018-SLLR-1984-V1-STASSEN-EXPORTS-LIMITED-v.-HEBTULABHOY-CO.-LTD.pdf
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Stassen Exports Ltd. v. Hebtulabhoy & Co.. Ltd
129
STASSEN EXPORTS LIMITED
v.HEBTULABHOY & CO. LTD.
COURT OF APPEAL
L. H. DE ALWIS, J, AND MOONEMALLE, J.
C.A. – L A. 86/83-D.C. COLOMBO 2316/Spl.
DECEMBER 6 and 7, 1983.
Suit for permanent injunction to restrain use of a trade mark and application torinterim injunction pending decision of suit – Application to' suspend the interiminjunction and/or clarify decision granting interim injunction ex parte – Sections666 and 839 of the Civil Procedure Code – Inherent power of the Court to suspendan interim injunction.
The plaintiff-respondent filed this suit to restrain the 1 st and 2nd defendants fromusing its trade mark 'RABEA' in English characters or in any other language for thesale, distribution and/or export of tea and for an interim injunction to restrain the 1 stand 2nd defendants in the same terms until the final determination of the action.
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On 21 7.83 the District Judge made an order ex parte granting an interim injunctionas prayed for subject to the plaintiff-respondent depositing a sum of Rs. 10.000 assecurity before the interim injunction issued.
On 11.8.83 1st defendant-petitioner filed petition and affidavit praying that theinterim injunction be forthwith suspended and/or that the Court do clarify that theinterim injunction does not apply to a proposed shipment of approximately 217.3metric tons of tea by the 1 st defendant-petitioner to Mr. Eneny of Egypt under themark registered in Egypt transliterated in English as "CHAI AL RABIA" and that theinterim injunction be dissolved. After hearing the Attorneys for both parties theDistrict Judge made order on 26.8.83 rejecting the application for the suspensionof the interim injunction and entering Order Nisi under section 377 (a) of the CivilProcedure Code in regard to the application for the dissolution of the interiminjunction.
On 9 9.83 the 1st defendant-petitioner made an application to the Court of Appealto have the order refusing to suspend the interim injunction revised. An applicationfor leave to appeal from the said order of 26.8.83 was also filed.
On 27 9.83 the revision application was taken up in the Court of Appeal and an exparte order was made suspending the interim injunction in respect of the shipmentof approximately 217.3 metric tons of tea to Eneny of Egypt under the trade markCHAI AL RABIA. On 30.9.83 the plaintiff-respondent moved Court to vacate itsorder of 27 9.83 on the ground that it had made this order per incuriam and/or inexcess of jurisdiction and to grant a stay until the application was disposed of. Thestay order was refused and the application rejected.
In the meantime the Supreme Court granted special leave to appeal in connectionwith the application for revision and directed the stay of the orders of 27.9.83 and30 9.83 made by the Court of Appeal pending the disposal of the appeal. On5.12 83 the Supreme Court directed that the appeal before it be taken up after thedecision of the Court of Appeal on the application for revision and leave to appealfrom the order of the District Judge of 26.8.83.
The main questions were whether the Order of the District Judge refusing tosuspend the interim injunction could be set aside by the exercise of the inherentpowers of the Court under section 839 of the Civil Procedure Code and whether thegrant of an ex parte injunction was justifiable.
The plaintiff used the trade mark (registered} and trade name RABEA in exportinglea to the Middle East and the name RABEA TEA in English and the words SHAHIAL RABEA in Arabic characters on its bags and cartons.
Held –
(1} It is not proper that the exercise of the discretion vested in the District Judge togrant an interim injunction ex parte should be interfered with because of thefollowing considerations :
The use on the wrappers of the 1st defendant of the transliteration inEnglish of the Arabic words CHAI AL RABIA which translated into English is‘RABEA TEA' is an infringement of plaintiff's trade mark and violates itsrights.
(74 Stassen Exports Ltd. v Hebtulabhoy & Co . Ltd. (Moonemalle. J.)131
The plaintiff became aware of the shipments of the 1st defendant only onthe information of an anonymous telephone caller. There was therefore noacquiescence on the part of the plaintiff.
