Dongguan Tr Bearing Co Ltd vs. Harman Oversea

IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 513 OF 2015

IN

SUIT NO. 674 OF 2014

Mr. K. Munshi, with Mr. Amit Jamsandekar, Ms. Alka Parelkar, Ms. Esha Trivedi, i/b V.A. Associates for the Plaintiffs

Mr. H.W. Kane, with Mr. A. Kane, Mr. Nikhil Sharma i/b W.S. Kane and Company for the Defendants.

CORAM: G.S. PATEL, J DATED: 18th October 2016

PC:-

1. In facts that are more than somewhat needlessly complicated, Mr. Munshi has pressed his application for ad interim relief in this Notice of Motion. In the meantime, Mr. Kane for the Defendants has filed Notice of Motion No. 1199 of 2014, challenging the jurisdiction of this Court by raising a plea under Section 9A of the Code of Civil Procedure, 1908. It appears that after that plea was raised, by an order dated 27th April 2015, this Court (Mr. Justice Gupte) granted leave under Clause XIV of the Letters Patent to combine the cause of action in passing off with the cause of action in infringement. While doing so, by his reasoned judgment, Mr. Justice Gupte held that the Court had the initial jurisdiction to entertain the Suit on the cause of action in infringement. The Defendants have challenged that order in Appeal No. 340 of 2015, which is pending. Without getting any further into the controversy, and noting only that the 2nd Plaintiff is merely a distributor for the China-based 1st Plaintiff Company, and does not itself claim any proprietary rights over the mark in question, I will note that there is also a previous order of Mr. Justice Kathawalla of 9th June 2015, saying that the present Notice of Motion may be placed after the Appeal is disposed of.

2. Therefore, what remains is to examine the application for ad interim reliefs and see if a sufficiently strong prima facie case is made out for the grant of any such relief.

3. There is no dispute that two marks are identical. The only question is about prior user. The Plaintiff claims that it adopted the mark TR and this was registered to it in China in 1988 and in India in 1996. There is a registration certificate shown to me. The dispute is of prior user. The earliest invoice that the Plaintiff is able to show with the mark TR is of 2006. There are earlier invoices but they do not have the mark. Even more curiously, the earlier invoice of 1996 on which the Plaintiffs rely is one that seems to have been issued directly by the 1st Plaintiff and has not been routed through the 2nd Plaintiff at all.

4. There is in addition mentioned of a special certificate of 2013, which identifies certain goods as having originated from the Plaintiffs' factory in China. This is to be found on page 14 of the Additional Affidavit. It is very peculiar that this certificate is issued by another Chinese company in relation to a invoice No. E7-418005 dated as far back as 7th January 1987. That invoice is on the preceding page at 13 and it is not an invoice of the 1st Plaintiff Company either, but yet another Chinese company. The invoice of 1987 refers to TR-brand bearing units. It is therefore only a late 2013 certificate, unsigned and bearing only a stamp, which purports to state that the goods in question originated from the 1st Plaintiff's factory in China.

5. On this basis, and there is no other shown to me, the Plaintiffs say that they have on the question of prior user a sufficiently strong prima facie case for the grant of ad interim relief.

6. I disagree. This is hardly the kind of material on which I could possibly found any sort of ad interim order.

7. No ad interim reliefs.

(G. S. PATEL, J.)