OSA/30/2003 of MRS.J.ZEENETH BIVI Vs M.KHADER IBRAHIM on 24 December 2003

1. M.Khader Ibrahim2. M.Raja Mohamed3. M.Asi Mohamed4. S.Rahila Bivi5. A.Zaithoon Bivi6. S.Mohamed Ismail7. R.Asha Banu8. M.Zahira Banu9. M.Parveen Roja10.S.Sakkarai Mohamed11.J.Rahmath12.S.Raja Rashool13.M.Roja Mohamedrep. by his son, Mr.R.Noorul Amin ... Respondents O.S.A.Nos.34 to 37 of 2003:

Mrs.J.Zeenath Bivi ... Apellant.

vs.

1. N.V.K.M.Khader Ibrahim2. N.V.K.M.Raja Mohamed3. N.V.K.M.Asi Mohamed

4. N.V.K.M.Roja Mohamed

5. S.Rahila Bivi6. A.Zaithoon Bivi7. S.Mohamed Ismail8. A.Asha Banu9. M.Zahira Banu10.M.Parveen Roja11.S.Sakkarai Mohamed12.Rahamath Jinnah13.S.Raja Razhool Mohamed14.M/s.N.V.K.Mohammed Sultan Rowther & Sons,a firm being rep. by its Joint ManagingPartner, N.V.K.M.Raja Mohammed, havinghis office at No.95, Market Road,Dindigul 624 001, Dindigul Dist.,Tamil Nadu.

... Respondents.

O.S.As. filed against the common order dated 31.12.2002 madein O. A.Nos.444 to 447 and 730 to 733 of 2002 in C.S.Nos.455 and 727 of 2002respectively on the file of this Court.

!For appellant : Mr.G.Masilamani, Sr.counselfor Mr.A.Prabhakara Reddy.

^For respondents : Mr.M.K.Rao, forMr.S.Kanniah for R2 to R14Mr.P.S.Ganesh forM/s.Kuriyan & Associates for R1.:JUDGMENT

N.V.BALASUBRAMANIAN,J.

The above O.S.A. Nos.30 to 37 of 2003 are preferred against acommon order passed in O.A.Nos.730 to 733 of 2002 in C.S.No.727 of 2002 andO.A.Nos.444 to 447 of 2002 in C.S.No.455 of 2002 on the file of this Court.There are two suits filed one by the appellant herein in C.S.No.727 of 2002,and another by the respondents herein in C.S.No.455 of 2002. Both the partiessought for interim injunction in their pending suits restraining the otherparty from infringing trademark ROJA or RAJA, from infringing copyright whichthe respective parties have in the artistic work contained in their registeredcopyright, from manufacturing, marketing, selling or advertising or packing inrespect of betel nut/supari or any kind or its allied products in the courseof business using the trademark ROJA or ROSE or using the trading style withthe initial N.V.K.M. or claiming the source or origin of business and againstthe passing off action.

2. All the eight petitions were considered together by a learned Single Judge of this Court and the learned Single Judge, by commonorder passed on 31.12.2002, held that the respondents herein have establishedprima facie case and the balance of convenience lies also in favour of therespondents herein. Learned Judge also held that the parties are jointproprietors of the registered trademarks and they are entitled to use thetrademarks, ROJA and RAJA for the purpose of manufacturing and selling thescented betel nuts and no individual joint proprietor has any right to use theregistered trademarks. Learned Judge further held that if anyone of the jointproprietors is not willing to join the majority of the joint proprietors, thenit will be open to the majority of the joint proprietors to make use of theregistered trademarks and the trading style and they should render a true andproper account once in a month to the other joint proprietor who is unwillingto join the trade. Learned Judge held that that this arrangement shouldcontinue in force till the disposal of rectification applications filed oneither side. It is against this common order, the present appeals have beenpreferred.

3. A Bench of this Court admitted the appeals and ordered

3. A Bench of this Court admitted the appeals and ordered status quo on 31.1.2003. The appellant is the defendant in the suit, C.S.No.455 of 2002 (hereinafter referred to as the appellant, Zeenath Bivi) and therespondents in the appeal are plaintiffs in C.S.No.455 of 2002 (referred tohereinafter as the respondents/plaintiffs).

4. It is a dispute arising between the members of a family as to who is entitled to use the trademarks ROJA or RAJA in the manufacture ofbetel nut/supari. The brief facts necessary for the consideration of theappeals are that somewhere in 1942, one N.V.K.Mohamed Sultan Rowther started aproprietary concern in the name and style, N.V.K. Mohamed Sultan Rowther andSons for the manufacture of scented betel nuts using the trademarks, ROJA,RAJA and KERA. On 22.1.1946 N.V.K. Mohamed Sultan Rowther obtained theregistration of the trademark ROJA and he was using the trademark ROJA in themanufacture and marketing of the scented betel nuts. N.V.K. Mohamed SultanRowther started his business in Dindigul, a town in the State of Tamil Naduand slowly the business developed. He formed a partnership firm on 1.4.1966by making his sons and daughters and also his brother-in-law as partners ofthe firm. At the time of formation of the partnership firm, the appellantZeenath Bivi was a minor and she was admitted to the benefit of thepartnership and her interest was taken care of by the second plaintiff inC.S.No.455 of 2002. On 18.7.1966 N.V.K.Mohamed Sultan Rowther and his sonsand daughters applied to the Trademark Registry for recording the names ofsons and daughters as subsequent proprietors by virtue of the deed ofpartnership dated 1.4.1966 and on 30.7.1966 the sons and the daughters ofMohamed Sultan Rowther were brought on record as subsequent proprietors of thetrademark. On 29.10.1966 N.V.K.Mohamed Sultan Rowther died. The partnershipconstituted on 1.4.1966 was reconstituted between 1966 and 1986 and it is notnecessary to refer to the reconstitution of the partnership for the purpose ofconsidering the points that arise in the appeals.

5. On 1.1.1984 the joint proprietors entered into a preincorporation agreement to convert the partnership firm into a privatelimited company under the provisions of the Companies Act. On 12.7.1984 N.V.

K.M. and Sons (P) Ltd. came to be incorporated and on the same day an agreement was entered into among the proprietors to enable the company toexploit the trademarks for and on behalf of all the joint proprietors for aperiod of five years. On 24.9.1986 a supplementary agreement was entered intoamong the joint-proprietors as one of the joint proprietors, by name, S.AmeenBibi died on 23.9.1986 and her legal heirs and other co-owners were desirousof permitting the user of the trademarks on payment of royalty on sales ofscented betel nuts. It is necessary to mention here that in the supplementaryagreement the user period of five years provided in the user agreement dated12.7.1984 was not altered. From 1986 to 1992 the appellant Zeenath Bivi issaid to be the sole agent of N.V.K.M. & Sons (P) Ltd. for the City ofChennai. On 14.3.1992 the appellant Zeenath Bivi issued a cease and desistnotice to the company with copies marked to the jointproprietors stating thatthe period of the user agreement dated 24.9.19 86 expired on 23.9.1991 and theuser of the trademarks in question on or after 23.9.1991 was illegal.

6. On 30.11.1992 Zeenath Bivi, the appellant herein, filed an

6. On 30.11.1992 Zeenath Bivi, the appellant herein, filed an earlier suit in C.S.No.1577 of 1992 on the file of this Court challenging theuser of trademarks by the N.V.K.M.& Sons P.Ltd. company. She also sought foran order of interim injunction in O.A.No.961 of 1992 restraining the companyfrom manufacturing, marketing, dealing, supplying and selling scented betelnuts and tobacco under the trademarks, ROJA, RAJA and KERA. She filed anotherapplication in O.A.No.962 of 1 992 for the appointment of a Court Receiver totake charge and collect amounts from the market, the dealers, distributors,etc. On 8.2.199 5 Zeenath Bivi and her children filed applications before theRegistrar of Trademarks for registration of the trademark ROJA in their namesexclusively, and it is stated in the applications that they have been usingthe same from 1934 and independently from 1.4.1993. Subsequently on 5.7.1995a learned Judge of this Court has passed an order in O.A.Nos.961 and 962 of1992 dismissing the applications holding that it would not be proper on thepart of the Court to grant the relief of interim injunction restraining thecompany from using the trademarks or to appoint a receiver. On 28.8.1995 theappellant Zeenath Bivi sent a notice to the rest of the joint proprietorsdissolving the partnership firm and questioning their right to use thetrademarks. She has also stated in the notice that the High Court held thatother co-owners are not entitled to efface the right of the appellant ZeenathBivi as a co-owner and she started to use the trademark belonging to all thejoint owners. On 11.9.1995 the second plaintiff has sent a reply on behalf ofjoint proprietors informing that the partnership business has already beendissolved and that the illegal act of using the trademark exclusively by theappellant Zeenath Bivi would be defended properly.

7. In March, 1996 the company filed an independent suit against the appellant Zeenath Bivi in O.S.No.124 of 1996 on the file ofDistrict Munsif, Dindigul, which was later on transferred to this Court andrenumbered as C.S.No.688 of 1996, praying for permanent injunction restrainingher from doing business in scented betel nuts in the same pattern of thecompany. On 6.2.1996 the appellant Zeenath Bivi filed eight originalpetitions before this Court for rectification seeking to remove the names ofother joint proprietors and to retain the registration of trademarks in herindividual name. It is stated that in March, 1996 paper publications were made by N.V.K.M. & Sons (P) Ltd. calling for applications from the willingpersons to act as its agents. On 24.3.1996 an advertisement was effected bythe appellant Zeenath Bivi refuting the contents of the advertisement given onbehalf of the company. It is also relevant to notice here that in the suitfiled by the appellant Zeenath Bivi in C.S.No.1577 of 1992 the respondentsherein were made parties as defendants and subsequently she made anendorsement giving up them stating that no relief was prayed against them.

8. On 5.2.1998 the appellant Zeenath Bivi filed six

applications seeking to register the trademark ROJA in her name claimingindependent right over the trademark. An application in I.A.No.1034 of 1998was taken out by the firm, N.V.K.M. & Sons represented by the secondplaintiff in C.S.No.688 of 1996 to implead the firm as second plaintiff in thesuit and that application was dismissed on 24.3.1998. It is stated that afterthe order of dismissal passed on 24.3.1998, on 13.4.1998 the partnership firmpaid the renewal fees for the its registration for the period from 1994 to1998. An appeal in O.S.A.No.64 of 1998 was preferred against the order passedin I.A.No.1034 of 199 8 and that appeal was also dismissed on 22.4.1998. Itis further stated that on 17.11.2000 the company as well as the firm jointlyfiled O.S.No.7973 of 2000 on the file of City Civil Court, Chennai against theappellant Zeenath Bivi praying for permanent injunction and also for damagesand an interim injunction was gr anted by the City Civil Court and against theorder of interim injunction an appeal was filed before the City Civil Court,Chennai in C.M.A.No.21 of 2001. It is stated on 23.2.2001 that C.M.A. wasallowed. On 2.3.2001 a learned Judge of this Court passed an order decreeingthe suit in C.S.No.1577 of 1992 filed by the appellant Zeenath Bivi anddismissing the the suit, C.S.No.688 of 1998 filed by the company. On14.5.2001 a C.R.P. No.1541 of 2001 was filed on the file of this Courtagainst the order passed in C.M.A.No.21 of 2001. Similarly the company filedtwo appeals in O.S.A.Nos.87 and 88 of 2001. These two appeals along with C.R.P.No.1541 of 2001 were taken up by a Bench of this Court and this Court, byorder dated 14.2.2002, dismissed O.S.A.Nos.87 and 88 of 2001 filed against thejudgment and decree in C.S.No.1577 of 1992 as well as C.S.No.688 of 1996.Learned Judges also dismissed the C.R.P.No.15 41 of 2001 which was filedagainst the order made in C.M.A.No.21 of 2 001. The Company carried thematter in appeal before the Supreme Court and the Supreme Court by order dated8.4.2002 dismissed the Special Leave Petitions filed against the judgment anddecree dated 14.2.2 002 made in O.S.A.Nos.87 and 88 of 2001. The SupremeCourt ordered notice in S.L.P.No.6803 of 2002 filed against the order made inC.R.P.No.1541 of 2001. The Supreme Court, by order dated 2.12.2002, disposedof S.L.P.No.6803 of 2002 with the following observation:- "whether the finding or observation of the High Court as to existence of thefirm or otherwise could be traced only to proceeding in C.R. P.No.1541/2001or otherwise in OSA.Nos.87-88/2001 could be examined by the trial Court whiledisposing of the suit pending before it and depending upon its finding on thisaspect give appropriate finding as to existence or otherwise of the firm".