Though the plaintiff does not export tea to Egypt, Muslims from Egyptfrequent Mecca which is in Saudi Arabia and there is easy access betweenthe two countries. Therefore there is the likelihood of irreparable damage toplaintiff's good name if tea of poor quality is sold in Egypt under the trademark and trade name RABEA.
The tea of the 1st respondent ready for export can easily be re-packed.Therefore the disadvantage to the 1st defendant if the interim injunction isissued is outweighed by the damage to the plaintiff if it is not.
(2) Section 666 expressly provides that ihe District Judge has power to discharge,vary or set aside an interim injunction but there is no provision which gives him thepower to suspend it. Section 839 of the Civil Procedure Code gives the Courtinherent power to make such orders as may be necessary for the ends of justice orto prevent abuse of the process of the Court. But this inherent power cannot beinvoked to violate or override the express provisions of the Code. When a remedyalready exists and whenever a remedy has been given by the Code, section 839does not provide a collateral remedy. Hence the Court has no power to suspend aninterim injunction in the exercise of its inherent powers.
Cases referred to
(1} Wimalasekera v. Parakrama Samudra Co-operative Agricultural Productionand Sales Society Ltd. (1955) 58 N.L.R 298.
(2) Edward v. De Silva (1945) 46 N.L.R. 342.
{3) Ramanathan Chetty v. Meera Saibo Marikar (1930) 32 N.L.R. 193 (P.C.).
(4| Keelv Asirwathan (1935) 4 C.L.W. 128, 130.
Craig v. Kanssen (1943) 1 AUE R. 108
Paulusz v. Perera (1933) 34 N.L.R. 438
Kamalav. Andris (1939) 41 N.L.R. 71.
De Silva v. De Silva (1974) 77 N.L.R. 554.
Jinadasa v. Weerasinghe (1928) 30 N.L.R. 283.
APPLICATIONS for revision and leave to appeal from orders of Distnct Court,Colombo.
H L. de Silva, S.A., with Lakshman deAlwis, for 1st defendant-petitioner.
H. W. Jayewardene. Q.C.. with G. F. Sethukavaler. S. A.. K. Kanag-tswaran andS. Mahenthiran. for plaintiff-respondent.
Cur. adv. vult.
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January 23, 1984MOONEMALLE, J.
The plaintiff-respondent Company instituted an action on 19.7.83in the District Court, Colombo praying for a permanent injunction torestrain the 1st defendant-petitioner Company and the 2nddefendant and their servants and/or agents from applying or usingits Trade Mark.'RABEA' in English characters or in any otherlanguage in any form of packet or bag for sale, distribution and/orexport of tea, and for an interim injunction to restrain the 1stdefendant-petitioner Company and the 2nd defendant and theirservants and/or agents from doing the above-mentioned acts untilthe final determination of the action.
On 21.7.83, the learned District Judge, after the application foran interim injunction was supported on behalf of theplaintiff-respondent made an ex parte order granting the interiminjunction against the 1st defendant-petitioner and the 2nddefendant subject to the plaintiff-respondent depositing a sum ofRs. 10,000/- as security prior to the issue of the interim injunction.
Then on 11.8.83, the 1st defendant-petitioner filed petition andaffidavit in the District Court and prayed that the interim injunctionbe forthwith suspended and/or that the Court clarify that theinjunction issued does not apply to the proposed shipment ofapproximately 217.3. metric tons of tea by the 1stdefendant-petitioner to Mr. Eneny of Egypt under the markregistered in Egypt transliterated to English as CHAI AL RABIA, andthat the interim injunction be dissolved and /or discharged and /orset aside. On 22.8.83 this application was supported by anAttorney-at-law on behalf of the 1st defendant-petitioner. Theplaintiff-respondent on whom notice had been served wasrepresented by a Senior Attorney-at-Law. The learned District Judgeafter hearing submissions on behalf of both the 1stdefendant-petitioner and the plaintiff-respondent delivered hisorder on 26.8.83 rejecting the application for the suspension of theinterim injunction and entering order nisi under section 377 (a) ofthe Civil Procedure Code regarding the 1st defendant-petitioner'sapplication and appointed a date to issue the order nisi on theplaintiff-respondent.
