IN THE HO~'BLE HIGH COURT OF GUJARAT AT AHMEDABAD

APPEAL 'FROM ORDER NO. ~.3g' OF 2010

MIs Universal Pharma

a partnership firm

B/701, Sapath - 4

Opp, Karnavati Club,

S.G. Road,

Ahmedabad 380 006

.......... APPELLANT /5

(Orig. Defendant)

VERSUS

G.M. Bell Health Care Pvt. Ltd.

345/346, Mahagujarat Industrial Estate,

,

Moraiya,

Dist. - Ahmedabad

........... RESPONDENTS

(Org. Plaintiffs)

AN APPEAL FROM ORDER under Order 43 Rule l(r) of

Code of Civil Procedure against the order passed by

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the Learned City ,Civil Judge, Ahmedabad" below Exh. 5

in Regular Civil. Suit No. 29 of 2008 dated

28/10/2010.

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To, _

The Hon'ble the Chief Justice

and other Hon'ble Judges of the High Court of Gujaliat, Ahmedabad

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MOST RESPECTFULLY SHEWETH THAT:'

1. The Applicant! Appellant being aggrieved by the order passed by the Learned Additional, District Judge of

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Hon'ble District Court, of Ahmedabad below Exh. 5 an

application for injunction (Notice of Motion) dated zs"

October, 2010, beg to file present Appeal From Order before this Hon'ble Court. The said order is annexed herewith and mrrked as Annexure' A', The copy of the complete paper book is filed hereby with separate list.

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2. The facts of the case are briefly narrated as under: -

The appellant respectfully submits that the appellant is

the partnership firm having its registered office at

Ahmedabad and the appellant is engaged in the

business of manufacturing, marketing and selling

pharmaceutical products since long.

It is respectfully submitted that in the year 1992 Mr.

Jayesh K. Mehta, Satish K. Mehta and Mrs. Saryuben K.

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Mehta had started partnership firm in the name and

style of M/s Universal Impex and they had adopted

trademarks namely CLOBET -GM, FUNGDID-B and

ENAC-GEL some where in the year 1997-98.

Thereafter, one of the partner Mr. Jayesh Mehta,

without any written and/or oral consent of the

remaining existing partners, had assigned the

impugned trademarks in favour of the respondent in

the year 2005. Therefore M/s Universal Impex came to

know that the use of the trademarks, universal Impex

had filed a Civil Suit No.3075/2006 in Hon'ble High

Court of Bombay against Universal Twin Labs and ors.

However, the said suit was withdrawn due to technical

reasons and with a p.ermission to file a fresh suit.

Thereafter, a 'fresh suit being Civil Suit NO.3422/2006

was filed along with Motion No.4300/2006 came to be

filed against Mr. Universal Twins Labs and the Hon'ble

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Mumbai . Court was pleased to refuse the injunction

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application.

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Thereafter, Mr. Satish K. Mehta had also filed a Civil

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Suit NO.1342/2007 in the Hon'ble High Court of

Mumbai against Mr. Jayesh K. Mehta and the present

respondent. In the said matter Motion was also moved

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where under Hon'ble Mumbai High Cou~ was Pleased~~

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to grantinjun,ction restraining the present respondents. •

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In the said order Hon'ble Mumbai High Court was

pleased held that the Deed of Assigned executed

between Mr. Jayesh K. Mehta and G.M. Bell Health Care

(I) Pvt. Ltd. is null and void. Therefore, present

respondents cannot be considered as proprietor of the

impugned trademarks.

3. The appellants fubmits that the respondents have filed the suit being lcs No.29/2008 in the Hon'ble District

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Court, at Ahmedabad, for passing off action and

infringement of Copyright alleging that the respondent

is the owner of the trade marks ,Clobet.;.GM, Fungdid-B,

and Enac-Gel as the said trade marks have been

assigned in favour of the respondent by way of

assignment deed dated 4/10/2005. It is further alleged

that respondent is a company incorporated under the

India Companies Act, 1956 and it is engaged in the

business of manufacturing and marketing of Medicinal

and Pharmaceutical products in India and elsewhere.

