RADHESHYAM TOURISM V.

RADHESHYAM TRAVELS PRIVATE LIMITED

IN THE HIGH COURT OF GUJRAT

CASE CONCERNING

TRADEMARK

IN THE MATTER OF

RADHESHYAM TOURISM

(APPELLANTS)

Vs.

RADHESHYAM TRAVELS PRIVATE LIMITED

(RESPONDENTS)

MEMORANDUM ON BEHALF OF THE APPELLANT

PRAVAS NAIK
ROLL NO. 119, SEM-VI ‘A’

HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR

 RADHESHYAM TOURISM V. RADHESHYAM TRAVELS PRIVATE LIMITED

TABLE OF CONTENTS

• List of Abbreviations 3
• The Index of Authorities 4
• Statement of Jurisdiction 5
• Statement of Facts 6
• Statement of Issues 7
• Summary of Arguments 8
• Arguments Advanced 9
• Prayer for Relief 15

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 RADHESHYAM TOURISM V. RADHESHYAM TRAVELS PRIVATE LIMITED

ABBREVIATIONS

1. I.P.R. Intellectual Property Rights

2. Ltd. Limited

3. No. Number

4. PTC Patent Trademark Copyright

5. AIR All India Reporter

6. v. Versus

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 RADHESHYAM TOURISM V. RADHESHYAM TRAVELS PRIVATE LIMITED

INDEX OF AUTHORITIES

ACTS

• TRADEMARKS ACT, 1999.

JUDICIAL DECISIONS

• N.R. Dongre v. Whirlpool Corporation, AIR 1995 Del 300

• In the case of Kisan Industries Vs. Punjab Food Corporation and Another, reported in
PTC (Suppl)(2) 463 (Del);
• In the case of M/s. Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd.
reported in (1994)2 SCC 448;
• In the case of Dhariwal Industries Ltd. and Another Vs. M.S.S. Food Products reported in
(2005)3 SCC 63;
• In the case of Creative Travels (P) Ltd. Vs. Creative Tours and Travels (P) Ltd., reported
in 2006(33) PTC 430 (Del);

BOOKS
• Intellectual Property Rights, Bare Act
• V.K Ahuja, “Law Relating to Intellectual Property Rights” (Lexis Nexis 2nd Edn,2013.)

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 RADHESHYAM TOURISM V. RADHESHYAM TRAVELS PRIVATE LIMITED

STATEMENT OF JURISDICTION

The Appellant has approached the HONB’LE HIGH COURT under Article 32 of constitution.

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STATEMENT OF FACTS

• Shri Radheshyambhai, father of the Director Shri Bhaskar Rao of the respondent
company, had coined the trade mark Radheshyam, word per say and started use of
such trade mark in Radheshyam Yatra Sangh with Travel Arrangement Services for
such Sangh since 1940.
• After death of Radheshyambhai in 1987, his son Bhaskar Rao continued the business
of providing travel services under trade name/ corporate name Radheshyam Tours &
Travels and on growth in travel business, a company, named Radheshyam Travel
Private Limited, came to be incorporated under the provisions of the Companies Act,
1956 since 14.2.2000.
• The business in the name of Radheshyam Travels has gone in crores of rupees and
created tremendous reputation and goodwill due to quality of services provided by
the respondent to the public at large. Thus, the respondent has established and
managed the goodwill and reputation earned by late Shri Radheshyambhai, who was
founder and inventor of trade mark "Radheshyam".
• In the plaint, details about the sale/ income, advertisement expenses and printing
expenses of Radheshyam Tours and Travels from 1989 to 2013 are given out. It is
further averred in the plaint that the device representing coined word Radheshyam in
artistic manner is registered in Class 16 and the respondent has also applied for
registration of the label/ device in Class 39.
• The respondent claims to have exclusive right to use the trade name "Radheshyam"
and states that it is entitled to restrain others from using and/or imitating the said
trade name. As regards the cause of action for filing the suit, it is stated that the
respondent came to know about the use of mark "Shri Radheshyam Tourism" and its
label/ device by the appellant from the advertisement given in the newspaper and
when the respondent served notice to the appellant to desist or cease from using such