9. On 11.5.2002 the joint proprietors issued a notice through their counsel calling upon the appellant Zeenath Bivi to join them for jointexploitation of the trademarks on four conditions including the condition topay to the joint proprietors a sum of Rs.75 lakhs being the approximate

profit/benefit gained by the appellant Zeenath Bivi. Learned counsel for theappellant relied upon some portion of the said notice and and we feel that itwill be advantageous to refer to what is stated in the notice itself:-"Our clients who are all joint proprietors and whose names areenumerated in para 1 above, propose to carry on business in betel nut goodsfalling in clause 31 by using the abovementioned registered trademarks,amongst others, under the trading style, 'N.V.K.M.& Sons', and/ or'N.V.K.Mohamed Sultan Rowther & Sons' and/or 'Roja Betelnut ManufacturingCompany' ".

10. On 22.6.2002 the appellant Zeenath Bivi sent a reply notice through her counsel refusing to accept the terms of the notice. On24.6 .2002 O.P.Nos.406 to 411 of 2002 were filed on the file of this Courtagainst the appellant Zeenath Bivi by other joint proprietors seeking forrectification of the register by removing the name of the appellant ZeenathBivi as one of the proprietors in respect of the registered trademarks. On8.7.2002 the respondents herein and the unregistered partnership firm filed asuit in C.S.No.455 of 2002 against the appellant Zeenath Bivi praying forpermanent injunction restraining her from using the trademarks, fromcommitting infringement of the copyright and from manufacturing, marketing,selling or advertising or packing in respect of betel nut/supari of any kindor its allied products in the course of business using the trademark ROJA orROSE or or any other trademark phonetically and deceptively similar to thetrademark ROJA and from using the trading style with the initial N.V.K.M. andalso for damages of Rs.75 lakhs. They also filed interlocutory applicationsin O.A.Nos.444 to 447 of 2002. In September, 2002 the appellant Zeenath Bivialso filed a suit in C.S.No.727 of 2002 against other joint proprietors alongwith O.A.Nos.730 to 733 of 2002 claiming almost the similar reliefs as claimedin C.S.No.455 of 2002. On 31.12.2002 a common order was passed in all theapplications and against that common order, the present appeals have beenpreferred. In the appeals preferred by Zeenath Bivi, it is stated, on31.1.2003 status quo was ordered and it is not necessary to refer to variousinterim orders passed in the appeals as we have heard and are deciding theappeals on merits.

11. Learned Single Judge while passing the common order in O.A.Nos.444 to 447 and 730 to 733 of 2002 have framed the following points forconsideration:

1) Whether the plaintiffs in C.S.No.455 of 2002 have got a prima faciecase and the balance of convenience is in their favour?2) Whether the defendant in C.S.No.455 of 2002 has made out a primafacie case and the balance of convenience is in her favour?

3. To what relief?

12. Learned Single Judge held that there is no dispute that the plaintiffs 1 to 13 and the defendant are joint proprietors of thetrademarks. The appellant Zeenath Bivi filed O.P.Nos.104 to 111 of 1996against other joint proprietors for rectification of the register by removingthe names of other joint proprietors and enter her name as the sole proprietorin respect of the registered trademarks. Learned Single Judge held thatsimply because the appellant Zeenath Bivi used the trademarks for seven years

it cannot be automatically stated that the joint proprietors would be deemedto have lost their right or they have abandoned their right. Learned SingleJudge also held that there is absolutely no evidence to come to the conclusionthat the joint proprietors have virtually given away their right and theycould not claim the right in future. Learned Single Judge also held that whenthe parties are joint proprietors of the registered trademarks, the appellantZeenath Bivi has no right whatsoever to use the trademarks exclusively for herown benefit and the use, if any, made by her would be for the benefit of allthe joint proprietors. Learned Single Judge rejected the submission that thesuit filed by the respondents herein is barred by limitation and held that thequestion whether the suit is barred by time or not is a matter that can beconsidered only in the course of trial on the basis of evidence to be adducedby the parties. Learned Single Judge, after noticing the decision of theDivision Bench in O.S.A.Nos.87 and 88 of 2001, held that the respondents havecome forward with the suit on the ground that each one of them have the rightto use the trademarks. Learned Single Judge has taken into account the publicinterest involved in the matter of trademarks. He also held that theappellant Zeenath Bivi has not only misappropriated the trademarks for her ownindependent use, but also misappropriated the trading style adopting the name,N.V.K.M.Traders, thereby rendering the deception practised upon the publiccomplete and absolute. Learned Single Judge held that the appellant ZeenathBivi has no background in the manufacture of betel nuts according to know-howand standards of the joint proprietors who have been actively associated withthe manufacture of the goods for decades as she is a housewife without anyformal education. Learned Single Judge ultimately held that neither therespondents, nor the appellant could claim exclusive right to use thetrademarks and the exclusive use of the trademarks by the appellant ZeenathBivi is impermissible in law and it could be construed as one done for thebenefit of all the joint proprietors. He therefore held that the respondents/plaintiffs have made out a prima facie case and the balance of convenience isin favour of the joint proprietors and not in favour of the appellant ZeenathBivi alone. He ultimately held that till the disposal of rectificationapplications filed by either side no individual joint proprietor has any rightto use the registered trademarks for personal benefit and the trademarksshould be used by the joint proprietors and if any one of the jointproprietors is not willing to join with the majority of the joint proprietors,then it would be open to the majority joint proprietors to use the trademarkson the same trading style and they should render a true and proper accountonce in a month to the other unwilling joint proprietor. It is against thecommon order, the present appeals have been filed.

13. We heard Mr.G.Masilamani, learned senior counsel for the appellant Zeenath Bivi and Mr.M.K.Rao, learned counsel for the respondents.Both of them have filed written arguments.

14. Mr.G.Masilamani, learned senior counsel submitted that

the appellant Zeenath Bivi is the sole proprietor of the trademarks and thefirm was dissolved and converted into a company. He referred to the useragreement dated 12.7.1984 and submitted that it expired on 12.7 .1989 andthereafter the company could not exploit the trademarks after 12.7.1989. Hesubmitted that the trademarks were not used by the joint proprietors after

12.7.1989. He referred to the provisions of section 46 of the Trade andMerchandise Marks Act, 1958 (hereinafter referred to as 'Trademarks Act') andsubmitt ed that from the date of expiry of the user agreement five years andone month period has already expired and other joint proprietors have not usedthe trademarks and hence, the appellant has taken appropriate action for usingthe trademarks. He submitted that except the appellant, no other joint ownershad used the trademarks and the user of the trademarks by the company was notproper and would not enure to the benefit of the respondents. He submittedthat after 23.9.1991 no one has used the same except the appellant andreferring to the letters dated 28.8.1995 and 27.10.1995, he submitted that theappellant has openly declared that she was using all the trademarks from 1995when she launched business and she was exercising her legal rights from theyear 1995 till the institution of the suit by the respondents in July, 2002and the joint proprietors had not questioned the right of user by theappellant. He also referred to the Original petition filed for rectificationand submitted that the appellant applied for registration of trademarks in hername. He submitted that the user by the appellant is not for the benefit ofall the joint owners, nor is it a case of the coowners that the benefitderived by the appellant was divided among others. He submitted that theappellant continued to use the trademarks from 1995 and she has become theexclusive user of the trademarks. He submitted that since other joint ownershave lost their right in the trademarks due to non-user by them, in so far asother joint proprietors are concerned, the provisions of section 24 of theTrademarks Act do not come to play and the user by the appellant is bona fideand open against other co-owners from 1995 and the user by the appellantcannot be construed to be for the benefit of other co-owners. He referred tothe user of the trademarks prior to 1995 and after 1995 and submitted that theappellant was not using the trademarks stealthily, but it was an open user andshe was using the trademarks bona fide after taking proper steps. He furthersubmitted that on the date when the suit was instituted, she was using thetrademarks, but, on the other hand, the co-owners have not used the trademarksbut they proposed to exploit the trademarks. He also submitted that on equityalso the appellant is entitled to succeed as the appellant has been using thetrademarks from 1995 and she has invested considerable sum of money forsetting up business and irreparable loss and injury would be caused to her ifshe is prevented from using the trademarks and if the respondents arepermitted to use the trademarks. He also submitted that the use of thetrademarks by the company is not permissible after the decision of this Courtin O.S.A.Nos.87 and 88 of 2002 which has been confirmed by the Supreme Courtand the co-owners are not doing any business and the business that isallegedly carried on by them is an illegal business. He submitted that theother co-owners have a proposal to jointly use the trademarks and if theystart a new business, the existing business carried on by the appellant wouldbe affected. He also submitted that the balance of convenience is in favourof the appellant as the business was carried on by the appellant even prior to1995 and the appellant should be allowed to continue her business and she isprepared to submit accounts and if there are profits, the appellant wouldshare the profits along with the co-owners, in case she fails in the suitfiled by her. He submitted that the appellant has come to the Court withclean hands and the respondents have come to the court with unclean hands andmade a false declaration in the Form-IIA filed for registration of the firm

Obiter dicta

wherein the date of declaration is stated to be 6.4.1998 but the period ofdeclaration is stated to be 1.4.1990 to 31.3.1991. He also referred to theplaint in O.S.No.455 of 2002 and submitted that the averments made in theplaint are incorrect and though the firm is made a formal party, the firm hadceased to exist on the incorporation of the company. He also submitted thatthe assertion that the co-owners have been using the trademarks is not correctand as far as the observation of the Bench of this Court in O.S.A.Nos.87 and88 of 2002 in paragraph-33 is concerned, his submission was that it is only anobiter dictum and there was no issue at all and it was not the subject matterof suit also. He also submitted that the question of right of the appellantto use the trademarks as against other joint proprietors did not arise forconsideration before this Court and hence, the observation does not bind theappellant. He submitted that there was no issue and there was no evidence onthis aspect also and the observation made by the Court is neither necessary,nor incidental to the main issues that arose in that appeal. He submittedthat the user by the appellant is not detrimental to other co-owners as itdoes not affect the rights of other co-owners and the observation cannot beput against the appellant at the interlocutory stage. Mr.G.Masilamani,learned senior counsel also submitted that the respondents have acted in afraudulent and mala fide manner to exploit the trademarks for themselves. Hereferred to the affidavit filed by the appellant and submitted that therespondents have committed various fraudulent acts in respect of thetrademarks. He submitted that the respondents were paying to the appellantonly a sum of Rs.25,000/- per annum as royalty when the company was doingbusiness with an annual turnover of Rs.30 crores. He submitted that therespondents have siphoned off money by floating several sister concerns likeM/s.Vaigai Trading Co. Ltd., M/s. Jaleel Traders, M/s.M.S.R.Co., M/s.RojaFinance and Investment Ltd. and M/ s.Rose Agency and thereby depriving theappellant's right over the legitimate profit which is detrimental to the rightand interest of the appellant. He further submitted that the trademarksshould be exploited by all co-owners, but such right is denied to theappellant and the finding of the learned Judge of this Court that majority cando the business if any one of the co-owners is not willing to join them is notcorrect in the case of exploitation of trademarks belonging to jointproprietors. He also referred to the conduct of the respondents and submittedthat the respondents decided to assign the trademarks in favour of the companyand according to him, the respondents have attempted to transfer thetrademarks in favour of the company. He also submitted that even thetrademark, ROJA GOLD was claimed by the respondents as belonging to thecompany which was negatived by the Division Bench of this Court. He submittedthat the act of respondents in demanding from the appellant a sum ofRs.75,00,000/- as condition precedent to admit her into the joint exploitationof the trademarks clearly shows their intention that they never intended tojoin the appellant in their association and according to him, the respondentshave acted in a fraudulent manner. He therefore submitted that the appellantwas justified in not joining the other joint proprietors for the exploitationof the trademarks. He also submitted that the case pleaded in the notice isdifferent from the case made in the affidavit filed by the respondents and theuser of the trademarks by some of the joint proprietors without the consent ofothers is illegal. He also referred to the notice dated 11.5.2002 andsubmitted that it clearly indicates the proposal of the respondents to exploit

the trademarks and it does not show that the respondents have been using thetrademarks and the respondents have not carried on any business. He submittedthat the Bench has also held that the user of the trademarks by the companywas not permissible and the benefit of the user of trademarks cannot beattributed to the respondents as their claim of user of the trademarks is notsubstantiated by law. Learned senior counsel submitted that irreparable andirrecoverable loss would be caused to the appellant if she is restrained fromcarrying on the business which she has been carrying on from 1995. Learnedsenior counsel submitted that the appellant would abide by any condition thatmay be imposed by the Court pending disposal of the appeal. He thereforesubmitted that the appellant may be allowed to use the trademarks. Inaddition to the oral arguments, learned counsel for the appellant submittedwritten arguments also. We have gone through the written arguments filed bythe learned counsel for the appellant.

