Application for Vacating the Order of Stay

DISTRICT: DHAKA

IN THE SUPREME COURT OF BANGLADESH

HIGH COURT DIVISION

(CIVIL REVISIONAL JURISDICTION)

CIVIL REVISION NO. 4201 OF 2003

IN THE MATTER OF:

An application for vacating the order of stay.

A N D

IN THE MATTER OF:

X Foods Company Limited

Defendant

/Respondent

/Petitioner

Versus

Y Sweets and Company Limited

Plaintiff

/Appellant

Opposite-Party

To:

Mr. Justice K. M. Hassan, the Chief Justice of Bangladesh and his companion Justices of the Hon’ble Supreme Court of Bangladesh.

The humble petition on behalf of the plaintiff/appellant/opposite-party most respectfully

SHEWETH:

01. That the defendant/respondent/petitioner has filed the above revisional petition against judgement and order dated 30.09.2003 passed by the learned District Judge, Dhaka in Miscellaneous Appeal No. 45 of 2000 allowing the appeal filed by the plaintiff/appellant/opposite-party thereby reversing the order No. 7 dated 23.01.2000 passed by the learned Court of Assistant Judge, 4th Court, Dhaka in Title Suit No. 301 of 1999 rejecting the application under Order XXXIX, Rule 1 and 2 read with section 151 of the Code of Civil Procedure for temporary injunction restraining the defendant/respondent/petitioner form manufacturing and marketing the potato chips in the packet, design and colour identical with that of the potato chips being manufactured and marketed by the plaintiff/appellant/opposite-party with trade mark “Potato Crackers”.

02. That the plaintiff/appellant/opposite-party is a leading manufacturer of various kinds of chips and has been selling its products in Bangladesh since 1986 with the Trademark “Potato Crackers” written in an artistic style along with particular colour, design and get-up on its wrapper.

03. That on 04.07.95 the plaintiff/appellant/opposite-party applied for registration of its Trademark of “Potato Crackers” vide application No. 44151 dated 04.07.95. The plaintiff/appellant/opposite-party also applied for registration of Design vide Application No. D-48/96 dated 12.02.96 under Serial No. 01577. After completion of all formalities the registration of Trademark of “Potato Crackers” was obtained on 27.08.2001 and the registration of Design was obtained on 27.08.96.

Copies of the Trademark Application No. 44151 dated 04.07.95, Trademark Registration Certificate, Design Registration Certificate and wrapper of “Potato Crackers” are annexed herewith an marked as ANNEXURES “1”, “1(a)”, “1(b)” and “1(c)”.

04. That because of the superior quality of goods manufactured by the plaintiff/appellant/opposite-party the Trademark “Potato Crackers” along with particular colour design and get-up on its wrapper has become popular amongst its consumers and the wrapper with its particular colour design and get-up has been associated in the minds of the consumers so much so that any consumer whatsoever sees a wrapper of chips with that particular colour design and get-up, they mean and understand the chips of the plaintiff/appellant/opposite-party only and of nobody else.

05. That because of the continuous use and advertisements through various media, the products of the plaintiff/appellant/opposite-party under the aforesaid Trademark “Potato Crackers” along with particular colour, i.e. red, green and device of potato chips are widely known in the market as “Potato Crackers” and the customers purchase chips by that name and by that distinctive wrapper.

06. That having known the popularity of the Trademark and business success under the Trademark “Potato Crackers” of the plaintiff/appellant/opposite-party along with its particular colour design and getup, the defendant/respondent/petitioner started manufacturing and selling chips using the words “Potato Chips” in such a manner to come as close to the Trademark “Potato Crackers” of the plaintiff/appellant/opposite-party and adopted a confusingly similar colour design and getup on its wrapper with malafide intention of passing off its inferior quality chips as the superior quality chips of the plaintiff/appellant/opposite-party. The unwary purchasers were being misled by purchasing the inferior quality chips of the defendant/respondent/petitioner thinking it to be the superior quality chips of the plaintiff/appellant/opposite-party. The ordinary customers were being deceived by the passing off activities of the defendant/respondent/petitioner and the hard-earned goodwill and reputation of the plaintiff/appellant/opposite-party were being damaged thus causing financial loss and injury to the plaintiff.

