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TMI Blog2021 (5) TMI 1087X X X X Extracts X X X X X X X X Extracts X X X X ..... ion of the trade mark in respect of those goods or services in the name of the proprietor thereof, whichever is the earlier. The contention of the senior counsel for the respondent/plaintiff that the appellants/defendants were not using 'BLACK DIAMOND' mark in relation to Class 12 goods, thus cannot be accepted because the appellants/defendants No. 5 3 i.e. Parvinder Singh Bhatia and his son Raminder Singh Bhatia, till separation on 31st March, 2014, were very much part and parcel of the respondent/plaintiff and were as such using the mark 'BLACK DIAMOND' in respect to Class 12 goods also. Rather, the respondent/plaintiff, incorporated in the year 2005, became entitled to use the mark 'BLACK DIAMOND' in relation to Class 12 goods, only for the reason of being a company incorporated by the Bhatias aforesaid, who and their predecessors had adopted the said mark way back in the year 1983 and who were using the said mark for all their mining businesses. In such a situation, it is not open to Pushpinder Singh Bhatia who is now in control of the respondent/plaintiff, to, using the garb of a corporate veil, contend that the other family members viz. Parvinder Singh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that it was thereafter that the suit, from which this appeal arises, was instituted at Delhi; (f) that the respondent/plaintiff, in Delhi had succeeded in getting the interim relief which was declined to it by the Court at Bilaspur as well by the High Court of Chhattisgarh; and, (g) that the impugned order had not given due weightage to the said facts, while posting the appeal for hearing on 8th April, 2021, the impugned order was directed to remain in abeyance and it was clarified that there was no restraint on the appellants/defendants from using the mark which they, by the impugned interim order, had been restrained from using. 3. On 8th April, 2021, the hearing was adjourned to 13th May, 2021. The counsels were heard on 13th May, 2021 and 19th May, 2021 and order/judgment reserved. 4. The suit, from which this appeal arises, was filed by the respondent/plaintiff, inter alia pleading (i) that the respondent/plaintiff, since the year 2005, was carrying on business of manufacture and sale of Trippers, Tip-Trailers, Flat Bed Trailers, Ash Handling Bulkers and Tailor made Carriers (hereinafter, for the sake of convenience, called subject goods ); (ii) that the trade mark 'BLACK ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lation to subject goods and has acquired goodwill with respect thereto; (x) that the respondent/plaintiff, on 22nd July, 2009 also applied for registration of the trade mark 'BLACK DIAMOND' and its formative variants in relation to goods under Class 12 viz. subject goods; (xi) that the appellants/defendants have started carrying on business in respect of subject goods, under the trade mark 'BLACK DIAMOND', 'BLACK DIAMOND TRACK PARTS' and 'BLACK DIAMOND TRAILER TECH'; (xii) that the word 'BLACK DIAMOND' is essential feature of the respondent/plaintiff's trade mark; (xiii) that the trade marks of the respondent/plaintiff and the appellants/defendants are as under: (xiv) that the appellants/defendants are not entitled to use the trade mark 'BLACK DIAMOND' in relation to subject goods, in view of the family settlement dated 31st March, 2014; (xv) that the appellants/defendants, in or about the year 2018, i.e. after four years of the family settlement, started acting in breach thereof by carrying on business in subject goods in the name of 'BLACK DIAMOND'; (xvi) that the appellant/defendant No. 1, on 31st March, 2018, applied f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e respondent/plaintiff filed an application in the Court of the Additional District Judge, Bilaspur, before which the suit was pending, to withdraw the said suit with liberty to apply afresh, and which suit was dismissed as withdrawn with liberty to file afresh, on 4th January, 2020. 