Alex G. Muricken v. Murickens Marketing System LLP and George G. Muricken

# **IN THE HIGH COURT OF KERALA AT ERNAKULAM** **PRESENT** **THE HONOURABLE MR. JUSTICE DEVAN RAMACHANDRAN** **FRIDAY, THE 24TH DAY OF JANUARY 2020 / 4TH MAGHA, 1941** ## **FAO.No.10 OF 2020** **AGAINST THE ORDER IN I.A.448/2019 IN OS 1/2019 DATED 20-12-2019 OF ADDITIONAL DISTRICT JUDGE - IV, KOTTAYAM** ## **APPELLANT/RESPONDENT/DEFENDANT:** **ALEX G. MURICKEN AGED 47 YEARS S/O. LATE C.V GEORGE G MURICKEN, MURICKEN TRADING COMPANY, HEAD OFFICE, KURUPPANTHARA, KOTTAYAM 686 604** **BY ADVS. SRI.VIZZY GEORGE KOKKAT SRI.C.HARIKUMAR SRI.RENJITH RAJAPPAN SMT.POOJA SURESH** ## **RESPONDENTS/PETITIONERS/PALINTIFFS:** **1 MURICKENS MARKETING SYSTEM LLP REPRESENTED BY DESIGNATED PARTNER, GEORGE G. MURICKENS BUILDINGS, HEAD OFFICE, KADUTHURUTHY, KOTTAYAM 686 604** **2 GEORGE G. MURICKEN, AGED 52 YEARS S/O. LATE C.V GEORGE G. MURICKEN, MURICKENS HOUSE, KADUTHURUTHY, KOTTAYAM 686 604** **R2 BY ADV. SMT.RESMI THOMAS R2 BY ADV. SRI.K.V.SURESH KUMAR, SRI.GIMMY JOSEPH & SMT.DEEPTHY MG** **THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR ADMISSION ON 24.01.2020, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:** **FAO.No.10 OF 2020** **2** ## **J U D G M E N T** The defendant in O.S.No.1/2019, on the file of the Additional District Court - IV, Kottayam, is the appellant. 2. This appeal is impelled against the order of injunction, granted by the District Court under the provisions of Order XXXIX Rules 1 and 2 of Code of Civil Procedure (CPC for short) on the application of the respondents - who are the plaintiffs - restraining the appellant from selling the products using the name “M.G and Murickens Group”, “Murickens Group”, “Murickens Flyline and M.G” with or without logo and any other marks which are identical, similar or deceptively similar to the plaintiffs' trademark, which they say had been registered more than 28 years ago. 3. The Court below, after evaluating the materials available, but without the parties having led any evidence, concluded that a prima facie case has been made out, issued an order under Order XXXIX Rules 1 and 2 of CPC, which is assailed before this Court. 4. I have heard Sri.Vizzy George, learned counsel appearing for the appellant and Smt.Deepthi M.G, learned counsel appearing for the respondents. **FAO.No.10 OF 2020** **3** 5. Sri.Vizzy George began his submissions by saying that the Court below has virtually prejudged all the issues raised in the suit in impugned order, since it has concluded that his client is not entitled to use the name 'Muricken', even though it is a family name and it has been used by him for the last several years. The learned counsel submitted very vehemently that the documents on record would clearly show that his client has a trademark under the name 'Bright Star', while he has been using the trade name 'Murickens Trading Company' for the last several years. He says that the brochures on record and other materials would clearly indicate this and therefore, that an application for injunction, filed by the respondents as late as on 20.12.2019, ought not to have been allowed by the court below, without verifying whether his client had been using the afore trade name, as has been asserted, for the last several years. He, therefore, prays that the order impugned be set aside and the injunction granted against his client be vacated. 6. In response to the above, Smt.Deepthi M.G, learned counsel appearing for the respondents, submits that the appellant is trying to pass off his products as being that of her clients, since they are of the same nature, by using the name **FAO.No.10 OF 2020** **4** 'Murickens' deceptively to make it appear that these are manufactured by her clients. She says that this is a classic case of passing off by using the registered trademark of her clients; and therefore, that the Court below was without fault in having issued the impugned order. She, therefore, prays that this appeal be dismissed. 7. I have considered the afore submissions and have also examined the order impugned in this appeal. 8. The reasons that impelled the Court below to have issued the impugned order are available in paragraphs 8 and 9 thereof, which I reproduce, so as to avoid repetition. “8. Respondent's counsel replied that second petitioner and the respondent are brothers and they conducted the business together. The business was started by their father and the word Murikens is the family name of the 2[nd] petitioner and the respondent. During 2014 due to some difference of opinion, they were separated and started separate business. Muriken is not the domain name of the petitioner. The trademark used by the respondent MURICKENS TRADING COMPANY is not similar except the word Murikens there is nothing in common in the trademark of the petitioner and defendant. The domain name of the respondent is entirely different from the domain name of the petitioner. Petitioner cannot lay exclusive claim over word Muriken and the trademark of the respondent in BRIGHTSTAR. So there is nothing to cause any damage as claimed by the petitioner. 