MANU/WB/0024/2010

Equivalent Citation: 2010(43)PTC 89(C al)

IN THE HIGH COURT OF CALCUTTA

GA Nos. 3930, 3937 and 3961 of 2007 and 1393 of 2008 and CS No. 229 of 2007
Decided On: 03.02.2010
Appellants: Putzmeister Aktingesellchaft
Vs.
Respondent: Aquarius Engineers Private Limited and Ors.
Hon'ble Judges/Coram:
Sanjib Banerjee, J.
Counsels:
For Appellant/Petitioner/Plaintiff: P.C. Sen, Pratap Chatterjee, Sr. Advs., Ranjan
Bachhawat, Phiroze Edulji, Syed Shamsher, Rudraman Bhattacharyya and Arindam
Ghose, Advs.
For Respondents/Defendant: Goutam Chakravartti, S.N. Mookerjee, Sr. Advs., R.K.
Khanna and Joy Saha, Advs.
Case Note:
Civil - Stay on trial - Claim suit filed - Suit rendered infructuous -
Application filed under Section 10 of the Civil Procedure Code, 1908 for stay
of the trial - Held, views expressed were prima facie as wont at the
interlocutory stage and in the context of the petitions that had been
considered - Plaintiff directed to be free to lead such evidence as may be
available to it to seek the entirety of the reliefs claimed at the trial.
JUDGMENT
Sanjib Banerjee, J.
1. The myriad hurdles that the defendants initially presented before the substance of
the plaintiff's claim in the suit could be assessed have been somewhat removed by
the plaintiff having withdrawn a previous suit that it instituted in Goa. The
defendants, however, say that notwithstanding their application under Section 10 of
the Civil Procedure Code for stay of the trial of the present suit having been rendered
infructuous, the averments in the petition relating thereto should be taken into
account while considering the propriety of making further orders in favour of the
plaintiff.
2. GA No. 3930 of 2007 is the plaintiff's first interlocutory application in this suit for
alleged infringement by the defendants of the registered trademarks of the plaintiff.
GA No. 3937 of 2007 is the defendants' application for stay of the suit on the ground
that a previous suit, albeit for passing off and not for infringement, had been
instituted by the plaintiff against the second defendant in Goa. Since the Goa suit has
been withdrawn on December 6, 2008, the orders sought in GA No. 3937 of 2007 are
no longer available. GA No. 3961 of 2007 is the plaintiff's second interlocutory
application, seeking the appointment of a receiver. GA No. 1393 of 2008 is the
defendants' application under Section 124 of the Trade Marks Act, 1999. The

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 defendants submit that in view of the rectification proceedings carried by the
defendants before the Intellectual Property Appellate Board, GA No. 1393 of 2008
should be adjourned sine die pending the disposal of the matter by the Appellate
Board.
3 . Upon the first interlocutory application being moved, the plaintiff obtained an ex
parte order on September 28, 2007 in terms of prayer (a) of the petition. Prayer (a)
restrains the defendants from infringing the plaintiff's marks "Putzmeister" and "PM."
It, however, appears that the plaintiff has a registration in respect of the word mark
"Putzmeister" but only a logo registration in respect of "PM" written in a distinctive
style.
4. By an order of October 8, 2007 it was clarified that the order dated September 28,
2007 (though mistakenly referred to in the later order as September 25, 2007) would
not prevent the second defendant from using its corporate name, Putzmeister India
Private Ltd. But the order restrained both defendants from using the logo "PM" in
connection with their business. The first defendant continued to remain injuncted
from infringing the plaintiff's mark "Putzmeister." It is such order of September 28,
2007 as modified by the order dated October 8, 2007 that has been subsisting in
favour of the plaintiff. On the plaintiff's application for appointment of a receiver joint
special officers were appointed by an order dated December 24, 2007, but the
plaintiff has not really pressed for the appointment of a receiver at the final hearing.
5 . The plaintiff says that in addition to the subsisting order, the second defendant
should be restrained from using the word "Putzmeister" as part of its name. The
plaintiff suggests that the second defendant was permitted to be incorporated with a
name carrying the plaintiff's well-known mark since the plaintiff was to ultimately
control the second defendant and the second defendant was to be the plaintiff's
Indian branch. The plaintiff says that whatever may be the reason, since the plaintiff
is no longer desirous of associating with the second defendant and the plaintiff is the
undisputed owner of the word mark "Putzmeister", the second defendant cannot be
permitted to infringe the registered mark and persist in its use of the "Putzmeister"
mark as part of its corporate name.
6 . The defendants have not seriously opposed the continuation of the order dated
September 28, 2007 as modified by the order dated October 8, 2007. The defendants
resist any additional order being made and, in particular, the second defendant being
required to drop the mark "Putzmeister" from its name. The defendants say that the
conduct of the plaintiff would disentitle the plaintiff from seeking further orders, at
least at the interlocutory stage. The defendants suggest that even if the plaintiff's
conduct in forum-shopping is disregarded, it would be evident that the plaintiff's
permission for the second defendant to use "Putzmeister" as part of its name was de
hors the memorandum of understanding between the plaintiff and the Indian partners
of the plaintiff. The defendants submit that the second defendant's right to continue
with its corporate name is unconnected with the disputes between the foreign plaintiff
and its Indian partners and the pending arbitration reference relating to such
disputes.
7 . When these petitions were heard prior to the Goa suit being withdrawn, the
defendants had insinuated that the plaintiff had indulged in forum-shopping on the
plaintiff's evaluation that this might be the easier court to obtain the desired
injunction than the Goa court which had declined an ad-interim order of similar
import. At that stage the defendants insisted that not only should the trial of this suit