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Stassen Exports Ltd. v. Hebtuiabhoy Si Co., Ltd. (Moonemalte, J.)133
Then on 9.9.83 the 1st defendant-petitioner made an applicationin revision to this Court bearing No. 1052/83 praying for an order –
to issue notice on the plaintiff-respondent
to make order suspending the operation of the ex parte orderdated 21.7.83 granting the interim injunction to theplaintiff-respondent.
to set aside the order of the learned District Judge dated26.8.83 refusing the 1 st defendant-pettioner's application tosuspend the said interim injunction.
to make order directing that the inquiry into the 1stdefendant-petitioner's application for a dissolution of theinterim injunction be heard by another Judge.
An application for leave to appeal bearing No. L.A. 86/83 wasalso filed in this Court by the 1 st defendant-petitioner. The presentproceedings before us are in respect of this application for revisionand the application for leave to appeal.
On 27.9.83 the revision application came up for notice on theplaintiff-respondent before another Bench of this Court. On thatday, on the application made on behalf of the 1stdefendant-petitioner the Court made an ex parte order suspendingthe interim injunction in respect of the shipment of approximately217.3 metric tons of tea by the 1st defendant-petitioner to Enenyof Egypt under the Trade Mark CHAI AL RABIA. Notice also issuedon the plaintiff-respondent.
On 30.9.83 the plaintiff-respondent moved byway of motion thatthe order of this Court dated 27.9.83 be vacated as the order hadbeen made per incuriam and/or in excess of the jurisdiction of thisCourt. The Court made order to list the application as early aspossible as it was an urgent matter. The Senior Attorney-at-Lawwho represented the plaintiff-respondent moved Court to stay theorder made by the Court on 27.9.83. This application was refused.
On 4.10.83 this Court received the order of the Supreme Courtin S.C. (Special) L.A. 59/83 which application had been made bythe plaintiff-respondent in connection with the present revisionapplication. The Supreme Court had made order to stay the ordersmade by the Court of Appeal on 27.9.83 and 30.9.83 pending the
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grant or refusal of the Supreme Court application for special leaveto appeal. On 22.11.83 this Court was informed by the Registrar,Supreme Court, that special leave to appeal had been granted tothe plaintiff-respondent with the direction that the orders of theCourt of Appeal of 27.9.83 and 30.9.83 be stayed pending thefinal determination of the Supreme Court appeal. On 5.12.83 theSupreme Court made order postponing the hearing of S.C. Appeal43/83 till the Court of Appeal gives a decision in the application forrevision 1052/83 and the leave to appeal application 86/83 whichare presently before us.
The substantive relief prayed for by the defendant-petitioner inboth the application for revision and the application for leave toappeal is to have the order of the learned District Judge dated26,8.83 refusing to suspend the interim injunction granted on21.7.83, set aside.
It is to be noted that learned Senior Attorney-at-Law appearingfor the defendant-petitioner did not press the prayer for an order todirect that the inquiry into the defendant-petitioner’s application fora dissolution of the interim injunction be heard by another Judge.Learned Senior Attorney-at-Law for the defendant-petitionersubmitted that the plaintiff-respondent had not adduced anygrounds or facts which justified or warranted the grant of an interiminjunction ex parte without affording the defendant-petitioner artopportunity of being heard, and therefore the order made by thelearned District Judge granting the interim injunction was an ordermade ultra vires. He submitted that the defendant-petitioner wasentitled to notice under section 664 of the Civil Procedure Codebefore the ex parte order was made issuing the interim injunction.He further submitted that there were numerous suppressions ofvital facts in the ex parte proceedings.
Learned Senior Attorney-at-Law for the 1st defendant-petitionerfurther submitted that the learned District Judge had inherentpower to suspend the operation of the interim injunction that wasissued by invoking the provisions of section 839 of the CivilProcedure Code.
