Case No: Civil Petition for leave to Appeal No. 1521 of 2003
Judge: Mohammad Fazlul Karim ,
Court: Appellate Division ,,
Advocate: Mr. M. A. Samad,Mr. Ozair Farooq,,
Citation: 57 DLR (AD) (2005) 29
Case Year: 2005
Appellant: A & E Products Group LP
Respondent: Md. Mohiuddin Ahmed
Subject: Trade Mark, Intellectual Property,
Delivery Date: 2003-12-14
KM Hasan CJ
Md. Fazlul Karim J
Hamidul Haque J
Md. Tofazzul Islam J
A & E Products Group LP and others
Md Mohiuddin Ahmed and others
December 14, 2003.
The Trade Marks Act, 1940 (V of 1940)
Section 20 (2)
Had the petitioner’s product been registered possibly a complaint could be made under the Trade Marks Act to protect the trade mark of the petitioner but that not having been registered petitioner has no legal right to protect the trade mark sought for by way of an order of injunction in the court of law. ......................(7)
Mohammad Ozair Farooq, Senior Advocate, instructed by Md. Nawab Ali, Advocate‑on‑Record for the Petitioners.
MA Samad, Senior Advocate, instructed by ASM Khalequzzaman, Advocate‑on‑Record‑For Respondent No. 1
Not represented‑Respondent Nos. 2‑5.
Civil Petition for leave to Appeal No. 1521 of 2003
Md. Fazlul Karim J.
The plaintiff‑petitioners seek leave to appeal against the impugned judgment and order of the High Court Division passed in FMA No. 302 of 2003 dismissing the appeal against the order dated 29‑5‑2003 passed by the Joint District Judge, fifth Court, Dhaka in Title suit No. 48 of 2003 vacating the ad interim order of injunction on an off- date without hearing the plaintiff petitioners.
2. The plaintiffs filed the suit stating, inter alia that the plaintiff‑petitioner No. 1 is a corporation incorporated in Delaware, USA, and is the largest manufacturer, seller and marketing the top quality hangers under the brand name 'A&E Products' throughout the world. The plaintiff‑petitioner No.3 Company had been producing hangers since 1999. That the plaintiff No.1 in order to protect its name and trade mark got the plaintiff No. 2 Company incorporated in 1997with the proforma defendant No. 4. In order to protect its trade name, the plaintiff No. 1 on 15‑4‑2001 filed trade mark application Nos.70034, 70035, 70036 and 70047 under clause 21 with the Registrar of Trade Marks. The plaintiff No. 3 has set up 100% export oriented industrial units to manufacture and export quality hangers manufactured by the plaintiff No. 3 is of international standard, the plaintiff No. 1 has entered into a Licensing Agreement with the plaintiff No. 3 to manufacture hangers and export the same under the name and brand of 'A & E Products'. In the month of June, 2002, the plaintiff No. 3 received definite information that the defendant Nos.1 and 2 were surreptitiously passing off their manufactured hangers under the brand name of 'A&E Products'. The said defendants were‑trying to sell the hangers under the said brand name to various foreign companies or 100% export oriented local companies. The plaintiffs then complained to the law enforcing, agencies on 13‑6‑2002 who raided the premises of the defendant No. 1 and found various moulds and dices of hangers along with counterfeited hangers under the brand name 'A & E Products'. The confiscated items are in custody of the law enforcing agencies. That if the defendants Nos. 1 and 2 are, allowed to continue the counterfeiting and piracy, the same will cost the plaintiff No. 3 a loss of business amounting to Taka 20 crore per year. In order to protect the brand name of the plaintiff No.1, the business of the plaintiffs‑appellants petitioners and national interest, the plaintiff No. 3 caused legal notice to be published in a number of daily newspapers, both English and Bengali. In the newspapers the customers were warned of the use of the name of 'A&E Products' and the heinous plan of the defendants Nos. 1 and 2. As soon as the police found the dices with the brand name 'A&E Products' and the legal notice published in the newspapers, the defendant No. 1 decided to incorporate a company under the name 'A&E Products Ltd.' He quickly managed to have the defendant No. 3 company registered in July 2002. Although the plaintiff No. 2 was incorporated earlier in 1997, the defendant No. 3 was incorporated by the office of the Registrar, Joint Stock Companies and Firms in spite of the similarity of name. The sole purpose was to counterfeit and pass off the brand name of the plaintiff No. 1. That the piracy and counterfeiting of the hangers threatened to harm Taka 100 crore yearly business that the plaintiff No. 3 and Bangladesh have been doing with the American Company ie the plaintiff No. 1. To protect its business and its interest, the plaintiff No. 3 made written complaint on 11‑8‑2002 to the defendant No. 4 regarding incorporation of a company by the defendant No. 1 with the similar name of the plaintiff No. 2 who was passing off its product as that of the plaintiff No. 1. After finding substance in the allegations of the plaintiffs, the defendant No. 4 then issued notice dated 17‑8‑2002 requesting the defendant No. 3 to change its name. That in the meantime since the office of the Registrar was dragging the matter; the plaintiff No. 3 made a written complaint to the Minister, Ministry of Commerce and prayed for intervention. Thereafter, the Assistant Secretary of the Ministry of Commerce instructed the defendant No. 4 to impose penalty upon the defendant respondent No. 3. That in the meantime the plaintiffs came to know that the defendants surreptitiously and with malafide intention to sell hangers under the brand name 'A & E Products' with same logo and style made illegal attempt to register the trade mark with the Registrar, Trade Marks and also filed Title Suit No. 44 of 2002 in the Court of Assistant Judge, Fifth Court, Dhaka seeking permanent injunction against the plaintiffs Petitioners from disturbing him to sell his products under the brand name 'A&E Products'. That in spite of the attempts by the plaintiffs and the Ministry, no effective measures have been taken by the Registrar to compel the defendant No. 3 to change its name, the defendants‑respondents are still surreptitiously selling hangers under the pirated brand name. That because of the pirated activities of the defendants respondents to sell hangers under the brand name of 'A & E Products’ and because of such passing off the plaintiffs/petitioners have suffered business loss to the tune of Taka 20 crore for the year, 2002. That, in such facts and circumstances the plaintiffs petitioners was compelled to file the suit for declaration, permanent injunction and damage.