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 be stayed under Section 10 of the Code, but the interlocutory applications made by
the plaintiff should also be postponed till after the final decision in the previous suit.
The defendants have now modified the submission and suggest that the further
orders sought by the plaintiff should be declined as that would amount to the
veritable obliteration of the identity of the second defendant. The defendants state
that there was mischief on the plaintiff's part in bringing this action to this Court.
They say that the memorandum of understanding between the plaintiff and its Indian
partners contained a forum selection Clause and Goa was the chosen forum. They
show that notwithstanding such forum selection Clause not necessarily having a
bearing on the plaintiff's suit for passing off, such suit was instituted in Goa. They
demonstrate that the defendants are in Pune and Goa, respectively, and even the
plaintiff has no office within the jurisdiction of this Court to be able to obtain the
benefit under Section 134 of the Trade Marks Act, 1999. They say that the Goa suit
(Civil Suit No. 69 of 2006 where the plaintiff and the second defendant herein are the
parties) was filed on October 6, 2006. At the time the registration in respect of the
word mark "Putzmeister" was pending. The registration in respect of the word mark
"Putzmeister" was granted on October 26, 2006 (annexure 'C' to the petition in GA
No. 3930 of 2007). The registration in respect of the logo "PM" was granted on
August 1, 2006 (annexure 'D' to the petition in GA No. 3930 of 2007), which was
prior to the institution of the Goa suit. On May 3, 2007 the plaintiff brought the
registration of the word mark "Putzmeister" on record before the Goa court. It was
only on or about September 28, 2007 that the present suit was filed and an ex parte
order obtained therein.
8. The defendants contend that it was incumbent on the plaintiff to specifically draw
the attention of the court, at the time that the ex parte ad-interim order was sought
on September 28, 2007, that the plaintiff had failed to obtain any interlocutory order
in its Goa suit filed nearly a year before. The defendants argue that in the plaintiff
having brought the subsequent registration of the word mark "Putzmeister" on record
in the Goa suit, the plaintiff had, in effect, sought the conversion of the passing off
action into a suit for infringement. There was no reason in the circumstances, the
defendants say, for this suit being instituted in faraway Calcutta some five months
after the registration of the mark "Putzmeister" was brought to the notice of the Goa
court.
9 . The plaintiff counters that there was no suppression of any material fact. The
plaintiff places the petition where the institution of the previous suit is mentioned.
According to the plaintiff a party has no control over how an order is recorded. The
plaintiff states that the bogey of suppression sought to be raised by the defendants is
a red herring, particularly as the order dated September 28, 2007 was modified and
continued on October 8, 2007 after hearing the defendants. The plaintiff insists that a
statutory right has to be enforced and the conduct of the party seeking to enforce
such statutory right is hardly of any consequence. The Goa suit, argues the plaintiff,
was completely different from the present suit. The plaintiff points out to the first
defendant herein which was not a party to the Goa suit. The plaintiff says that since
the first defendant does not have any office in Goa but has an office in Pune, the Goa
court would not have had the authority to receive a suit against the first defendant.
The plaintiff urges that the subsisting order be confirmed and the modification
permitting the use of the mark "Putzmeister" in the second defendant's name be
undone. The plaintiff says that the continuation of the valuable word mark of the
plaintiff in the second defendant's name would destroy the mark and leave the second
defendant free to take steps to systematically destroy the goodwill and reputation
that brand "Putzmeister" carries.

