Toni & Guy Products Ltd. & Anr. v. Shyam Sunder Nagpal

Toni & Guy Products Ltd. & Anr. v. Shyam Sunder Nagpal

2014 (57) PTC 159 (Del)

Facts:

Plaintiff No. 1, a company incorporated under the laws of England was engaged in manufacturing and marketing of hair care products under the mark TONI & GUY.

The Plaintiff No. 2, also company incorporated under the laws of England and operates salons and provides other related service under the mark TONI & GUY.

Plaintiffs had entered into a cooperation with each other in protecting the mark TONI & GUY.

In India, plaintiff No. 2 obtained registration of the mark TONI & GUY under No. 1237835 in Classes 41 and 42.

Defendant was manufacturing and marketing bleaching preparations, perfumery, cosmetics, creams, hair remover etc. under the mark TONI. The Defendant had filed a suit for permanent injunction against the Plaintiffs in the District Court of Delhi on the basis of its right in the mark TONI and contended that TONI & GUY was similar and deceptive to the mark TONI of the Defendant.

The present suit pertained to the Plaintiffs’ mark TONI & GUY and the violation thereof by the Defendant by adopting a deceptively similar mark TONY & GIRL in respect of cosmetic and hair care products.

The Defendant had filed two applications in the present suit, one under Order VII Rule 11 for rejection of plaint for want of cause of action and the second one under Order VII Rule 10 for return of plaint on account of pecuniary jurisdiction of the suit of the Plaintiffs.

In Order VII Rule 10 of the Code of Civil Procedure, 1908 the Defendant had contended:

• That the action of the Plaintiff is a quia timet action as there is no product in the market. Thus, there is no damage to the Plaintiff. The relief of damages cannot be granted in the suit. As the only relief surviving is of injunction and delivery up, which have been valued less than the pecuniary jurisdiction of the Hon’ble Court, the suit is liable to be returned for want of pecuniary jurisdiction.

In Order VII Rule 11 of the Code of Civil Procedure, 1908 the Defendant had contended:

• No cause of action arises in favour of the Plaintiff as the Defendants have not used the mark.
• Mere filing of trade mark application cannot be regarded as a cause of action for filing a suit for passing off.

Arguments on behalf of the Plaintiff on the applications under Order VII Rule 10 as well as Order VII Rule 11 of the Code of Civil Procedure, 1908:

• Plaintiffs are entitled to claim the relief of passing off and damages on an apprehension of threat of the defendant’s proposed launch of his products under the mark TONI & GIRL as the action is a quia timet action.

Court’s observations:

On application under Order VII Rule 11 of the Code of Civil Procedure, 1908:

For deciding an application under Order VII Rule 11 of the Code of Civil Procedure, 1908 only the averments in the plaint and the documents filed by the plaintiff are to be looked into believing them to be correct and on the basis of the same discerning whether any cause of action exists in favour of the person suing. In the present case the plaint alleges that the defendants have deliberately violated the plaintiffs’ right in the mark TONI & GUY and therefore there is a cause of action in favour of the plaintiff and against the defendant.

The next question that came up for consideration is the issue of Quia Timet for which reliance was placed upon Mars Incorporated v. Kumar Krishna Mukerjee and Ors.; 2003 (26) PTC 60 (Del). It was held that a relief of passing off could be based even on an apprehension of threat of Defendant’s proposed launch of their products as Quia timet action. The defendant was fully aware of Plaintiffs’ trademark TONI & GUY as he had filed prior suit against Plaintiffs in regard to infringement of their trademark TONI by Plaintiffs by using trademark TONI & GUY. Thus, the Plaintiff was entitled to seek injunction from an apprehended action of Defendant and hence suit of Plaintiff was not liable to be rejected for want of cause of action.

On application under Order VII Rule 10 of the Code of Civil Procedure, 1908:

Issue which arises for consideration in this Application was not whether Plaintiff would be entitled to an injunction but whether Plaintiff would be entitled to damages for quia timet action. When, admittedly Defendant had not used the mark and had not invaded proprietary rights of Plaintiffs in trademark by either infringing same or passing off, Plaintiffs could not lay an action for damages as neither invaluable goodwill or reputation of Plaintiffs was lost nor infringer had passed off his goods as that of Plaintiffs nor had any action taken place by which Defendant had become unjustly rich by trading upon goodwill and reputation of Plaintiffs. Thus, a claim for damages would not be maintainable. The court would not have pecuniary jurisdiction to entertain present suit as Plaintiffs had valued relief of injunction and delivery up at Rs.200/- each and only relief of damages was valued at Rs.20 lakhs. Hence, the plaint is liable to be returned for want of pecuniary jurisdiction.

Author: Paazal Arora, ILS Law College, Pune