Md. Ripon, Proprietor, Ripon & bros Vs. Heze Wanda Playing Cards Co. Ltd. & ors, 2009, 38 CLC (AD)

Sunday, 17 January 2010 17:52

Written by Md. Ershadul Karim

Supreme Court

Appellate Division

(Civil)

Present:

Md. Abdul Matin J

Md. Abdul Aziz J

Md. Ripon, Proprietor, Ripon and brothers.........Petitioners

Vs.

Heze Wanda Playing Cards Co. Ltd. and others ........Respondents

Judgment

April 19, 2009.

Lawyers Involved:

Saidur Rahman, Advocate, instructed by Md. Nawab Ali, Advocate-on-Record-For the Petitioners.

S.K. Saddique, Advocate, instructed by S.R. Khoshnabish, Advocate-on-Record-For Respondent No.1

Not represented-Respondent Nos. 2-5.

Civil Petition for Leave to Appeal No. 1552 of 2008.

(From the judgment and order dated 24.07.2008 passed by the High Court Division in Civil Revision No.3026 of 2006 with Civil Revision No.2212 of 2008)

Judgment

Md. Abdul Aziz J. - This petition for leave to appeal is directed against the judgment and order dated 24.07.2008 passed by a Single Bench of the High Court Division in Civil Revision No.2212 of 2008 discharging the Rule arising out of judgment and order dated 09.06.2008 passed in Title Suit No.2384 of 2008 by the learned District Judge, Dhaka staying operation of ex parte decree of Title Suit No. 10 of 2006 by the learned Additional District Judge, Dhaka.

2. The short case of the plaintiff is that the plaintiff is a research based manufacturer from China since long time of the Playing Cards and have been marketing the same throughout the world including Bangladesh. One of the popular trade marks of the plaintiff used in Playing Cards failing under class-16 consisting of the word "AMERICA, "USA", "DON" and "VISA" in artistic style along with distinctive colour, scheme design and getup and the said trademark has already acquired popularity and distinctiveness by extensive use and sale since a long time. The plaintiffs Trade Mark with distinctive colour scheme, design, device and getup has been shown in schedule 'A' to the plaint. To protect and safeguard the plaintiffs right, interests and title in Playing Cards which are extensively used by the plaintiff, the plaintiff have applied for registration of the Trade Marks ''AMERICA", "USA", "DON" and "VISA" in artistic style along with distinctive colour scheme, design, device and getup under the statutory provision of Trade Marks Act, 1940 in the office of the Directorate of Patents, Designs and Trade Marks, Dhaka being Trade Mark No. 99825, 99826, 99827 and 99828 in class 16 all dated 13.6.2006. The plaintiff has given wide publicity of their above trade marks at huge costs through various media of publicity with the result that the said trade mark has become closely associated in the minds of the public with the products and services of this plaintiff. By virtue of long and extensive use and for registration of the Trade Mark "AMERICA", "USA", "DON" and "VISA" in respect of Playing Cards before the Directorate of Patents, Designs and Trade Mark, Dhaka, the plaintiff has acquired exclusive and monopolistic right over the Trade Mark "AMERICA", "USA", "DON" and "VISA" in respect of Playing Cards with the result that nobody else can adopt the Trade Mark "AMERICA", "USA", "DON" and "VISA" in respect of Playing Cards with its artistic style, distinctive colour scheme and getup or any other Trade Marks or word marks or letter marks which may conflict with the plaintiffs trade mark visually or phonetically or which may bear close and deceptive resemblance to such trade mark. The plaintiff has recently come to know that the defendant No.1 by virtue of being the agent of the plaintiff, applied to various authorities in Bangladesh claiming himself to have the right, title and interest for the Trade Marks Trade Mark "AMERICA", "USA", "DON" and "VISA" and made false statement as manufacturer and merchant of the goods or Playing Cards for the Trade Marks Trade Mark "AMERICA", "USA", "DON" and "VISA" which is illegal, unjust and without any lawful authority and not permissible under the Trade Marks Act, 1940. The plaintiff has obtained information that by virtue of some documents issued by the various authorities the defendant No. 1 claiming himself as the owner of the Trade Marks "AMERICA", "USA", "DON" and "VISA" filed a Title Suit No. 10 of 2006 before the Court of 2nd Additional District Judge, Dhaka and obtained an ex-parte decree on 04.02.2007, Title Suit No.27 of 2006 before the 6th Additional District Judge, Dhaka and obtained ex parte decree on 24.06.2007 and Title Suit No.44 of 2005 before the Court of 5th Additional District Judge, Dhaka and obtained ex-parte decree on 30.05.2006. The plaintiff also submitted the separate application for staying operation of the aforesaid ex-parte judgment and decrees.