15. Mr.M.K.Rao, learned counsel appearing for the respondents, on the other hand, submitted that the respondents along with theappellant are joint proprietors of the trademarks. In so far as the lawrelating to trademarks is concerned, there should be one mark, one source andone proprietor. He referred to the judgment of the Division Bench of thisCourt in O.S.A.Nos.87 and 88 of 2002 and submitted that it is well-establishedthat the rights vested with the joint owners of the trademarks can be regardedas if those rights have been vested with a single person. He also submittedthat the Division Bench has clearly held that the use of the trademarks by theappellant for her own benefit is clearly not an action in accordance with theprovisions of section 24 of the Trademarks Act. He also submitted that theDivision Bench has held that each one of the joint proprietors has the rightto file a suit if he/she is aggrieved by the exploitation of the trademarks bythe appellant for her own benefit. He submitted that on the basis of thejudgment of the Division Bench, the joint proprietors have instituted the suitin C.S.No.455 of 2002. He also submitted that the basic concept of theTrademarks Law is that unlike other forms of property or proprietary rights,the Court has to consider not only the possibility of any injury that may becaused to the proprietor, but also consider the possibility of the publicbeing injured by the use of the trademark by other party representing a falseorigin and marketing goods of substandard quality. His submission is that theappellant has not only misappropriated the trademarks for her own benefits,but also misappropriated the trading style by adopting the name NVKM Traders.According to him, the appellant has no background in the manufacture of betelnuts and she is basically a house wife without formal education of anysignificance. He submitted that the user of the trademarks by the appellanthas seriously affected the business of joint proprietors and the public arealso victims of the use of the trademarks by the appellant. He submitted thatthe appellant has not challenged the finding of the Division Bench of thisCourt in O.S.A.Nos.87 and 88 of 2002 and it is only the company that filedSpecial Leave Petition before the Supreme Court which was dismissed. Hesubmitted that in the earlier suit instituted by the appellant against thecompany, though originally joint proprietors have been impleaded as parties,they were given up on the ground that they were not necessary parties in thesuit. Learned counsel referred to the user agreement and various conditionscontained in the user agreement and submitted that the user agreement

contemplates strict and close control to be exercised by the proprietors ofthe trademarks over the activities of the company in the use of the trademarkswhich are subject matter of the appeals. He further submitted that by thereason of control exercised by the joint proprietors over the company inrespect of the use of the trademarks, the user by the company must be taken tobe the user by the joint proprietors. He further submitted that though theagreement was not registered under the provisions of sections 48 and 49 of theTrademarks Act, but the common law recognises the grant of permission byregistered proprietors of the trademarks to the company provided theregistered proprietors retained the control over the use of the trademarks bythe licensee. He therefore submitted that it cannot be contended that therewas non-user of the trademarks by the joint proprietors. He also submittedthat the period of user agreement came to an end on 12.7.1989 and even afterthe expiry of the user agreement, the company was using the trademarks as alicensee and the appellant had been receiving royalty from the company up tothe year 1993 and she was also a director of the company till 1995 and she wasa dealer of the company even after the expiry of the agreement till 1992. Healso submitted that the appellant made attempts even before the order waspronounced on 5.7.1995 in O.A.Nos.961 and 962 of 1992 in the suit filed byher, to start her own business she filed applications before the Registrar ofTrademarks for registration of her name even prior to 1995 which clearly showsthat the appellant had already decided to commence an independent business andshe took advantage of the observation made in O.A.Nos.961 and 962 of 19 92 inC.S.No.1577 of 1992. He submitted that the fact that she filed variousapplications for registration would go against her claim of proprietor of thetrademarks and the various letters issued by the appellant before the orderwas passed in O.A.Nos.961 and 962 of 1992 clearly show that the appellantdecided to start a business of her own and her statement that she was forcedto start a business on the basis of the judgment of this Court is not correct.Learned counsel submitted that even if there is siphoning off funds by way ofincorporation of company by other proprietors, that issue is not relevant inconsidering the question of grant of injunction for the use of trademarks.Learned counsel submitted that undue emphasis should not be placed on theletter of the joint proprietors wherein the advocate has stated that the jointproprietors proposed to carry on business. He submitted that the appellantwas fully aware that after the Special Leave Petition filed by the company wasdismissed on 8.4.2002 the company ceased to carry on the business and from8.4.2002 the joint proprietors have been carrying on the business in the nameand style N.V.K.M. & Sons. He further submitted that the words, "proposed tocarry on business" would really mean "continue to carry on the same business"and the words do not mean that a new bu siness was intended to be started bythe joint proprietors. Learned counsel referred to various averments made inthe plaint as well as in the affidavit. He also produced certain documents toshow that the joint proprietors were carrying on the business and he submittedthat it is incorrect to state that the business premises of the respondentswas sealed pursuant to the orders of the II Metropolitan Magistrate, Chennai.He also submitted that the claim of the appellant that the suit filed by therespondents is barred by limitation is not sustainable. He also submittedthat there is no delay at all in the institution of the suit and the appellantwas put on notice that it is impermissible for her to use the trademarks andthere is no abandonment of the trademarks by the respondents and the company

was run by the joint proprietors using the trademarks. He also submitted thatwhen the joint proprietors are closely associated with the use of trademarksin the business, it cannot be stated that there is an abandonment oftrademarks by the joint proprietors. As far as the existence of partnershipfirm is concerned, he submitted that the Supreme Court has left open thequestion to be decided by the trial Court in O.S.No.7973 of 2000. Mr.M.K.Rao,learned counsel submitted that the submission of the learned senior counselfor the appellant that on the expiry of five years and one month from the dateof expiry of the user agreement, the trademarks got lapsed is not sustainableand section 46 of the Trademarks Act does not come into operationautomatically and a case has to be made out in separate proceedings fornon-user of the trademarks. His submission is that the user by the appellantis impermissible and the conduct of the appellant clearly shows that she isdishonest and fraudulent and the fact that she was carrying on business evenafter the judgment of the Division Bench shows that she has no inclination torespect the orders of the Court. He submitted that if the appellant ispermitted to carry on the business using the trademarks, the interest of thejoint proprietors would be seriously affected and the interest of the publicwould be seriously prejudiced. He also submitted that the contention of theappellant that the joint proprietors did not commence the business is notcorrect as the documents produced clearly show that the joint proprietors havebeen carrying on the business and the auditor's report also shows the turnoverof the business of Rs.8 crores and 17 lakhs from April, 2002. He thereforesubmitted that the appellant should be restrained from carrying on thebusiness using the trademarks for the benefit of her own. He furthersubmitted that after the expiry of the user agreement on 12.7.1989 the factthat the company was carrying on the business clearly shows that all the jointproprietors have impliedly renewed the agreement and the joint proprietorsexercised overall control of the company and the joint proprietors have noobjection for the user of the trademarks by the company. He submitted thatonly in the year 1992 the appellant issued notice calling upon the company notto use the trademarks which were registered in the names of joint proprietors.He further submitted that there is no provision in the Trademarks Act whichprohibits carrying on the business on the basis of majority decision and thereis nothing illegal if the respondents carry on business for the benefit of allthe joint proprietors as the appellant is not willing to join them in thebusiness. He submitted that the joint proprietors carried on the businessthrough the company till 8.4.2002 and after that, they have been carrying onthe business and he prayed this Court to grant injunction as prayed foragainst the appellant permitting the joint proprietors to continue to use thetrademarks in the business. He has also filed written arguments and weperused the same also.

16. We have considered the submissions of Mr.G.Masilamani, learned senior counsel appearing for the appellant and Mr.M.K.Rao, learnedcounsel appearing for the respondents. Though the arguments were elaborate,the points that arise for consideration are whether the user of trademarks bythe appellant, Zeenath Bivi in her business is valid in the eye of law andwhether there should be an order of injunction either against the appellant,Zeenath Bivi or against the respondents and whether the appellant or therespondents can be permitted to carry on the business using the trademarks in question.

17. Before considering the points that arise for

question.

17. Before considering the points that arise for consideration, it is necessary to mention here certain developments that tookplace during the course of hearing of the appeals. We suggested to theparties during the hearing of the appeals whether it is possible to arrive ata compromise and evolve a workable method for carrying on the business as thequarrel is between the members of the family and in view of the fact that thetrademarks are owned by the joint proprietors and the internecine quarrelbetween them would destroy one or the other. Learned counsel appearing forboth the parties have clearly stated that in spite of their best efforts, theparties are not able to arrive at a compromise. Secondly, at the conclusionof the hearing of appeal, we directed the counsel for the respondents toproduce some evidence to show that joint proprietors have been carrying onbusiness after 8.4.2002. When the matter was listed for the production ofadditional documents as required by the Court, the first plaintiff in thesuit, C.S.No.455 of 2002 (suit filed by the joint proprietors) N.V.K.M.Khader Ibrahim entered appearance through another counsel and filed anaffidavit on 17.10.2003 to the effect that he was totally ignorant of theproceedings. He has stated that he has not given any power of attorney to anyone for the purpose of initiating legal proceedings in respect of thetrademark ROJA. The respondents were also given notice and they have filed acounter affidavit denying various allegations contained in the affidavit ofKhader Ibrahim. According to them, Khader Ibrahim participated in all earlierproceedings and he executed the power of attorney in favour of N.V.K.M.RajaMohamed who is the second plaintiff in C.S.No.455 of 2003 and the secondrespondent herein. The matter was again adjourned to 28.10.2003 and thecounsel appearing for Khader Ibrahim produced the copy of police complaintgiven by Khader Ibrahim and the copy of legal notice. Mr.M.K.Rao learnedcounsel for the respondents pointed out that in the other suit filed by theappellant in C.S.No.727 of 2002 the suit summons was served on Khader Ibrahimand he received the summons as well as the copy of the petition on 26.11.2002which shows that he was aware of the proceedings. Learned counsel appearingfor Khader Ibrahim requested time to address on merits of the case.Accordingly, the matter was adjourned and when the case was posted for hisarguments on merits of the matter, learned counsel appearing for KhaderIbrahim merely reiterated the averments contained in the affidavit filed byKhader Ibrahim. He has also stated that he is not addressing any argument onmerits of the case as his client is not willing to get himself involved in thequarrel between the family members and he wants to remain neutral in theproceedings. Since in the affidavit it is stated that N.V.K.M.Khader Ibrahimhas not executed the power of attorney, we called for the original power ofattorney and the same was produced. We also find that the original power ofattorney was produced at the time of institution of the suit. The Registry ofthis Court on the basis of the original power of attorney prima facie came tothe conclusion that there was a valid power in favour of the second respondentherein. In our view, the question whether N.V.K.M.Khader Ibrahim has validlyexecuted the power of attorney is beyond the scope of the appeals and thatquestion has to be decided either in an independent proceedings or at the timeof final hearing of the suit. Hence, we are not expressing any opinion on thequestion, as we find that the original power of attorney has been produced by

Arguments

the second respondent and it is also seen from the records that N.V.K.M.KhaderIbrahim has received suit summons in the other suit filed by the appellantherein which shows that the plea that he was not aware of the suit institutedby the respondents in C.S.No.455 of 2002 prima facie is not acceptable.However, we are not expressing any opinion on that question as the counselappearing for him has not addressed any arguments on merits of the case.

18. As far as the first submission of Mr.G.Masilamani, learned senior counsel for the appellant that there is no cause of action atall for the institution of the suit in C.S. No.455 of 2002 is concerned, wefind that the plaintiffs/respondents herein have prima facie established thatthere is a cause of action for filing the suit as it is stated by them thatthe suit itself was filed pursuant to the judgment of this Court inO.S.A.No.87 and 88 of 2002 dated 14.2.2002 where the Division Bench of thisCourt has held that the persons entitled to claim relief against Zeenath Bivi,appellant herein are the joint owners and each one of them has the right tofile suit against the appellant Zeenath Bivi if he/she is aggrieved by theexploitation of trademarks by the appellant for her own benefit. Theplaintiffs in the suit C.S.No.455 of 2002 have stated that the cause of actionhas arisen at Chennai within the jurisdiction of this Court where theappellant resides and carries on her business and when the appellant hasclaimed proprietary rights before the Registrar of Trademarks at Chennai overthe device ROJA and the expression ROJA. Therefore we are of the view thatthe plaintiffs have prima facie established the cause of action for filing thesuit arose in Chennai. Further, that question has to be gone into in detailon the basis of evidence that may be let in at the time of trial.

