Generally, when a person approaches the Court with a prayer, he
is expected to do so with clean hands. The same applies in case of
infringement matters too. If an individual has been refrained from
using a mark, he/she cannot bring an action against another for
infringement of that mark. This is what the Division Bench of the
Delhi High Court laid down in Ansul Industries v. Vineet
Kumar, wherein the Appellant had challenged the order of
the Single Judge restraining it from getting interim relief against
the Respondents for the use of the mark 'Udta Panchhi'.
BRIEF FACTS OF THE CASE:
Ansul Industries, the Appellant herein had been restrained,
directly and indirectly from dealing with chewing tobacco under the
Trade Mark 'Udta Panchhi' and/or any other mark that would
be identical and/or deceptively similar to the Trade Mark of M/s.
Shiva Tobacco Co., Ambala, i.e., 'Panchhi'. A compromise
decree had however been passed and the company had accepted and
recognized the Trade Mark 'Udta' of the Application
therein. Before the said compromise was passed Ansul Industries
filed a suit against Vineet Kumar and also moved an application
under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure
(CPC) restraining them from using the Trade Mark 'Udta
Panchhi' in relation to tobacco products. Interim injunction
was granted, which was confirmed by the Single Judge of the High
Court. Thereafter, the aforesaid compromise decree was passed in
the suit filed by Shiva Tobacco Company.
Vineet Kumar subsequently moved an application under Order XXXIX
Rule 4 CPC for vacation of the injunction order. The single judge
had allowed the application. The Court considered whether Ansul
Industries ought to have been restrained from using the mark during
pendency of the suit. Ansul, had already conceded that it could not
use the mark 'Udta Panchhi'. Hence, the question before the
Court was whether Ansul Industries could prevent Vineet Kumar from
using the word mark 'Udta Panchhi' when it itself had no
right in the said mark.
The Court noted that the clause in the agreement stopped short
of permitting Ansul Industries from using the mark 'Udta'
in combination of the word 'Panchhi'. Since there was no
right vested in Ansul of use, permissive or otherwise, merely
confirming the right to institute an action could not be recognized
by the Court as it would encourage champerty. If allowed, the Court
considered, it would result in a queer situation wherein M/s. Shiva
Tobacco would be disabled from instituting an action against either
the Respondent or any other person using the mark 'Udta
Ansul Industries referred to the compromise application which
was signed between them and M/s. Shiva Tobacco, as per which
certain rights of Ansul Industries had not been recognized,
including the right to use the Trade Mark 'Udta Panchhi' in
relation to tobacco products.
The attention of the Court was also turned towards the order of
the single judge confirming the interim injunction as prayed by
Ansul Industries. Prima facie view was taken to the effect that
Ansul had adopted the Trade Mark and label in 1980 and had
substantial turnover and had spent substantial amount in
advertisement over the years. In the circumstances, the Court
considered that Ansul Industries was not manufacturing and
marketing counterfeit products and that they t had a right to use
the Trade Mark 'Udta' in relation to tobacco and thus they
had the right to restrain any person from using the same for their
product. The Court said that in this present case, however, that
this was not the issue raised by Ansul.
Hence, the Division Bench of the Delhi High Court held that the
order passed by the single judge did not suffer from any infirmity,
and so saying the appeal was dismissed.
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