Wrapper of “Potato Chips” is annexed herewith and marked as ANNEXURE “2”.

07. That in such situation on 23.11.1999 the plaintiff/appellant/opposite-party filed Title Suit No. 301 of 1999 in the Court of Assistant Judge, 4th Court, Dhaka against the defendant/respondent/petitioner for the following reliefs:

(a) For perpetual injunction restraining the defendants and/or their servants and/or agents from manufacturing selling, offering for sale or advertising “Potato Chips” with the imitated trade mark and wrapper as shown in schedule ‘B’.

(b) For a mandatory injunction compelling the defendants and/or their servants and/or agents to deliver on oath unto the plaintiff or to destroy all blocks seals and unused “Potato Chips” bearing the Trademark as shown in schedule ‘B’.

08. That along with the plaint the plaintiff/appellant/opposite-party also filed an application for temporary injunction restraining the defendant/respondent/petitioner from using the words “Potato Chips” along with colour, design, get-up on its wrapper similar/confusingly similar to the Trademark and wrapper of the plaintiff/appellant/opposite-party and from using the Trademark “Potato Chips” and wrapper similar to the Trademark and colour, design and get-up of the plaintiff/appellant/opposite-party.

09. That after hearing, the learned Assistant Judge, 4th Court rejected the application for injunction vide order dated 23.01.2000. Against the said order dated 23.01.2000 the plaintiff/appellant/opposite-party filed Miscellaneous Appeal No. 45 of 2000 in the Court of District Judge, Dhaka. The Miscellaneous Appeal was transferred to the Court of Additional District Judge, 9th Court, Dhaka for hearing. The appellate Court after hearing was pleased to allow the appeal vide judgement and order dated 30.09.2003 and passed the following order:

AZGe,

Av‡`k nBj †h,

AÎ wgm Avcxj †gvKÏgvwU †`vZidv m‡Î cÖwZØw›`ZvKvix ‡imc‡Û‡›Ui weiy†× gÄyi Kiv †Mj| GZØviv XvKvi 4_© mnKvix RR Av`vj‡Zi †`Iqvbx 301/99 bs †gvKÏgvi weMZ Bs 23/1/2000 Zvwi‡Li A¯’vqx wb‡lavÁvi `iLv¯ bvgÄy†ii Av‡`kUzKz i` iwnZµ‡g ev`x †Kv¤cvbx cÖv_©xZ g‡Z wb‡lavÁvi `iLv¯ gÄyi Kiv †Mj| AÎ †gvKÏgv wb®cwË bv nIqv ch©š weev`x ‡Kv¤cvbx‡K ev`x †Kv¤cvbxi Drcvw`Z I evRviRvZK…Z c‡U‡Uv µvKvm© bvgxq †UªWgvK©hy³ is, bKkv I †gvo‡Ki AbyKi‡b c‡U‡Uv Pxcm bvgxq cb¨ Drcv`b I evRviRvZ bv Kivi Rb¨ A¯’vqx wb‡lavÁvi Av‡`k Øviv evwiZ Kiv †Mj|

10. That as against the said judgement and order dated 30.09.2003 the defendant/respondent/petitioner filed the instant revisional petition and the Hon’ble Court vide order dated 06.10.2003 was pleased to issue Rule upon the plaintiff/appellant/opposite-party. The Hon’ble Court was also pleased to stay operation of the impugned judgement and order.

11. That it is submitted that the defendant/respondent/petitioner obtained the Rule and stay upon suppressing the facts that the plaintiff/appellant/opposite-party filed trademark registration application No. 44151 dated 04.07.95 long before filing of the trademark registration application No. 60134 dated 23.05.999 by the defendant/respondent/petitioner.

