UNITED SPIRITS LIMITED Vs. HENKEL INDIA LIMITED

JUDGEMENT

(1.) These two intra-court appeals are directed against the order and decreetal order dated 13 December 2011 in O.A.Nos.764 to 766 of 2011 in C.S.No.617 of 2011 dismissing the applications for interlocutary injunction during the pendency of the original suit.

(2.) The appellant is the successor-in-interest of M/s. Shaw Wallace & Company Limited. M/s. Shaw Wallace & Company Limited was merged with the appellant on the basis of a scheme sanctioned by the Honourable High Court of Calcutta vide its order dated 16 January 2009 and the order dated 29 May 2008 on the file of the Hon'ble High Court of Karanataka. By virtue of the said merger, the appellant claims to have acquired the right, title and interest possessed by M/s. Shaw Wallace & Company in respect of the trade mark "ARAMUSK". It so transpired that Shaw Wallace & Company had entered into an agreement in the name and style of "Business of Consumer Products Agreement" with Henkel Spic India Limited on 22 January 1999, inter alia for sale of the Business of Consumer Products Division. The first respondent agreed to acquire all the rights, title and interest of the predecessor-in-interest of appellant in the "ARAMUSK" trade mark with the goodwill and all other benefits for a total consideration of Rs.17,00,000/- (Rupees seventeen lakhs only) subject to certain conditions.

(3.) The Business of Consumer Products Agreement (hereinafter referred to as "BCP Agreement") provides that M/s. Shaw Wallace and Company Limited (hereinafter referred to as "the Seller"), shall for a period of six months grant licence to M/s. Henkel India Limited (hereinafter referred to as "the Purchaser") to use the "ARAMUSK" trademark (hereinafter referred to as "trademark") through a Registered User License Agreement and Trademark License Agreement in respect of unregistered trademark, which agreements shall be executed by the Seller in favour of the Purchaser simultaneous with the execution of the principal agreement on the terms and conditions stipulated therein. The Purchaser was given an option to renew the license for a further period of six months. The Seller within the prescribed period or any extension thereof, was expected to take all necessary steps to obtain clarification from the High Court of Calcutta with respect to the orders of injunction passed on 21 November 1995 in BDA case as well as the order dated 11 December 1997 in Hota Hoti case, to ensure that the Seller has the right to assign and transfer the trademark to the Purchaser. The Purchaser, in turn, was required to deposit a sum of Rs.17,00,000/- (Rupees seventeen lakhs) in an Escrow Account with an Escrow agent. The agreement further provided that, in the event, the Seller is able to obtain clarification within the prescribed period, the Seller, shall, with the consent of the Purchaser, execute a Deed of Assignment in favour of the Purchaser, thereby assigning and transferring the right, title and interest in the trademark to the Purchaser. It was further stipulated that, upon execution of the Deed of Assignment, the Purchaser and Seller shall jointly address a letter to the Escrow agent informing the execution of the Deed of Assignment and upon such intimation, the License Agreements shall stand terminated automatically. The Escrow agent shall, upon receipt of the joint letter executed by the Seller and Purchaser release the Escrow amount to the Seller towards consideration for assignment and transfer of trademark.