Case Note & Summary
The appeal arose from an order dated 28.09.2022 passed by the Commercial Court, Bengaluru Rural District, in Commercial Misc. No.246/2021, holding the appellants guilty of willful disobedience of an ex parte temporary injunction granted on 21.02.2019 in a trade mark infringement suit. The suit was initially filed as O.S. No.1244/2019 by respondent Nos.1 and 2 (Manipal Academy of Higher Education and its deemed university) seeking permanent injunction to restrain the defendants from using certain trade names/trademarks. The ex parte injunction restrained the defendants from using 'MAHE' or 'Manipal groups' in conjunction with any trademark, service mark, or advertisement. The suit was later re-registered as a commercial suit and transferred to the Commercial Court, Bengaluru Rural, renumbered as O.S. No.960/2021. The respondents alleged that the appellants continued to use the prohibited marks despite the injunction and moved an application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908. The Commercial Court found the appellants guilty and sentenced appellant No.1 to three months' civil imprisonment and a fine of Rs.1,00,000/- compensation to the plaintiffs, and appellants Nos.2 and 3 and respondent No.5 to one month's civil imprisonment and Rs.50,000/- each, with permission to attach properties for recovery. The appellants challenged this order raising several issues: whether the ex parte order survived the conversion of the suit and remained enforceable; whether the injunction covered only the two specified marks or all marks in conjunction; whether the element of willful disobedience was established; whether the suit, which omitted the company holding the trademarks, could support a contempt action against the appellants as officers; and the proportionality of the punishment. The appellants argued that the civil suit was shown as disposed of when the commercial suit was registered, thus the ex parte order lapsed. They contended that the order only restrained 'MAHE' and 'Manipal groups' and they had removed those marks, filing a compliance affidavit. The respondents argued that the order was clear and unambiguous, prohibited use in conjunction with any words, and remained binding until set aside. They maintained that the disobedience was willful and continued even after the Supreme Court dismissed the special leave petitions against the order making the injunction absolute. The High Court reserved judgment on 28.06.2023 and pronounced it on 17.07.2023. The provided text ends abruptly during the submissions on behalf of respondent No.2, and the final analysis, reasoning, and decision of the High Court are not included in the excerpt. Therefore, the appeal's outcome and the court's ratio decidendi cannot be determined from the available text.
Issue of Consideration
Whether the punishment imposed for disobedience of the interim order under Order XXXIX Rule 2A CPC was proportionate, whether the Commercial Court had the power to award compensation, and what procedure must be followed before awarding such compensation.
Case Details
2023 LawText (KAR) (07) 7
Commercial Appeal No.404 of 2022
Justice Alok Aradhe, Justice Anant Ramanath Hegde
Sri Jayakumar S. Patil (Sr. Counsel), Sri Sreevatsa S. (Sr. Counsel), Sri Tushar Giri, Sri Amrutesh N. P., Smt. Sanjana S. Umesh, Sri A.N.S. Nadkarni (Sr. Counsel), Sri Sahil Charniya, Sri Dhyan Chinappa (Sr. Counsel), Smt. Annapoorna S., Sri Abraham Joseph, Sri Ashok Panigrahi, Sri Manu Prabhakar Kulkarni
T. Sudhakar Pai, Mohammed Samiulla, Dr. Ritu Chauhan
M/s Manipal Academy of Higher Education, Manipal Academy of Higher Education (Deemed University), Manipal International School, Manipal E-Commerce Limited, M.M. Sheriff
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Nature of Litigation
Commercial appeal against an order under Order XXXIX Rule 2A CPC holding appellants guilty of disobedience of an ex parte temporary injunction in a trade mark infringement suit and sentencing them to civil imprisonment and compensation.
Remedy Sought
Appellants sought to set aside the order dated 28.09.2022 passed by the X Additional District and Sessions Judge, Bengaluru Rural District in Commercial Misc. No.246/2021, which imposed civil imprisonment and compensation.
Filing Reason
The Commercial Court held the appellants guilty of willful disobedience of the ex parte injunction order dated 21.02.2019 that restrained them from using 'MAHE' or 'Manipal groups' in conjunction with any trademark, and sentenced them to civil imprisonment and compensation.
Previous Decisions
The City Civil Court initially passed an ex parte injunction on 21.02.2019 in O.S. No.1244/2019; the suit was later transferred to the Commercial Court and renumbered as O.S. No.960/2021. The application to vacate the ex parte injunction was rejected on 22.04.2022 and the injunction was made absolute. The High Court dismissed appeals (Commercial Appeals No.267/2022 and 284/2022) challenging the injunction on 03.06.2022; Supreme Court dismissed Special Leave Petitions on 12.01.2023. Meanwhile, the Commercial Court passed the impugned punishment order on 28.09.2022.
