ASHWINI CHEMICALS WORKS Vs. ASWINI HOMEO PHARMACY

JUDGEMENT

(1.) This Civil Miscellaneous Appeal is directed against the order dated 09-06-2009 passed in I.A.No.1577 of 2009 in O.S.No.256 of 2009 on the file of the Chief Judge, City Civil Court, Hyderabad, whereby and whereunder the learned Chief Judge allowed the application filed by the plaintiffs under Order 39, Rules 1 and 2 of the Code of Civil Procedure and thereby made the interim injunction granted on 23-04-2009 as absolute.

(2.) Background facts in a nutshell leading to filing of this CM.A. by the defendant in O.S.No.256 of 2009 on the file of the Chief Judge, City Civil Courts, Hyderabad, are; The respondents herein are the plaintiffs in O.S.No.256 of 2009. The 1st plaintiff is M/s. Aswini Homeo Pharmacy, rep. by its Proprietor Sri B.Ch. V. Subba Rao @ Aswini Subba Rao and 2nd plaintiff is M/s. Aswini Pharmaceuticals, rep. by its proprietrix Smt. Maheshwari W/o. B.Ch.V. Subba Rao, through their G.P.A. Holder Sri B. Anil Kumar, who is no other than their son. Ashwini Chemical Works is the defendant in the suit and it is represented by its Proprietor T. Bala Mahesh. B.Ch.V. Subba Rao established a factory for manufacture and sale of homeo hair oil and named the product as ASWINI HOMEO HAIR OIL and his business as ASWINI HOMEO PHARMACY and obtained all licences and permission from the authorities concerned. He expanded the business and in the process, he commenced Aswini Pharmaceuticals in the name of his wife Smt. B. Maheswari. The plaintiffs introduced several products from time to time. The products manufactured are hair oils, bath powder, coconut oil, muscle oil, tooth powders, shampoo, cosmetics, diabetic atta food items, medical products etc. They have been marketing their products under brand name 'ASWINI'. According to them, the brand name ASWINI became a household name of their family in the general public and the general public and traders started calling the founder B.Ch.V. Subba Rao as Aswini Subba Rao. Thus, the brand name became the surname and household name of the founder Sri B.Ch.V. Subba Rao. The petitioner applied for and obtained valid certificates from the Trade Marks Registry on 06-10-1992 vide No.657936 as per the provisions of the Trade Marks Act, 1999. They obtained several trade mark certificates for different goods and services under Class 3, 5, 30 and 35 of Schedule IV of the Trade Marks Act, 1999. They have four units in the manufacture of products, branch offices in 7 States and 600 distributors. They also obtained trade mark in 2007 vide Certificate No.2460497 with an intention to export the products to foreign countries. As of now, their products got market not only in India, but also in foreign countries such as Singapore, Malaysia, Sri Lanka and Dubai. While so, according to them, in the month of August, 2005, their Sales Executives came across one detergent cake in the name of ASHWINI. They got issued notice to the defendant, who has been marketing its products under brand name ASHWINI. The defendant got issued a reply on 15-09-2005. The defendant is stated to have assured that he would withdraw the brand name ASHWINI and continue the other brand name SUPER 9. In the month of May, 2008, the plaintiffs came to know that the defendant had applied for registration of trademark ASHWINI and therefore, they lodged opposition vide No. MAS 724991 to the application No.866449. But Registry of Trademarks rejected the opposition on the ground that the said opposition is filed beyond the period of limitation prescribed. The plaintiffs applied for registration of trademarks for several goods and proposed products. The defendant filed opposition vide No.730258 to the said application of the plaintiffs. According to the plaintiffs, the defendant is passing on the detergent cake under brand name ASHWINI so as to make it appear that it is the product of ASWINI group owned by them. The intention of the defendant, according to the plaintiffs, to reap the benefits from out of the goodwill and reputation of the ASWINI products. The plaintiffs filed the suit seeking the following reliefs:

(3.) The defendant filed counter in I.A.No.1577 of 2009 resisting the claim of the plaintiffs. The counter filed in opposition to the temporary injunction application in brief is:- The defendant has been engaged in production of washing powder, cleaning powder and liquids and marketing the same under the trademark Ashwini from the year 1998. The defendant applied for registration of trademark label under No.866448, which was published in the Trademarks Journal No.1381 (Regular) at page 86 inviting oppositions by the members of the public. Neither of the plaintiffs lodged opposition, but one Aswini Homeo and Ayurvedic Products Ltd. sought to oppose its registration, but the said opposition was rejected by the Trademarks Registry, Chennai and the mark of the defendant is allowed to go on in the register. The 2nd plaintiff applied for registration of Trademark ASWINI under No.l559260 on 16-05-2007. The mark was opposed by the defendant under opposition No. 730258, which was pending disposal before the Trademarks Registry, Chennai on the date of filing of the suit. B. Anil Kumar, G.P.A. holder of the plaintiffs is not entitled to verify the plaint and to depose the averments contained in the affidavit in the absence of any documentary evidence. B.Ch.V. Subba Rao, proprietor of the 1st plaintiff concern has ever (sic. never) manufactured and marketed homeopathy medicines, which include homeo hair oil under the trademark 'Aswini homeo hair oil' under the trade name ASWINI pharmacy at any time from the year 1990. The trademark ASWINI was registered in the name of third parties independently and the search result generated from the date base of trademark registry reveals that the trademark ASWINI was not only registered in the name of several parties, but several applications are pending registration. Therefore, the claim of the plaintiffs that their trademark ASWINI has acquired distinctive character and reputation in relation to the products manufactured by them is false. Even otherwise, the goodwill and the reputation if any acquired in respect of a particular goods are confined to those goods only and that the reputation and the goodwill does not extend to the other goods. The plaintiffs have yet to commence manufacture of detergents. Whereas the defendant has been regularly manufacturing and selling its detergents under trademark ASHWINI from the year 1998. The defendant has been using the trademark ASHWINI for the detergents earlier, prior or anterior user of the mark than that of the plaintiffs. Under the provisions of the Act, the rights of an earlier user of a trademark are placed on a higher pedestal even than the rights of a registered proprietor of the same trademark in respect of the same goods. Under Section 28 of the Act, rights granted to the registered proprietor are subject to the other provisions of the Act, which includes protection to the earlier user. Therefore, the plaintiffs cannot take advantage of registration of their trademarks, if any, in respect of the same or different description of goods and try to usurp the rights of the defendant to the trademark ASHWINI in respect of detergents. As per the search result generated from the date base of trademark registry, the trademark ASWINI does not belong to the plaintiffs. The trademark bearing No.657936 is TOWER filed by Bhasawkar Jainstral, P.O. Sainthia Dist., Biabhom in Class 3 in respect of soaps and washing powder and that the application was treated as abandoned. Since the plaintiffs approached the Court suppressing the material facts, they are not entitled to seek discretionary relief of injunction. The plaintiffs allowed the defendant to manufacture and market their products under trademark ASHWINI for their detergent cakes for over a decade or at any rate from 2005 when there was exchange of notices, which amounts to acquiescence of the plaintiffs in respect of the mark and therefore, the plaintiffs are estopped to file the suit at a belated stage. The balance of convenience is not in favour of the plaintiffs since the defendant has been using the trademark ASHWINI in respect of detergent cakes for over a decade and the plaintiffs, have not started using of the mark in respect of the said goods.