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Judgment
Prafulla C. Pant, J.—By means of this petition, moved under Article 226 read with Article 227 of the Constitution of India, 1950, the Petitioner has sought writ in the nature of mandamus, commanding Respondent No. 1 to withdraw permission/licence bearing No. 2/C/UA/2005 dated 05.02.2005, granted in favour of Respondent No. 2 to manufacture cosmetics under the trade mark ''JOLEN''. It is further prayed in the writ petition that said permission/approval, granted in favour of Respondent No. 2, be quashed and cancelled.
Heard Learned Counsel for the parties and perused the record.
Brief facts of the case are that Petitioner had been engaged in business of manufacturing and marketing of cosmetic products for several years. It earned goodwill and fame in India by using its registered trade mark ''JOLEN''. It is alleged in the petition that the Petitioner is registered owner of said trade mark bearing No. 434499 dated 25.02.1985 under the Trade and Merchandise Marks Act. Apart from the said trade mark, the Petitioner has Trade Mark No. 555920 dated 06.08.1997 for manufacturing the cosmetics. It is further alleged in the writ petition that Respondent No. 3-M/s. Jolen Inc. has no registration of trade mark ''JOLEN'', granted by Registrar of Trade Marks, in India, as such, its objections to the trade mark given to the Petitioner have already been dismissed by the Registrar of Trade Marks, and also by Intellectual Property Appellate Board (hereinafter referred to a as ''IPAB''). After the Petitioner''s trade mark JOLEN was registered in India in 1985, the Petitioner obtained licence/permission from Drugs Controller, Delhi for manufacturing of cosmetics under trade mark ''JOLEN'' in the year 1987 and continued to market his products with said trade mark since 1987 to 2004. In the year 1993, the Petitioner issued caution notices in the leading newspapers against imitation of trade mark JOLEN and also filed a suit in Delhi High Court against Doctor and Company In the year 1994, Petitioner and his sons incorporated a company by the name of Jolen International Limited under the Indian Companies Act, 1956. Respondent No. 3-M/s. Jolen Inc., who claims to be incorporated in United States of America, filed an Application. No. 522509 on 05.01.1990, for registration of trade mark JOLEN in India. Said application of Respondent No. 3 after hearing the objections of the Petitioner was rejected by the Registrar of Trade Marks in the year 1999. On this, Respondent No. 3 filed an appeal before the Delhi High Court but the same was transferred to the Intellectual Property Appellate Board by operation of law. IPAB heard the appeal and dismissed the same on 12.01.2005. Dissatisfied with this order of IPAB, the Respondent No. 3, filed a writ petition before Delhi High Court and obtained a stay order. Respondent No. 3, on being unsuccessful, in establishing its trans-border reputation to market cosmetics with trade mark JOLEN, instituted a Suit No. 397 of 2000 in Madras High Court and obtained ex parte injunction against the Petitioner. At present, vide order dated 30.04.2004, passed by Madras High Court, the Petitioner is restrained from using trade mark JOLEN till the disposal of suit. The said interim order was passed subject to condition that Respondent No. 3 would purchase the unsold cartons and containers from the Petitioner at cost price but Respondent No. 3 did not comply with said condition. However, a special leave petition, filed by the Petitioner before the Apex Court, was dismissed with the direction that the Madras High Court would decide the suit preferably within one year. Till 2004, the Petitioner used the registered trade mark but thereafter due to the interim injunction, it has stopped the work, Meanwhile, Respondent No. 3 allegedly appointed Respondent No. 2-Kundan Personal Care Products Ltd., as its agent in India and allegedly started manufacturing the sale of cosmetics under the trade mark JOLEN in India. The Petitioner has further stated that since Respondent No. 3 was denied registration of trade mark JOLEN, the permission/licence granted by Respondent No. 1-Drugs Controller, Uttarakhand to Respondent No. 2-Kundan Personal Care Products Ltd., the alleged agent of Respondent No. 3, is illegal and perverse. It was duty of the Drugs Controlled Respondent No. 1) that before granting licence it should have sought search report from Registrar of Trade Marks. Due to the permission granted by Respondent No. 1 to Respondent No. 2, now the Petitioner is running from pillar to post. It is alleged by the Petitioner that the Respondents are bent upon to completely ruin and wipe out the Petitioner from the business. It is further alleged that the false first information report was got lodged against the Petitioner and its employees by planting a customer by the Respondents, which was challenged by the Petitioner before Delhi High Court and the interim orders were passed therein.