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mark and when the appellant continued to use such mark and also instituted suit,
being Civil Suit No.523 of 2013, the above-referred suit was required to be filed.
• In the suit, the respondent filed application Exh.7 for interim injunction with Notice
of Motion Exh.6. The injunction application was opposed by the appellant on the
ground that the respondent had earlier preferred Regular Civil Suit No.1548 of 2001
against Radheshyam Tourism and in the said suit, its application for injunction was
rejected on 23.4.2001. Against such order of rejection, the respondent preferred
Appeal from Order No.263 of 2001 with Civil Application No.7421 of 2001 before
this Court and before this Court, it was stated that the respondent was not interested
in prosecuting the appeal.
• The appeal was therefore, dismissed by this Court and thereafter, the suit of the
respondent was also dismissed for non- prosecution on 16.1.2009. Thus, the suit filed
by the respondent as well as its application for injunction both are barred by the
principle of res judicata. It is further stated that late Shri Mansukhlal Babulal Shah
(Muchhala) started Shree Radheshyam Tourism in the year 1992 and after he expired
on 3.6.2001 and his widow Padmaben became sole proprietor of Shri Radheshyam
Tourism since 2001. Padmaben entered into partnership with Hiten Chandubhai
Mistri (the Proprietor of the appellant) with effect from 1.8.2010 and deed of
partnership was executed between them on 31.8.2010 and partnership was dissolved
and thereafter, Hiten Chandubhai Mistri became sole owner to use goodwill of Shri
Radheshyam Tourism.
• Learned Additional Principal Judge, City Civil Court No.2, Ahmedabad partly
allowed the application and restrained the appellant from using the trademark
"Radheshyam" till disposal of the suit by order dated 20.3.2017.

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STATEMENT OF ISSUES

• who could be prima facie taken to be a prior user of the trademark "Radheshyam"?

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THE SUMMARY OF ARGUMENTS

• who could be prima facie taken to be a prior user of the trademark "Radheshyam"?

The plaintiff would be the sole prior user of the trademark"Radheshyam". Shri Babulkar
Bhaskarbhai who claims that he is the son of original inventor of the trademark
"Radheshyam" is stated to be the Director of the respondent company. Therefore, it prima
facie appears that as against the claim of transmission of the trademark by the appellant.

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 RADHESHYAM TOURISM V. RADHESHYAM TRAVELS PRIVATE LIMITED

THE ARGUMENTS ADVANCED

• CONTENTION A- the plaintiff could be prima facie taken to be a prior user of the
trademark "Radheshyam"

The business was started in the partnership in the name of 'Shri Radheshyam Tourism' with
Padmaben with effect from 1.8.2010, not only Padmaben was using the trademark
"Radheshyam" to carry on the business in the name of 'Shri Radheshyam Tourism' with
effect from 18.6.1991 but before that her husband Mansukhlal Muchhala had been using
such trade name for trading tourism business and it was after Padmaben entered into
partnership with proprietor of the appellant, the appellant continued to do business in the
name of 'Shri Radheshyam Tourism' and therefore, the appellant could be said to be in prior
use of trademark "Radheshyam".

The plaintiff would like to drew the attention of the Court to certificate issued under the
Shops and Establishment Act ('the Act') in the name of Padmaben for the period from
18.6.1991 and renewal thereof till 2010 and also the certificate issued under the Act in the
name of the proprietor of the appellant on 4.2.2011 to submit that Padmaben continued to use
the trademark "Radheshyam" after the death of her husband and the proprietor of the
appellant continued to use such trademark after Padmaben retired from the partnership.

The plaintiff submitted that considering the continuous use of trademark "Radheshyam" by
the husband of Padmaben, by Padmaben and then by the proprietor of the appellant on
transmission of the trademark "Radheshyam" in his favour, the appellant could be said to
have made out strong prima facie case of prior use of trademark "Radheshyam" than the
respondent.

plaintiff submitted that though the respondent got registration of trademark "Radheshyam" in
the year 2006 it did not take any action either for infringement of the trademark or passing
off action and it was only after the trademark "Radheshyam" was transmitted in favour of the
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appellant, the respondent filed the suit in the year 2013. Thus, as submitted by plaintiff, the
respondent on account of its conduct did not deserve discretionary relief of interim injunction
in its favor1.

