Wednesday, 4 December 2024

Can a Family Court entertain a trademark infringement suit?

 Interestingly, the impugned order has been issued in

OP No.1509/2021, namely Ext.P1 filed by the petitioner, seeking

permanent prohibitory injunction against the respondent from

entering into the two shop rooms scheduled therein, which are

situated at Changanacherry. The respondent, by filing a

counterclaim, alleging that the said shops are being run under the

name “CALLUNA”, over which, she holds a valid Trade Mark; and

therefore, sought an injunction against the petitioner from using it

in any manner. {Para 2}

3. The learned Family Court initially passed an order,

which was challenged before this Court, culminating in a judgment

remanding the matter; and thereupon the learned Court

reconsidered the matter, which has now led to Ext.P10 order.

4. Pertinently, through Ext.P10, I.A.No.1/2021 filed by the

petitioner seeking permanent prohibitory injunction against the

respondent from entering into the two shop rooms has been

rejected; but the latter's application, namely I.A.No.10/2022, has

been allowed, thus restraining the former from using the

trademark “CALLUNA”, with a consequential direction to him to remove it from the name boards/hoardings and social media,

wherever he has displayed/used in his personal capacity.

 Obviously, an injunction against the petitioner, to remove the name boards, prima facie, can be interpreted to the prejudice of the respondent because, going by the findings of the learned Family Court, she is entitled to be in charge of the shop room, at least equally with the petitioner.

9. That apart, when the specific case of the petitioner

was that a counterclaim seeking a roving order as now asserted by

Sri.Manu G.Nair is not maintainable, it has not been considered by

the learned Court in that perspective, but it appears to have gone

on on the assumption that what has been sought for is confined to

the subject matter. This is indubitable because, nowhere in the

impugned order is there any discussion by the learned Family

Court whether a counterclaim, which runs beyond the original

petition particularly with respect to shops which are not part of

the subject matter, would be maintainable; but it has proceeded on the impression that the injunction has been sought only as against  such subject matter.

11. In the afore circumstances, we allow this original

petition and set aside Ext.P10 to the extent impugned, namely qua

I.A.No.10/2022; with a consequential direction to the learned

Family Court to reconsider the said application after affording

necessary opportunities to both sides, thus culminating in an

appropriate fresh order expeditiously.

IN THE HIGH COURT OF KERALA AT ERNAKULAM

OP (FC) NO. 591 OF 2024

C. K. CHANDRAN Vs  MANJU, 

PRESENT

 MR. JUSTICE DEVAN RAMACHANDRAN

&  MRS. JUSTICE M.B. SNEHALATHA

Dated: 10.10.2024.

Citation: 2024:KER:77983


The petitioner challenges Ext.P10 order of the learned

Family Court, Kottayam at Ettumanoor, however, only as regards

the injunction ordered by it in I.A.No.10/2022.

2. Interestingly, the impugned order has been issued in

OP No.1509/2021, namely Ext.P1 filed by the petitioner, seeking

permanent prohibitory injunction against the respondent from

entering into the two shop rooms scheduled therein, which are

situated at Changanacherry. The respondent, by filing a

counterclaim, alleging that the said shops are being run under the

name “CALLUNA”, over which, she holds a valid Trade Mark; and

therefore, sought an injunction against the petitioner from using it

in any manner.

3. The learned Family Court initially passed an order,

which was challenged before this Court, culminating in a judgment

remanding the matter; and thereupon the learned Court

reconsidered the matter, which has now led to Ext.P10 order.

4. Pertinently, through Ext.P10, I.A.No.1/2021 filed by the

petitioner seeking permanent prohibitory injunction against the

respondent from entering into the two shop rooms has been

rejected; but the latter's application, namely I.A.No.10/2022, has

been allowed, thus restraining the former from using the

trademark “CALLUNA”, with a consequential direction to him to

remove it from the name boards/hoardings and social media,

wherever he has displayed/used in his personal capacity.

5. Sri.Ramesh Ganapathy - appearing for the petitioner,

argued that the impugned order of the learned Family Court is

now being misused by the respondent even before Authorities and

Police, to ensure that he is not allowed to run any shop anywhere

in the country; and that he is being forced to remove the name

boards/hoardings, as also from social media, even though they are

not part of the cause of action projected in Ext.P1. Sri.Ramesh

Ganapathy also impelled a contention that I.A.No.10/2022 was not

maintainable because, the counterclaim itself has no legs to stand

on forensically; but that the learned Family Court did not

consider it in proper perspective and issued Ext.P10, which he

asserted, is in error.

6. However, Sri.Manu G.Nair - appearing for the

respondent, argued that the issues projected in the counterclaim is

only incidental to the cause of action as projected in the Original

Petition; and therefore, that its maintainability can never be

questioned. He contended that, therefore, I.A.No.10/2022 was

also liable to be considered by the learned Family Court, which it

has done and argued that its conclusions on it, as available from

the said order, is without error. He then asserted that the

counterclaim preferred by his client is not limited to the subject

matter of the Original Petition, but to every other shops run by the

petitioner wherever available in Kerala and hence that the order in

I.A.No.10/2022 is irreproachable.

7. We must record that there are some real issues now

visible from Ext.P10 order, when it is tested on the rival

submissions of the parties.

8. The first is that, when I.A.No.1/2021 was dismissed and

against which, no appeal has been filed – at least not at this time –

the findings of the learned Family Court, that the shops in

question are being held by the husband in the capacity of the

trustee and that it should be assumed to have been begun for her

and on behalf of her, even though the rooms are rented by the

husband in his name, remain firm. Obviously, an injunction

against the petitioner, to remove the name boards, prima facie,

can be interpreted to the prejudice of the respondent because,

going by the findings of the learned Family Court, she is entitled to

be in charge of the shop room, at least equally with the petitioner.

9. That apart, when the specific case of the petitioner

was that a counterclaim seeking a roving order as now asserted by

Sri.Manu G.Nair is not maintainable, it has not been considered by

the learned Court in that perspective, but it appears to have gone

on on the assumption that what has been sought for is confined to

the subject matter. This is indubitable because, nowhere in the

impugned order is there any discussion by the learned Family

Court whether a counterclaim, which runs beyond the original

petition particularly with respect to shops which are not part of

the subject matter, would be maintainable; but it has proceeded on

the impression that the injunction has been sought only as against

such subject matter.

10. We are, therefore, of the firm view that the matter

will require to be reconsidered by the learned Family Court and

when we say so, we are fully aware that Ext.P10 is a consequence

of a reconsideration which is ordered by this Court before.

However, the said reconsideration was ordered not on the edifice

of our observations as said above, but for other reasons; and as

long as the confusion remains with respect to the manner in which

the cause of action of the parties are to be assessed and evaluated,

particularly on the touchstone of the question whether an omnibus

order of injunction against the petitioner is maintainable under the

provisions of the Trademark Act even to shops which are not

subject matter of the original petition filed by him, has not been

answered.

11. In the afore circumstances, we allow this original

petition and set aside Ext.P10 to the extent impugned, namely qua

I.A.No.10/2022; with a consequential direction to the learned

Family Court to reconsider the said application after affording

necessary opportunities to both sides, thus culminating in an

appropriate fresh order as expeditiously as is possible, but not

later than one month from the date of receipt of a copy of this

judgment.

Needless to say, all objections of the petitioner, including

of maintainability, will be considered by the learned Family Court

and its opinion indited in the resultant order.

Sd/- DEVAN RAMACHANDRAN

JUDGE

Sd/- M.B. SNEHALATHA

JUDGE


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