Alleging that the act on the. part of Respondent No. 1, granting licence to Respondent No. 2 to manufacture cosmetics (with trade mark JOLEN) is illegal, the Petitioner filed Writ Petition No. 869. (M/B) of 2006, which was permitted to be withdrawn by this Court''s order dated 22.08.2006 with permission to file a fresh writ petition as the permission/licence bearing No. 2/C/UA/2005 dated 05.02.2005, granted to Respondent No. 2 could not be obtained earlier for getting it quashed. Under Right to Information Act, after the necessary papers were obtained, this fresh petition is filed before this Court.
The Respondent Nos. 1, 2 and 3 filed their separate counter affidavits and contested the writ petition.
In the counter affidavit, filed on behalf of Respondent No. 1-Drugs Controller, Uttarakhand, it is alleged that on receipt of the Petitioner''s representation dated 28.12.2005, the answering Respondent, issued a notice to Respondent No. 2 under Rule 143 of Drugs and Cosmetics Rules, 1945, to show cause as to why the permission granted under the impugned Licence No. 2/C/UA/2005 be not.withdrawn. In response to said notice, the Respondents gave reply dated 07.01.2006. Considering the fact that the Petitioner is restrained from using trade mark JOLEN by the Apex Court, vide its order dated 22.08.2005, passed in SLP (Civil) Nos. 16823-16825 of 2005 and the interim orders, passed by Delhi High Court and Madras High Court, it cannot be said that the licence issued by Respondent No. 1 is liable to be cancelled. It is further stated that the Respondent No. 1 in issuing licence to Respondent No. 2, acted in good faith and public interest, as per the provisions of Drugs and Cosmetics Act, 1940 and rules framed thereunder. It is further stated that the Respondent No. 1 did not violate any provision of law in granting licence.. The dispute between the Petitioner and Respondent Nos. 2 and 3, is purely private in nature.
Respondent No. 2-Kundan Personal Care Products Limited in its written statement has stated that counter affidavit filed on behalf of Respondent No. 3-M/s. Jolen Inc. is true and correct, and to avoid repetition and for brevity, the replies in defence of Respondent No. 2 may be treated to be same as contained in the counter affidavit filed by Respondent No. 3.
Respondent No. 3-M/s. Jolen Inc. in its counter affidavit has raised preliminary objection that the Petitioner failed to show any provision of which.violation is committed in granting impugned licence, as such, the writ petition is liable to be dismissed. It is further stated in the counter affidavit, filed on behalf of Respondent No. 3 that it (Respondent No. 3) was a partnership firm, formed in the year 1955 in the United States of America (hereinafter referred to as ''USA'') and later in the year 1964, it was registered as company in the name and style of M/s. Jolen Inc. under the laws of USA. It is further stated that Respondent No. 3 is inter alia, engaged in the business of manufacturing and marketing of cosmetic products including cream bleach under a distinctive trade mark JOLEN since 1955. Word ''JOLEN'' is invented from the names of founders of answering Respondent, i.e. J OHN and EVELYN. It is further stated that Respondent No. 3 is proprietor of trade mark/name JOLEN and uses the same globally since 1955. Artistic work involved in said trade mark label, used by Respondent No. 3 is original in character. The copyright of Respondent No. 3 in respect of said trade mark is protected and enforceable in India by virtue of Berne Convention. The Respondent No. 3 is marketing its products through Respondent No. 2 since 2004 but even before that it had market in India, as the goods produced by Respondent No. 3 used to be imported in India.
