Case Note & Summary
The plaintiffs, M/s. American Dry Fruit Stores (a partnership firm) and its partners Kishor H. Thakkar and Dilip H. Thakkar, filed a suit against ADF Foods Limited (defendant no.1) and two other partners Ramesh H. Thakkar and Ashok Thakkar (defendant nos.2 and 3). The plaintiff no.1 firm is the proprietor of certain registered trademarks (suit trade marks). The defendant no.1 company was promoted by the plaintiff nos.2 and 3 and defendant nos.2 and 3. By a memorandum of understanding dated 6th February 1992, the first plaintiff and its partners granted a licence to the first defendant to use the suit trade marks for a period of five years. The agreement was renewed from time to time, and by the last agreement dated 6th February 2003, the licence was renewed for a further period of two years. The plaintiffs contended that the licence agreement expired on 6th February 2005 by efflux of time. The plaintiffs took out a notice of motion seeking appointment of a receiver and an order of injunction restraining the defendants from using the registered trademarks belonging to the plaintiff no.1 firm and from using any other deceptively similar marks so as to pass off the first defendant's goods as those of the first plaintiff. The court considered the basic facts and held that since the licence had expired, the defendants had no right to continue using the suit trademarks. The court granted an injunction restraining the defendants from using the suit trademarks or any deceptively similar marks. However, the court did not appoint a receiver at that stage, as the injunction was considered sufficient to protect the plaintiffs' rights. The judgment was delivered orally by D.G. Karnik, J. on 3rd May 2005.
Headnote
A) Trademark Law - Licence Expiry - Injunction - Trade Marks Act, 1999 - Sections 28, 29, 134 - The plaintiffs, a partnership firm and its partners, granted a licence to the first defendant company to use their registered trademarks. The licence expired on 6th February 2005. The court held that after expiry, the defendants have no right to use the marks and continued use amounts to infringement and passing off. An injunction was granted restraining the defendants from using the suit trademarks or any deceptively similar marks. (Paras 1-3) B) Civil Procedure - Receiver - Appointment - Code of Civil Procedure, 1908 - Order 40 Rule 1 - The plaintiffs sought appointment of a receiver to take charge of the defendants' business using the trademarks. The court did not appoint a receiver at this stage, as the injunction was sufficient to protect the plaintiffs' rights. (Para 1)
Issue of Consideration
Whether the plaintiffs are entitled to an injunction restraining the defendants from using the suit trademarks after the expiry of the licence agreement, and whether a receiver should be appointed.
Final Decision
The court granted an injunction restraining the defendants from using the suit trademarks or any deceptively similar marks. The court did not appoint a receiver at this stage.
Law Points
- Trademark licence expiry
- passing off
- injunction
- receiver appointment
- partnership firm rights
- deceptively similar marks
