JAI NARAIN VYAS UNIVERSITY, JODHPUR

MOOT COURT, SEMESTER 8TH 2019

BEFORE THE HIGH COURT

Munish Kumar Singla Trading AS: Chakshu Food Products …APPELLANT

V.

Jollibee Food Corporation ……RESPONDENT

MEMORIAL ON THE BEHALF OF

APPELLANT

SUBMITTED To: SUBMITTED By:

Prateethi Singhvi

B.A. LL.B

Roll No. 32
 TABLE OF CONTENTS

TABLE OF CONTENTS ...........................................................................................................ii

INDEX OF AUTHORITIES.................................................................................................... iii

STATEMENT OF JURISDICTION......................................................................................... vi

STATEMENT OF FACTS ....................................................................................................... iv

ISSUES FOR CONSIDERATION……………………………………………………………

SUMMARY OF ARGUMENTS ........................................................................................... viii

ARGUMENTS ADVANCED ................................................................................................. 10

I. WHETHER LEARNED TRIAL COURT IS CORRECT IN GRANTING EX-PARTE

ORDER?

II. WHETHER THERE IS AN INFRINGEMENT OF TRADEMARK?

III. WHETHER JOLLIBEE FOOD CORPORATION HAS A RIGHT TO CLAIM FOR

EXCLUSIVITY OF THE TRADEMARK?

PRAYER FOR RELIEF .......................................................................................................... 15

 INDEX OF AUTHORITIES

Cases
1. Infotech Consumer Service Ltd v. Gujarat Narmada Valley Fertilizers Co Ltd
2. Milmet Of the Industries and Others vs. Allergan Inc

Books
1. Law relating to Intellectual Property Rights: V.K Ahuja
2. Intellectual Property Rights Laws: Dr. S.K. Singh
3. Civil Procedure: C.K Takwani

Statutes
1. The Trade Marks Act, 1999
2. Code of Civil Procedure, 1908
 STATEMENT OF FACTS

The First Appeal is filed by the defendant in the suit under Order XLIII (1) (r) CPC

impugning the ex-parte order of the trial court dated 22.8.2017, by which the trial court in a

suit for infringement of a trademark, infringement of copyright, passing off, damages etc.

restrained the appellant/defendant from carrying on its business of sale of spices under the

trademark 'Chakshu' with an image of a bee.

II

Respondent/plaintiff claimed ownership of the trademark 'Jollibee' with the same image of

bee as also independent trademark rights in the image of the bee itself. Respondent/plaintiff

also claimed copyright in the image of the bee for being the owner and for exclusive use of

the image.

III

In the case that appellant/defendant after being served of the impugned order dated 22.8.2017

in Local Commissioner's proceedings had immediately thereafter filed his written statement

along with an application under Order XXXIX Rule 4 CPC. The next date of hearing in the

suit as also the injunction application filed by the respondent/plaintiff was 26.9.2017 in Local

Commissioner's proceedings had immediately thereafter filed his written statement along

with an application under Order XXXIX Rule 4 CPC. The next date of hearing in the suit as

also the injunction application filed by the respondent/plaintiff was 26.9.2017 but the trial

court in spite of urgency expressed on behalf of the appellant/defendant did not hear the

application under Order XXXIX Rule 4 CPC but instead simply adjourned the matter to

7.11.2017.
 IV

On 7.11.2017 again in spite of requests of the appellant/defendant for hearing the matter, the

matter stood adjourned to 11.12.2017.

Hence the appellant/defendant had no option but to file this appeal as it was suffering an ex-

parte order against it from 22.8.2017 effectively closing down its business because carrying

on business is inextricably linked with the trademark under which the business is being

carried on.
 STATEMENT OF JURISDICTION

The defendant most respectfully and humbly submits to the jurisdiction of the High Court at

Delhi, under Article 226 and 227 of Constitution of India and Order IX Rule 13 read with

Section 151 of the Civil Procedure Code, 1908.

It is thus submitted that this learned district court has complete competency and jurisdiction

to adjudicate the matters mentioned here.

 ISSUES FOR CONSIDERATION

1. WHETHER LEARNED TRIAL COURT IS CORRECT IN GRANTING EX-PARTE ORDER?

2. WHETHER THERE IS AN INFRINGEMENT OF TRADEMARK?

3. WHETHER JOLLIBEE FOOD CORPORATION HAS A RIGHT TO CLAIM FOR

EXCLUSIVITY OF THE TRADEMARK?