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 10. The plaintiff refers to a joint venture agreement of December 19, 1997 between
the plaintiff and two Indian individuals. Simultaneously with the execution of the
joint venture agreement, a licence production agreement was also executed on
December 19, 1997. A second joint venture agreement was entered into between the
same parties on November 4, 2004 which was to come into force immediately upon
the execution thereof. Clause 18 of the second agreement recorded that the plaintiff
would allow and authorise Putz Pumps (India) Pvt. Ltd., the joint venture vehicle, to
use the trademark of the plaintiff on all products manufactured in India under such
agreement. The joint venture company was also to be entitled to use the word mark
and logo on all office stationery, publicity material and other commercial documents.
Clause 18.1 of the second joint venture agreement gave the Indian entity such rights,
subject to the rider that it would be entitled to use the plaintiff's logo and trademark
"for a period of two years from the date on which the PM shareholding in the PPI
stands reduced below 26% of the issued shares."
11. Clause 24 of the second joint venture agreement detailed the circumstances in
which the agreement could be terminated and some of the consequences of
termination. The plaintiff terminated the second joint venture agreement on June 23,
2005. The plaintiff says that the propriety of such termination is pending adjudication
in the arbitral reference and there is no stay of the termination. The plaintiff contends
that a stay of the termination would amount to specific performance of the joint
venture agreement which may be legally impermissible. The essence of the plaintiff's
principal contention is that since it is the undisputed position that the plaintiff is the
owner of the word mark "Putzmeister" and logo "PM" and since it is apparent that
there are disputes between the plaintiff and the defendants, persons inimical to the
interests of the plaintiff cannot be allowed to use the plaintiff's property either to
further their commercial interests or to leave the plaintiff's marks susceptible to
misuse and destruction.
12. The plaintiff refers to a judgment reported at 2000 PTC 244 J.K. Jain v. Ziff-
Davies Inc for the proposition that an erstwhile licensee of the owner of a mark may
not have use of the mark upon the cancellation of the licence. The plaintiff has relied
on a judgment reported at 1997 (Suppl) Arb LR 218 (Rob Mathys India Pvt. Ltd. v.
Synthes AG Chur) where the defendant had used the trademarks with implied
permission of the plaintiff prior to the cancellation of the collaboration agreement
between the parties. Upon the cancellation of the collaboration agreement, the
defendant sought to claim the marks as its own on the basis of its earlier user. The
court declined to permit the Indian collaborator to use the foreign plaintiff's mark
after the cancellation of the agreement.
13. The next case brought by the plaintiff, one reported at 1982 PTC 297 (Surjeet
Book Depot v. Surjeet Book Depot (P) Ltd.), is for the principle that when a mark
remains registered in favour of a person others would be restrained from using the
mark as part of their corporate names. In that case a business by the name of Surjeet
Book Depot was started by the eldest of three brothers with the younger brothers
being subsequently inducted upon conversion of the proprietorship concern into a
partnership business. Following disputes between the brothers, their father was
appointed as an arbitrator and he awarded that the partnership stood dissolved and
the business and goodwill belonged to the two elder brothers with the youngest
brother being entitled to a sum of Rs. 1 lakh. The youngest brother, Surjeet Singh,
took the money and separated. The two elder brothers entered into a new partnership
and continued the same business under the old name. Others partners were
subsequently inducted therein. The partnership obtained registration of the mark