The Respondent has purchased trademarks Clobet-GM,

Fungdid-B, and Enac-Gel with goodwill by way of an

Assignment Deed dated 04/10/05 as alleged by the

respondent.

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4. Accordingly the matter was heard by the trial court and have allowed the injunction application (Notice of

Motion) and passed order as under:

Order

"The Interim Injunction Application Ex. 5 hereby

granted subject to the decision given by the

Hon 'ble High Court of Bombay in Civil Suit No.

1342/07.

The defendant, their agents, servants, dealers,

distributors are hereby restrained from using and

committing the act of "Passing Off" the Plaintiff's Trade mark named 'Clobet-GM, Fungdid-B, and Enac-Gel' including other assigned products' and

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also 'restrained them from usinq, acquiring,

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providing and/or offering business to others,

advertising, 'Marketing and/or exposing the

business by using the identical and/or deceptively

similar name as of the mark. 'Clobet-GM, Funqdid-

B, and Enac-Gel including other assigned products'

of the plaintiff till the disposal of the: suit.

The defendant, their agents, servants, dealers,

distributors are also restrained from using the \\01-

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similar artistic work, colour combination, ~ F

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phonetical write-up on the box and Artistic Labels

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of the products 'Clobet-GM, Fungdid-B, and Enac-

Gel' and by that way committing the Act of

"Infringement of Copy Right" of the plaintiff till the

disposal of the suit".

The aforesaid order was passed on 28th October,

2010 and being aggrieved by the said order, the

eopettenss have preferred an appeal alongwith

Civil Application. The aforesaid order however

temporarily suspended. for implementation and

execution till 29/11/2010 by the trial court.

5. It is respectfully submitted that the respondent is not a

proprietor of the said trademarks. The respondent and

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Mr. Jayesh Mehta have made one deed of assignment

of the trademarks with goodwill in the month of

October 2005, who was the partner of the Mis

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. Universal Irnpex. Mr. Jayesh Me.,ta.was not the only

partner of the Mis Universal Impex but there were two

other partners also and they did not sign the said

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assignment deed and their was no oral or written

consent by the remaining partners and therefore the

Hon'ble High Court of Bombay has held that said deed

of assignment executed between the respondent and ~

Mr. Jayesh Mehta is null and void. Thereafter the ~p:,

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respondent is not entitled to claim any ownership on

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the said trademarks. The respondent is a very well . aware • of this fact. The responde'ht has not challenged

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the order of the Hon'ble High Court of Bombay.

Therefore the respondent is not proprietor of the

trademarks Clobet-GM, Fungdid-B, and Enac-Gel as

alleged as these trademarks were never assigned to

the present 1 respondent as asiignmnet deed was

declared null and void. The respondent has given a

letter to Mis Universal Impex on 16th October, 2006. The respondett has confirmed his right as a manufacturer of the products of Universal Impex and

not for any other purpose. Further the respondent has

not claimed title, interest or' rightef any nature in the

trade marks except of manufacturing the products for

and on behalf of Mis Universal Impex. Moreover the

respondent has not claimed as proprietor of the trade

marks Clobet-GM, Fungdid-B, and Enac-Gel. The

respondent has claimed as a proprietor of the trade

marks Clobet-GM, Fungdid-B, and Enac-Gel with

malafide intention and without any support of the

documents in Regular Civil Suit No. 29 of 2008. It is

further submitted that the respondent has claimed for

infringement of copyright in Regular Civil Suit No. 29 of

2008 with regard to the copyright in· artistic work inrf~

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Trade marks Clobet-GM, Fungdid-B, and Enac-Gel, the

respondent is not the owner or creator of the said

copyright and therefore it can not claim for its

infringement. Moreover the original owner of the said

copyright is Mr. Jayeshbhai Mehta. Thus the respondent

has no right, title or interest in the said copyright.

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6. The Respondent has filed suit against the appellant on

the ground of deed· of assignment, on dated 04th

October, 2005 between the present respondent and

Mis Universal Impex. The respondent has as alleged an

amount of Rs. 5 lakhs has been paid either to Jayesh

Mehta or Mis Universal Impex. But the respondent has

never paid the said amount to any of the party.

