Judgment · High Court · 2011

1IN THE HIGH COURT OF JUDICATURE AT MADRAS(ORDINARY ORIGINAL CIVIL JURISDICTION)FRIDAY, THE 21st DAY OF OCTOBER 2011THE HON'BLE MR. JUSTICE VINOD K. SHARMAO.A. No.744 of 2011inC.S. No.586 of 2011 Value Invest Wealth Management (India) Private Limited, rep. by it's Director N.Krishnan, No.8 & 9, Sindur Plaza 3rd Floor,42, Montieth Road, Egmore, Chennai-600 008. ... Applicant/Plaintiff-Versus-1. Mr.B.G.Kishor Kumar,2. Prathima Kishor,3. M/s.Rajshree Capital, rep. by its Partner, B.G.Kishor Kumar,1 to 3 are at No.3/6,Hari Mansion 1st Floor, Opp. Uma Theatre, Bull Temple Road, Chamrajpet, Bangalore-560 018.... Respondents/DefendantsOriginal Application praying that this Hon'ble Courtbe pleased to pass an order of interim injunctionrestraining the respondents, their men, servants, menacting/claiming or claiming to act under them, theiragents, assigns or anybody claiming through or under therespondents from in any manner giving/continuing thegroundless threat of action/proceedings for infringement ofpurported registered trademark 'Value Invest' registered as Trade Mark No.1601369 with effect from 13.09.2007 vide Trade Mark registration certificate No.900861 dated06.01.2011 issued by the Trade Marks Registry at Chennaipending disposal of the main suit. This Original APplication coming on this day before this https://hcservices.ecourts.gov.in/hcservices/ 2court for hearing the court made the following order: The applicant prays for an order of interiminjunction, restraining the respondents, their men, servants, men acting / claiming or claiming to act underthem, their agents, assigns or anybody claiming through orunder the respondents from in any manner giving /continuing the groundless threat of action / proceedingsfor infringement of purported registered Trade Mark, ValueInvest registered as Trade Mark No.1601369 with effect from13.09.2007 vide Trade Mark registration certificateNo.900861 dated 06.01.2011 issued by the Trade MarksRegistry, Chennai, pending disposal of the main suit.

The applicant M/s. Value Invest Wealth Management(India) Private Limited is a company, registered under the Companies Act. The applicant has invoked the provision of Section 142 of The Trade Marks Act, 1999 (hereinafterreferred to as the 'Act'), praying therein as under: "(a) declaration that the threat made by thedefendants to the plaintiff company regardinginitiation of legal proceedings for allegedinfringement of registered trademark viz., 'ValueInvest' registered as Trade Mark No.1601369 witheffect from 13.09.2007 vide Trade Markregistration certificate No.900861 dated06.01.2011 issued by the Trade Mark Registry at Chennai, vide two unsigned cease and desistnotices both dated 21.07.2011 issued through itslaw firm which in turn has acted through itslawyers and IP consultants is a groundless threat; (b) grant a consequential permanent injunction https://hcservices.ecourts.gov.in/hcservices/ 3restraining the defendants, their men, theirservants, agents, assigns or anybody claimingthrough, or acting through them in any manner fromcontinuing / giving or making any threat ofinitiation of action or proceedings forinfringement of the registered trademark 'ValueInvest' by means of circulars, advertisements, further legal notices or otherwise against theplaintiff company for using the trademark / tradename 'Value Invest' and Value Invest WealthManagement (India) Private Limited, either aloneor in conjunction with any other trade mark orwork mark either as part of it's name or as wordsto describe it's services; (c) pay costs of the suit; (d) and pass such further or other order or ordersas this Honble Court may deem fit and proper inthe facts and circumstances of the case and thusrender justice. "

The plaintiff / applicant claimed to be run bythorough professionals with utmost competent and integrity. The applicant deals with in the business of advisingclients in investments, fund management and portfolioinvestment. It has won the prestigious CNBC best financialadviser award for South India continuously for threeconsecutive years from the day of its inception. Theapplicant also publishes quarterly news letters givingvaluable advice and other details regarding the activitiesof the plaintiff company and other valuable information forkeen and active investors.