The trade mark JOLEN, as per Respondent No. 3 is registered in -USA since 1969, in favour of answering Respondent for manufacturing and marketing hair bleaches, cream bleaches,- skin creams, lotions, astringents, toilet waters, colognes, perfumes, etc. The goods produced by Respondent No. 3 have a market in more than 40 countries of the world. It is further stated in the counter affidavit that Respondent No. 3 advertises its products all over the world and has tremendous goodwill and reputation across the globe. Motivated by said goodwill, Petitioner illegally obtained trade mark JOLEN in relation to cosmetic products. On-getting aware of said fact, Respondent No. 3 instituted Suit No. 397 of 2000, before Madras High Court and obtained temporary injunction on 30.04.2004, against the Petitioner. The Petitioner filed SLP before the Supreme Court, challenging the said interim order but the same was dismissed. However, still the Petitioner is making attempts to circumvent the order and pass off his goods as that of answering Respondent by getting incorporated its name as M/s. Jolen International Ltd. This necessitated answering Respondent (Respondent No. 3) to institute another suit, which is numbered as 831 of 2004, before Madras High Court. In the said suit an interim order dated 22.08.2005 was passed by the said Court. Still the activities of the Petitioner did not stop and Respondent No. 3 filed yet another Suit No. 02 of 2006 before District Judge, Panipat and obtained fresh interim order on 26.09.2006. But the Petitioner has dishonestly and mala fidely obtained registration of trade mark JOLEN in India under No. 434499B in Class 3-in respect of toothpaste and perfumery.
It is admitted by Respondent No. 3 that Writ Petition (C) No. 1210 of 2005 was filed by it before Delhi High Court, wherein order dated 12.01.2005, passed by IPAB, is challenged and the interim stay order dated 08.03.2006, is obtained in said petition. It is further stated that Writ Petition (C) No. 1213 of 2005 was filed before Delhi High Court by Respondent No. 3 in which Petitioner gave an undertaking that he would not take any action against answering Respondent on the basis of the Registration No. 555920, as such, the operation of Registration No. 555920 also stands stayed. It is alleged by Respondent No. 3 that the Petitioner is a habitual pirate, as it has earlier copied and violated well-known trade marks including that of M/s. Colgate Palmolive Company and M/s. Vicco Laboratories. In Suit No. 878 of 1978, Delhi High Court found the Petitioner violating and pirating the well-known. trade mark/label of M/s. Vicco Laboratories. Lastly, defending the impugned licence, granted in favour of Respondent No. 2, it is stated that the same is issued by Respondent No. 1 without violating any provision of Drugs and Cosmetics Act, 1940, and rules framed thereunder. Nor has Respondent No. 2 committed any violation of said Act and rules..
In the rejoinder affidavit to the counter affidavit filed on behalf of Respondent No. 1 (Drugs Controller), it is reiterated by the Petitioner that Respondent No. 1 has failed in discharging his legal duty while granting permission/licence to Respondent No. 2 to use trade mark JOLEN for manufacture of cosmetics in India. As to the interim orders, passed by Madras High Court, Delhi High Court and the Supreme Court, it is stated in the rejoinder affidavit that rights are yet to be finally determined between the parties. It is reiterated that Respondent No. 3 has failed to purchase the unsold cartons and containers of the Petitioner at the cost price, which was the condition of the interim order, passed by Madras High Court. It is further stated in the rejoinder affidavit that Respondent No. 1 has committed error of law in not giving opportunity to the Petitioner of being heard before granting the licence to Respondent No. 2. It is denied in the rejoinder affidavit that Respondent No. 1 acted in good faith or public interest as per the Drugs and Cosmetics Act, 1940. It is further alleged by the Petitioner that in the show cause notice, issued by the Respondent No. 1, the Petitioner deserves to be made party before adjudication of the reply given by Respondent No. 2.
In reply to the counter affidavit of Respondent Nos. 2 and 3, a separate rejoinder affidavit dated 08.12.2006, has been filed on behalf of the Petitioner in which, the facts narrated in the writ petition are reiterated. It is stated that granting of licence by Respondent No. 1 in favour of Respondent No. 2 is illegal and perverse. It is further stated that averment made by Respondent No. 3 that it was a firm formed in the year 1955 in USA and was incorporated in the year 1967 is denied. It is also denied that Respondent No. 3 was in business using trade mark ''JOLEN'' since 1955 or that word JOLEN was invented, coined from the names of the founders namely JOHN and EVELYN of Respondent No. 3. Rather it is stated in the rejoinder affidavit by the Petitioner that JOLEN is a name popular in Afghanistan and there exist many companies under the name of JOLEN from which they hail. It is denied that India being party to Berne Convention is bound to protect the copyright of f Respondent No. 3 in India. It is specifically stated in the rejoinder affidavit that before 1985, product of Respondent No. 3, was never sold in India. Denying that Respondent No. 3 has its business in more than 40 countries, it is stated that the averment in this regard is false. The alleged advertisement made by Respondent No. 3 was never produced in evidence to show that they had any circulation of the magazines in India. It is also denied that the products of Respondent No. 3 have acquired any goodwill in India. Reiterating that the Petitioner is the proprietor of the trade mark JOLEN in India, which is registered in his name, it is stated that the mention of civil suits filed in Panipat is only mentioned in the counter affidavit to mislead the Court, as the same are irrelevant for the purpose of decision of this case. Denying that the Petitioner had indulged earlier also in pirating and copying the products of the others like Vicco Laboratories, etc. it is stated that the suits filed against the Petitioner have no relevant for the purposes of decision of this case.