12. That it is submitted that the established principle of law is that, even a registered owner of trademark can be refrained from passing off its own goods as the goods of an unregistered use of trademark. In the instant case admittedly the plaintiff/appellant/opposite-party is the prior user of the Trademark “Potato Crackers” and has been using the said mark from 1988. On the other hand the defendant/respondent/petitioner has proposed to use its trademark from 1999 which is evident from its trademark registration application No. 60134 dated 23.05.99. Both the Courts below have given same findings on the similarity of the products of the parties to the instant case. The learned Assistant Judge has given its finding in the following manner:

ev`xi c‡Y¨i †gvo‡Ki is Ges weev`xi c‡Y¨i †gvo‡Ki is cÖvq GKB

13. That the learned Additional District Judge has also given its finding in the following manner:

weev`x †Kv¤cvbxi bvgxq c‡U‡Uv µvKvm© Gi †gvoK I weev`xi bvgxq c‡U‡Uv Pxcm Gi †gvoK Gi mvBR AvqZ‡b GKB iKg Ges D³ Dfq †gvo‡Ki KvMR GK I Awfbœ| ZvQvov D³ †gvo‡Ki Dc†i bKmv I is wVK GKBfv‡e Kiv nBqv‡Q|

14. That in the circumstances it is apparent that the plaintiff/appellant/opposite-party is the prior user of the Trademark and the Trademark of the defendant/respondent/petitioner is similar to that of the plaintiff/appellant/opposite-party. As such it is apparent that the defendant/respondent/petitioner is passing off its goods as the goods of the plaintiff/appellant/opposite-party and such fact establishes prima facie case of the plaintiff/appellant/opposite-party in granting temporary injunction.

15. That it is submitted that unless the defendant/respondent/petitioner is restrained by an order of temporary injunction from passing off its goods as the goods of the plaintiff/appellant/opposite-party and accordingly unless the order of stay granted by this Hon’ble Court is vacated, the goodwill and reputation of the plaintiff/appellant/opposite-party will be seriously damaged and as such the plaintiff/appellant/opposite-party will suffer irreparable loss and injury in that if the goodwill and reputation of the plaintiff/appellant/opposite-party is damaged, it cannot be retrieved and therefore, monitory compensation would not be adequate remedy for such loss and injury of the plaintiff/appellant/opposite-party.

16. That it is also submitted that since in the absence of an injunction the plaintiff/appellant/opposite-party will suffer irreparable loss and injury which cannot be compensated in terms of money, the balance of convenience and inconvenience is in favour of the plaintiff/appellant/opposite-party.

17. That it is also submitted that by taking advantage of the order of stay granted by this Hon’ble Court staying operation of the temporary injunction granted by the appellate Court, the defendant/respondent/petitioner is continuously passing off its goods as the goods of the plaintiff/appellant/opposite-party and thus causing serious damage to the goodwill and reputation of the plaintiff/appellant/opposite-party. In such situation for ends of justice it is necessary that the order of stay granted by this Hon’ble Court should be vacated.

18. That in such circumstances this application has been filed for vacating the order of stay. Unless the order of stay is vacated the plaintiff/appellant/opposite-party will suffer irreparable loss and injury which cannot be compensated in terms of money. As such for ends of justice the order of stay may be vacated.

19. That this application is filed bonafide.

Wherefore it is most humbly prayed that your Lordships would graciously be pleased to vacate the order of stay passed earlier by this Hon’ble Court and/or pass such other or further order or orders as your Lordships may deem fit and proper.

And for this act of kindness the applicant as in duty bound shall ever pray.

AFFIDAVIT

I, Md. Z, son of Late K, Deputy Chief Accountant of Y Sweets and Company Limited, Head Office, Madhumita Building (1st floor), 160 Motijheel Commercial Area, Dhaka-1000, now at Red Crescent-Concord Tower, 17 Mohakhali Commercial Area, P.S. Gulshan, Dhaka-1212, aged about 34 years, by faith Muslim, nationality Bangladeshi, profession service, do hereby solemnly affirm and declare as follows:

1. That I am the Deputy Chief Accountant of the opposite-party and acquainted with the facts and circumstances and competent to swear this Affidavit.

2. That the statements of facts made in this application are true to the best of my knowledge and belief and rests are submissions before this Hon’ble Court.

Prepared in my office : DEPONENT
Advocate The deponent is known to

me and identified by me.
Solemnly affirmed before me by the aforesaid deponent this the 3rd day of December, 2003 at ______ a.m. ADVOCATE
Commissioner of Affidavits

Supreme Court of Bangladesh

High Court Division

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