5. The suit, from which this appeal arises, was filed on 20th July, 2020 i.e. after more than six months after withdrawal of the earlier suit (with liberty to file afresh) for the same reliefs. The said suit came up first before the Commercial Court on 20th July, 2020 itself, when while issuing summons thereof, notwithstanding that the respondent/plaintiff, since the year 2018 had been unsuccessful in getting the interim relief in the proceedings earlier instituted in the Courts at Bilaspur and that the High Court of Chhattisgarh had also not found the respondent/plaintiff entitled to interim relief, vide ex-parte ad-interim order, the appellants/defendants were restrained from using the trade marks 'BLACK DIAMOND', 'BLACK DIAMOND TRACK PARTS' and 'BLACK DIAMOND TRAILER TECH' in respect of subject goods, all falling in Class 12 and a commission issued to visit the premises of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ilaspur and for the reason whereof the said suit was required to be withdrawn, the fresh suit ought to have been filed in the Courts at Bilaspur only, where the respondent/plaintiff as well as the appellants/defendants are carrying on business and the filing of the present suit at Delhi shows mala fides of the respondent/plaintiff; (l) that 'BLACK DIAMOND' has always been an essential feature of the trade/business of all the firms of the erstwhile family and all the said firms and family members have a right to use the 'BLACK DIAMOND' trade mark; (m) that 'BLACK DIAMOND' trade mark, besides in the name of the respondent/plaintiff, was also registered under Class 12 in the names of Uday Shankar Yadav, Jitendra Pratap Bhai Vasani and Mahalaxmi Rubber Profiles India and the respondent/plaintiff was thus not the sole registered proprietor thereof and not entitled to any relief for this reason also; (n) that the appellants/defendants, because of prior use of trade name and trade mark 'BLACK DIAMOND', could not, in terms of Section 34 of the Trade Marks Act, 1999, be prevented from using the same; (o) that the respondent/plaintiff has no special right to u ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... order, there is no discussion or analysis of the merits of the pleas and contentions of the respective parties and no reason given, why the Commercial Court accepted the arguments and contentions of the counsel for the respondent/plaintiff and rejected the arguments of the counsel for the appellants/defendants. 9. We are afraid, the impugned order does not meet the parameters prescribed to constitute a judgment, as an order on an application under Order XXXIX Rules 1 2 of the CPC is, since determines the rights of the parties. The impugned order, in our view, is liable to be set aside on this ground alone. 10. Be that as it may, on the basis of pleadings of the parties, we enquired from the senior counsel for the respondent/plaintiff, (I) Why is the respondent/plaintiff not disentitled from any interim relief, for the reason of having indulged in forum shopping, by withdrawing the suit with liberty to file afresh from the Courts at Bilaspur/Chhattisgarh, after being unsuccessful in obtaining interim relief; it is felt that though in view of the liberty granted by the Court at Bilaspur, the suit at Delhi cannot be said to be not maintainable but the respondent/plaintiff having indul ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng all the requisite pleas; (c) that all the requisite pleas have been taken in the plaint filed in the suit at Delhi and on the basis whereof the respondent/plaintiff has been found to have made out a case for ad-interim injunction; and, (d) that no question of comity of Courts or res-judicata arises on the basis of the orders of the Court at Bilaspur and of the High Court of Chhattisgarh, the proceedings in which the said orders were made, having been permitted to be withdrawn with permission to file afresh. Reliance is placed on (i) Chhaganlal Pratapchand Vs. State of Gujarat, where referring to Patel Chunibhai Dajibhai Vs. Narayanrao Khanderao Jambekar AIR 1965 SC 1457, it was held that when withdrawal of a suit with liberty to bring a fresh suit is permitted, the effect is that in the eyes of law, there is no such suit filed; (ii) Sarguja Transport Service Vs. State Transport Appellate Tribunal, M.P., Gwalior (1987) 1 SCC 5, holding that when a suit is withdrawn with liberty to file afresh, the question of res-judicata does not arise; and, (iii) Messer Holdings Limited Vs. Shyam Madanmohan Ruia (2016) 11 SCC 484, holding that when a suit is withdrawn, any order passed in the s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tration of the mark only in the year 2014; (v) that in such a situation, the business of the appellants/defendants would be affected if temporary injunction was issued; (vi) that no relevant documents had been produced to show that the respondent/plaintiff was suffering in any manner from the actions of the appellants/defendants; (vii) that neither of the ingredients of prima facie case, irreparable loss and injury and balance of convenience, were in favour of the respondent/plaintiff; (viii) that as the appellants/defendants were the prior user of the brand name, they could not be prevented from using the said brand; (ix) that there was nothing to show that any of the customers were confused; (x) that the Directors of the respondent/plaintiff were fully aware of the use of the trade mark 'BLACK DIAMOND' by the appellants/defendants; (xi) that in view thereof, inspite of obtaining registration, the respondent/plaintiff could not disturb the right of the appellants/defendants to use the mark 'BLACK DIAMOND', as a prior user; (xii) that the rights conferred by registration are subject to the rights of the prior user under Section 34 of the Act; and, (xiii) that both s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... est the bona fides of the respondent/plaintiff. 