9. The petitioner herein has the **FAO.No.10 OF 2020** **5** registered trademark MG AND MURIKENS GROUP, MURICKENS GROUP with clear logo. Ext.A7 the application filed for registration of the trademark and the registration certificate clearly shows the trade name and trademark of the petitioner. In order to prove the trademark and the logo the petitioner is produced trademark certificate and the advertisement of their products to establish the prima facie case of the petitioner. The publication of the products made by the respondent is produced and it show that the respondent herein has used the logo of the petitioner in some of their products especially solar power system and they used the trade name of the petitioner with logo and FLYLINE and trade name MG, FLYLINE etc. in their business. As per Ext.A7 registration certificate the petitioner alone shall the right to use the trade name, trademark and logo exclusively. The photographs produced by the commissioner also would show that the counter petitioner herein has using the trade name MURICKENS GROUP, MG and logo of the petitioner in their various products. The logo used by the defendant is deceptively similar to the logo of plaintiff. Though the defendant alleged that the father has started the business by name MURICKANS ELECTONICS AND ENGINEERING WORKS, no documents to show that the firm was registered with the trade name MG AND MURICKAN GROUP. petitioner produced copy of registration certificate and is marked as Ext.A2. It shows that the name of the establishment is Murickans Electronics and Engineering Ltd. Ext.A2 is of the year 1992. The photographs taken by the Advocate Commissioner and the photographs of advertisement of the products of the defendant, Ext.P11 clearly show that defendant is using the registered trade mark of plaintiff, MG FLYLINE, MURICKANS GROUP AND INFRINGING MARK. Defendant also used LOGO of the plaintiff by using “T” inside the letter M in the same style and trade **FAO.No.10 OF 2020** **6** dress of the plaintiff to deceive the general public.” 9. As is evident from the afore extracted portions of the order, the Court below has found, that the Trademark Certificate and the advertisement brochures produced by the plaintiffs establish a prima facie case that the registered trade mark 'M.G and Muricken Group' with clear logo and the other trademarks are owned by them and that the trademark owned by the defendant is only 'Bright Star'. The Court below, therefore, came to the conclusion that since the products of both sides are similar, if not identical, use of the word 'Muricken' would lead to a deceptive practice on the customers and that it would amount to passing off in law. 10. The conclusions of the Court below certainly are without fault since, going by the materials available, this is the only order that could have been issued in the given circumstances. 11. That said, however, Sri.Vizzy George, submits that his client had produced all relevant documents before the Court below, which would establish that the name “Muricken” is a family name and he relies on a Division Bench judgment of the Hon'ble High Court of Delhi in **Shriram Education Trust v.** **FAO.No.10 OF 2020** **7** ## **SRF Foundation and Others [2016 182 PLR 3] (FAO** **280/2015),** wherein, the declaration has been to the effect that a family name cannot be used by one side to the exclusion of the other. He says that if his client had been given an opportunity of leading evidence and to mark documents, he would have been able to convince the court below that the word 'Muricken' cannot be used exclusively by the plaintiffs, even though they have a Trade Mark under the name 'Muricken Group'. He then vehemently asserted that the name 'Muricken' cannot be the subject of a Trade Mark or for exclusivity in its use and therefore, that his client is also entitled to use it, particularly because, he had been selling his products under the registration obtained from the various statutory Authorities under the name 'Muricken Trading Company'. 12. When I hear Sri.Vizzy George as afore, it is without doubt from the records that the documents referred to by him were produced by his client in the Court below after the IA had been heard finally and orders reserved. Hence, the contention that his client had not been able to lead evidence or mark documents becomes wholly untenable. 13. Obviously, therefore, as I have already said above, the Court below cannot be found at fault; however, the **FAO.No.10 OF 2020** **8** pertinent question is whether a further opportunity should be given to the appellant to establish his case, particularly when he says that he has been using the trade name 'Muricken Trading Company' for the last several years. 14. When I consider the dialectical contentions, it is without doubt that unless the appellant is able to show, at least prima facie, that he has been using the trade name 'Muricken Trading Company' for the last several years and that he is entitled to use the name 'Muricken' as being his family name, the injunction now ordered cannot be vacated. However, I am also of the firm view, so as to balance the rival interests of the parties and to obtain substantial justice, that a further opportunity ought to be given to establish his case, as may be available in law. 15. For the above purpose, I deem it appropriate to direct the Court below to reconsider I.A.No.448/2019 in O.S.No.1/2019, after affording a further opportunity to both sides to lead evidence or to produce documents, as they may be advised; and until such time as it is disposed of, the injunction now issued in the impugned order will continue to be in force. 16. In order to ensure that the parties are not put to undue prejudice on account of any delay that may be **FAO.No.10 OF 2020** **9** occasioned in reconsideration of the I.A, I direct the Court below to complete the afore exercise, as expeditiously as is possible, but not later than one month from the date of receipt/production of a copy of this judgment. I further order the parties to mark appearance before the court below for this purpose on 31.01.2020. This FAO thus stands disposed of; however, without making any order as to costs on account of the peculiar circumstances that I have noticed herein and consequentially, direct the parties to suffer their respective costs. ## **SD/-** ## **DEVAN RAMACHANDRAN** rp ## **JUDGE** **FAO.No.10 OF 2020** **10** ## **APPENDIX** ## **PETITIONER'S/S EXHIBITS:** **ANNEXURE A1 THE CERTIFIED COPY OF THE LIST OF DOCUMENTS FILED BY THE PETITIONER IN O.S NO. 1 OF 2019 BEFORE THE IVTH ADDITIONAL DISTRICT COURT, KOTTAYAM.** **ANNEXURE A2** **THE CERTIFIED COPY OF ARGUMENT NOTES FILED BY THE PETITIONER IN O.S NO. 1 OF 2019 BEFORE THE IVTH ADDITIONAL DISTRICT COURT, KOTTAYAM.**