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 "Surjeet Book Depot." The partnership firm controlled by the two elder brothers
brought an infringement action against Surjeet Book Depot (P) Ltd. that had been
floated by the youngest brother. The youngest brother denied the dissolution of the
original partnership and receipt of payment. The court disbelieved the defence and
passed an interlocutory injunction in favour of the plaintiff.
14. The plaintiff also refers to the Court of Appeal decision reported at (1972) 3 WLR
746 (Atlantic Star) for the principle that it is open to a plaintiff to choose such forum
where the plaintiff genuinely and reasonably believes that he would have an
advantage. The decision may not be the apposite in the circumstances since the
consideration there was whether the English courts would continue with the admiralty
action that was more closely connected with Belgium than England and rested on the
unexplained assumption that English courts were better equipped to deal with the
matter that the Antwerp court where a previous action had been brought.
15. The defendants say that the second defendant's right to use "Putzmeister" as part
of its corporate name did not depend on either joint venture agreement. They refer to
paragraph 11 of the plaint relating to the Goa suit and paragraph 29 of the plaintiff's
first interlocutory petition herein. In the Goa suit the plaintiff had claimed that since
the plaintiff was to take over the majority equity and management control of the joint
venture company, "the plaintiff at its sole election and without any contractual or
other obligations issued No Objection Certificate dated 11-1-2005, setting out therein
its consent to "Putz Pumps (India) Private Limited", confirming therein that the
plaintiff has no objections for such change in name." The next sentence in paragraph
11 of the Goa plaint repeated that there was nothing in the second joint venture
agreement or otherwise that obliged the plaintiff to permit the defendant in that suit
(the second defendant herein) to use the plaintiff's mark or logo as part of its
corporate name. At paragraph 29 of the plaintiff's first petition herein, the same
sense has been conveyed that the change in the second defendant's name was
permitted by the plaintiff without the plaintiff being obliged to do so under the
second joint venture agreement. The plaintiff has asserted that "it was a bare licence
to use without any consideration, hence no right got created."
16. The defendants submit that it would be inappropriate, in the circumstances, to
permit the plaintiff to cite the cancellation of the joint venture agreement as the basis
for restraining the second defendant from using the mark "Putzmeister" as part of its
corporate name. The defendants assert that the plaintiff is bound by its consistent
stand, both in the Goa suit and this suit, that the second defendant's use of the mark
"Putzmeister" was de hors the joint venture agreement. The defendants say that the
letter of January 10, 2005 issued by the plaintiff to the second defendant did not
contain any condition and did not reveal that the permission to use the name was in
contemplation of the plaintiff ultimately controlling the shareholding in or
management of the second defendant company. The letter needs to be reproduced:
No objection letter to whomsoever it may concern
Putzmeister AG, Max-Eyth-Str. 10, 72631 Alchtal, Germany is holding 24%
Equity Share Capital in Putz Pumps (India) Pvt. Ltd., a company registered in
the state of Goa, India. We give our consent to Putz Pumps (India) Pvt. Ltd.
for change of name from "Putz Pumps (India) Pvt. Ltd." to "Putzmeister India
Pvt. Ltd." and we confirm that we do not have any objection for such change
of name.

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 17. Emboldened by an observation of the court that if it were found that the plaintiff
had chosen this Court to try and obtain a snap order that it could not get from the
Goa court, the defendants have gone hammer and tongs at the plaintiff and say that
notwithstanding the defendants' acceptance of the plaintiff's word mark and logo
except to the extent of the second defendant using the word mark as part of its
corporate name, this suit is liable to be dismissed as being vexatious or in abuse of
process. At any rate, the defendants urge that the plaintiff's interlocutory applications
be rejected on account of its conduct. The defendants rely on a judgment reported at
AIR 1947 Lah 102 (Amir Din Shahab Din v. Shiv Dev Singh Jhanda Singh). The
plaintiff in that case filed a suit and at the trial produced a number of witnesses on
the issues of which the onus lay on him. The witnesses examined gave evidence
which was unfavourable to the plaintiff. The plaintiff brought another suit against the
same defendants for the same reliefs and on the same cause of action. The second
suit was assigned to another sub-judge for trial. On the date fixed for hearing in the
first suit the plaintiff stayed away and such suit was dismissed in default. In the
second suit a preliminary plea was taken by the defendants that the suit was barred
by the provisions of Order IX Rule 9 of the Code. Order IX Rule 9 provides that where
a suit is wholly or partly dismissed for the plaintiff's non-appearance at the hearing,
the plaintiff shall be precluded from bringing a fresh suit in respect of the same cause
of action but he may apply for an order to set the dismissal aside if he shows
sufficient cause for his non-appearance. The trial judge upheld the defendants'
objection and dismissed the suit as being barred by Order IX Rule 9 of the Code. On
appeal, such order was set aside since the bar under Order IX Rule 9 of the Code
operated after a previous order of dismissal had taken place but did not apply to a
subsequent suit instituted before the dismissal of the previous suit. The defendants
came up in second appeal to the High Court and the matter was referred to a Division
Bench. It was held that the first appellate court's interpretation of Order IX Rule 9 of
the Code could not be flawed, but a case could still be run by the defendants that the
second suit was liable to be dismissed as it offended the well-known maxim that no
one shall be twice vexed with the same cause. The second appeal was allowed on the
following reasoning:
(11). ...In my view the institution of the second suit by the plaintiff on
discovering that his first suit was likely to fail on the merits was a clear
attempt at an abuse of the process of the Court....
1 8 . The defendants have brought a well-known judgment reported at
MANU/SC/0472/1995 : (1995) 5 SCC 545 (Gujarat Bottling Co. Ltd. v. Coca Cola Co.)
and have relied on paragraphs 43 and 47 of the report. Paragraph 43 deals with the
considerations that should weigh with Court while assessing a prayer for an
interlocutory injunction. Paragraph 47 of the report dwells on the conduct of the party
seeking to obtain an injunction or vacate a subsisting injunction:
47. In this context, it would be relevant to mention that in the instant case
GBC had approached the High Court for the injunction order, granted earlier,
to be vacated. Under Order 39 of the Code of Civil Procedure, jurisdiction of
the Court to interfere with an order of interlocutory or temporary injunction
is purely equitable and, therefore, the Court, on being approached, will, apart
from other considerations, also look to the conduct of the party invoking the
jurisdiction of the Court, and may refuse to interfere unless his conduct was
free from blame. Since the relief is wholly equitable in nature, the party
invoking the jurisdiction of the Court has to show that he himself was not at
fault and that he himself was not responsible for bringing about the state of