The appellant solely relies on deed of partnership for transmission to claim continuous prior
use of trademark "Radheshyam" than the use of such trademark by the respondent. Learned
senior advocate Mr. Sanjanwala relied on the decision in the case of Dhariwal Industries Ltd.
(supra), especially para 7 thereof to submit that if there is assignment or transmission of the
unregistered trademark, a person in whose favour such assignment or transmission is made,
can tack on the prior use of such trademark of its predecessor under section 27 2 of the Trade
Marks Act, 1999. Therefore, the fact that neither party has a registered trade mark as on the
date of the suit cannot stand in the way of entertaining the claim of the plaintiff and granting
the plaintiff an injunction in case the plaintiff is in position to show prima facie that it was
the prior user of its mark, that it had a prima facie case and that the balance of convenience
was in favour of the grant of an interim injunction. It is provided in Section 39 of the Act that
an unregistered trade mark may be assigned or transmitted with or without goodwill of the
business concerned. It is, therefore, possible for a plaintiff or a defendant to show that an
unregistered trade mark that was being used by another person earlier had been assigned to it
and that it can tack on the prior user of its predecessor.

As per the definition of Transmission3, transmission could be either by operation of law,

devolution on the personal representative of a deceased person and any other mode of
transfer, not being assignment. The appellant does not claim transmission of trademark by
operation of law nor it claims devolution as personal representatives of deceased person. It
also does not claim the assignment of trademark, then what remains is whether the case of

1
(i) In the case of Kisan Industries Vs. Punjab Food Corporation and Another, reported in PTC (Suppl)(2) 463 (Del);
(ii) In the case of M/s. Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd. reported in (1994)2 SCC
448;
2
Section 27: nothing in that Act shall be deemed to affect the right of action against any person for passing off
goods or services as the goods of another person or as services by another person or the remedies in respect
thereof.
3
'transmission' in Section 2(zc) ― "transmission" means transmission by operation of law, devolution on the
personal representative of a deceased person and any other mode of transfer, not being assignment.
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 RADHESHYAM TOURISM V. RADHESHYAM TRAVELS PRIVATE LIMITED

the appellant falls within any other mode of transfer. The phrase 'any other mode of transfer'
is not limited to transfer under the Transfer of Property Act but is wide enough to cover
transmission by different mode. The appellant claims transmission of trademark under deed
of partnership. In the deed of partnership, it is mentioned that since Padmaben has been
presently doing the tourism business in the name of "Shri Radheshyam Tourism" in
Ahmedabad and in such business for further management and administration, since the
proprietor of the appellant wanted to enter as a partner in the partnership, he has been
inducted as partner with effect from 1.8.2010. Such partnership deed is executed on
31.8.2010 and in Clause (2) of the partnership deed, it is stated that the business of the
partnership firm was started on 1.8.2010. Profit sharing between Padmaben and the appellant
is shown to be in the ratio of 20 : 80. In Clause (6), it is stated that first accounting year of
the firm shall be from 1.8.2010 to 31.3.2011. But the day on which the deed was executed,
Padmaben was shown to have retired on that very day by deed of retirement subsequently
made on 22.10.2010 and in such deed of retirement, two clauses are inserted, i.e. Clause (4)
and (6) with other clauses to show that the rights of goodwill of the partnership were given to
the appellant and Padmaben shall not be entitled to do business in the name of "Shri
Radheshyam Tourism". These two documents would prima facie demonstrate that they were
made just with a sole aim to project that the proprietor of the appellant has acquired right to
use the trademark "Radheshyam". The partnership shown to have commenced on 2.8.2010
was made to end on 31.8.2010. There is no material to show that within the short duration of
28 days, any business in partnership was carried on. It prima facie appears that the
documents were made to grab the trademark "Radheshyam" of which the respondent claims
to be the owner and in prior use.

Shri Babulkar Bhaskarbhai who claims that he is the son of original inventor of the
trademark "Radheshyam" is stated to be the Director of the respondent company. Therefore,
it prima facie appears that as against the claim of transmission of the trademark by the
appellant.

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PRAYER FOR RELIEF

In the light of facts of the case, issues raised, arguments advanced and authorities cited, this
Court may be pleased to:

I. Appeal for compensation for the damaged caused by respondent.

And pass any other order in favor of the Appellant that it may deem fit in the ends of justice,
equity, and good conscience.

All of which is respectfully submitted.

Place: Delhi Council for Appellants

Date: April 06, 2018 PRAVAS NAIK

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