Submissions made on behalf of Petitioner and those of Learned Counsel for the Respondent Nos. 2 and 3, which relate to the question--whether Petitioner has right to manufacture and market his cosmetics with trade mark JOLEN or not, or whether the products of Respondent No. 3 had earned goodwill in India prior to 1985 or not, are not being discussed here in view of fact that the same is subjudice before Madras High Court.
From the affidavits, counter affidavits, rejoinder affidavits and annexures filed thereto, it is clear that the trade mark JOLEN is registered in the name of Petitioner in the year 1985, bearing Trade Mark No. 434499 dated 25.02.1985, copy of which is Annexure 1 to the writ petition. It is also clear that the Petitioner has obtained Trade Mark No. 555920 dated 06.08.1997, for cosmetics, copy of which is Annexure 2 to the writ petition. However, Respondent No. 3, a company incorporated on 05.05.1964 in United States of America (Annexure C.A. 2 to the counter affidavit), has alleged that it is doing business in various products, including cosmetics with the trade mark JOLEN since 1995. It is further alleged by M/s. Jolen Inc. (Respondent No. 3) that they had registration of trade mark JOLEN in United States of America, bearing Registration No. 124007 dated 08.06.1978 (copy of certificate issued in this regard by US authorities on 06.08.1980, is C.A. 4 to the counter affidavit filed by Respondent No. 3). Respondent No. 3 has alleged that its business of producing and marketing various products with trade mark JOLEN is worldwide and its products have trans-border reputation. On the other hand, Petitioner''s case is that the products of Respondent No. 3 had no market nor they had any business in India prior to the registration of trade mark JOLEN in 1985 in the name of the Petitioner.
However, we are avoiding to comment on whether the trade mark JOLEN was dishonestly being used by the Petitioner in India, as alleged by Respondent No. 3 or not as the same is sub judice in a suit pending before Madras High Court and also in the writ petition pending before Delhi High Court in which the order of Intellectual Property Appellate Board, which rejected the appeal of Respondent No. 3, is challenged by said party. What is under challenge before us is the granting of permission/licence bearing No. 2/C/UA/2005 dated 05.02.2005, by Respondent No. 1-Drugs Controller, Uttarakhand to Respondent No. 2-Kundan Personal Care Products Ltd. A copy of said licence is annexed at last page in Annexure 7 to the writ petition (at page No. 168 of the paper book). Perusal of said licence shows that M/s. Kundan Personal Care Products Ltd., is licensed by Respondent No. 1 to manufacture cosmetics from the period 05.02.2005 to 04.02.2010 in premises E-22, Industrial Area, Bahadrabad, District Haridwar. Annexure C.A. 1 to the counter affidavit, filed on behalf of Respondent No. 1, shows that on complaint of M/s. Hindustan Rimmer when it was brought to the notice of Respondent No. 1 that Respondent No. 2 has obtained licence dated 05.02.2005 to manufacture its products with name ''JOLEN'' while said trade mark was registered with the Petitioner, the Respondent No. 1, issued a show cause notice dated 30.12.2005/04.01.2006, asking Respondent No. 2 to show cause why his licence be not cancelled for concealing said fact. This letter shows that Respondent No. 2 while seeking licence had obtained the same to manufacture the product with the name JOLEN. In reply to the said show cause notice, it appears that Respondent No. 2 made the submissions to the a Respondent No. 1 (Drugs (Controller) on 07.01.2006, copy of which is Annexure 2 to the counter affidavit filed on behalf of Drugs Controller (Respondent No. 1).
Annexure 3 to the counter affidavit of said Respondent No. 1 shows that on being inquired from Drugs Controller-General of India, Nirman Bhawan, New Delhi, the Respondent No. 1 submitted its reply dated 08.06.2006, informing the said authority that after show cause notice was issued to Respondent No. 2 in the matter on the basis of the advise of Additional District Government Counsel (ADGC) since the matter was sub judice in Delhi High Court and Supreme Court, no action is being taken against the Respondent No. 2-Kundan Personal Care Products Ltd.