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7. 'Itis submitted that 5 K Mehta fkedsult being suit no.

1342/2007 against the present respondent and Mr.

Jayesh Mehta' who is the partner of the appellant

partnership firm before the Hon'ble High Court of

Bombay. The plaintiff (Shri 5 K Mehta) of the Bombay

suit has challenged the said deed of assignment on the

ground that only one partner of the partnership firm

has signed the deed of assignment and the respondent

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has not paid tny consideration amount Universal Impex or to Jayesh Mehta or

to the M/S, 'ir ~~~.

any of the '\

. remaining pantners.: Therefore tne Hon'ble High court

of Bombay held that:-

"the pteintttt has come with clear assertion in the

plaint that he is the joint owner in respect of the

registered Trade Marks. The Hon 'ble High· Court

therefore held that the whether the assignment

deed by defendant no. 1 in tevour of the

defendant no. 3 to which the other joint owners were not 4arties can not be said to be legitimate. The Hon 'ble High Court further held that the user

of assignment by one of the partner could be said

to be velid, provided there was express contract

between the partners in that behalf. There can be

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no implied authority in one partner to use or

create assignment of the registered trade marks

exclusively or unilaterally. In the present case, the

assertion of the plaintiff is that the defendant no.

1 unilaterally executed the assignment deed in

favour of the defendant no. 3. Thus understood, it

necessarily follows that there is no valid

assignment in favour of defendant no. 3 and that

the defendant no. 1 cannot use the registered

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trade marks to the exclusion of the other joint

owners or otherwise without such express

authority. The appellant respectfully submitted

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that the -Hot: 'ble district court has not considered

the view of the Hon'ble Bombay high court. The

Hon 'ble Bombey High court further held that the

provision of the partnership act such as section 53

would support the plea of the plaintiff that one of

the defendant cannot use the registered Trade

marks exclusively or create assignment therein. "

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The user or assignment by one of the partner could be

said to be valid, provided there was express contract

between the partners in that behalf. Thus it is

understood that there is no valid assignment in favour

of defendant no. 3. Moreover the suit is filed by the

respondent, who is a neither assignee of the said

trademarks nor a proprietor of the said trademarks as

per the . order passed by the t-Lon'ble Hiqh Court of

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Bombay. Moreover the respondent has sent a letter to

the commissioner of Food and drug Control,

administration on 12/05/08 and he has stated that they

have stopped the manufacturing of said product and

there by the product is not available in the market after

the Bombay High court have declared the said deed of

Assignment void illegal and cancelled vide 06/07/2007 in 1iVii suit No. 1342/2007.

order date

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8. In view of 'the above facts, the appellant most

respectfully beg to challenge the impugned order on

the following main amongst other grounds that may be

urged at the time of hearing of this petition.

GROUNDS

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A; The order passed by the· t.d. District Judge is

illegal, without application of mind and required to

be summarily quashed and set aside.

B. The impugned order of the learned Trial Judge is

contrary to law and is violating the provisions of

law and well settled principle of law established by

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Hon'ble Apex court and various High Courts.

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C. The learned judge has wrongly exercised the

jurisdiction which is not vested in it.

D. The learned Judge has wrongly appreciated the

documents and facts produced by the respondent

and have failed to appreciate well settled principle

of law relating to the action of passing off and

infringement of copyright in respect of

trade

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marks.

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E.

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The Ld. Trial Judge has failed to appreciate that

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the respondent is not the owner / proprietor of the

said trade marks.

F. The Ld. Trial Judge has failed' to appreciate that

the deed of assignment dated 4/10/2005 has been

declared .as null and void by Hon'ble Mumbai High

Court.

G. The Ld. Trial Judge has failed to appreciate that in

one of the letter written by the respondent it has

been specifically acknowledged by the respondent

that M/s Universal Impex is the owner of the

trademarks and the respondent are only

interested in rnqnufacturlnq the products under

the said trademarks.

H. The Ld. Trial Judge has wrongly appreciated that

the principle of estoppel is applicable in. the

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present case ..

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The Ld.·Trial Judge has failed to appreciate that

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drug license of the respondent G.M. Bell (I) Pvt.