Issues
Proportionality of punishment under Order XXXIX Rule 2A CPC
Power to award compensation for disobedience of an interim order
Procedure to be followed under Order XXXIX Rule 2A before awarding compensation
Whether the ex parte order of injunction remained valid after the civil suit was closed and transferred to Commercial Court
Whether the use of trademarks 'MAHE' and 'Manipal groups' by the appellants constituted willful disobedience of the order
Submissions/Arguments
Appellants contended that the ex parte order ceased to exist when the civil suit was disposed of and re-registered as a commercial suit, because the e-portal showed the case as disposed of. They argued the order only restrained 'MAHE' and 'Manipal groups' and not other marks. They claimed that the suit intentionally omitted the company holding the trademarks, so prosecution under Order XXXIX Rule 2A against the appellants as officers was not maintainable. They asserted there was no willful disobedience as they had removed the said marks and filed a compliance affidavit. They urged that considering the language of Order XXXIX Rule 2A, the court should be slow to impose civil imprisonment when the provision allows attachment of properties.
Respondent No.1 argued that the ex parte order was clear and unambiguous, and prohibited use of the words 'MAHE' and 'Manipal groups' in conjunction with any words. It was binding until set aside, and despite knowledge, the appellants willfully disobeyed by continuing use of the trademarks. The order was to be understood in context of the nine registered trademarks and the definition of 'trade mark' under Section 2(2) of the Trade Marks Act, 1999. The application under Order XXXIX Rule 2A was maintainable even against non-parties who aided and abetted the disobedience.
Respondent No.2 further contended that the ex parte injunction extended to use of the word 'Manipal' in conjunction with any other words, and that the appellants were aware of the order and took no steps to remove the infringing marks until after the Supreme Court dismissed their special leave petitions.
Judgment Excerpts
Among other issues, the proportionality of punishment, power to award compensation for disobedience or breach of an interim order of the Court and the procedure to be followed under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 ... do arise for consideration in this appeal.
Defendants are hereby restrained by an order of ex parte injunction restraining them from infringing the plaintiffs registered trade mark by using identical trade mark like 'MAHE' or 'Manipal groups' in conjunction with any trademark, service mark and advertisement for their services or business papers
The ex parte order granted on 21.2.2019 by the City Civil Court spent its life on 11.03.2019 as the Civil Suit in O.S. No.1244/2019 is disposed of as closed.
Procedural History
The suit, O.S. No.1244/2019, was initially filed by respondent Nos.1 and 2 in the City Civil Court at Bengaluru seeking permanent injunction against trade mark infringement. On 21.02.2019, an ex parte temporary injunction was granted. The case was ordered to be registered as a commercial suit on 02.03.2019, and on 11.03.2019 it was registered as Commercial Suit O.S. No.15/2019. Defendant No.3 (appellant No.1) appeared on 03.04.2019 and filed a written statement along with an application under Order XXXIX Rule 4 to vacate the ex parte order. On 05.04.2019, the plaintiffs moved under Order XXXIX Rule 2A alleging willful disobedience, which was registered as Com. Misc. No.9/2019. On 04.11.2020, additional defendants were impleaded under Order I Rule 10. On 27.05.2021, the suit was transferred to the Commercial Court, Bengaluru Rural, and renumbered as O.S. No.960/2021. The contempt application was renumbered as Misc. Application No.246/2021. The application to vacate the injunction was rejected on 22.04.2022, and the ex parte order was made absolute. The High Court dismissed Commercial Appeals No.267/2022 and 284/2022 challenging the injunction on 03.06.2022. The Commercial Court passed the impugned order under Order XXXIX Rule 2A on 28.09.2022, holding the appellants guilty and imposing civil imprisonment and compensation. The Supreme Court dismissed Special Leave Petitions on 12.01.2023. The present appeal was heard and reserved for judgment on 28.06.2023, and judgment was pronounced on 17.07.2023.
Acts & Sections
- Trade Marks Act, 1999: Section 2(2)
- Code of Civil Procedure, 1908: Order XXXIX Rule 2A, Order XLIII Rule 1(r), Order I Rule 10, Order XXXIX Rule 4
- Commercial Courts Act, 2015: Section 13(1A)