21. Taking notice of the aforesaid facts, it is found, that the respondent/plaintiff, in its anxiety and keenness to immediately restrain the appellants/defendants from using the mark 'BLACK DIAMOND' in relation to the subject goods, after having failed to obtain interim relief from the Courts at Bilaspur/Chhattisgarh, chose to try their luck in the Courts at Delhi and with the said design, withdrew the suit at Bilaspur with permission to file afresh; the said design of the respondent/plaintiff indeed bore fruit inasmuch as the respondent/plaintiff, inspite of having failed till the High Court in the first round, in the second round succeeded to get ex-parte injunction restraining the appellants/defendants and a Commissioner sent to the premises of the appellants/defendants at Bilaspur and Korba, and not at Delhi where the suit was filed. Needless to state, that if the respondent/plaintiff had taken the second chance also in the Courts Bilaspur and Chhattisgarh only, in view of denial of the interim relief in the suit earlier filed, in the subsequent suit also no interim relief could have been granted. 22. The question which a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... articular High Court in contrast to a different view held by another High Court and Another category of forum shopping is approaching different Courts for the same relief by making a minor change in the prayer clause of the petition ; and, (b) Allied Blenders and Distillers Pvt. Ltd. Vs. Amit Dahanukar where the suit filed in Delhi, after the subsidiary of the plaintiff had failed to get the interim relief in a suit earlier filed at Bombay, was held to be by way of forum shopping and in abuse of the process of the Court. 25. Mention may also be made of the fact that the decision in Sarguja Transport Service supra was referred to in a latter decision in Sarva Shramik Sanghatana (K.V), Mumbai Vs. State of Maharashtra (2008) 1 SCC 494 and it was held that Sarguja Transport Service supra would apply only where the first petition was withdrawn in order to do bench hunting or for some other mala fide purpose. Mention may yet further be made of Shridhar Gupta Vs. NDMC AIR 2015 Delhi 48 (DB), where finding that the petitioner, after failing to satisfy the Court in an earlier writ petition, had withdrawn the same, the second writ petition was held to be by way of re-litigation and in abuse ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... However, for the sake of completeness, we may deal with the merits of the matter also. 31. Qua our Query No. (II) supra, we may notice that the respondent/plaintiff, in the suit from which this appeal arises, has pleaded: All members jointly pledged not to interfere or compete in one another's business. It was agreed that neither party shall enter into the business of other party under 'BLACK DIAMOND' formative/artistic/trade name/Trademark/label/domain name or any other trade mark/label/trade name/domain name similar/deceptively similar thereto. Parvinder Singh went one step further and committed that during his presence his son Raminder Singh will not come in competition with Black Diamond Motors/Pushpinder Singh. However, save for a bare plea, there is nothing to show that any steps were taken in pursuance to the aforesaid agreement, if any. Merit is found in the contention of the counsel for the appellants/defendants, that since both Parvinder Singh and Pushpinder Singh Bhatia, being head of their respective two branches of the family which separated, were carrying on business not in their proprietary/individual names but through the vehicle of limited companies, ha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ACK DIAMOND', ordinarily business in cognate and allied goods relating to mining industry would also be under the trade mark 'BLACK DIAMOND', to reap advantage of the goodwill thereof. 