R to the petition, but it appears that in respect of few of the marks rectification applications are pending and in one of such matters an order has been passed by the Hon’ble Bombay High Court in favour of the plaintiff.
It cannot be said on the basis of the disclosures made that the plaintiff did not take steps to safeguard the said mark.
The defendants are unable to offer any explanation at this stage for claiming proprietorship in respect of the said mark which on a clear showing shows that the said defendants are acting in breach of clause 10 of the user agreement.
Under such circumstances, the Court being prima facie satisfied that a strong case of an ad interim order is made out by the plaintiff, there shall be an order restraining the defendants and each of them from acting in derogation of the registered user agreement dated 25th February 2008 dated or the alleged supplementary registered user agreement dated 25th March 2008 and to claim any ownership in respect of the trade mark “Duckback” in any manner whatsoever.
However, this order will shall not affect any pending proceedings between the parties or any order passed in such proceedings.
Affidavit-in-opposition shall be filed within three weeks from date.
Reply thereto, if any, shall be filed two weeks after Puja vacation.
The interim order shall continue till 31 December 2017 or until further order, whichever is earlier.
The matter shall appear under the heading “Motion Adjourned” on 13th November 2017.
(SOUMEN SEN, J.) S.
Kumar / R.