Ltd. has been cancelled

by the Drugs Authorities ~ company cannot do an~ -'

and therefore also said

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manufacturing, marketing and/or selling activities

under the said trademarks.

J. The LD judge has only passed the order granting

the injunction only subject to the decision given

by the Hon'ble high court of Mumbai in civil Suit No. 1342 of -2007 and - failed to consider other

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facts of the case which were-on record.

K. The Ld. T-rial Judge has failed to appreciate that

the respondent has - not produced a single

document to show that any consideration has

been paid by the respondent to said Mr. Jayesh K.

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Mehta towards the said deed of _ assignment.

Therefore the present respondent has failed to ~

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fulfill main condition of the said deed of

assignment and in view of the said fact the deed

of assignment is null and void.

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L. The Ld. Trial Judge has failed to appreciate that no

copyrights of the said trademarks have been

transferred to the respondent and therefore also

the respondent cannot claim any right, title or

interest in the said trademarks and/or copyrights. \ ~

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The ream d Judge has erred in appreciating the

facts from the face of the record that appellant

have invented the words Clobet-GM, Fungdid-B,

and Enac-Gel and the same are using as trade

marks in respect of Medicinal and pharmaceutical

products. Hence the bonafide intention of

appellant: to use trade marks Clobet-GM, Funqdid-

B, and Enac-Gel along with copyright artistic work

are not considered by the learned Judge.

The learned judge has wrongly considered the

proprietorship of trade marks Clobet-GM, Fungdid-

B, and Eflac-Gel along with copyright artistic work of respondent, thoug h there was no evidences

produced by the respondent to substantiate their

claim of proprietor and continuous use of trade

marks. Moreover, respondent is not a proprietor of

the trade marks. Therefore, the respondent has no

right to use the said trademarks .

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O. The Learned Judge has errea in- appreciating right

for exclusive use of trade marks Clobet-GM,

Fungdid-B, and Enac-Gel of respondent, even

though respondent has failed to prove that the ~

respondent is a proprietor of the said trademarkr~ r;

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along with copyright of artistic work because the

Hon'ble High Court of Bombay has declared the

deed of assignment null and void and the respondent has not challenged the order of the

Hon'ble High Court of Bombay till date. The

respondent is not owner of the said trade marks

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therefore the respondent has no right to file the

suit against the appellant. Learned Judge has not

considered the arguments of the appellant that

the respondent is not the owner of the said trade

marks along with copyright in artistic work. The

learned Judge wrongly considered this position in

affirmative to grant injunction which is

misconception of law and against the provision of

law.

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P. The Hon'ble Judge has erred in not appreciating

the authorities cited by. the appellant in

accordance with various settled principle laws laid

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down by the Courts In this type of cases. On the

contrary, the authorities cited by the respondent

which are not relevant to the case have been

considered. The settled principle, of law of passing

off action and infringement of copyright considered in the form of justice,

are not •

thOU9h~

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respondent is not having fit case of passing off action and infringement of copyright.

Q. The leerneo Judge have wrongly granted interim injunction under Order 39 Rules 1 & 2 in favour of

respondents as balance of convenience and prima

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facie case was not in respondents favour, learned

Judge have wrongly considered the important

factors of Order 39 Rule 1 & 2 granting interim

relief.

R. The learned Judge has not considered the facts

that if injunction is granted against the appellant,

appellant will suffer injury and damage because

the appellant is the proprietor of the said

trademarks with copyright in artistic work.

Appellant might have been suffering for which

they are not responsible because appellant have

not infringed any copy right of respondent artwork

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or have not passed off their goods as that of

appellant. The findings of learned Judge are

against the principle of natural justice and

. disregarded the provisions of Specific Relief Act.

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The learned Judge has wrongly appreciated the

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documents produced by the" respondent to

substantiate their claim of exclusive use and

proprietor of trade marks. However, these

documents are not sufficient to substantiate

respondent such claims and prima facie not

tenable in the eyes of law. And prima facie same

are not enough to grant interim relief.