 SUMMARY OF ARGUMENTS

1. WHETHER LEARNED TRIAL COURT IS CORRECT IN GRANTING EX-PARTE ORDER?

It is submitted that grave and substantial injustice has been done by ignoring the

established principles of law. The trial court has, in spite of the appellant’s rushing to

the court by filing its written statement and simultaneously filing the application

under Order XXXIX Rule 4 CPC for vacating of the injunction, did not grant any

relief when the application under Order XXXIX Rule 4 CPC first came up for

hearing, also the relief for vacation of injunction was not even considered by the trial

court and even on the date being fixed i.e 26.9.2017, the matter was simply adjourned

to 7.11.2017 and thereafter the matter again stands adjourned to 11.12.2017.

2. WHETHER THERE IS AN INFRINGEMENT OF TRADEMARK?

It is vehemently contended that although the image bee of the respondent is almost

identical to the image of bee being used by the appellant, however, such claim of an

image of bee if it is used as a trademark, then it is noted that the appellant besides

using the bee is also using its word mark 'Chakshu' which is completely different from

the word mark 'Jollibee' of the respondent/plaintiff and that too with respect to a

totally separate line of business which clearly suggests there is no infringement of

trademark.
3. WHETHER JOLLIBEE FOOD CORPORATION HAS A RIGHT TO CLAIM FOR

EXCLUSIVITY OF THE TRADEMARK?

It is humbly submitted that a multinational companies have no right to claim

exclusivity of the trademark if they do not enter or intend in a reasonable time to enter

into business in India and which observations squarely apply in the facts of this case

where in spite of registration since the year 2005 till in the year 2017 the respondent

has not commenced any business in India. Prima facie therefore the ratio of the

judgment of the Supreme Court in the case of Milmet of the Industries (supra) would

apply.
 ARGUMENTS ADVANCED

I. LEARNED TRIAL COURT ERRED IN PASSING EX-PARTE ORDER DT.

22.8.2017.

The first issue that arises for the Court’s consideration is whether the Learned Trial Court was

correct in passing order dt. 22.8.2017. The counsel contends that learned Trial Court was

impartial and unbiased in considering the facts of the case and erroneously passed an ex-parte

order.

Learned trial court has, in spite of the appellant’s rushing to the court by filing its written

statement and simultaneously filing the application under Order 39 Rule 4 CPC for vacating of

the injunction, not granted any relief when the application under Order XXXIX Rule 4 CPC first

came up for hearing, the relief for vacation of injunction was not even considered by the trial

court and even on the date being fixed 26.9.2017, the matter was simply adjourned to 7.11.2017

and thereafter the matter again stood adjourned to 11.12.2017.

According to settled provision of law an ex-parte injunction is granted on an injunction

application filed by the respondent, taking that the ex-parte order has to be granted, in the case an

injunction application is allowed on the very first date when the suit has come up for admission,

in favour of the respondent whereas this application cannot be allowed and disposed of on the

very first date, and when the appellant is not even represented because no summons or notices

were issued to the appellant.

The Trial court in granting ex - parte ad - interim injunction without even issuing prior notice has

acted in contrary to the provisions of Order 39 rule 3 of the code of civil procedure. It is

submitted that the learned Court has failed to comply with the mandatory provisions of rule 3 of

order 39 of the code of civil procedure.

An ex - parte injunction is an exception to the general rule being that the order be passed only

after hearing both the parties. It is submitted that it is only in rare case where the courts finds that

the object of granting injunction would be defeated by delay, the court can issue an injunction ex

- parte, but that too only after recording reasons. But in the present case it cannot be said that this

is such a case where delay would have defeated the grant of injunction not any such reasons are

recorded by the learned trial court while granting ad - interim injunction.

It is vehemently submitted that even the learned trial court has not recorded any prima facie

finding with respect to the prima facie case, balance of convenience and irreparable loss while

granting such an ex - parte ad - interim injunction which is mandatory in nature.

It is further contended that the respondent knew about the existence of the appellant since

November 2016 when the trademark of the appellant was sought registration of i.e of wordmark

'Chakshu' with an image of bee. Therefore, on filing of the suit many months later in August

2017, respondent was in fact hit by the principle of delay for not seeking an ex-parte injunction.

Therefore, it is submitted that this being so, there was no urgency in granting the ex - parte ad -

interim injunction in favour of the plaintiff that too dispensing with the notice, particularly when

the plaintiff has approached the court after sizable delay. Under the circumstances, the learned

judge has committed an error in granting such an ex - parte ad - interim injunction which is
mandatory in nature. Also one of the objectives of grant of ex-parte injunction in all cases is if as

to whether by the non-grant of the injunction the relief prayed in the suit would become

infructuous. , but surely it was not in the present case as if the suit of the respondent/plaintiff

would have become infructuous by non-grant of ex-parte order.