19. As far as the submission of Mr.G.Masilamani, learned senior counsel for the appellant that the suit is barred by limitation isconcerned, we are prima facie of the view that the decision of this Court inO.S.A.Nos.87 and 88 of 2001 holding that each one of the joint owners would beentitled to institute suit against the appellant would give rise to a cause ofaction for the respondents herein to institute the suit. Moreover, thedecision of the Supreme Court in M/s. BENGAL WATERPROOF LTD. v. M/s.BOMBAYWATERPROOF MFG. CO. (AIR 1997 S.C. 1 398) is of relevance as the SupremeCourt has held that the cause of action in a suit filed for infringement oftrademark continues to arise de die in diem when the trademark is infringed.We find that the following principles laid down by the Supreme Court wouldprima facie apply to the facts of the case and we are prima facie of the viewthat it cannot be stated that the suit is barred by limitation:-" The cause of action for filing this present second suit is the continuous and recurring infringement of plaintiff's trade mark by thedefendants continuously till the filing of the present second suit. We askedthe learned counsel for the defendants as to whether pending the suit and atpresent also the defendants are trading in the offending goods, namely,bearing the mark 'DACK BACK' and he informed us that defendants even atpresent are carrying on this business. Therefore, pending the second suit allthroughout and during the pendency of these proceedings the defendants havecarried on the business of trading in the commodity waterproof raincoats 'DACKBACK'. It is obvious that thus the alleged infringement of plaintiff's trademark ' DUCK BACK' and the alleged passing off action on the part of the

defendants in selling their goods by passing off their goods as if they wereplaintiff's goods has continued all throughout uninterrupted and in arecurring manner. It is obvious that such infringement of a registeredtrademark carried on from time to time would give a recurring cause of actionto the holder of the trademark to make a grievance about the same andsimilarly such impugned passing off actions also would give a recurring causeof action to the plaintiff to make a grievance about the same and to seekappropriate relief from the Court. It is now well settled that an action forpassing off is a common law remedy being an action in substance of deceitunder the Law of Torts. Wherever and whenever fresh deceitful act iscommitted the person deceived would naturally have a fresh cause of action inhis favour. Thus every time when a person passes off his goods as those ofanother he commits the act of such deceit. Similarly whenever and wherever aperson commits breach of a registered trade mark of another he commits arecurring act of breach of infringement of such trade mark giving a recurringand fresh cause of action at each time of such infringement to the partyaggrieved. it is difficult to agree how in such a case when in historicalpast earlier suit was disposed of as technically not maintainable in absenceof proper reliefs, for all times to come in future defendant of such a suitshould be armed with a licence to go on committing fresh acts of infringementand passing off with impunity without being subjected to any legal actionagainst such future acts."

The Supreme Court has held that the act of passing off is an act of deceit andtort every time when such tortuous act or deceit is committed by the defendantand the plaintiff would get a fresh cause of action to come to the Court byappropriate proceedings and infringement of a registered trademark would alsobe a continuing wrong so long as infringement continues.

20. Mr.G.Masilamani, learned senior counsel submitted that in the cause of action paragraph in the plaint the plaintiffs/respondentsadmitted that the appellant has been using the trademarks from 1995 and ifthat is taken into account, the suit would be barred by limitation. However,the question whether the suit is barred by limitation or not is a matter to beultimately decided at the conclusion of trial and we are of the view that theplaintiffs/respondents, on the basis of the decision of the Supreme Court inM/s.BENGAL WATERPROOF LTD. Case (AIR 1997 SC 1398), have prima facieestablished that the suit is not barred by limitation.

21. Now let us consider whether the appellant would be

justified in using the trademarks for her benefit. It is true and there isalso no dispute that the appellant Zeenath Bivi commenced her business and hasbeen carrying on her independent business from the year 1995. She has earlierfiled a suit against the company in C.S.No.1577 of 19 92 in November, 1992 andalso filed applications in O.A.Nos.961 and 962 of 1992 seeking interiminjunction and for appointment of a Court receiver and both the applicationswere rejected by this Court on 5.7.1995. After the orders were pronounced inO.A.Nos.961 and 962 of 1992 she issued a notice dated 28.8.1995 wherein shehas stated that the court held that she is one of the co-owners and otherco-owners cannot prevent her from using the trademarks for business purpose.She has also stated that the Court held that the other co-owners are not entitled to efface her right as a co-owner. She has stated that she hasissued the notice to dissolve the partnership. She has also stated that shehas been exercising her right in respect of various registered trademarksbelonging to the firm as a co-owner. In the letter dated 27.10.1995 she hasstated that she has launched her own business in supari and started using thetrademarks to ensure that at least her name is not removed from the list ofowners of the registered trademarks. Though the suit instituted by her wasdecreed and the suit filed by the company was dismissed, on appeal a DivisionBench of this Court dismissed both the appeals preferred by the companyholding that the use of the trademarks by the appellant Zeenath Bivi for herown benefit is not an action which is permissible under section 24 of theTrademarks Act.

22. The Division Bench relied upon the decision of the Supreme Court in POWER CONTROL APPLIANCES v. SUMEETH MACHINES PVT. LTD.(1994) 2 SCC 448) where the Supreme Court held as under:-" There can be only one mark, one source and one proprietor. Itcannot have two origins. Where, therefore, the first defendantrespondent hasproclaimed himself as a rival of the plaintiffs and as joint owner it isimpermissible in law. Even then, the joint proprietor must use the trademarkjointly for the benefit of all. It cannot be used in rivalry and incompetition with each other."

The Bench also held that the trademarks ROJA and RAJA were admittedlyregistered in the names of joint proprietors and they have necessarily to acttogether and for their common benefit and no one of them can act in a mannerdetrimental to the rights of the other or against the wishes of the other.Though Mr.G.Masilamani, learned senior counsel would submit that the right ofthe appellant has not been determined by the Division Bench of this Court andthe Division Bench has merely declared the law, we are prima facie of the viewthat the said observation of the Division Bench, even assuming to be an obiterdictum, cannot be overlooked or side-tracked by the appellant. The appellantZeenath Bivi against whom the observation was made has not challenged the saidobservation of the Division Bench of this Court whereas the company haspreferred a Special Leave Petition against the judgment of the Division Bench,and as a party to the judgment, we are prima facie of the view, she is boundby the judgment of the Division Bench of this Court. Though in the earliersuit and in the present suit the parties are not the same, we are prima facieof the view that the observation of the Division Bench of this Court madeagainst the appellant Zeenath Bivi would bind her as she was a party in theappeal.

23. We are of the view, it is not open to the appellant to disregard or disobey the observation made by the Division Bench of this Courton the ground that it is an obiter dictum. Apart from the decision renderedin O.S.A.Nos.87 and 88 of 2001, this Court in another unreported decision(between M/s.Shri Rajaganapathi Sewing Machine and Co. rep. by itsProprietrix Ms.S.Revathi, Salem and M/s.Radha Sewing Machine and Co.represented by its Partner R.Varadarajan, No.1, Bungalow Street, Salem-1) inL.P.A.No.116 of 1999, in which one of us was a party, by judgment dated23.4.2003, held that a joint proprietor has no right to exploit the mark for his or her own benefit to the exclusion of other owners in view of section 24of the Trademarks Act and it is implicit in section 24(2) of the Act that whena mark is jointly registered, the exploitation of the mark must only be forthe benefit of all joint proprietors of the mark and the mark may be usedjointly in relation to an article with which all of them are connected. ThisCourt also held that so long as the business was for the benefit of the jointproprietors there was no question of infringement of the mark and only whenone of them sought to carry on business from a different location and as arival, the user of the mark becomes unauthorised user and the question ofinfringement of the mark arises.

24. Learned Single Judge noticed the provisions of section 24

of the Trademarks Act and held that when the appellant and the respondents arejoint proprietors of the registered trademarks, the appellant has no rightwhatsoever to exclusively use the same and the use, if any, made by her isonly for the benefit of joint proprietors. Further, learned Single Judge alsonoticed the letter dated 11.5.2002 issued by the joint proprietors callingupon the appellant to join them in joint exploitation of the trademarks, andheld that the appellant did not respond to the call, but wanted to use thetrademarks exclusively for her own benefit. Further, learned Single Judgealso noticed that the appellant has no background in the manufacture of betelnuts as she is basically a housewife without formal education on the basis ofdeposition of her husband, Jafer Sait in C.S.No.1577 of 1992 on the file ofthis Court, wherein he has stated that the appellant has studied up to 4th or5th standard and she has not taken any active part in the business and beforetheir marriage her interest in the business was looked after by her brotherand after the marriage he was personally involved in her business. He hasalso admitted that before 19 95 his wife was not doing any business of herown.

25. The Supreme Court in POWER CONTROL APPLIANCES v. SUMEETMACHINES PVT. LTD. (1994) 2 SCC 448) laid down the following principlerelating to trademark as under:- " It is a settled principle of law relating to trademark that therecan be only one mark, one source and one proprietor. It cannot have twoorigins. Where, therefore, the first defendant-respondent has proclaimedhimself as a rival of the plaintiffs and as joint owner it is impermissible inlaw. Even then, the joint proprietors must use the trade mark jointly for thebenefit of all. It cannot be used in rivalry and in competition with eachother."

26. In CIBA LTD. v. M. RAMALINGAM (AIR 1958 Bombay 56)

Chagla,C.J., speaking for the Bench has held that the object of maintaining aTrademark Register is that the public should know whose goods they are buyingand with whom particular goods are associated and the duty of the Court is toprotect the public irrespective of what hardship or inconvenience it may causeto a particular party whose trademark is likely to deceive or cause confusion.The Bombay High Court also held that the contest is not so much between theparties to the litigation as it is a contest between the party defending his

27. House of Lords in ENO v. DUNN (118 Trademarks Cases 109)reiterated the same view as under:- " The question is one between Mr.Dunn and the public, notbetween Mr.Eno and Mr.Dunn. It is immaterial whether the proposedregistration is or is not likely to injure Mr.Eno in his trade. Equallyimmaterial, as it seems to me, is the fact that for a considerable time Mr.Eno had on the register as his trade mark the words "Fruit Salt". Mr.Eno mayhave gained some advantage to which he was not properly entitled; but that ishardly a reason for permitting Mr.Dunn to practice a deception upon thepublic."

28. The submission of Mr.G.Masilamani, learned senior counsel

is that other joint proprietors have not used the trademarks for a period offive years and one month after the expiry of the period prescribed in the useragreement and the non-user of the trademarks by other proprietors would showthat the joint proprietors have lost all their rights in the trademarks andthe appellant had started business independently using the trademarks from1995 in her own right when other joint owners disowned the trademarks. Hetherefore submitted that the user of the trademarks by the appellant from 1995is not by virtue of her right as joint proprietor but by virtue of herindependent right and she is the only proprietor of the trademarks and her useis in no way contrary to the provisions of the Trademarks Act. We are primafacie of the view that the said contention is not acceptable as it cannot besaid that the joint proprietors have not used the trademarks after the expiryof five years and one month period from the date of expiry of the useragreement and it cannot also be stated that other joint proprietors ceased tohave any interest in the trademarks in question.

29. Section 46(1) of the Trademarks Act provides for the removal from the Register of the names of registered proprietors if there isno bona fide use of trademark in relation to the goods for a period of fiveyears and one month. It is only an enabling provision enabling a party toapproach the Court or the Registrar of Trademarks for the removal of the nameof registered proprietor from the register if there is any non-use of thetrademark for a prescribed period and if there is bona fide intention not touse the trademark. The section says that it is open to the aggrieved party toestablish before the High Court or the Registrar of Trademarks that there isno intention on the part of the registered proprietor not to use the trademarkand the trademark has not been used in certain circumstances of the trade andthere was no intention to abandon the trademark or not to use the trademark inrelation to the goods to which the application relates. In other words, thenon-user for a period of five years and one month does not automaticallyrender the removal of the names of registered proprietors from the registerand the question has to be considered with reference to the non-user, theintention and the reasons for the non-user, whether bona fide or not, for overthe stipulated period.

30. The Supreme Court in HARDIE TRADING LTD. v. ADDISONS

PAINT AND CHEMICALS LTD. (2003 AIR SCW 4788) has considered the scope ofsection 46 of the Trademarks Act and held that the intention to use thetrademark required of the proprietor would include the intention to permit theuser of the trademark by the registered user. The Supreme Court also heldthat there must be evidence of abandonment and the evidence must be convincing. The Supreme Court held that the user of trademark may be otherthan physical and section 46(3) provides a special defence to the registeredproprietor and is to be inferred from the existence of special circumstances.

31. On the facts of the case, it cannot be prima facie held

Facts

that there is absolutely non-user of the trademarks by other registeredproprietors. It is evident that joint proprietors were carrying on thebusiness prior to the formation of the firm. The trademarks were used by wayof forming a firm and the business of the firm was subsequently taken over bya company and the company was permitted to use the trademarks belonging to thejoint proprietors. Even after the expiry of the period provided in the useragreement in the year 1989, the company has used the the trademarks and allthe joint proprietors including the appellant were the recipients of thebenefits by the use of trademarks by the company without any protest and itwas only in the year 1992 the appellant filed a suit against the company andthereafter the company filed a suit against the appellant. During thependency of the suits, this Court, by an interim order, permitted the companyto use the trademarks. This Court held that other joint proprietors allowedthe company to make use of the trademarks. We are therefore prima facie ofthe view that on the expiry of five years and one month from the date ofexpiry of the agreement it cannot prima facie be held that other jointproprietors have lost all their rights in the trademarks in question.Moreover, that question has to be gone into in detail in the application filedby the appellant or the respondents for the removal of the name or names ofother party in the said application.