The applicant / plaintiff had turnover of aboutRs.2 Crores in the previous year. Besides professionalcompetent and integrity, the plaintiff is also carrying on https://hcservices.ecourts.gov.in/hcservices/ 4several social responsibility for the benefit of thegeneral public.

On 23.07.2011, the applicant / plaintiff receivedthrough courier in its registered office at Chennai, apurported cease and desist notice dated 21.07.2011 from thefirst defendant through Globit IP Lawyers Chambers, whichin turn issued notice through Lawyers and IP Consultants, claiming therein that the first defendant was theregistered proprietor of the Trade Mark, viz., word mark inthe name and style of "VALUE INVEST", written in aparticular manner with a triangle within a circle at top'i' and also in a particular colour combination, viz.,maroon and blue.

The second copy of the same notice was againreceived on 26.07.2011. In the notice, the applicant wasthreatened of action for offending infringement of theregistered Trade Mark, wherein, the applicant was alsoasked to pay a sum of Rs.5,000/- (Rupees Five Thousandonly) towards cost of legal notice.

The applicant / plaintiff submitted a reply to thenotice on 08.08.2011. Thereafter, no further notice hasbeen received. It is the pleaded case of the applicant /plaintiff that it was incorporated as the registered https://hcservices.ecourts.gov.in/hcservices/ 5company on 19.12.2006 in the name and style of "VI ValueInvest Wealth Management Private Limited" and thereafter, the name of the company was changed as "Value Invest WealthManagement (India) Private Limited" with effect from24.12.2008.

The stand of the applicant / plaintiff is that thesaid notice was issued without verifying the facts. In viewof the registration of company as Value Invest WealthManagement (India) Private Limited, the applicant submitsthat it is entitled to injunction under Section 142 of the Trade Marks Act, 1999.

The Section 142 of the Trade Marks Act, 1999,reads as under: "142. Groundless threats of legal proceedings: (1) Where a person, by means of circulars, advertisements or otherwise, threatens a personwith an action or proceeding for infringement ofa trade mark which is registered, or alleged bythe first-mentioned person to be registered, orwith some other like proceeding, a personaggrieved may, whether the person making thethreats is or is not the registered proprietor orthe registered user of the trade mark, bring asuit against the first-mentioned person and mayobtain a declaration to the effect that thethreats are unjustifiable, and an injunctionagainst the continuance of the threats and mayrecover such damages (if any) as he hassustained, unless the first-mentioned personsatisfies the Court that the trade mark isregistered and that the acts in respect of whichthe proceedings were threatened, constitute, or, if done, would constitute, an infringement of thetrade mark. https://hcservices.ecourts.gov.in/hcservices/ 6(2) The last preceding sub-section does not applyif the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of Section 52 with due diligencecommences and prosecutes an action against theperson threatened for infringement of the trademark. (3) Nothing in this section shall render a legalpractitioner or a registered trade marks agentliable to an action under this section in respectof an act done by him in his professionalcapacity on behalf of a client. (4) A suit under sub-section (1) shall not beinstituted in any Court inferior to a DistrictCourt. "

In spite of service of notice, there is norepresentation on behalf of the respondents.

Learned counsel for the plaintiff / applicantvehemently contended that issuance of notice, threateningthe initiation of action for infringement of the TradeMark, amounts to threat, as envisaged under Section 142 ofthe Act, therefore, the applicant / plaintiff is entitledto injunction against threat and initiation of proceedings.