On examination of the counter affidavit and annexures filed thereto by Respondent No. 1, we found that the conduct of Respondent No. 1 in the matter does not appear to be above Board. It has neither dared to file copy of application, moved by Respondent No. 2 for the licence nor had filed copy of list of cosmetics for which the licence was issued, which would have made it clear for what products, the licence was issued and whether the Respondent No. 2 had made disclosure, as required under the rules or not.
Learned Counsel for Respondent No. 1 argued before this Court that the Drugs Controller on its part is not concerned with the dispute of trade mark between the Petitioner and Respondent Nos. 2 and 3. It is further argued in this regard that,the Respondent No. 1, has issued the licence keeping in view the provisions of Drugs and Cosmetics Act, 1940 and rules framed thereunder. The defence taken on behalf of Respondent No. 1 (Drugs Controller) is vague and evasive. Section 17D of Drugs and Cosmetics Act defines spurious cosmetics. Clause (a) of Section 17D provides that a cosmetic shall be deemed to be spurious if it is manufactured under a name, which belongs to another. Clause (b) of said section provides that a cosmetic shall be deemed to be spurious if it is an imitation of, or a substitute for, another cosmetic or resembles another cosmetic in a manner likely to deceive or bears upon it or upon its label or container the name of another cosmetic unless it is plainly and conspicuously marked so as to reveal its true character. Sub-clause (vi) of Clause (a) of Section 18 of Drugs and Cosmetics Act, 1940 prohibits the manufacture of any drug or cosmetic in contravention of any of the provisions of this chapter or any rule made thereunder. Part XIV of the rules framed under aforesaid Act, contains rules relating to manufacture of cosmetics for sale or for distribution. An application for licence to manufacture cosmetics is required to be made under Rule 138 of the Rules in Form No. 31. Form 31, provided in Schedule A of the Rules, framed under the Act, shows that in Column 2, the applicant is required to name the cosmetic, which he desires to manufacture. It is concealed from this Court that what was the name disclosed by Respondent No. 2, which he wants to manufacture. Clause (b) of Rule 148 of the Drugs and Cosmetics Rules, 1945, provides that the licensee shall comply with the provisions of the Act and the rules made thereunder. From above provisions, it is clear that if a licensee manufactures a cosmetic under a name, which belongs to another or imitates or substitutes or in any manner likely to deceive, it would be a spurious cosmetic and in violation of Section 17D of the aforesaid Act. Merely by saying that the Petitioner is in limitation with Respondent No. 3 in Madras and Delhi High Courts, does not absolve the Respondent No. 1-Drugs Controller from its responsibility. It is pertinent to mention here that Respondent No. 2-Kundan Personal Care Products Ltd. was not a party either in Madras High Court or in the Delhi High Court to the litigation. Not only this, even if Respondent No. 2 gets impleaded itself as a party in those litigations, still granting of licence by Drugs Controller, Uttarakhand, is not an issue either before Madras High Court or before the Delhi High Court. As such, the excuse given by Respondent No. 1 (Drugs Controller) that no action is required to be taken in furtherance to the show cause notice in view of dispute being sub judice cannot be said to be a fair and honest reply. It is true that Petitioner since 30.04.2004 is injuncted by the Madras High Court till the disposal of the suit to use the trade mark JOLEN. But trade mark JOLEN is still registered in India in favour of the Petitioner, is not quashed by any Court.
In the above circumstances, we are of the view that this writ petition deserved to be disposed of and is disposed of with the direction that Respondent No. 1 shall dispose of the complaint made on behalf of the Petitioner-M/s. Hindustan Rimmer on which a show cause notice is admittedly issued by Respondent No. 1 and reply was submitted by Respondent No. 2, as mentioned above, within a period of three months from today, after giving opportunity of being heard to the parties concerned, including the Respondent No. 3, and it shall decide whether the permission/licence issued to Respondent No. 2 is liable to be suspended/cancelled or not. In case of non-cooperation in hearing by any of the parties, after being given opportunity, the Respondent No. 1 would be at liberty to proceed further to take decision, as directed above, in accordance with provisions of Drugs and Cosmetics Act, 1940 and rules framed thereunder.