Learned Senior Attorney-at-Law for the 1 st defendant-petitionersubmitted that the plaintiff-respondent acquired only very limitedrights in tfje Trade Mark RABEA as evidenced by X1 in which the
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single word RABEA in English was registered subject to thecondition that that mark could only be used as depicted in theapplication and that its translation in any language will not be used.He submitted that the 1st defendant-petitioner had not used theword RABEA in English characters anywhere in the document X 9.He submitted that the use of the Arabic characters in X 9 whichread SHAIAL RABEA did not violate the plaintiff-respondent's legalrights. He further submitted that the plaintiff-respondent designedlyattached to the plaint an indecipherable photo copy of thecertificate of registration X1 and also served on the 1stdefendant-petitioner and the 2nd defendant and also tendered tothis Court similar indecipherable photo copies of X 1 in order toconceal the weakness of its claim. He also drew our attention to twoother registered Trade Marks of the plaintiff-respondent namely.Giraffe Brand (marked K) and Tea Mountain Brand (marked L). Hesubmitted that X 1 did not give the plaintiff-respondent a right torestrain the use of the transliteration of the English word RABEA inany other language.
Learned Senior Attorney-at-Law for the 1st defendant-petitionersubmitted that the plaintiff-respondent had drawn the attention'ofthe District Court to letter X 8 dated 1.10.81 sent by the GeneralManager of the 1st defendant-petitioner to D. N. Thurairajah thethen General Manager of the plaintiff-respondent, wherein he had /admitted that the 1st defendant-petitioner had used the wordsSHAHI EL RABEA and had apologised for using those words andundertook not to use them any further. He further submitted thatthe plaintiff-respondent had wilfully withheld from the District Courtthe fact that the General Manager of the 1 st defendant-petitionerhad after ascertaining the correct position informed Mr. Thurairajahby telephone that X 8 was written upon an incorrect assumption ofthe facts and that there was no such violation in fact and that thiswas accepted by Mr. Thurairajah.
Learned Senior Attorney-at-Law for the 1st defendant-petitionerfurther submitted that the plaintiff-respondent had not disprovedthe averments in the affidavit dated 12.8.83 of the ManagingDirector of the 1st defendant-petitioner filed in the District Courtthat the 1st defendant-petitioner had shipped large quantities oftea under the Trade Mark CHAI AL RABIA to Egypt valued atseveral millions of rupees since 1980. He submitted therefore thatthe plaintiff-respondent's claim that it came to know of the exports
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only recently could not be believed. He further submitted that theplaintiff-respondent did not disprove the facts set out in R 10 dated
which contains the names of 7 well known shippers in SriLanka who ship tea under the same trade mark CHAI AL RABIA toEgypt. He submitted that therefore the plaintiff-respondent hadacquiesced in the use of the Trade Mark by these shippers and thisaction against the 1st defendant-petitioner is a mala fide act.
Learned Senior Attorney-at-law tor the 1 st defendant-petitionerfurther submitted that the plaintiff-respondent sought recourse toanother cause of action namely, the unfair use of the Trade Name inrespect of which the interim injunction was not asked for and wasnot issued. He submitted that there was no evidence that theplaintiff-respondent's tea was known in Egypt by the trade nameRABEA. He submitted that the plaintiff-respondent had deliberatelyused a vague and general expression ‘in the Middle East' whichcovers a number of countries giving the impression that itdominated all these foreign markets. He further submitted that theplaintiff-respondent exported tea to Saudi Arabia and therefore noquestion of irremediable damage to the plaintiff-respondent couldresult by the use of the Trade Mark, CHAI AL RABIA by the 1stdefendant-petitioner in its tea exports to Egypt. He finallysubmitted that the balance of convenience lay against the grant ofan interim injunction restraining the 1st defendant-petitioner andwas in favour of a refusal of such Injunction.
Learned Queen's Counsel for the plaintiff-respondent submittedthat section 664 of the Civil Procedure Code gave the power to thelearned District Judge to grant an interim injunction in exceptionalcircumstances with or without notice. He submitted that thesubmission on behalf of the 1st defendant-petitioner that he wasdeprived of the right to be heard by reason of the ex parte ordergranting the interim injunction was based on a misconception.