32. We are also prima facie unable to accept the submission of Mr. G.Masilamani, learned senior counsel that since the appellant wasusing the trademarks as on the date of filing of the suit, she should bepermitted to use the trademarks pending disposal of the suit. The questionwhether the appellant can use the trademarks for her own benefit and she cancarry on the business using the trademarks without the consent of other jointproprietors was one of the issues posed for consideration before the DivisionBench of this Court in O.S.A.Nos.87 and 88 of 2001 and the Division Bench heldthat the fact that other joint proprietors have not sought for injunctionwould not disentitle them from seeking any relief against the appellant andthe licence for the user of the jointly owned marks can only be given with theconsent of all the joint owners and that is implicit in section 24 of theTrademarks Act. After considering section 24 of the Trademarks Act, the Benchheld that the user by the appellant is clearly not an action which ispermissible under section 24 of the Trademarks Act. This Court also held thatthe fact that the appellant was using the trademarks as on the date of filingthe suit is not material. The appellant has to establish in the suit filed byher that the user by her is permissible by way of leading evidence and till that is established, the observation of the Division Bench of this Court thatthe user by her is not permissible under section 24 of the Trademarks Actwould bind her, and that observation has become final as far as the appellantis concerned.

33. We are also prima facie unable to accept the submission

Ratio decidendi

of Mr.G.Masilamani, learned senior counsel that since the appellant has beenusing the trademarks on the date of institution of the suit, her right to usethe trademarks should be protected when her action is not permitted by thelaw. We hold that the action which is not permissible under the law cannot beprotected under the orders of the Court. Further, the basic principle of theTrademark Law, as already seen, is that there must be one mark, one source andone proprietor and there cannot be two origins and if both the appellant andthe respondents are allowed to market the goods manufactured by them under thesame trademark, the persons who would be really affected would be the generalpublic as the goods manufactured by them are supari and they are consumergoods consumed not only by men and women, but also by young people, andtherefore the interest of general public has to be protected.

34. As far as the other submission of Mr.G.Masilamani, learned senior counsel that the appellant has established good market anddealership, and great hardship and loss would be caused to the appellant, ifthe appellant is restrained from using the trademarks at this stage isconcerned, we have already held that the user by the appellant of thetrademarks in question is not prima facie permissible under the law. Theconduct of the appellant is also relevant in considering the question. Wehave already seen that the appellant earlier instituted a suit against thecompany and also filed a petition for injunction restraining the company fromusing the trademarks. When this Court rejected that injunction application,she issued a notice on 28.8.19 95 stating that she will be exercising herright with respect to the trademarks belonging to the firm, N.V.K.M. & Sons.The joint proprietors, by letter dated 11.9.1995 have stated that the Courthas not permitted the appellant to exercise the alleged right independent ofother co-owners. In spite of the same, the appellant reiterated that she haslaunched her own business in supari under the registered trademarks inheritedby her from her father. It is also relevant to mention here that even beforethe order of this Court dated 5.7.1995 the appellant filed application on8.2.1995 for registration of trademark ROJA in her name. She has stated inthe application for registration that she has been independently using thetrademarks from 1.4.1993 and her predecessor-in-title from 1934. Her sonshave also filed similar applications on 8.2.1995 stating that the trademarkswere used by their predecessor-in-title since 1934 and by them from 1.11.1991.Her intention to use the trademarks is evident from her application dated8.2.1995. The submission of Mr.M.K.Rao, learned counsel that the order ofthis Court rendered in O.A.Nos.961 and 962 of 1992 dated 5.7.1995 was takenadvantage of by the appellant as if the order rejecting her petition for staypermitted her to use the trademarks cannot be said to be without any force.We have already noticed that the appellant is basically a house wife and shehas no practical experience in running the business. Any permission grantedto her to run the business using the trademarks ROJA and RAJA would causeconfusion and deception in the minds of consumer-public. The other submission of Mr.M.K.Rao, learned counsel for the respondents that the appellantcontinued to carry on the business even after the judgment of this Court inO.S.A.Nos.87 and 88 of 2001 and she has no regard for the orders of the Courtcannot also stated to be without any force.

35. The submission of Mr.G.Masilamani, learned senior counsel

that the suit instituted by the respondents herein is hit by acquiescence andlaches as the respondents were aware of the user of the trademarks by theappellant from 1995 has to be examined at the time of final hearing of thesuit. We have already held that the user by the appellant is not permissibleas she is only a joint proprietor and further, in considering the question ofacquiescence the entire conduct of the parties has to be taken intoconsideration. We have already seen that there is an user agreement enteredinto on 12.7.1984 for a period of five years and even after the expiry of theperiod prescribed in the user agreement, the company was using the trademarksand only on 14.3.1992 the appellant issued a notice stating that the period ofuser agreement was for a period from 23.9.1986 to 23.9.1991. However, thestand taken by the appellant in that notice seems to be not correct as theuser agreement commenced on 12.7.1984 and ended on 12.7.1 989 and thesupplementary agreement dated 24.9.1986 was entered into as there was a merechange in the ratio of payment of royalty consequent on the death of one ofthe co-owners, but the period of user agreement was not altered and the periodof user remained the same, namely, from 12.7.1984 to 12.7.1989. It is alsoseen that till 14.3.1992 the appellant did not raise any objection against thecompany to use the trademarks and she was the recipient of the benefit of useragreement without protest. Thereafter she filed a suit against the company aswell as the joint proprietors and she sought for amendment of the plaintgiving up the names of joint proprietors from the suit and ultimately the suitfiled by her and the suit instituted by the company came to be disposed of byjudgment and decree dated 2.3.2001. During the pendency of those two suits,the appellant sought for interim injunction restraining the company from usingthe trademarks and that application came to be dismissed by order dated5.7.1995 and that order has become final as no appeal has been preferredagainst that order. Hence, the company was using the trademarks till thedisposal of the suit and thereafter appeals were preferred against thejudgment in both the suits and the appeals were heard and orders were passedon 14.2.2002. The company carried the matter to the Supreme Court by way ofSpecial Leave Petition and the Supreme Court dismissed the Special LeavePetition on 8.4.2002. Admittedly, the company used the trademarks till8.4.2002. The question then arises whether the user by the company wouldamount to user by other joint proprietors and we propose to consider thequestion later. However, for the purpose of considering the question ofacquiescence, it cannot be stated that the joint proprietors have acquiescedin the use of the trademarks by the appellant in her independent right.

36. Further, the following observation of B.N.Kirpal,J. (asHis Lordship then was) in M/s.HINDUSTAN PENCILS PVT. LTD. v. M/s. INDIASTATIONERY PRODUCTS CO. (AIR 1990 Delhi 19) is relevant for the purpose ofthis case:- " Even though there may be some doubt as to whether laches oracquiescence can deny the relief of a permanent injunction, it has been

consistently held that if the defendant acts fraudulently with the knowledgethat he is violating the plaintiff's rights then in that case, even if thereis an inordinate delay on the part of the plaintiff in taking action againstthe defendant, the relief of injunction is not denied. Where there is anhonest concurren t user by the defendant then inordinate delay or laches maydefeat the claim of damages or rendition of accounts but the relief ofinjunction should not be refused. This is so because it is the interest ofthe general public, which is the third party in such cases, which has to bekept in mind. In the case of inordinate delay or laches, as distinguishedfrom the case of an acquiescence, the main prejudice which may be caused tothe defendant is that by reason of the plaintiff not acting at an earlierpoint of time the defendant has been able to establish his business by usingthe infringing mark. Inordinate delay or laches may be there because theplaintiff may not be aware of the infringement by the defendant or theplaintiff may consider such infringement by the defendant as not being seriousenough to hurt the plaintiff's business. Nevertheless, if the court comes tothe conclusion that prejudice is likely to be caused to the general public whomay be misled in to buying the goods manufactured by the defendant thinkingthem to be the goods of the plaintiff then an injunction must be issued. TheCourt may, inappropriate cases, allow some time to the defendants to sell offtheir existing stock but an injunction should not be denied."

It is not a case where the plaintiffs/respondents herein have not taken anyaction and it is not a case where the appellant has any right to use thetrademarks independently. She used the trademarks in violation of theprovisions of Trademarks Law and there is no delay also on the part of therespondents in taking action as immediately after the judgment was pronouncedby the Division Bench, which was confirmed in appeal, the suit was filed.

37. The following observation of the Division Bench of Delhi High Court in SWARAN SINGH v. M/s. USHA INDUSTRIES (INDIA), NEW DELHI (AIR1986 Delhi 343) is also relevant:

" The effect of a registered mark is so clearly defined in theStatute as to be not capable of being misunderstood. Even if there is somedelay, the exclusive right cannot be lost. The registered mark cannot bereduced to a nullity. The principles governing other types of injunctions arenot to be readily applied to a case like the present. Of course, if it was acase of a similar mark as opposed to the same mark, the concurrent usercoupled with delay might be a ground for refusing an injunction. However,when the same mark is being used, in a sense, the public is deceived intopurchasing the defendant's goods on the belief that they are plaintiffs goods,so a registered trademark is a casualty, it is the duty of the court toprotect the registered mark. That is the whole concept of registration. So,we cannot refuse an injunction even if there is some delay especially when themark is the same. To refuse the injunction would tantamount to permit a fraudbeing practised on unwary customers. This is a matter of principle on whichthe Court cannot refuse the injunction."

38. The Supreme Court in the case of POWER CONTROL APPLIANCESv. SUMEET MACHINES PVT. LTD. (1994) 2 SCC 448) explained the meaning ofacquiescence in the matter of infringement of trademarks as under:-

"Acquiescence is one of the defences available under section30(1)(b) of the 1958 Act. Acquiescence is sitting by, when another isinvading the rights and spending money on it. It is a course of conductinconsistent with the claim for exclusive rights in a trademark, trade name,etc. It implies positive acts; not merely silence or inaction such as isinvolved in laches. 'It is important to distinguish mere negligence andacquiescence'. Acquiescence is one facet of delay. If the plaintiff stood byknowingly and let the defendants build up an important trade until it hadbecome necessary to crush it, then the plaintiffs would be stopped by theiracquiescence. If the acquiescence in the infringement amounts to consent, itwill be a complete defence. The acquiescence must be such as to lead to theinference of a licence sufficient to create a new right in the defendant."

39. Applying the principles laid down by the Supreme Court, it is not a case where the plaintiffs/respondents herein filed the suitknowing that the appellant built up a trade as the question whether theappellant would be entitled to use the trademarks was the subject matter ofconsideration before this Court in the earlier litigation. Further, it is acase where the joint proprietors have decided to use the trademarks along withthe appellant, but in spite of the same, she has been using the trademarks inviolation of law. We are also prima facie of the view that it is not a casewhere inference can be drawn that a new right has been created in favour ofthe appellant. Further, the plea of acquiescence and delay made by thelearned senior counsel can be considered in detail on the basis of evidencethat may be let in and not on the basis of affidavit and counter affidavit anddocuments produced before us. We are prima facie of the view that there is noquestion of acquiescence involved in this case.

40. We are of the view that whatever may be the justification for the appellant Zeenath Bivi in her stand of refusing to join the otherjoint proprietors for the joint exploitation, be it diversion of funds orexcise duty evasion or the attempt of the respondents to transfer thetrademarks to the company or the alleged fraudulent acts of the respondents,that would not give her right to use the trademarks exclusively for her ownbenefit in violation of the provisions of the law.

41. Learned senior counsel also relied upon various acts of respondents and then commented upon their acts stating that there issubstantial siphoning off funds which is not advantageous to the proprietorsof the trademarks. We are of the view that the contention raised by thelearned counsel for the appellant is beyond the scope of the appeals whichhave been filed against the infringement of trademarks. Further, the actscomplained of are all against the company and not against the jointproprietors and these are all matters of evidence which are to be consideredat the time of trial.

42. Further, the submission of Mr.G.Masilamani, learned senior counsel is that the joint proprietors from the beginning have decidedto assign the trademarks in favour of the company. He referred to the draftdeed of sale of trademarks in favour of the company and submitted that thereis a perpetual fraud committed by the joint proprietors and the act of joint proprietors would show that they continued to treat the company as the soleproprietor of the trademarks which is illegal and detrimental to the interestof the appellant. However, this submission is also a matter of evidence.Further, the Division Bench of this Court in O.S.A.Nos.87 and 88 of 2001 heldthat the concept of piercing the veil of company on the facts of the casecould not be invoked having regard to the conduct of the company and that ofthe joint proprietors of the trademarks.

Arguments

43. Mr.G.Masilamani, learned senior counsel also submitted that the respondents have not denied the case of mala fide and fraud raised bythe appellant. He also submitted that the respondents were paying to theappellant only a meagre sum of Rs.25,000/- per annum towards royalty whereasthe company was doing business with a turnover of more than 24 crore rupees.He referred to the auditor's report to show that there is siphoning off money.He also referred to paragraph Nos.3,4 and 6 of the additional reply affidavitfiled by the appellant in O.A.Nos.730 to 733 of 2002. Mr.M.K.Rao, learnedcounsel for the respondents, on the other hand, referred to the rejoinderaffidavit filed by the respondents. As we have already stated these are allmatters that should be gone into at the time of trial.