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 things complained of and that he was not unfair or inequitable in his dealings
with the party against whom he was seeking relief. His conduct should be fair
and honest. These considerations will arise not only in respect of the person
who seeks an order of injunction under Order 39 Rule 1 or Rule 2 of the
Code of Civil Procedure, but also in respect of the party approaching the
Court for vacating the ad interim or temporary injunction order already
granted in the pending suit or proceedings.
19. The defendants submit that even otherwise the plaintiff is not entitled to restrain
the second defendant from using "Putzmeister" as part of its name. The defendants
refer to a judgment reported at 1997 FSR 420 (Harrods Ltd. v. Harrods (Buenos
Aires) Ltd.). The plaintiff in that case was the proprietor of the famous Harrods
department store in London. The second defendant was set up by the plaintiff in 1912
to carry on a similar business in Buenos Aires in anticipation of setting up a chain of
stores throughout South America. The first defendant was incorporated in England in
1913 and took over the business of the second defendant. The first defendant set up
other stores and expanded its South American operations into 1920s. Over several
decades thereafter the South American operations dwindled and by 1990 the
defendants only occupied a small area of the Buenos Aires store. The defendants had
obtained registration of a number of trademarks incorporating the name Harrods in
several Latin American countries. Following a notice from the plaintiff in 1976, the
defendants had also changed the style and script of their use of the word "Harrods"
so as to differentiate it from the plaintiff's mark. The plaintiff's directors on the board
of the first defendant resigned by 1948 and the plaintiff sold all its shares in the first
defendant by 1963. In the 1990s the defendants' new investors sought to revive the
business in South America under the "Harrods" name. A representative of the
defendants appeared to have offered the plaintiff a partnership role in the business
expansion in South America since the mark "Harrods" was to be extensively used in
connection with the defendants' new ventures. Negotiations between the plaintiff and
the defendants thereafter failed as the plaintiff wanted to acquire only the defendants'
rights in the name "Harrods" but the defendants insisted that the plaintiff buy the
entire business. In the suit for alleged passing off, breach of contract and breach of
fiduciary duty, the plaintiff claimed that the defendants held the "Harrods" trademark
on trust for the plaintiff. The plaintiff failed to obtain an injunction in respect of the
"Harrods" mark at the trial. The trial judge held as follows:
Accordingly, I reach the following conclusions:
1 . There was no licence or contract whereby HSAL or HBAL was
permitted to use the name "Harrods" by the plaintiff;
2 . If, however, there was such a licence, it was a bare licence
amounting in effect to a waiver of any right which the plaintiff might
otherwise have to prevent HBAL or HSAL using the name "Harrods";
in connection with those aspects of the business of HBAL and HSAL
which they carried out from time to time with the plaintiff's approval;
3. If there was a licence and it was not such a bare licence, and had
limitations, the only limitation was that HSAL and HBAL could only
use the name "Harrods" in connection with business carried on in
South America;
....