Learned Queen's Counsel submitted that the only restriction thatattached to the use of the Trade Mark RABEA in X 1 was that atranslation of the English word RABEA in any other language couldnot be used and that the use of the transliteration of the Englishword RABEA in any other language was not restricted by X 1.Therefore, he submitted that the use of the English word RABEA inArabic was the sole right of the plaintiff-respondent. He furthersubmitted that apart from the Trade Mark RABEA it has a trade
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Siassen Exports Ltd. v. Hebtuiabhoy & Co., Ltd. (Moonemalle, J.)137
name Rabea which was protected whether registered or not undersection 140 of the Code of Intellectual Property Act. LearnedQueen's Counsel further submitted that documents (K) and (L) arenew documents which are not relevant to these proceedings. In anyevent he submitted that they do not affect the plaintiff-respondent'ssole right to the use of the transliteration of the English word Rabeain any other language. Learned Queen's Counsel submitted that theplaintiff-respondent had not misled the Court or failed to observethe principle of uberrimae fides.
Learned Queen's Counsel also submitted that D. N. Thurairajahwho was the General Manager of the plaintiff-respondent Companyin 1981 had resigned on 7.6.82 and had no authority to make anystatement or give any undertaking on behalf of theplaintiff-respondent without reference to the Board of Directors. Hefurther submitted that Thurairajah's affidavit of 8.9.83 (H) was anew document and was not placed before the learned DistrictJudge and therefore the defendant-petitioner could not rely on it forthe purpose of this application. He submitted that theplaintiff-respondent had been exporting tea to the Middle East forthe last seventy-five years and that the defendant-petitioner wassurreptitiously attempting to make use of the good name of theplaintiff-respondent and trade under his Trade Mark. He submittedthat if the Rabea Trade Name and Mark is used and poor quality teais exported under that Trade Mark by the defendent-petitioner evento Egypt, irreparable damage would be caused to theplaintiff-respondent's tea trade with Saudi Arabia. Learned Queen'sCounsel submitted that a District Judge had no power to suspendan interim injunction granted by him. Under the provisions ofsection 666 of the Civil Procedure Code a District Judge had thepower only to discharge, vary or set aside an order for an interiminjunction. He submitted that the inherent powers of the Courtunder section 839 of the Civil Procedure Code could not be invokedto violate the express provisions of the Code. He cited a number ofauthorities in support which I shall deal with later. He submittedthat the learned District Judge had acted correctly in refusing tosuspend the interim injunction and by entering order nisi.
The plaintiff-repondent has a statutory right under section 142{3) of the Code of Intellectual Property Act, No. 52 of 1979, toinstitute proceedings to obtain an order from Court to prohibit thecontinuance of acts of unfair competition mentioned in section 142
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<2) {a) to (e), and the provisions of section 179 of the said Actempower the Court to grant to the plaintiff-respondent an injunctionto restrain any person who has infringed or threatened to infringehis registered industrial design, patent, or mark and shall applymutatis mutandis to the proceedings under section 142 (3). Bysection 181 (4) the provisions of the Judicature Act, No. 2 of1978, and of the Civil Procedure Code shall apply to everyapplication for an injunction made to the Court under the Code ofIntellectual Property Act. The procedure therefore to be adopted inan application for an injunction under the .Code of IntellectualProperty Act is as set out in section 664 of the Civil ProcedureCode. Under section 664 a District Judge is entitled to issue aninterim injunction ex parte when it appears to him that the object ofgranting the injunction would be defeated by delay. Learned SeniorAttorney-at-Law for the 1st petitioner cited a number of cases, butthese cases dealt with instances where under section 763 of theCivil Procedure Code an application for execution of a decreepending appeal had been made without making thejudgment-debtor a party respondent. The cases cited wereWimalasekera v. Parakrama Samudra Co-operative AgriculturalProduction and Sales Society Ltd. (11, Edward v. De Silva (2),Hamanathan Chetty v. Meera Saibo Marikkar (3), Keel v.Asirwatham (4).
It was held in these cases, that it is imperative that, in anapplication for execution of a decree which has been appealedagainst the judgment-debtor should be made a respondent and thata writ which fails to comply with this requirement falls into thecategory of a writ issued without jurisdiction.
In Keel v. Asirwatham (supra) it was held that failure to complywith the terms of section 763 would vitiate a sale held in executionof a mortgage decree. Soertsz, J. in the course of his judgmentstated " The intention of the Legislature appears clearly to havebeen to give the appellants an opportunity of maintaining things in'Statu quo ante' pending the appeal, on adequate terms as to thefixing of. security”. Learned Senior Attorney-at-Law also cited Craigv. Kanssen (5). In that case an order had been made giving therespondent, the successful plaintiff leave to proceed. Thesummons on which the order was made was not served on theappellant, ft was held that the failure to serve summons upon whichthe order was made was not a mere irregularity, but a defect whichmade the order a nullity and therefore the order must be set aside.