In the case of shiv kumar chadha (supra) ,it is observed by the hon'ble supreme court in the said

decision, power to grant injunction is an extraordinary power vested in the court to be exercised

taking into consideration the facts and circumstances of a particular case. However, courts have

to be more cautious when the said power is being exercised without notice or hearing the party

who is to be affected by the order so passed. It is submitted that as observed by the hon'ble

supreme court in the said decision, as provided under rule 3 of order 39 of the code of civil

procedure, in all cases the court shall, before grant of an injunction, direct notice of the

application is to be given to the opposite party.

In the case of mrs. Vijay srivastava (supra) , it is submitted that as held by the delhi high court,

though there is no bar to the court's granting interlocutory relief in the mandatory form, in doing

so, the court should act with greatest circumspection and such powers can be exercised only in

rare and exceptional cases. A mandatory injunction can be granted on an interlocutory

application only after notice to the defendant and after hearing the parties.

Under the circumstances and considering the impugned ex - parte ad - interim injunction order

passed by the learned trial court, it appears that such an ex - parte ad - interim mandatory

injunction cannot be sustained and the same deserves to be quashed and set aside.
 II. THE TRADEMARK IS NOT INFRINGED.

It is contended that the respondent was based in Philippines and it was having a fast food brand

under the trademark 'Jollibee'. The word mark 'Jollibee' was along with an image mark of a bee.

The respondent/plaintiff may seem to have a prima facie case with respect to the image bee, and

which image bee of the respondent/plaintiff is almost identical to the image of bee being used by

the appellant/defendant, however, such claim of an image of bee if it is used as a trademark, then

it is noted that the appellant/defendant besides using the bee is also using its word mark

'Chakshu' which is completely different from the word mark 'Jollibee' of the respondent/plaintiff

and that too with respect to a totally separate line of business. Jollibee was a fast food brand

whereas Chakshu is a business of sale of spices.

If the issue is looked from the point of view of the copyright of the respondent/plaintiff in the

image of bee, then, surely the appellant would be entitled to show if the image of bee was

otherwise available in public domain and such image was not created for the first time by the

respondent, and learned Court only limited to the issue of grant of ex-parte orders, because

surely it was not as if the suit of the respondent would have become infructuous by non-grant of

ex-parte order, and even assuming that there was violation of copyright in the creation of an

image of bee which the respondent/plaintiff alleges it has created, then respondent/plaintiff could

always have been compensated by way of damages, and all the more so because respondent was

aware from November 2016 of the user of image of the bee by the appellant.
 III. JOLLIBEE FOOD CORPORATION DOES NOT HAVE A RIGHT TO CLAIM

FOR EXCLUSIVITY OF TRADEMARK.

It is humble submitted that , there was really no jurisdiction in the trial court to grant ex-parte

order in terms of the impugned order dated 22.8.2017 as once the respondent had not

commenced business in India in spite of registration of its trademark in India since the year

2005.

Supreme Court in the case of Milmet Oftho Industries and Others vs. Allergan Inc (2004) 12

SCC 624 has held that multinational companies have no right to claim exclusivity of the

trademark if they do not enter or intend in a reasonable time to enter into business in India and

which observations squarely apply in the facts of this case where in spite of registration since the

year 2005 till today in the year 2017 the respondent has not commenced his business in India.

Prima facie therefore the ratio of the judgment of the Supreme Court in the case of Milmet Oftho

Industries (supra) would apply.

Also, the present is not a case where by non-grant of an ex-parte order the suit would have

become infructuous or the products being sold by the appellant/defendant were such which were

sold to children or other vulnerable sections of the society or were pharmaceutical products etc,

that, a reasonable period notice should not have been issued and instead a drastic ex-parte

injunction order should have been passed.

 PRAYER FOR RELIEF

Wherefore, in the light of facts states, issues raised, arguments advanced, and authorities cited, it

is most humbly and respectfully prayed before the Hon’ble High Court that it may be pleased to:

 Allow the Appeal XXX/2019

 Quash the order passed by learned Trial Court

 Declare that there have been no infringement of trademark by the appellants

And pass any such order in favour of the Plaintiff which this Learned Court may deem fit in the

ends of equity, justice and good conscience.

All of which is most humbly and respectfully, submitted.

Date: March 30th, 2019 Counsel for the Plaintiff