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 20. The judgment was upheld by the Court of Appeal decision which is reported at
1999 FSR 187 (Harrods Ltd. v. Harrods (Buenos Aires) Ltd.) but the appellate forum
found that there was an implied contract between the plaintiff and the first defendant
which permitted the first defendant to carry on business under the name "Harrods"
and that such contract was irrevocable.
2 1 . The defendants refer to a Division Bench judgment of this Court reported at
MANU/WB/0106/2003 : 2004 (1) CHN 448 (Barbara Taylor Bradford v. Sahara Media
Entertainment Ltd.). The defendants rely on paragraph 213 of the report where four
principles have been culled out from the Russian Princess' case 1917 KB 486:
213. Be that as it may, the case contains several important propositions. The
first of those propositions is, that obtaining an ex parte interim order on
suppression is a very serious matter. The second point is, that if the Court
was deceived or misled by it, the litigant who obtained the interim order,
must suffer a dismissal of the motion. The third point is, that if such
dismissal entails a loss of remedy, that cannot be helped. The fourth point is,
that the power of dismissal for suppression is an inherent power of the
Court....
2 2 . The defendants also place the judgment reported at MANU/SC/0192/1994 :
(1994) 1 SCC 1 (S.P. Chengalvaraya Naidu v. Jagannath) where the Supreme Court
has observed that the principle of finality of litigation is inapplicable if it is evident
that it results in undeserving benefits being obtained by a dishonest litigant; that a
person who comes to court must come with clear hands. On the duty of court to
come down heavily if forum-shopping is perceived, the defendants place the
judgments reported at MANU/SC/0294/1998 : (1998) 4 SCC 577 (Chetak
Construction Ltd. v. Om Prakash) and MANU/SC/8375/2008 : (2009) 2 SCC 784
(Tamilnad Mercantile Bank Shareholders Welfare Association (2) v. S.C. Sekar).
23. The defendants emphasise that within days of the plaintiff agreeing to the second
defendant using "Putzmeister" as part of its name, the authorised capital of the
second defendant joint venture company was increased to Rs. 8 crore pursuant to a
resolution at a general meeting held on January 24, 2005. The name was made
available by the Registrar of Companies to the second defendant on February 7,
2005. Form No. 5 relating to the increased authorised capital of the second defendant
was filed with the Registrar of Companies on February 17, 2005. By an electronic
mail message of March 9, 2005, the Indian promoters suggested to the plaintiff that
the increase in the share capital of the joint venture company should be made at the
commencement of the succeeding financial year. The letter proceeded to record that
in the first phase the plaintiff could increase its shareholding in the joint venture
company to 65 per cent of the paid up capital of such company. By a communication
of April 5, 2005 the Indian promoters requested for remittance of about Rs. 1.46
crore by way of subscription money for the plaintiff's stake in the Indian company to
be taken to 65 per cent of its paid up capital. On April 24, 2005 a fresh certificate of
incorporation consequent on change of name was issued to the second defendant
integrating "Putzmeister" as part of its name. The defendants complain that on or
about June 14, 2005 the plaintiff caused a company by the name of Dynajet
Machinery India Pvt. Ltd. to be incorporated as its wholly owned subsidiary in this
country. This, the defendants suggest, was in violation of Press Note No. 1 of the
2005 series issued by the Ministry of Commerce and Industry of the Government of
India. By the end of June, 2005 the plaintiff sought to terminate the second joint
venture agreement and dissociate itself from the second defendant company. The

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 defendants show that even after the termination, the plaintiff issued a letter on
November 9, 2005 referring to the second defendant as the joint venture company
and staking a claim therein. The defendants rely on another communication of
December 13, 2005 where the second defendant is referred to as "our JV company in
India."
24. It was only by a letter of March 8, 2006 that the plaintiff sought the deletion of
the word "Putzmeister" from the second defendant's name. By April, 2006, the second
defendant at the behest of the Indian promoters filed a petition under Article 226 of
the Constitution of India before the Delhi High Court alleging inaction on the part of
the Reserve Bank of India and other authorities in respect of the alleged violation of
Press Note No. 1 of the 2005 series by the plaintiff. In June, 2006 the disputes
between the plaintiff and its Indian partners were referred to arbitration by the Indian
partners. On or about June 12, 2006 the plaintiff transferred its entire shareholding in
the second defendant to an outsider. The transferee applied for registration of the
transfer in July, 2006 which the board of directors of the second defendant rejected.
The transferee applied before the Company Law Board for rectification of the share
register of the second defendant company to record the transfer of the shares. In
June, 2007 such application was rejected and an appeal therefrom is pending before
the Goa Bench of the Bombay High Court. In April, 2007 the Government of India
found that there existed a prima facie case of violation of Press Note 1 of the 2005
series under the foreign direct investment policy and requested the Reserve Bank to
take appropriate action under the provisions of the Foreign Exchange Maintenance
Act, 1999. The Government's letter of April 2, 2007 was challenged by the plaintiff in
the Delhi High Court and on July 1, 2008 the writ petition was dismissed with costs
assessed at Rs. 1 lakh. The second defendant's writ petition complaining of inaction
on the part of Reserve Bank and other authorities despite the alleged violation of the
said Press Note by the plaintiff was disposed of in view of the government letter of
April 2, 2007.
25. The plaintiff has cited judgments reported at MANU/SC/0054/1950 : AIR 1953 SC
472 (Chittaranjan Mukherji v. Barhoo Mahto) MANU/MH/0112/2000 : AIR 2000 Bom
161 (Crescent Petroleum Ltd. v. M.V. "Monchegorsk") and AIR 1942 Lah 119 (Mt.
Sharbati Devi v. Kali Pershad) to offset the defendants' submission that the plaintiff's
interlocutory applications have been rendered liable to be dismissed on account of
the plaintiff's conduct. In Barhoo Mahto the defendant had obtained an advantage and
had thus evinced a desire that the suit be carried forward. It was in such
circumstances that it was held that a defendant who had obtained a beneficial order
could not question the propriety of the suit thereafter. In Crescent Petroleum Ltd. the
Court cautioned that the power of dismissal for suppression should be exercised with
prudence and applied only after assessing the extent of concealment of material facts.
In Mt. Sharbati Devi the Court attempted to define the expression "abuse of the
process of the Court" and opined that a person who brings himself within the terms
of a statute is not to be deprived of a right conferred by that statute on "so
treacherous a ground of decision as an abuse of the process of the Court."
26. The Barhoo Mahto dictum is inapplicable in the present scenario. The defendant
in that case had virtually waived his objection as to territorial jurisdiction by
consenting to an order by which solicitors of the parties were appointed joint
receivers to collect and hold a sum due from a third party to the partnership firm that
was the subject-matter of the suit. To begin with, the defendants here have not
sought a dismissal of the suit or questioned this Court's authority to receive it; they
cite the plaintiff's conduct to resist the further orders that the plaintiff seeks. Further,