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Stassen Exports Lid. v. Hebtulabhoy & Co , Lid. (Moonemalle. J.)139
These cases have no application to the present case where theLegislature has expressly given the Court the power of exercising itsdiscretion in granting an interim injunction ex parte in exceptionalcircumstances under section 664 of the Civil Procedure Code.
It is clear that the learned District Judge had considereddocuments X7 and X8 with the other facts adduced, such as thefact that the plaintiff-respondent had been an exporter of tea fromSri Lanka to the Middle East for seventy-five years enjoying a highreputation in these markets, and the fact that thedefendant-petitioner was taking action to export tea in violation ofthe plaintiff-respondent's trade mark rights and thereafter hadcome to the conclusion that unless the interim injunction issued theplaintiff-respondent would suffer irreparable loss. X7 is a letter byD. N. Thurairajah, the General Manager of the plaintiff-respondentto D. H. S. Jayawardena, Managing Director of the 1stdefendant-petitioner stating that the 1st defendant-petitioner wasinfringing the registered trade mark Rabea of theplantiff-respondent and requesting him to desist from using theword RABEA in respect of tea exports by the defendant-petitioner.X8 is a reply to this letter sent by D. H. S. Jayawardena to D. N.Thurairajah wherein he has admitted that his Company was usingthe Trade Mark 'Rabea' in respect of its tea exports and he hasgiven an undertaking that his Company will not be using the word'Rabea' in respect of its tea shipments. He had also apologised forhaving used the plaintiff-respondent's Trade Mark. The affidavit (H)of D. N. Thurairajah dated 8.9.83 was never placed before thelearned District Judge, and this being a new document, thedefendant-petitioner cannot rely on it for the purpose of thisapplication. It was also the position of the plaintiff-respondent thatD. N. Thurairajah had resigned from the plaintiff-respondentCompany on 7.6.82. This affidavit (H) is dated 8.9.83. It is notpossible for us in any event to decide on the truth of the contents of(H) by merely perusing its contents.
The registration of the plaintiff-respondent's Trade Mark isdepicted as RABEA in English in X1. It must be noted that apartfrom the trade mark RABEA it has a trade name RABEA. Section140 of the Code of intellectual Property Act reads thus :
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'(1) Notwithstanding the provisions of any written law providingfor the registration of a trade name, such name shall be protected,even prior to or without registration, against any unlawful actcommitted by a third party.
(2) Any subsequent use of a trade name by a third party,whether as trade name or as a trade mark, service mark orcollective mark or any such use of a similar trade name, trade mark,service mark or collective mark likely to mislead the public shall bedeemed unlawful.' By this section, the trade name RABEA of theplaintiff-respondent is protected whether registered or not.
There is a specific averment in paragraph 6 of the'plaintiff-respondent's plaint (A1) that the plaintiff-respondent hadbeen selling and exporting tea to the Middle East under the TradeMark and Trade Name RABEA in English as well as in Arabiccharacters, Paragraph 16 sets out that a cause of action accrued tothe plaintiff-respondent to sue for an interim and permanentinjunction to restrain the defendant-petitioner from using the nameRABEA in English or in any other language in its tea exports. Thisplaint (A1) was before the learned District Judge at the time heissued the interim injunction. So, it cannot be said that theplaintiff-respondent has in the present application sought recourseto another cause of action, namely, the unfair use of the tradename. In X1 no restriction attaches to the use of the transliterationof the English word Rabea in any language. What is restricted by X1is .the use of the translation in any language of th» English wordRABEA. So that the use of the transliteraton of the English wordRABEA in any language is the sole right of the plaintiff-respondent.The plaintiff-respondent's trade mark and trade name RABEA bothin English and in Arabic characters have been applied on polythenebags and cartons, specimens of which are marked X2. X3, X4, X5and X6, which have been used for tea exports to the Middle East bythe plaintiff-respondent. According to the translator's affidavit(X10) with the English version (X10A) the name RABEA TEA inEnglish and the words SHAHI RABEA in Arabic characters appearon X2, X3, X4, X5 and X6. X9 is a specimen of a printed wrapperused by the defendant-petitioner for its packeted tea for shipment.The English translation and transliteration of the Arabic words. appearing on (X9) is marked (X9A). According to (X9A), the
