JAGDISH PRASAD SHARMA Vs. MASTERMIND PUBLISHING HOUSE

JUDGEMENT

(1.) The plaintiff has filed the present suit for a decree of permanent injunction against the defendant, its employees, agents, servants, restraining them from threatening the plaintiff of groundless and illegal threats of civil and criminal proceedings including search and seizure etc. by the police and to serve upon them notices, circulars etc. Further the plaintiff had prayed for a decree of declaration praying that the word `Mastermind' in respect of books or publications or guides or help books or printed material, is laudatory, descriptive and non-distinctive in nature and the same is incapable of any monopoly in favour of one person or the other for the purposes of registration or otherwise.

(2.) The above relief is prayed for by the plaintiff on the premise and as is evident from the averments made in the plaint that the plaintiff is carrying on his business of publication of books, help books, guide books and question banks on the basis of curriculum of various classes as prescribed by the State and Central Government including Central Board of Secondary Education. While dealing with its books, plaintiff has been using the word `Master Mind Guide for Junior High School' in a descriptive and laudatory manner, which also refer to the character and quality of goods which are being published and sold by the plaintiff. According to the plaintiff, the expression `Mastermind' is a generic term and is incapable of being registered as a trade mark. It is further the case of the plaintiff that this expression means and implies and is a synonym of the words, brilliant, genius, greatmind, authority, excellent understanding and all these expressions are laudatory and descriptive in nature which just refers to the quality of the goods. The word is incapable of protection under the Trade Marks Act, 1999 and also cannot be protected under the Copyright Act, 1957, but only the writing style i.e. the script can be protected under the provisions of the said Act. Not only the plaintiff, many other publishers are using the same expression which is in wide circulation. The defendant had sent a notice on 5.9.2003, illegally and unjustifiably threatening the plaintiff and called upon him to discontinue the use of the word `Mastermind' in respect of the books published by the plaintiff and also threatening to take action under both the afore-stated legislations. In the plaint, there is a specific averment made by the plaintiff that the defendant neither has registration under the Trade Marks Act nor is exclusively using the same and it also has no protection over the copyright. As the threats issued by the defendant are unjustified, groundless and illegal, as such it may be restrained by taking criminal or civil action against the plaintiff in addition thereto. The plaintiff was using the said expression for a considerable time amongst others and the cause of action is stated to have been arisen on 6/9/2003 when the legal notice dated 5.9.2003 was received by the plaintiff and thereafter on various dates when oral threats were given by the defendant to the plaintiff.

(3.) This suit was contested by the defendant by filing a detailed written statement. In the written statement, defendant has taken preliminary objections stating that the plaintiff had concealed the material facts from the Court and has not come with clean hands. The suit was not valued properly for purposes of court fee and jurisdiction and there was no cause of action in favour of the plaintiff and against the defendant for filing the present suit. It prays for dismissal of the suit even under the provisions of Order 7 Rule 11 of the Code of Civil Procedure (for short `the CPC'). While vaguely denied the averments made in the plaint, defendant had stated that defendant is the exclusive user of the word Master Mind in the publication business of various books and that the word Master Mind is its copyright. According to the defendant, this expression is capable of being a trade mark, particularly in the matter of publication of books which are being published by the defendants. The word Master Mind is a distinctive word and capable of being used by the defendant. The defendant is using the said word for a considerable time. On these averments, the defendant is praying that the suit of the plaintiff be dismissed with costs. Replication on behalf of the plaintiff was filed denying the allegations made in the written statement and elaborating his case as stated in the plaint. On the basis of these pleadings, Court vide its order dated 9th November, 2004 framed the following issues :-