3. Petitioner-defendant No.1 filed a written objection against the application for stay. His claim is that he is the prior user of the trade mark 'America', 'Don' and 'Visa’ along with its design, color and get up of the playing cards for which the plaintiff is not entitled to any order of stay. He further claims that he has been using the trade marks in this Country since 2003 and to protect his right, title and interest in the trade marks, he filed three applications before the Registrar, Department of Patents, Design and Trade Marks for registration of the trade marks and the said applications are awaiting registration. He further stated that the plaintiff is merely a supplier to defendant No.1 and has been supplying the playing cards to the defendant No.1 for the last about six months and that he has been importing three categories les of playing cards from other suppliers from China. The application is therefore, liable to be rejected.

4. The learned District Judge, Dhaka after hearing the parties illegally stayed the operation of the judgment and three decrees passed by the learned Additional District Judges in which the plaintiff is not a party to the suit by order dated 09.06.2008.

5. Being aggrieved by and dissatisfied with the aforesaid judgment and order passed by the learned District Judge staying operation of the ex parte judgment and decrees, the petitioner preferred Civil Revision No. 2212 of 2008 before the High Court Division and obtained Rule. The learned Single Judge of the High Court upon hearing the parties discharged the Rule vide judgment and order dated 24.07.2008. Hence this leave petition by the petitioner.

6. Mr. Saidur Rahman, the learned Advocate appearing for the petitioner, submits that the judgment and order dated 24.7.2008 passed in Civil Revision No. 2212 of 2008 by the Single Bench of the High Court Division discharging the Rule against the appellant in modification restraining the appellant from executing three ex parte decrees is against the law in as much as the respondents neither prayed for any such order in the District Judge nor before the High Court Division but the High Court Division passed such order without considering the application submitted by the plaintiff and as such the judgment and order dated 24.7.2008 is liable to be set aside. He submits that the definite case of the defendant No.1 is that the defendant No.1 got the registration of the design long ago and applied for registration of the Trade Marks in respect of playing Cards "AMERICA", "DON" and "DON USA GOLD" and got the decree and as such the defendant No.1 has accrued right and title over the designs and Trade Marks and is also prior user but the Courts below failed to consider the same and illegally stayed the operation of the judgment and decree of the Trial Court by the District Judge, Dhaka and the High Court Division also committed an error in modifying the order restraining the appellant from executing the decrees and as such the same is liable to be set aside. He submits that the High Court Division totally failed to consider that the appellant is a manufacturer of the playing card and prior user of the trademark 'AMERICA', 'USA’, 'DON' and for the registration of the design and also applied for registration of the trademark in respect of playing marks 'AMERICA', 'USA', 'DON' and as such got the decree in Title Suit No. 10 of 2006 by the same Court of Additional District Judge on 4.2.2007, in Title Suit No. 27 of 2006 by the 6th Court of Additional District Judge on 24.6.2007 and in Title Suit No. 44 of 2005 by the Court of 5th Additional District Judge, Dhaka and the plaintiff respondent being third party has no right to challenge the decrees and praying for staying operation of the decrees and the order passed by the High Court Division is illegal and as such the same is liable to be set aside. He also submits that the respondent did not get any registration of the design and filed the application for registration of the trademark long after filing of the appellant and the respondent being the third party has no jurisdiction to pray for stay operation of the decree but the High Court Division totally failed to consider the same and illegally discharged the Rule and modified order and as such the judgment and order dated 24.7.2008 is liable to be set aside.

7. Mr. S. K. Saddique, the learned Advocate, appearing for the respondent No.1 supported the impugned judgment of the High Court Division.

8. We have heard the learned Advocate for the petitioner and of the respondent No.1 and perused the impugned judgment and order of the High Court Division and other materials available on record.

9. On consideration of the facts and materials on record including the papers produced before it, the learned Single Judge of the High Court Division found that the learned District Judge has committed no error of law in passing the ad interim order finding that the plaintiff is admittedly manufacturer and exporter of the products and the defendant No.1 himself has admitted that he has imported some consignment from him and as such the balance of convenience and inconvenience is in favour of plaintiff and the plaintiff shall suffer irreparable loss if the ex parte decrees are not stayed and accordingly discharged the Rule modifying the order of the learned District Judge.

10. The learned Single Judge of the High Court Division having discharged the Rule on discussion and proper consideration of the facts and materials on record of the case, we find no substance in this leave petition, which is accordingly dismissed.

Ed.

This Case is also Reported in: VI ADC (2009) 819.