44. Another fact that was brought to the attention of this Court by Mr.M.K.Rao, learned counsel for the respondents is that the appellanthad instituted proceedings under the Companies Act for winding up of N.V.K.M.& Sons (P) Ltd. in C.P.No.87 of 1992 on the file of this Court on the scorethat the respondents 1 to 3 were involved in the mismanagement of funds whichwas later withdrawn. As we have stated earlier, these are all matters whichare required to be decided on the basis of evidence.

45. Learned senior counsel for the appellant also referred to the deposition of Kadher Ibrahim, first respondent herein, who was examined asD.W.2 in C.S.No.1577 of 1992 and submitted that he has stated in hisdeposition that in a food adulteration case the Kerala Court imposed fine andimprisonment on him as well as one G.Subbiayan and imposed fine on thecompany. However, it is not necessary to consider this submission, as alreadyheld by this Court in O.S.A.Nos.87 and 88 of 2001, the appellant would beentitled to have the benefit of injunction against the company and furtherthese are all matters which are to be decided on the basis of evidence and noton the basis of averments made in the affidavits by the parties. He alsosubmitted that the respondents have gone to the extent of developing atrademark, ROJA GOLD as they also claimed in O.S.A.Nos.87 and 88 of 2001 thatthe company had developed a trademark, ROJA GOLD and in the affidavit theyhave also stated that they have no objection for the company to use thetrademarks, RAJA, ROJA, KERA and ROJA GOLD. In the affidavit they have statedthat the company used the trademarks. Learned counsel also referred to thejudgment in O.S.A.Nos.87 and 88 of 2001 wherein the Division Bench of thisCourt held that the claim of the company that it developed the trademark, ROJAGOLD is not tenable and the company could not assert any right to use thetrademark ROJA GOLD and that mark is merely an extension of the registeredtrademark RAJA ( sic ROJA) and the use of that mark by the company would alsoamount to infringement of trademarks. He also submitted that the respondentshave acted fraudulently and the fraudulent intention of the respondents is

clear when they demanded a sum of Rs.75 lakhs as a precondition for theappellant to join them for joint exploitation by notice dated 11.9.1995. Healso submitted that the notice issued by the respondents was not for jointexploitation of the trademarks, but to file a suit which is not proper andjustified.

46. We are of the view that in considering the question whether the appellant should be permitted to use the trademarks in question,the right of the appellant to use the trademarks and the interest of publicare of foremost importance and since we are prima facie of the view that theuse of the trademarks by the appellant who happens to be one of jointproprietors for her own benefit is impermissible under the law and theultimate sufferer would be the public at large, the appellant is not entitled to use the trademarks inquestion. As far as various serious allegations made by the respondents areconcerned, those questions require a detailed investigation of facts and theyhave to be examined during the trial of the suit.

47. It is very well to remember that we are sitting in appeal over the order passed by the learned Judge of this Court and we would bejustified in interfering with the order of the learned Judge only if it isestablished that the learned Judge has not taken into consideration relevantfacts and the decision has been arrived at by the learned Judge taking intoconsideration irrelevant facts without evidence in support of his conclusionand the decision is perverse and not sustainable in law. But in so far as theview taken by the learned Judge about the permissibility of the appellant touse the trademarks is concerned, we find that the learned Judge has taken intoconsideration all relevant aspects of the matter and applied the law and itcannot be stated that the conclusion of the learned Judge is perverse and notsustainable on the facts of the case.

48. The next question that arises is whether the respondents should be permitted to use the trademarks during the pendency of the suit.While considering the question, it is necessary to briefly recapitulate thefacts. N.V.K.Mohamed Sultan Rowther formed a proprietary concern, called,N.V.K.Mohamed Sultan Rowther and Sons which was later converted into apartnership firm by including the sons and daughters of N.V.K.Mohamed SultanRowther. On the death of M.V.K.Mohamed Sultan Rowther, the trademarksdevolved on his sons and daughters and they continued to retain the ownershipof the trademarks with them and they carried on the business in the name andstyle, N.V.K. Mohamed Sultan Rowther & Sons till 1984 when a company called,N.v.K.Mohamed Sultan Rowther & Sons (P) Ltd. was incorporated. Though it wascontended that the respondents 1 to 4 tampered the agreement by inserting thewords, " and also to transfer the registered trademark to the proposedcompany", that question has to be decided at the time of trial of the suit.There is no dispute that the registered trademarks were not transferred to theproposed company, but the company was allowed to exploit the trademarks by theuser agreement dated 12.7.1984 for a period of five years. We have alreadyreferred to some of the terms of the agreement earlier and a reading of theagreement clearly shows that the joint proprietors had retained completecontrol and supervision over the quality, specifications of the articles to be

manufactured by the company with the direction to the company that it shouldmarket the products with a clear indication that the co-owners, namely,N.V.K.Mohamed Sultan Rowther and his sons and daughters are the proprietors ofthe trademarks. There was a further direction that the company should assistthe co-owners in protecting the right of the coowners in the marketing area ofthe goods. That agreement expired on 12.7.1989 and there was a supplementaryagreement dated 24.9.1986 as one of the co-owners passed away and her legalheirs along with other co-owners permitted the company to use the trademarkson payment of royalty for the same period as mentioned in the originalagreement dated 12.7.1984. Though the agreement was not registered as per theprovisions of section 48 of the Trademarks Act, the company continued to usethe trademarks on the same terms of the agreement stated earlier. Theappellant Zeenath Bivi received royalty from the company till 31.3.1991. Wehave already referred to the litigation instituted by the appellant againstthe company and by the company against the appellant also.

49. When the matter came before this Court, this Court in O.S.A. Nos.87 and 88 of 2001 proceeded on the basis that the agreement wasrequired to be registered under the provisions of the Trademarks Act andfollowing passages of the judgment of the Division Bench of this Court arerelevant:- " That agreement was to remain in force till 12.07.1989. Though theagreement contemplated the possibility of renewal, no renewal has beeneffected, nor was any fresh agreement executed after that date. On the 24thof September 1986 by a supplementary royalty agreement, the rate of royaltypayable for the scented betel nuts sold under the trade mark 'Roja' wasrevised under the deed, Ex.D.6, but the other terms of the user agreementremained unaltered. The user agreement, however, was not registered with theRegistrar of Trademarks and sections 48 and 49 of the Trade Marks Act, andRules 82, 83 and 88 of the Trade Mark Rules were not complied with".

xxx xxx xxx

" The user agreement which was required to be registered under theprovisions of the Trade and Merchandise Marks Act, 1958 (the Act) not havingbeen registered, the company cannot be regarded as the registered user evenduring the currency of the user agreement. Any semblance of right in thecompany to use the marks clearly came to an end when that agreement expired.The continued user of the marks clearly amounts to infringement. Thesubmission for the company that there is no infringement cannot therefore beaccepted."

50. The Court proceeded on the basis that the agreement was required to be registered under the provisions of the Trademarks Act and onthat basis, it came to the conclusion that the continued user of thetrademarks by the company was not permissible. However, it is wellsettled bythe decision of the Supreme Court in M/s. GUJARAT BOTTLING CO. LTD. v.COCA COLA COMPANY (AIR 1995 S.C. 2372) that apart from the provisionsrelating to registration of the agreement, it is permissible for theregistered proprietor of a trademark to permit a person to use his registeredtrademark and such licensing of trademark is governed by common law. The " Apart from the said provisions relating to registered user,

it is permissible for the registered proprietor of a trade mark to permit aperson to use his registered trade mark. Such licensing of trade mark isgoverned by by common law and is permissible provided (i) the licensing doesnot result in causing confusion or deception among the public; (ii) it doesnot destroy the distinctiveness of the trade mark, that is to say, the trademark, before the public eye, continues to distinguish the goods connected withthe proprietor of the mark from those connected with others; and (iii) aconnection in the course of trade consistent with the definition of trade markcontinues to exist between the goods and the proprietor of the mark. (See:P. Narayanan Law of Trade Marks and Passing Off, 4th Ed., Para 20.16.P.335).It would thus appear that use of a registered trade mark can be permitted to aregistered user in accordance with provisions of the Act and for that purposethe registered proprietor has to enter into an agreement with the proposedregistered user. The use of the trade mark can also be permitted de hors theprovisions of the Act by grant of licence by the registered proprietor to theproposed user."

51. In Narayanan on Trademarks (4th Edn. at page 334) thefollowing observation of the learned author is also relevant:

"In the case of an unregistered licensed user, if the registered proprietor retained the power to exercise sufficient control overthe use of the mark as to ensure that it would not become deceptive, and thathe exercised such control when necessary, the user of the mark by the licenseduser inured to the benefit of the proprietor and the registration cannot beattacked on the ground of non-user or deceptive use. The definition of atrade mark does not require that use of a trade mark indicate the identity ofthe proprietor or of any registered user."

52. In FATIMA TILE WORKS v. SUDARSAN TRADING COMPANY LTD.(AIR 1992 Madras 12) AR.Lakshmanan,J.(as His Lordship then was) was dealingwith the case of a licence granted by a company to use the trademark and thecompany retained the power of control over the user, and the learned Judgeheld that the user of the trademark by the licensee can legitimately be saidto be the user by the company and it cannot be said that there is non-user bythe company.

53. A similar question arose before a Division Bench of the Calcutta High Court in CYCLE CORPORATION OF INDIA LTD. v. T.I.RALEIGHINDUSTRIES PVT. LTD. (AIR 1995 Calcutta 73) where the Calcutta High Courtconsidered the provisions of section 46 of the Trademarks Act and held thatthe expression, 'by any proprietor thereof' in section 46 would mean andinclude not only the proprietor, but also any registered user and any otherbona fide authorised user. The Calcutta High Court held as under:- " In dealing with the scope of section 46 of the said Act itwas argued on behalf of the respondents, both before the trial Court as alsobefore us that removal of a mark is highly prejudicial consequence on the

registered proprietor. There is no dispute that Raleighs are the registeredproprietor. Mr.Chakraborty, the learned senior counsel for the respondentssubmits that the expression "by any proprietor thereof" should not berestricted to the user by the proprietor himself or any registered user butshould also take in its sweep a bona fide authorised user. The learned trialJudge accepted this submission as well founded to which we agree. We alsoagree with the learned trial Judge when he says that removal of trade marksamount to depriving the registered proprietor of the benefit of registrationand prejudicially affects his proprietary rights, in effect he is deprived ofhis property in the mark. The learned Judge also proceeded to observe thatLegislature did not intend the owner to be deprived of his property at theinstance of a person who has been authorised to use the mark by the ownerhimself merely because the user is not registered. We agree with thisobservation of the learned trial Judge. In our view the said expression "byany proprietor thereof" should not be restricted to the user by the proprietorhimself or any registered user, but it should also be taken into account if itis used by bona fide authorised user."

54. The said decision of the Calcutta High Court was upheldby the Supreme Court in CYCLE CORPN. OF INDIA LTD. v. T.I. RALEIGHINDUSTRIES PVT. LTD. (AIR 1996 S.C. 3295) wherein the Supreme Court laiddown the law as under:- " It is true that while exercising discretion, the Court undersection 46 of the Act should take into consideration not only commercialinterest of the parties but also public interest. In para 21.82 at page 386of the Law of Trade Marks and Passing-off by P.Narayanan(4th Edn.), it isstated that the Court or the Registrar has discretion in granting or refusingan application for rectification. Ordinarily, however, the mark will beexpunged (sic) (taken off) when the factual circumstances necessary for theremoval are established unless it is shown that the case comes within theexceptions provided in subsection (3). The High Court refused to exercise thediscretion to strike off the trade mark from the register. It is seen thatthe appellant had not abandoned at any point of time, the use of the trademark of the respondent-registered proprietor till filing of the application.Though the appellant has not used the trade mark by itself since 19 54 andafter the expiry of the permitted use by Sen Raleigh until the notice wasissued by the respondent directing the appellant not to use the trade mark,the appellant came to use the same in passing off bicycles manufactured by itunder trade mark of the respondent. It is not relevant for the purpose ofsection 46(1)(b) whether the bicycles were manufactured with the assistance oftechnical know-how passed on by Sen Raleigh or the permitted user. Suffice itto state that the appellant, as a fact, had used the trade mark of therespondent in passing off the bicycles manufactured by it. The High Court, inour view, declined for good reason, to rectify the trade mark under section46(1)(b) of the Act. We are also not persuaded to take a different view fromthat of the High Court. In these circumstances, we are of the view that theHigh Court has properly exercised its discretion and refused to rectify andstrike off the trade mark from the register of trade marks of the Registrar."