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transliteration of the Arabic words appearing on (X9} is *SHAI ALRABEA", and the translation in English of these Arabic words is"Rabea Tea' There can be no doubt that the use of the words Shaial Rabea by the defendant-petitioner in (X9) is to create confusionwith the goods of the plaintiff-respondent and to misleadpurchasers and others into the belief that the tea offered for sale,exported and/or sold by the defendant-petitioner is tea of theplaintiff-respondent known as Rabea Tea. The use of the wordsSHAI AL RABEA in Arabic characters in (X9) is an infringement ofthe plaintiff-respondent's trade mark and violates its rights and is anact of unfair competition. Therefore (XI) gives theplaintiff-respondent the right to restrain the use by thedefendant-petitioner of the transliteration of the English wordRabea in Arabic characters, in its tea shipments. Documents (K)and (L) annexed to the defendant-petitioner’s counter objectionsfiled in this Court are new documents. In any event, the fact thatthe registration of these Trade Marks, Giraffe Brand (K) and TeaMountain Brand (L) which are constituted by Arabic words in Arabicscript, set out the English translation of the Arabic words and thetransliteration of such words in English, does not affect the:plaintiff-respondent's sole right to the use of the transliteration ofthe English word Rabea in Arabic, t do not think that theplaintiff-respondent intended to suppress any material facts or tomislead the Court by filing indecipherable and indistinct photocopies of (XI). However, when documents are tendered to Courtby parties to litigation they should take note that the documents sotendered are distinct and decipherable.
I do not think that the plaintiff-respondent could have been awareeither of the tea shipments of the defendant-petitioner under thetrade mark CHAI AL RABIA which are alleged to have taken placesince 1980 or that of the shipments of tea of the seven shippersmentioned in (RIO). Even with regardto the present tea shipmentsof the defendant-petitioner, the plaintiff-respondent had becomeaware of it only on the information of an anonymous telephonecaller. The affidavit dated 4.8.83 (RIO) of Eneny of Egypt is a newdocument and has no relevancy to this application.
It is common ground that presently the plaintiff-respondentexports tea tb Saudi Arabia, while the defendant-petitioner exportstea to Egypt. According to the plaintiff-respondent, it has been
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exporting tea .from Sri Lanka to the Middle East for the lastseventy-five years which dates back to a period when there was noseparate country known as Saudi Arabia. The Middle East countriessuch as Saudi Arabia. Iraq, Bahrain, Dubai, Yemen (North andSouth) Oman constituted with others one country known as Arabia.I do not think that the plaintiff-respondent deliberately used theexpression, 'in the Middle East' to give the impression that itdominated all the foreign markets in the Middle East. Though theplaintiff-respondent does not export tea to Egypt, Egyptian Muslimswould be frequently visiting Mecca which is in Saudi Arabia onpilgrimages, and Egyptians have easy access to Saudi Arabia viathe Suez Canal. So that there is every likelihood that as much asEgyptians drink CHAI AL RABIA Tea shipped by thedefendant-petitioner to Egypt, they drink Rabea tea in Saudi Arabiawhich is shipped there by the plaintiff-respondent. So that there isevery chance of the plaintiff-respondent’s good name in the teaexport trade to Saudi Arabia for a long period of years being subjectto irremediable and irreparable damage if a poor quality of tea issold in Egypt under its trade Mark and name “Rabea*. The blendingof the plaintiff-respondent's tea would be different from that of thedefendant-petitioner's tea as the blending of tea of each teaexporter would be different. As regards the consignment of tea ofthe defendant petitioner which is ready for export in theharbour, the defendant-petitioner could have its tea repackedwithout surreptitiously using the plaintiff-respondent's trad® Mark.The Court cannot be expected to assist the defendant-petitioner byturning a Nelsonian eye to its illegal acts. I do not think that anydisadvantages that accrue to the defendant-petitioner by the grantof the interim injunction outweighs any conceivable damage to theplaintiff-respondent. I do not think it proper that the discretionexercised by the learned District Judge in granting the interiminjunction ex parte should be interfered with.