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 these defendants did not obtain any advantage, in the sense that the word is to be
understood in the context of Barhoo Mahto, by the order dated September 28, 2007
being modified on October 8, 2007. Doubtless, these defendants resisted the
continuance of the subsisting order when the matter was taken up on October 8,
2007 and, as a consequence of such opposition, the order was continued in a reduced
form. It can scarcely be said that the defendants contributed to the progress of the
suit by opposing the continuance of the interim order; on the contrary, they
questioned the propriety of the order that had been made.
27. There is, undoubtedly, more than a mere technical distinction between a suit for
alleged passing off and one for alleged infringement of a trademark. There is also an
additional party in this suit. The first defendant herein, which had not been
impleaded in the previous suit in Goa, has not been brought in for ornamental
purpose or to effect a cosmetic change in the array of parties in an attempt to
preempt a likely objection under Section 10 of the Code. The grievance against the
first defendant appears to be real and not contrived. Yet, it is equally apparent that
the subject matter of this suit has little connection with this Court. Since the first
defendant has not been sued in this Court on the basis of it carrying on any business
within jurisdiction, there is no reason to believe that even if a second suit was
necessary upon the plaintiff obtaining registration of the word mark "Putzmeister,"
the subsequent suit could not have been instituted in Goa. There has been no
plausible explanation forthcoming from the plaintiff as to why it chose this Court and
not Goa or Pune or Bombay or even Delhi. There is considerable basis to the
defendants' suspicion that the plaintiff travelled to Calcutta because it fancied its
chances of obtaining an ex parte order in this Court. At the same time, and
notwithstanding the averments in the defendants' petition under Section 10 of the
Code which has now been rendered infructuous, the defendants have not applied for
revocation of the leave granted under Clause 12 of the Letters Patent either on the
ground of lack of jurisdiction or on account of forum non conveniens. The defendants
have merely questioned the propriety of the plaintiff bringing the subsequent suit in
this Court and have insinuated that the object was to obtain an ex parte order which
had, in substance, been declined by the Goa court. The defendants' objection to the
plaintiff's interlocutory petitions on such ground is now considerably diluted since the
court did not altogether vacate the ex parte order when such objection was, or ought
to have been, canvassed at the hearing on October 8, 2007. At best, the perceived
impropriety of the plaintiff in bringing the subsequent suit in this Court may be one
of the factors in the ultimate analysis here but it cannot be the overwhelming factor
any more.
28. It is evident from the plaintiff's stand, both in the Goa suit and its first petition
here, that the permission that it gave to the second defendant to use "Putzmeister" as
part of its name was not out of any compulsion under any agreement. In a sense it is
a stand-alone permission, though the relationship between the parties cannot be lost
sight of. There is no doubt that the plaintiff allowed the second defendant the use of
its mark "Putzmeister" as part of its corporate name as the second defendant was to
be the joint venture company which was to come ultimately under the control of the
plaintiff. Yet it was the plaintiff which spurned the Indian promoters' (and the second
defendant's) offer to subscribe to additional shares in the joint venture company and
it was also the plaintiff's unilateral decision to disgorge its shareholding in such
company. It is understandable that the permission was given in contemplation of the
joint venture progressing and the plaintiff coming in majority control of the joint
venture company. But as it stands today, the plaintiff appears to have relinquished its
right to control the joint venture company and there is a prima facie finding of the