3. Upon filing the suit, the petitioners filed an application under Order XXXIX, rules 1 and 2 read with section 151 of the Code of Civil Procedure praying for an order of temporary injunction restraining the defendants from carrying on manufacturing and marketing of hangers under brand name and logo 'A & E Products' till disposal of the suit and after hearing the parties and considering the cause shown, if any, by the said defendants grant an order of temporary injunction restraining the said defendant No. 2 from manufacturing and marketing of hangers under brand name and logo 'A & E Products'.
4. The learned Joint District Judge while issuing notices upon the defendants to show cause as to why the order of temporary injunction as prayed for shall not be granted, passed, an order of ad‑interim injunction restraining the defendant respondents from carrying on manufacturing and marketing of hangers under the brand name and logo 'A & E Products' till disposal of the temporary injunction matter.
5. On an application under Order XXXIX, rule 4 together with another application under Order VII, rule 11(a‑d) of the Code of Civil Procedure, the learned Joint District Judge was pleased to vacate the said ad‑interim order of injunction fixing a date for hearing of the application under Order VII, rule 11(a‑d) of the Code of Civil Procedure on the date fixed. An appeal therefrom at the instance of the plaintiff‑petitioners was dismissed.
6. Mr. Md. Ozair Farooq, the learned Counsel appearing for the petitioners, submits that the High Court Division committed error of law in dismissing the appeal observing that "We however could not find any reason whatsoever for the order of ad‑interim injunction passed on 17‑4‑2003. Consequence of such order was never taken into consideration", in spite of the fact that the plaintiffs‑petitioners have been using the brand name, logo and style. 'A & E Products' for producing and marketing the hangers since 1999, on the other hand, the defendants‑respondents have been using the same brand name, logo and style, 'A & E Products' since 2000 for producing and marketing counterfeited hangers to the great detriment of the plaintiffs petitioners. and causing serious irreparable loss inasmuch as section 20(2) of the Trade Marks Act, 1940 allowed the plaintiffs‑petitioners to take action against any person for 'passing of' goods as the goods of that person and taking into consideration of the same the Court below passed the order of ad interim injunction and, as such, the judgment and order passed by the High Court Division is liable to be set aside. The learned Counsel further submits that the High Court Division wrongly and improperly dismissed the appeal in spite of the findings and observations that the Court below vacated the order of ad‑interim injunction without considering the fact that the application for vacating was filed on an off date and that copy of the application for vacating the order of ad‑interim injunction was not served upon the plaintiffs‑petitioners and that the date for hearing was fixed on an off date without notice to the petitioners in any manner and that the impugned order vacating the order of ad‑interim injunction does not disclose any reason whatsoever for vacating the ad‑interim order and, as such, the judgment and order passed by the High Court Division is liable to be set aside.
7. It appears that though the defendant respondents did not serve any copy of the application under Order XXXIX, rule 4 of the Code of Civil Procedure upon the plaintiffs but the learned Joint District Judge heard the matter on an off date as the next date fixed was far away. The respondents have alleged that the petitioner's product was not a registered one, for which they could not maintain an application for temporary‑injunction against the defendants and considering that aspect of the case vacated the order of injunction. Had the petitioner's product been registered possibly a complaint could be made under a special situation under Trade Marks Act to protect the trade mark of the petitioners but that not having been registered, the petitioners have no legal right to protect by way of an order of injunction in the Court of law against the alleged violation by the defendant‑respondents.
8. In that view of the above, we do not find any substance in the submissions of the learned Counsel for the petitioners.
The petition is dismissed.