Yasmin Khalique & Ors. vs Mukhtar Alam

The Court :- The instant application has been made under Section 9 of the Arbitration & Conciliation Act, 1996, for inter alia, injunction restraining the

respondent from running a parallel business of manufacturing “MUSA KA GUL†a tobacco product which the petitioners claim to be

manufactured by petitioner no. 3 the partnership firm. Petitioner nos. 1, 2 and the respondent are partners of petitioner no. 3, which is the partnership

firm. Petitioner no. 1 is the mother of the petitioner no. 2 and the respondent is the brother in law of the petitioner no. 1. The partnership firm

registered the device containing the words “MUSA KA GUL†on 19th April, 1999 with user claimed from 1st January, 1986. These particulars

would appear from a certificate annexed to the petition, which also mentions the names of the petitioners and the respondents as partners trading as

Md. Musa & Company, the petitioner no. 3. The petitioners claim that they have recently discovered that the respondent is infringing the trade mark

belonging to the partnership firm and had hence have been constrained to file the present application.

Mr. Ajay Krishna Chatterjee, Senior Counsel appearing for the petitioners submits that the petitioner no. 3 is an unregistered partnership firm and,

therefore, a suit for infringement of the trademark “MUSA KA GUL†could not be filed by reason of the bar contained in Section 69(2) of the

Indian Partnership Act, 1932. He submits that the Deed of Partnership dated 1st April, 1992 contains an arbitration clause which has not been invoked

as yet. He relies on clause 2 of the Deed of Partnership to show that the business of the firm is that of manufacturing and dealing in Tobacco Gul.

Counsel relies on a communication dated 8th February, 2018 by a sales representative of the partnership firm which states, inter alia, that a rival

product under an identical name is being manufactured and sold by one M.S. Industri es and that the sales of the product of the partnership firm is

going down due to the sales of the former. The letter mentions a circular distributed in the market written using the letter head of the partnership firm

and issued by the respondent. From a copy of this undated circular it appears that the respondent, describing himself as a partner of the firm claims to

be the owner of “MUSA KA GUL SUPER†manufactured by M.S. Industries, which is situated at Pakuria, Laxmanpur, Domjur, Howrah and

has been described by the respondent as his associate company. The M.S.Industries would also appear from an invoice dated 16th October 2017

showing sale of “MUSA KA GUL SUPERâ€. However, the address of M.S. Industries in the invoice mentions 53, Phears Lane, Kolkata â€" 700

Mr. Chatterjee claims that on enquiry it has been found that the address mentioned in the invoice i.e. 53, Phears Lane happens to be a residential

house occupied by an elderly person which is corroborated by photographs annexed to the petition. Counsel handed over two containers of two

different brands to the Court.

There is no doubt that the packaging is identical except for the name M.S. Industries being mentioned on the container of the rival product together

with the name of the partnership firm. Besides this, the similarity is such that it is difficult to make out which product belongs to whom. Counsel

submits that the activities of the respondent has caused tremendous prejudice to the business of the partnership firm and relies on Clause 12 of the

Partnership Deed which provides, inter alia, that each partner must be just and faithful to the other partners and the obligation of the partners to give

each other just and faithful accounts of the partnership business. He also relies on Section 16 of the Partnership Act, which reinforces the idea of trust

and confidence and casts a duty on the partners to account for any profit derived for an individual partner from any transaction of the firm or from the

use of the property of business in connection with the firm or firm name.

Mr. Chatterjee submits that he has not served a copy of the application on the respondent since there is a very real likelihood that the rival products

would be dealt with or forthwith sold in the market if the respondent is put on notice. He explains the delay in filing the instant application on the

ground of the cease work which, continued for about two months till the end of April of this year.

Mr. Quasimuddin, appearing for the respondent submits that he has not been served with the copy of the application. However, according to him, the

mark “MUSA KA GUL†has been licensed to the younger brothers of the respondent to whom the respondent has given his support. He does not

deny or dispute the veracity of the documents relied on by the petitioners, but submits that he does not have knowledge of the circulation of the parallel

product in the market and prays for time to be given for filing his opposition to the application.

I have considered the submissions made on behalf of the Counsel appearing for the parties. On the documents shown to this Court there is no doubt

that the rival product is identical to the product manufactured by the partnership firm and contains the registered mark of the partnership firm. It is also

evident from the letter written by the representative of the petitioners the undated circular issued by the respondent and the invoice that respondent is

connected with M.S. Industries. This fact is also not denied by Counsel appearing for the respondent.

From a document dated 13th January, 2018, it appears that the respondent had also been invited by the petitioner no.1 for discussions with regard to

the business affairs of the partnership firm. Therefore, it is also not correct that the respondent had no notice or was not aware that the petitioners

intended to discuss the business affairs of the partnership firm. The invoice is evidence of the fact that the respondent is carrying on distribution and

sale of a rival product using the brand name/ Trade Mark of the partnership firm as well as the name of the firm itself. The inconsistent addresses

mentioned in the invoice and the container are further factors throwing a shadow of suspicion on the respondent. Since the business of the firm

revolves entirely around manufacturing of Tobacco Gul/Tobacco products, unless the respondent is restrained from its present activities and the rival

products are taken into custody, the petitioners and the partnership firm would continue to suffer immediate prejudice. The petitioners are therefore

entitled to interim protection before arbitration proceedings commence between the parties in terms of Clause 15 of the Deed of Partnership. Some

measure of protection is also called for, since the products concerned are low value products consumed on a daily basis by a substantial section of the

public.

For the reasons as stated above, let there be an order in terms of prayer (c) of the petition. Mr. Anil Gupta, Advocate, Bar Library Club is appointed

as Special Officer to inspect the office, factory or wherever the respondent is operating from or manufacturing, selling or circulating products under

the name / mark “MUSA KA GUL†manufactured by M/S. Industries or under any other name / entity under which the respondent may be

operating at any given point of time. The Special Officer is directed to make an inventory and submit a report to this Court and may also take police

help if required during such inspection. List this matter on 11th June, 2018. Let a copy of the petition be served on the respondent. The respondent is

at liberty to file his affidavit-in-opposition in the meantime.