The same is the view taken by the Supreme Court in HARDIE TRADING LTD. v.

55. We have gone through the relevant clauses of the user agreement and find that the joint proprietors have retained complete controlover the use of trademarks by the company and the permission to use thetrademarks was granted to the company subject to the condition that the userby the company should not result in causing any confusion or deception in theminds of the public or destroying the distinctiveness of the trademarks.Though the company was permitted to use the trademarks, but there are clausesto the effect that there should be a distinction between the goods connectedwith the proprietor of the mark from those connected with others. The clausesalso provided that there must be a connection in the course of tradeconsistent with the definition of trademarks continuing to exist between thegoods and the proprietor of the trademarks. Further, the directors are thejoint proprietors and they are not strangers. They exercised control over theaffairs of the company. The company was formed only to exploit the trademarksand the company was functioning under the direct control and supervision ofthe joint proprietors and in the user agreement there were clauses to showthat there existed a close link or connection between the goods manufacturedand marketed with the trademarks in question by the joint proprietors of thetrademarks.

56. Further, the decision of this Court in O.S.A.Nos.87 and 88 of 2 002 was rendered in the case of company and joint proprietors were notparties in that proceedings and the observation made by the Court that theagreement required to be registered under section 48 of the Trademarks Act wasnot registered and the company could not be regarded as the registered usereven during the currency of the user agreement would not strictly bind thejoint proprietors. Further, the joint proprietors have placed the agreementbefore the Court to show that the joint proprietors had retained the controland supervision in the user of trademarks by the company. Further, it is alsonot necessary to go into the question whether the user by the company is anauthorised one or not for the purpose of deciding the issues that arise inthese appeals as the user by the company under the user agreement can primafacie be taken to be the user by the joint proprietors during the currency ofthe period of agreement and even after the expiry of the agreement, the usercan be impliedly taken to be the user by the joint proprietors as the companyused the trademarks on the same terms and conditions contained in the earl ieragreement and therefore it cannot be prima facie stated that the jointproprietors have not used the trademarks even after the expiry of theagreement entered into by them with the company.

57. The appellant, as we have already found, has instituted the suit (C.S.No.1577 of 1992) only in the year 1992 and till 1992 she wasreceiving the royalty and she was also a dealer of the company products forChennai region. It therefore can be easily stated that till the appellantissued the notice dated 14.3.1992, all the joint proprietors including theappellant can be said to have used the trademarks through the company. Wehave already referred to the result of the litigation instituted by theappellant as well as by the company. Moreover, till the suit instituted bythe appellant was decreed in her favour on 2.3.2001, on the basis of the

injunction order passed by this Court dated 5.7.1995, the company was usingthe trademarks. This Court held that nearly 95% of the co-owners agreed forthe company to make use of the trademarks and hence, there was no infringementof trademarks by the company and there was no use of false trademarks or falsedescription and it can therefore be stated that till the case was decided bythis Court in favour of the appellant, the user by the company cannot be saidto be illegal as this Court had not prevented the company from using thetrademarks and the user by the company can also be taken to be the user by thejoint proprietors of the trademarks.

58. The judgment of learned Judge of this Court granting decree in favour of the appellant was upheld by the Division Bench of thisCourt in O.S.A.Nos.87 and 88 of 2001 and the Supreme Court also refused togrant leave when the company approached the Supreme Court by way of SpecialLeave petition on 8.4.2002. We are therefore prima facie of the view thatthere was no abandonment by the joint proprietors by permitting the company touse the trademarks either during the currency of the agreement or after theexpiry of the agreement till the suit was finally decided against the company.

59. The question whether it is permissible for one of the joint proprietors to withdraw her consent when other joint proprietors havegranted consent to the company to use the trademarks has to be gone intoduring the course of trial of the suit. It is relevant to point out that itis the case of the respondents that after the decision of the Supreme Courtrendered in Special Leave Petitions filed against the judgment in O.S.A.Nos.87and 88 of 2002 they have started using the trademarks in the business carriedon by them.

60. Mr.G.Masilamani, learned senior counsel submitted that the entire business of the firm was taken over by the company. The Bench ofthis Court in O.S.A.Nos.87 and 88 of 2001 has held that the firm wasdissolved, though not formally declared, and yet the dissolution was broughtabout when this user agreement was executed. However, we have already noticedthe order of the Supreme Court in S.L.P.No.6803 of 2002 wherein it was heldthat the question regarding the existence of the firm has to be examined bythe trial Court while disposal of the suit and hence, we are of the view thatin view of the direction of the Supreme Court, the question regardingexistence of the firm has to be decided by the trial Court while disposing ofthe suit and hence, we are not rendering any finding on that question.

61. Learned senior counsel also referred to the plaint and submitted that in the plaint the partnership firm is shown as one of theparties as 14th plaintiff, but described as a formal party to the suit. Hissubmission was two fold that since in the earlier suit instituted the firm wasa party and the decision rendered in the earlier proceedings would bind thefirm. In so far as this submission is concerned, we have already noticed thatthe other joint proprietors were not parties to the earlier proceedings andtherefore the decision rendered in the earlier proceedings would not operateas res judicata and would not bind the joint proprietors. Secondly, hesubmitted that when the firm ceased to exist, it is inconceivable that thefirm should continue to use the trademarks after 8.4.2002 when the Supreme

Court refused to grant leave in the Special Leave Petitions. This submissionis also not acceptable as it is not the case of the respondents that the firmis using the trademarks after 8.4.2002, but the joint proprietors have beenusing the trademarks after 8.4.2002.

62. Mr.G.Masilamani, learned senior counsel would contend that the plea is not sustainable as the premises of the company has beensealed by virtue of the orders passed by the II Metropolitan Magistrate,Chennai. However, Mr.M.K.Rao, learned counsel for the respondents producedbefore us a copy the order of the Second Metropolitan Magistrate, Chennaidated 14.5.2002 suspending his earlier order and submitted that on the basisof that order, the manufacturing and marketing betel nut/supari under thetrademarks RAJA and ROJA in the premises at Dindigul were done by the jointproprietors. Further, learned counsel also pointed out that the warrantissued by the II Metropolitan Magistrate, Chennai shows that the police wasauthorised to effect search and take possession of spurious scented betelnuts, raw materials, all machines, wrappers, material packets, bags andaccounts and to bring them before the Court with an endorsement certifying itsexecution. Learned counsel submitted that the warrant was issued only againstthe company in May, 2002 and at that time, the company was not carrying on thebusiness. We find that no such argument was advanced before the learned Judgewhen he heard the applications and the arguments proceeded on the basis thatthe joint proprietors were using the trademarks after 8.4.2002.

63. We have gone through the pleadings to find out the stand of the parties. There is no dispute that in so far as the trademark ROJA isconcerned, it was registered in the name of N.V.K.Mohamed Sultan Rowther &Sons, 95, Market Road, Dindigul with the registration No.32 4704 along withassociated trademarks and it was renewed for a period of seven years from19.4.1998 which will expire only on 18.4.2005. The reply notice issued by theappellant through her counsel dated 22.6.2002 shows that it is her case thatthe joint proprietors, Raja Mohammed, Khader Ibrahim, Asi Mohammed, e tc.were using the trademarks without any right and authority and selling theirgoods and thereby deceiving the public. In the notice the respondents werecalled upon to do the following things:

" i. to forthwith withdraw all infringing spurious products from themarket and destroy the same;

ii. to stop the illegal business using the Trade Marks for their ownbenefit contrary to law;

ii. to surrender all seals, machines, articles of manufacture, labels, packing materials, vehicles instruments used in the process ofmanufacture and marketing of such infringing spurious products; "

64. Further, in the affidavit filed by the appellant in

O.A.Nos.730 to 733 of 2002 in C.S.No.727 of 2002 she has stated that therespondents were doing their illegal acts of infringement of trademarks andtrading style and therefore prayed for interim injunction restraining themfrom infringing the trademarks, from passing off their goods as that of theappellant and from infringing the copyright. In the suit filed by her, shehas stated that the cause of action for the suit arose on all subsequentoccasions when the respondents continued to produce offending products under " Plaintiffs 1 to 13 are the joint owners/proprietors of trademarksand in the Trade Mark Registry, their names find a place and stated as all aretrading as N.V.K.M. & Sons; N.V.K. Mohamed Sultan Rowther & Sons at 95,Market Road, Dindugal 624 001. "

They have also filed the labels used by them during the course of business.The respondents have also taken a positive stand in their counter affidavitstating that the respondents have been carrying on the business by means oflicence granted to the company and on the basis of orders of the DivisionBench of this Court, the company ceased to exist and thereafter therespondents have been using the trademarks as joint proprietors of the sameand the appellant completely ignored the bona fide invitation extended to herby the respondents. They also stated as under:- " The allegation of the application that the respondents are proposing to start a new venture to manufacture betel nut by using the trademark ROJA as contained in paragraph 11 of the affidavit is concocted. Theapplicant has completely ignored the bona fide invitation extended to her bythe respondents under notice dated 11.5.2002 which was issued only with a viewto afford an opportunity to the applicant to join with the other jointproprietors and also for joint exploitation of the trade marks as contemplatedunder the orders of the Honourable Division Bench. But the applicant hascompletely disregarded the generosity of the respondents and bent uponsticking to her stand without mending her ways and with a greed to somehowmisappropriate the trade marks belonging to the joint proprietors for herself.The respondents being left with no other option have instituted rectificationproceedings in O.P.No.406 to 411 of 2002 to remove the name of the applicantfrom the trade mark register and the same are pending before this HonourableCourt."

They have repeated the same thing in paragraph-29 of the affidavit statingthat the respondents have not at any point of time withdrawn themselves fromusing the trademarks and on the other hand, they have been all along involvedin the manufacture of the betel nut business under the trademarks without anyinterruption at any point of time. The appellant also in her affidavit hasstated that the respondents have committed infringement of trademarks and theyare also guilty of passing off action apart from infringement of trademarks.

65. The parties have come with a definite case that the jointproprietors have been using the trademarks after the judgment of DivisionBench of this Court. We have already noticed that this point was not asubject matter of consideration before the learned Judge of this Court and thepoint now sought to be raised by Mr.G.Masilamani, learned senior counsel isonly on the basis that subsequent to the decision of the Division bench ofthis Curt, there was an order by the Second Metropolitan Magistrate, Chennaiordering seizure of the premises.

66. Mr.G.Masilamani, learned senior counsel referred to the

notice issued on behalf of the joint proprietors dated 11.5.2002 wherein inparagraph-3 it is stated as under:-" Our clients, who are all joint proprietors and whose names areenumerated in para-1 above propose to carry on business in betel nut goodsfalling in Clause 31 by using the above-mentioned registered trademarks,amongst others, under the trading style 'N.V.K.M. & Sons' and/or'N.V.K.Mohamed Sultan Rowther & Sons', and/or 'Roja betel nut ManufacturingCompany'. Even though from 1995 you have been independently and to theexclusion of all our clients, using the abovementioned regd. trade marks inbetel nut business, now that such use by you has been disapproved by the DBjudgment cited above, and since your name presently appears as a jointproprietor in the Register of Trade Marks with respect to the above-mentionedregd. trade marks, by this notice our clients hereby call upon you to joinour clients in this joint exploitation of the said trade marks ...."Referring to the words, 'propose to carry on business in betel nut goods',learned senior counsel submitted that since in the notice dated 11.5.2002 therespondents have stated that they proposed to carry on the business, it wouldimply that they did not carry on business even before 11.5.2002 and the standtaken by them now that the joint proprietors have been carrying on thebusiness before 8.4.2002 is against the stand taken in their notice. He alsoreferred to the plaint and the affidavit filed by the appellant wherein shehas stated that the respondents have not used the trademarks, but they onlyproposed to use carry on the business. He also submitted that the appellantwas directed by the respondents to pay a sum of Rs.75,00,000/- aspre-condition to join them in the joint exploitation and the money has notbeen paid by the appellant and therefore the plea of the joint proprietorsthat they have been using the trademarks is not sustainable.