34. The contention of the senior counsel for the respondent/plaintiff with respect to our Query No. (III) is, that once the respondent/plaintiff is the registered proprietor of the mark 'BLACK DIAMOND' in relation to goods in Class 12, in which the subject goods fall, the respondent/plaintiff, de hors the family settlement pleaded is entitled to restrain the appellants/defendants from using the same/similar mark for the purposes of marketing the subject goods. With respect to the reasoning given by the High Court of Chhattisgarh, of Section 34 of the Trade Marks Act, the senior counsel for the respondent/plaintiff contended that for the appellants/defendants to have any right under Section 34 of the Act to continue using the mark 'BLACK DIAMOND', it was incumbent on the appellants/defendants to show that the appellants/defendants were using the mark 'BLACK DIAMOND' in relation to the subject goods since prior to registration in favour of the respondent/plaintiff an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ods falling in Class 12, was commenced through the vehicle of the respondent/plaintiff, also using the same mark 'BLACK DIAMOND'; (c) that appellants/defendants No. 5 3 Parvinder Singh Bhatia and his son Raminder Singh Bhatia as well as Pushpinder Singh Bhatia were the Directors of the respondent/plaintiff till 31st March, 2014 i.e. when the respondent/plaintiff commenced the business in the subject goods in or about the year 2005 under the mark 'BLACK DIAMOND' as well as in the year 2009 when application for registration of label mark 'BLACK DIAMOND' in relation to Class 12 goods in the name of respondent/plaintiff was made as well as in January, 2014 when the said registration was granted; (d) thus, appellants/defendants No. 5 3 i.e. Parvinder Singh Bhatia and his son Raminder Singh Bhatia also, till 31st March, 2014 were using the mark 'BLACK DIAMOND' for business in Class 12 goods, in the name and style of the respondent/plaintiff; and, (e) however when Pushpinder Singh Bhatia decided to separate from the family, the respondent/plaintiff fell to the share of Pushpinder Singh Bhatia and appellants/defendants No. 5 3 Parvinder Singh Bhatia and Rami ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , the two brothers who decided to carry on the same business by constituting another partnership, were not entitled to appropriate the trade marks of the erstwhile partnership and to restrain the third brother from use of the said trade marks; accordingly, the interim injunction granted was varied to the extent of allowing the use of the trade mark. In Kalinga Gudakhu Udyog Vs. Konark Gudakhu Factory MANU/DE/0776/1989 and Bagla and Co. Vs. Bagla Cosmetics MANU/DE/1625/2000 (FAO(OS) No. 206/2000 preferred whereagainst was dismissed on 7th February, 2005), this Court also held that since the adversaries were off shoots of the original family business carried on jointly, at the interim stage it could not be said which party was entitled to restrain other from using the trade mark of the original family business. Similarly, a Coordinate Bench of this Court in Jaininder Jain Vs. Arihant Jain MANU/DE/1843/2009, finding that the trade mark, for long had been used as a family mark, refrained from issuing any interim order. Mention may also be made of (i) Jaggi Ayurvedic Pharmacy Vs. Jaggi Ayurvedic Research Foundation 166 (2010) DLT 136 and (ii) Manmohan Plastic Pvt. Ltd. Vs. Ganpati Plast ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n in relation to Class 12 goods, a comparison of the label of the respondent/plaintiff with the label of the appellants/defendants, on the premise that both are entitled to use 'BLACK DIAMOND', shows that the two cannot be said to be identical. While the label of the respondent/plaintiff uses the word Motors in conjunction with the mark 'BLACK DIAMOND', the label of the appellants/defendants uses the word Trailertech in conjunction with 'BLACK DIAMOND'. The label mark of the appellants/defendants also contains a picture of the front of a truck/trailer and which is missing in the registered label mark of the respondent/plaintiff. The said differences, in our opinion, are enough to differentiate the two and to eliminate the possibility of any confusion. 47. The counsel for the appellants/defendants also contended that the customers/clients of the subject goods are not unknown persons but persons with whom the respective parties have had long association and identify and recognize and differentiate between the appellants/defendants No. 5 3 Parvinder Singh Bhatia and his son Raminder Singh Bhatia on the one hand and Pushpinder Singh Bhatia on the other hand. 48. ..... X X X X Extracts X X X X X X X X Extracts X X X X
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