The

judge

wrongly

held

that

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respondent has prima-facie case and balance of

convenience is in favour of respondent. The Id

court also wrongly held that respondent will

supper irreparable loss if injunction is not granted

Infact due to such injunction being passed against

the appellant, the appellant has suffer huge loss

which cannot be compensated in terms of money.

U. The resppndent who is not a proprietor and owner

of trade marks Clobet-GM, Fungdid-B, and Enac-

Gel, even though learned Judge has wrongly

considered the arguments of respondent and

granted .. interim relief which is bad-In-law and

disregarded the provisions of law.

v.

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The Id judge failed to considered that respondent

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is guilty of suppresio veri and suggestio falsi and therefore not entitled to any relief either in suit or

in application for injunction.

The learned Judge has erred in appreciating the

facts a nd the evidences on the record.

X. The learned Judge has also erred in appreci'ating

the objection of appellant during the arguments.

On the contrary in every where in his order

learned Judge have wrongly mentioned that

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proprietary rights with regards to the above

referred three trade marks are vested with

respondents.

Y. The Learned Judge failed to appreciate that suit as

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well as injunction application filed by the

respondent is barred by delay, latches and

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acquiescence.

That unless the respondent proves his claim of

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proprietorship and prior use .of trade marks

Clobet-GM, Fungdid-8, and Enac-Gel along with

copyright in artistic work intothe plaint, injunction ~

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can not be granted against the appellant. "\

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AA. The learned Judge has erred in applying the

principle settled by the Hon'ble Supreme Court

and other Hon'ble High Courts and therefore, the

same order deserves to be quashed and set-aside

by this Hon'ble Court.

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BB. That learned Judge surprisingly trying to protect

the trade marks Clobet-GM, Fungdid-B, and Enac-

Gel along with copyright ln artistic work of

respondent as he is not a proprietor of the said

trademarks.

7. The appellant craves leave to add, alter, amend, vary, rescind or modtfvanv of the grQunds mentioned above.

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8. Therefore, appellant prays as under:

(A) Your Lordship be pleased to allow this appeal.

(B) On these grounds and circumstances those that may be urged at the time of hearing, this Hon'ble Court be pleased to quash and set aside the order passed below Exh.S that is injunction application in Regular Civil Suit No.29 of 2008 dated 28/10/2blO of the learned Additional District Judge, hhmedabad and allow this Appeal with

costs.

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(C) Your Lordships may pending the hearing and final

disposal of this appeal, be pleased to grant, adinterim relief in terms of Prayer A hereof,

, (D) Any other relief may deem fit, just, necessary and proper in the interest of the justice, case and nature and circumstances of the case may please be awarded in favour of the applicant.

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AND FOR THIS ACTS OF KINDNESS AND JUSTICE THE APPLICANT SHA,LL BE DUTY BOUND TO PRAY FOREVER.

Place: Ahmedabad Date:

(Law Office of H. K Acharya & Co.)

Advocates for the Appellant •

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A F F I D A V IT

I, Jayesh Mehta, a partner of appellant firm herein, aged adult, caste Hindu, Indian inhabitant, resident of Ahmedabad, do hereby solemnly affirm and verified on oath and state as under:

I have carefully gone through the contents of appeal and paragraph No.1 to ...... are facts within the knowledge of the

applicant. Paragraph No .... to are based on legal advice

and are grounds. Paragraph No (a) & ... (b) are the prayer

made before this Hon'ble Court which I believe to be true.

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Whatsoever contained above are true and correct to the best of my knowledge and information and nothing has been concealed therefrom.

Solemnly affirmed -at Ahmedabad on

this day of L 2 NO" 2010 ,2010 \\. ~ /

"~~ t- ~CL,§)Y<

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BOOK'NO ·G;TJ" ·

PAGE NO T I 6':"<ir6)"

SERIAL NO """ .. ".,, " ..

RECEIPT NO.C".l..o..:,,~.J...~.2. DATE ..... Z ... Z ... N;Q;IJ. ... 20UJ .. " ....

Deponent

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SOLEMNLY AFFIRMeo BEFORE ME

NOTARY GU.JARAT STATE!!

INDIA

2 2 NOV 2010