67. We have considered the submissions of Mr.G.Masilamani,learned senior counsel and we have referred to the averments made in theplaints in both the suits as well as the affidavits and counter affidavitsfiled by the parties. In the affidavit the appellant has stated that therespondents are trying to pass off their goods as those of the appellant. Wehave also referred to the pleadings as well as the averments made in theaffidavits. Though there are averments in the plaint as well as in theaffidavits that the respondents are carrying on business, however, to satisfyourselves whether the joint proprietors have been carrying on the business, wedirected the counsel for the respondents to produce documents in support oftheir case. Mr.G. Masilamani, learned senior counsel objected to theproduction of the documents and submitted that the respondents in the plaintincluding in the cause of action paragraph has not stated the actual date ofcommencement of their business and therefore the documents now sought to beintroduced are forged documents. Learned senior counsel referred to thedecision of the Allahabad High Court in NARAIN DAS v. II ADDL. DIST. JUDGE,MORADABAD (AIR 1999 All.74), the decision of this Court in A.MUNUSWAMI v.R.SETHURAMAN (AIR 1995 Mad. 375) and the decision of the Supreme Court inBOMBAY CORPORATION v. PANCHAM (AIR 1965 S.C.1 008). The Supreme Court inBombay Corporation case (AIR 1965 SC 1008 ) has held as under:-" No doubt, under R.27, the High Court has the power to allowa document to be produced and a witness to be examined. But the requirementof the High Court must be limited to those cases where it found it necessary to obtain such evidence for enabling it to pronounce judgment. This provisiondoes not entitle the High Court to let in fresh evidence at the appellatestage where even without such evidence it can pronounce judgment in a case.It does not entitle the appellate Court to let in fresh evidence only for thepurpose of pronouncing judgment in a particular way. In other words, it isonly for removing a lacuna in the evidence that the appellate Court isempowered to admit additional evidence."

In A.Munuswami's case (AIR 1995 Mad.375) this Court held that the documentsmarked as exhibits without proof cannot form basis of the judgment. In NarainDas's case (AIR 1999 All. 74) the Allahabad High Court held that when a partyseeks to introduce additional evidence, the application must be supported byan affidavit of the party.

68. There can be no quarrel over the proposition of law laiddown by the Supreme Court as well as by this Court and the Allahabad HighCourt. It is necessary to mention here the decision of this Court in HAW PARBROS. INTERNATIONAL LTD. v. TIGER BALM CO.(P) LTD. & ORS (199 6 PTC(16)(DB) 311) wherein a Division Bench of this Court held as under:-" At the interlocutory stage it is the practice to accept documents filed along with affidavit. The respondents have also filed numberof such documents and if regular proof is necessary, the documents filed byboth sides should be completely ignored. If that procedure is adopted, it isnot possible in any interlocutory application to grant relief to parties."

However, we are making it clear that we are not relying upon any of theadditional documents produced to come to a conclusion as the partiesthemselves in the pleadings have proceeded on the basis that the respondentshave been carrying on business as joint proprietors. The suit filed by theappellant also proceeds on the basis that the respondents/plaintiffs have beencarrying on the business and hence, she prayed for injunction against thepassing off action. The respondents/plaintiffs in their affidavit have takena definite stand that they have been carrying on the business as jointproprietors in more than one place. Since learned senior counsel for theappellant has submitted that the business premises was sealed under the ordersof the II Metropolitan Magistrate, Chennai, learned counsel for therespondents has produced a copy of the order of the learned II MetropolitanMagistrate dated 14.5.2002 wherein he suspended his earlier order. Furtherthat order was passed against the company and not against the jointproprietors. Learned counsel for the respondents produced before us the copyof letter of the Chartered Accountant to show that the business of the companywas carried on by N.V.K.M. & Sons from April, 20 02. He has also enclosedthe copy of certificate showing the sales turnover from April, 2002 to August,2003 and the copy of report of sales-tax authority in Form-A1 in respect ofthe sales outside the State. It is also stated that the firm has beenallotted with a Permanent Account Number. He has also enclosed along with thereport the invoice-cum-delivery chalans of N.V.K.M. & Sons for the periodfrom 3.5 .2002 to 11.10.2003. Learned counsel for the respondents has alsoproduced before us the returns filed under the Central Excise Act for and fromthe month of April, 2002 wherein the Superintendent of Central Excise hasaffixed his signature and the returns have been filed till the month of August, 2003. Learned counsel for the respondent has also produced before usthe sample bills issued to advertising agents of N.V.K.M. & Sons, Dindigul.

69. We are making it clear that we are not placing any

reliance on any of the documents, but the fact of production of documents isrecorded. We are of the view, de hors the additional documents producedbefore us, the respondents have prima facie established on the basis of thepleadings that they have been carrying on the business from April, 2002.However, it is a matter that has to be gone into during the course of trial.We wanted to satisfy ourselves that the respondents were jointly carrying onthe business as in the letter dated 11.5.2002 issued by the joint proprietorsto the appellant it is stated that they proposed to carry on the business.Mr.G.Masilamani, learned senior counsel placed emphasis on the expression,'propose to carry on' and submitted that the expression clearly shows that therespondents proposed to carry on the business and it implies that they did notcarry on the business till 11.5.2002 and the stand taken by the respondentsthat they were carrying on the business from April, 2002 is not sustainable.However, we are prima facie of the view that the mere use of the expression,'propose to carry on' in the letter dated 11.5.2002 cannot be construed tomean that the joint proprietors were not carrying on the business on the dateof the letter and the letter has to be read as a whole and in the letter therewas an invitation to the appellant to join with them in the joint exploitationof the trademarks. In that context, if the letter is read, the expression,'propose to carry on' can be construed to mean that the appellant wasrequested to join the other joint proprietors for joint exploitation of thetrademarks.

70. Mr.G.Masilamani, learned senior counsel also filed certain additional documents along with an affidavit sworn by the appellantand submitted that the documents clearly show that the licence numbercontinues to be the same. In this regard, he also referred to the letterwherein learned counsel for the respondents was directed to produce certaindocuments, but he did not produce any document. He also referred to theshow-cause notice issued by the Office of Commissioner of Central Excise,Madurai both to the company and the partnership firm. Counsel for therespondents has given explanation for each one of the documents, however, itis not necessary to consider the same as we are prima facie of the view thatthe respondents have established that the were carrying on the business on thedate of institution of the suit. Therefore we are not rendering any findingon the question whether it is permissible for other joint proprietors to usethe same licence number granted under the Central Sales Tax Act or theFactories Act to the company and whether the joint proprietors have been usingthe same registration number granted under the provisions of Tamil NaduGeneral Sales Tax Act and Central Sales Tax Act to show their continuity inthe business. We are of the view that these are all matters that are to bedecided at the time of trial of the suit.

71. Further, the question that has to be seen is whether on the date of presentation of the plaint, namely, July, 2002 the

respondents/plaintiffs were carrying on the business. In the letter dated22.6.2 002 issued on behalf of the appellant in response to the notice dated11.5.2002 issued by the joint proprietors, the appellant has stated that thejoint proprietors are using the trademarks without any right or authority andselling their goods as those of the appellant. In the letter the appellantcalled upon the joint proprietors to stop their illegal business using thetrademarks for their own benefit. The respondents filed their suit subsequentto the notice dated 22.6.2002. When there was an admission by the appe llantthat the respondents have been carrying on the business even in the month ofJune, 200 2, we are prima facie of the view that the joint proprietors haveproved that they have been carrying on the business on the date of institutionof the suit.

72. So far as the other submission of Mr.G.Masilamani, learned senior counsel that there is a contradiction between the stand takenby the respondents in their notice dated 11.5.2002 and the stand now taken isconcerned, we are of the view, that is a matter which requires evidence andthe respondents have to establish that the other joint proprietors arecarrying on the business from April, 2002.

73. The other submission of Mr.G.Masilamani, learned senior counsel is that there are fraud and mala fide acts done by the respondents.So far as this argument is concerned, we are of the view that this questionhas to be gone into at the time of trial. He also submitted that there is adeliberate attempt by the respondents to appropriate the trademarks. We areof the view that this is also a matter that has to be gone into at the time oftrial and it cannot be decided now.

74. We are also of the view that the disability which the appellant faces by virtue of the operation of section 24 of the Trademarks Actwould equally apply to the respondents as well. It is relevant to notice herethat the first respondent has stated that he wants to remain neutral in theproceedings.

75. The question that arises is what will be the proper relief that can be granted in the appeals. We have already held that theappellant is one of the joint proprietors and on the basis of the judgment ofthe Division Bench of this Court her user of the trademarks is impermissible.On the other hand, the respondents have shown that they have been carrying onthe business on the date of institution of the suit. The question whether thejoint proprietors are entitled to exploit the trademarks when one of the jointowners objects to the same has to be gone into at the time of trial. As it isthe case of the joint proprietors that they are exploiting the trademarks, wehold that the joint proprietors should not be denied the relief. Since thejoint proprietors have shown that they have been carrying on the business onthe date of institution of the suit, we are of the view that the businessshould be protected and if the joint proprietors are also injuncted fromcarrying on the business, it will kill the business. Since the appellant hascome out of the group, if the respondents are also restrained from using thetrademarks, it will not benefit any of the parties to the suit. We also findthat the matter is also pending for rectification of Trademarks Register in respect of the trademarks in question and final decision has not been taken inthat proceedings.

76. Moreover, the question whether it is open to one of the joint owners to prevent the licensee to use the trademarks when there was alicence granted to a licensee to use the trademarks has to be examined at thetime of trial of the suit. Further, the question as to the effect of one ofthem withdrawing from the association and preventing other joint owners fromexploiting their right is a question that has also to be decided at the timeof final hearing of the suit.

77. As far as the decision of this Court in O.S.A. Nos.87

and 88 of 2002 holding that the use of the trademarks by the company cannot beregarded as that of the joint proprietors especially when one of the jointproprietors objected to the use by the other joint owners is concerned, thedecision was rendered as against the user by the company and since the jointproprietors were not parties to that proceedings, the above observation madeby this Court in O.S.A.Nos.87 and 88 of 2002 does not bind the respondentsherein. Further, we have already held that the court proceeded on the basisthat the user agreement was required to be registered under the provisions ofthe Trademarks Act and under the common law it is permissible for the ownersof trademarks to allow the licensee to use the trademarks provided the controlis retained by the owners of the trademarks. Since the respondents were notparties to that proceedings, the above observations of this Court inO.S.A.Nos.87 and 88 of 2002 do not bind the respondents herein.

78. We are of the view that the order of the learned Single Judge holing that the appellant Zeenath Bivi is not entitled to use thetrademarks in question is not liable to be interfered with as we find that thesaid view cannot be said to be unreasonable or arbitrary or perverse. LearnedSingle Judge came to the conclusion on the basis of the decision of theSupreme Court and the decision of the Division Bench of this Court. Thoughthe view of the learned Single Judge that majority of the joint proprietorswould be entitled to exploit the trademarks may not be quite accurate,however, we find that he exercised his discretion on the basis that thereshould be a joint exploitation by all and only if there is unwillingness byone or some of joint proprietors, other joint proprietors would be entitled toexploit the trademarks. We are of the view that the above decision has beentaken in the interest of the running of the business and continuedexploitation of trademarks pending consideration of the applications forrectification.

79. We are therefore of the view, pending consideration of the disputed factand law, the business carried on by the respondents should be carried on bythe respondents 2, 3 and 5 and the respondents 2, 3 and 5 shall carry on thebusiness in their capacity of receivers and they are also entitled to exploitthe trademarks in question for and on behalf of and for the benefit of all thejoint owners. We are of the view, considering the nature of the business andin the interests of the business, if an outsider is appointed as a receiver,

it would result in divulging the trade secrets and know-how in the manufactureof supari to others. In this situation, we appoint the respondents 2,3 and 5as joint receivers to carry on the business as it is stated that the fourthrespondent is an insane person. Though there is no material to show that heis an insane person, we are of the view that in view of the allegation madeagainst him, it will not be proper to appoint the fourth respondent asreceiver. Further, it is also stated that the appellant refused to ac ceptthe offer of joint exploitation made by the respondents. The first respondenthas stated that he wants to remain neutral in the proceedings. In thecircumstances, we appoint the respondents 2,3 and 5 as receivers to run thebusiness and exploit the trademarks in question. The receivers shall maintainproper accounts and they are empowered to carry on the business till thedisposal of the suits. One week's time from the date of the receipt of theorder is given to the concerned respondents/ receivers to accept thereceivership and if any one of them does not express willingness or declinesto accept, other receivers shall carry on the business. If all of themexpress unwillingness, the Registry is directed to post the matter after twoweeks for further directions. The receivers are also directed to submitannual accounts before the Court on or before 31st of March every year.

80. In the result,

a) there will be an order of injunction pending suits against the appellantZeenath Bivi from exploiting the trademarks in question;

b) the business hitherto carried on by the respondents shall be carried on bythe respondents 2, 3 and 5 in their capacity of receivers and they arepermitted to exploit the trademarks in question for and on behalf of and forthe benefit of all the joint owners;

c) the respondents 2, 3 and 5, namely, M.Raja Mohamed, M.Asi Mohamed andA.Zaithoon Bivi are appointed as receivers to carry on the business;

d) the receivers shall submit annual accounts of the business carried on bythem on or before 31st of March every year; and

e) since we are ordering injunction against the appellant from exploiting thetrademarks in question, the judgment so far as it relates to the appellant isconcerned is suspended for a period of three weeks to enable her to makealternative arrangements.

With the above directions, all the appeals are dismissed. Nocosts. All the C.M.Ps. are closed.

Index: YesWebsite: Yesna.

The Sub Asst. Registrar,Original Side,High Court, Madras.