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 violation of Press Note No. 1 of the 2005 series by the plaintiff in abandoning the
joint venture. The plaintiff's writ petition challenging such finding has been dismissed
by the Delhi High Court. There has been no attempt by the plaintiff to explain its
conduct qua the joint venture. The plaintiff does not allege that the Indian promoters
had made it too hot for the plaintiff to remain on board. The plaintiff does not seek to
justify its refusal to subscribe to the further shares in the joint venture company or
ascribe any ill motive to the Indian promoters. Such aspect of the matter has been
completely glossed over by the plaintiff; as if the same is utterly irrelevant in the
context of the plaintiff's assertion of a statutory right.
2 9 . It may have been different if the plaintiff had been eased out of the second
defendant company after having authorized it to use the mark "Putzmeister" as part of
its corporate name. But the plaintiff brings nothing to bear on its volte face within a
period of less than six months in the first half of 2005. The second defendant already
had a part of the plaintiff in its original name at the time of its incorporation. The
plaintiff desired that the joint venture vehicle carry in its name the entirety of the
word mark that was then pending registration in India. It was a big give and reflected
the quality of the relationship between the plaintiff and its Indian partners at the
time. Within a month of the plaintiff's permission, the second defendant increased its
authorised capital in obvious contemplation of a further issue of shares therein. The
plaintiff has pointed to no dissent on its part when the Indian promoters informed the
plaintiff that the subscription in further shares would come about in the beginning of
April, 2005 or even when the plaintiff was invited to subscribe to further shares in the
second defendant. Yet, over the next two months the plaintiff floated an altogether
different Indian subsidiary and virtually abandoned the joint venture of which the
second defendant was born. There may have been good reason for the plaintiff doing
as it did, but it was for the plaintiff to bring the reasons to the fore. The plaintiff
seeks an equitable relief at an interlocutory stage; it has to dispel doubts as to its
bonafides and demonstrate that it did not act unfairly in the lead-up to the institution
of the suit.
30. Clause 18 of the second joint venture agreement did not oblige the plaintiff to
allow the joint venture company to use the mark "Putzmeister" as part of its
corporate name; such Clause only provided that the plaintiff would allow and
authorise the joint venture vehicle (then known as Putz Pumps (India) Pvt. Ltd) to
use the trademark of the plaintiff on all products manufactured in India under such
agreement. Clause 18.1 of such agreement that gave the Indian entity such rights and
contained the rider that it would be entitled to use the plaintiff's logo and trademark
"for a period of two years from the date on which the PM shareholding in the PPI
stands reduced below 26% of the issued shares" would, therefore, not be applicable
since - on the plaintiff's showing at paragraph 11 of the Goa plaint and at paragraph
29 of the petition relating to GA No. 3930 of 2007 - the right to use the mark
"Putzmeister" as part of its corporate name was obtained by the second defendant
otherwise than under the second joint venture agreement. The right conferred on the
second defendant under Clause 18 of the second joint venture agreement came with a
condition that such right would be extinguished upon the expiry of two years of the
plaintiff's shareholding in the joint venture company dropping below 26 per cent of
its paid up capital. The plaintiff's permission to the second defendant to use the mark
"Putzmeister" as part of its corporate name did not come with any express condition.
31. On a combined effect of these factors operating against the plaintiff, the plaintiff
would not be entitled to any more order than the order subsisting in its favour. The
order dated September 28, 2007 as modified and continued by the order dated

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 October 8, 2007 is confirmed. In view of the defendants not seriously opposing the
injunction in respect of the "PM" logo and the injunction restraining the first
defendant from using the word mark "Putzmeister" in any manner or form, such
injunction will continue. The second defendant will, however, be free to use
"Putzmeister" as part of its corporate name without seeking to suggest any continued
association with the plaintiff.
32. The views expressed here are prima facie as is wont at the interlocutory stage
and in the context of the petitions that have been considered. The plaintiff will be
free to lead such evidence as may be available to it to seek the entirety of the reliefs
claimed at the trial.
33. GA No. 3930 of 2007 is allowed in part. GA No. 3937 of 2007 is dismissed as
having become infructuous upon the plaintiff having withdrawn the Goa suit. GA No.
3961 of 2007 is disposed of without any order. GA No. 1393 of 2008 is adjourned
sine die with liberty to the defendants to mention the matter to be enlisted after the
conclusion of the rectification proceedings before the Intellectual Property Appellate
Tribunal.
34. Urgent certified photocopies of this judgment, if applied for, be supplied to the
parties subject to compliance with all requisite formalities.

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