In support of the contention that the noticeamounts to threat, learned counsel for the applicant /plaintiff has placed reliance on the judgment of this Courtin the case of Mehta Unani Pharmacy & Co., Rajkot vs. Amrutanjan Limited, Madras, reported in (2002) 2 MLJ 494,wherein the Hon'ble Division Bench of this Court waspleased to lay down as under: https://hcservices.ecourts.gov.in/hcservices/ 7"15. One more argument that was raised for thedefendants needs to be noticed. It was submittedfor them that notice had been issued bona fide andthat therefore such a notice should not beregarded as amounting to a threat. In thiscontext, attention was invited to Narayanan's bookon the Law of Trademarks and Passing Off, 4thEdition, wherein at page 671 it is stated that 'ageneral warning or cautionary notice to the publicregarding infringement of the rights of the ownerof patent, trademarks or copyright published ingood faith may not amount to a libel'. In supportof that proposition three old English cases arereferred to. Those cases have not been placedbefore us nor have the provisions of the statuteconsidered therein been placed before us. Thequestion here also is not libel. The question hereis one of the protecting the person entitled tosuch a protection against groundless threats oraction, where a threat which is found to begroundless cannot be regarded as having been madebona fide. The plea of bone fide now raised isalso without any substance. The defendantsthemselves had filed an affidavit in anotherproceedings saying that 'COLD RUB' is adescriptive expression which prima facie, indeed, it is. It is also the case of the plaintiff thatthe defendants had specifically undertaken todisclaim the descriptive expression 'COLD RUB'appearing in the trademark application. Havingtaken that stand, it can hardly be said that thedefendants were acting bona fide when theyasserted a claim and on such assertion held out athreat of action against any one-else using thewords 'Cold Rub' which two words clearly are wordsof common use and are indeed descriptive. "

Learned counsel for the applicant also contendedthat incorporation certificate and change of name under Section 21 of the Companies Act, 1956, are issued after duediligence by the Central Government and by varioushierarchy of authorities under the Department of Companyand Corporate Affairs. Before a company is allowed to beincorporated with a particular name, the authorities haveto verify that the name claimed is not undesirable and the https://hcservices.ecourts.gov.in/hcservices/ 8proposed name is allowed by the Registrar of Companies onlyafter getting approval from the Central Government andother statutory bodies.

The contention of the learned counsel for theapplicant / plaintiff is that any person aggrieved by theparticular name, has remedy under the Companies Act toapproach authorities, therefore, it is not open to thedefendants to issue any threat for initiating proceedingsunder the Trade Marks Act, 1999.

It is also the contention of the learned counselfor the applicant / plaintiff that adoption of name "VALURINVEST" was wholly bonafide and honest, being descriptivein the nature of the service offered by the applicant /plaintiff.

It is also contended that business is being runfor past 4½ years, therefore, threats of initiatinginfringement proceedings against the plaintiff / applicantis clearly unjustifiable and the plaintiff is entitled todeclaratory and injunctive reliefs.

On consideration, I find that no ground is madeout for grant of injunction. The remedy under Section 142of the Act, is only for issuing injunction against threatof action. It is not possible for this Court in absence ofclaim of damages to determine whether there has been anyviolation of Trade Mark or not. https://hcservices.ecourts.gov.in/hcservices/

The Section 142 permits the defendant in a suitunder Section 142 of Act to satisfy the Court that thetrade mark is registered and that the acts in respect ofwhich the proceedings were threatened, constitute or ifdone, would constitute an infringement of the trade mark. 19. The applicant / plaintiff in the plaint itself hasnot disputed that the trade mark, as claimed in the notice, is a registered trade mark of the defendants. Though thenotice can be treated to be a threat, but in the facts andcircumstances of the present case, it is clearly provedthat after issuance of notice and reply, no further noticehas been received. This Court, in exercise of powers under Section 142 of the Act cannot restrain the holder of theregistered trade mark to bring out action in accordancewith law. The suit under Section 142 of the Act cannot barthe defendants from filing the suit under Section 29 of the Act, where trade mark is registered. 20. It will be for the defendants either to proceedunder Companies Act for change of name or to move under the Trade Marks Act, 1999. This certainly is not a case wherethe groundless threat can be said to have been given by thedefendants / respondents, merely, because a notice isissued, conveying the applicant about registered trademark, which is not followed by any other threat. In the https://hcservices.ecourts.gov.in/hcservices/ 10facts and circumstances of this case, the notice issued toplaintiff cannot be said to be a groundless threat. 21. For the reasons stated above, finding no merit inthis application, it is ordered to be dismissed. No costs. 22. It is made clear that nothing herein stated aboveshall be treated to be expression on merit of controversyin the suit, which can be adjudicated and decided afterparties lead evidence.sd/.V.K.S.J21.10.2011/Certified to be true copy/Dated at Madras this is the day of 2011.R.s/21.10.2011Court Officer(O.S)From 25th day of September 2008 the Registry is issuing thecopies of the orders/Judgments/Decrees in this format.