Section 666 of the Civil Procedure Code reads,' An order for aninjunction made under this chapter may be discharged, or varied, orset aside by the Court, on application made thereto on petition byway of summary procedure by any party dissatisfied with suchorder.'
It is clear that section 666 expressly provides that a DistrictJudge has the power to discharge, vary or set aside an interiminjunction, but that there is no provision made in that section which
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gives the District Judge power to suspend an interim injunction atany stage after its issue. The Legislature in its Wisdom has decidedto omit from section 666 the power of the Court to suspend aninterim injunction. Under section 839 of the Civil Procedure Codethe Court has inherent powers to make such orders as may benecessary for the ends of justice or to prevent abuse of the processof the Court. But the inherent power of the Court cannot be invokedto violate the express provisions of the Civil Procedure Code. Thisprinciple has been forcefully laid down in the cases I will now referto.
In Paulusz v. Perera (6) a partition action was dismissed by theDistrict Court upon a misconception- regarding documents filed inthe case. It was held thqt the Court had no power to set aside theorder of dismissal.
In the Course of his judgment de Silva. A.J. stated. 'Theappropriate remedy open to the parties in the partition case whenthe incorrect order of October 10 was made was to appeal from itto the Supreme Court. As this remedy has been very definitelyprovided by the Code it was not necessary for the District Court torevise its own order. A remedy already existed and whenever aremedy has been given by the Code, I do not think that sectiqp 839provided a collateral remedy'
In Kamala v. Andris (6) it was held that where an action has abated,the Court has no power to grant leave to institute a freshaction-Section 839 of the Civil Procedure Code is not intended toauthorise a Court to override the express provisions of the Code.
In de Silva v. de Silva (8) summons was served on the defendantin a divorce case. On the summons returnable date he was absentand ex parte trial was fixed. On a day before the date fixed forex-^parte trial the defendant filed papers and moved that the order forex parte trial be vacated. It was held that it was not open to thedefendant to show cause for her defaults before ex parte trial washeld and decree nisi entered. At page 558 Vythialingam, J. stated'the fixing of a date for ex parte trial is derived not from the inherentpowers of Court, but from the imperative provisions of the Code as
the next step andthe inherent powers of Court cannot be
invoked to violate the express provisions of the CodeSo
Sri Lanka Law Reports
[1984] 1 Sri L. R
that where the Code states that the next step shall be an ex partehearing, the Court cfcnnot in the exercise of its inherent powers takesome other step". A remedy already exists under section 666 of theCivil Procedure Code for a party dissatisfied with the issue of aninterim injunction ex parte.
The District Court cannnot invoke its inherent powers undersection 839 of the Civil Procedure Code to suspend an interiminjunction as it cannot Violate the express provisions of section 666which empowers the Court to discharge, or vary or set aside aninjunction. The defendant-petitioner’s complaint to the DistrictCourt was that the plaintiff-respondent had obtained the interiminjunction having suppressed material facts from Court. Thisquestion can only be gone into at an inquiry to be held after duecompliance with the express provisions of sections 666 and 377 ofthe Civil Procedure Code. The District Court has first to enter anorder nisi under section 377 (a) of the Civil Procedure Code andnotice of it has to be issued and served on the plaintiff-respondent.Thereafter the plaintiff-respondent is entitled to file its objectionsand a date of inquiry fixed thereafter *: At that inquiry the questionwhether the plaintiff-respondent had obtained the interim injunctionby supressing material facts could be inquired into and it would beopen for the learned Judge to either discharge, vary or set aside theinterim injunction. It is imperative that the express provisions setout in section 666 of the Civil Procedure Code are strictly compliedwith. There is also no power for a District Court to discharge or varyor set aside an interim injunction ex parte under section 666.
In Jinadasa v. Weerasinghe (9) an injunction was prayed for inthe plaint. The injunction was granted and served on the defendant.He moved by way of petition and affidavit that the injunction bedischarged. An order nisi or an interlocutory order in accordancewith section 666 was not entered. Instead the defendant wantedthe immediate determination of the matter in dispute. The plaintiff'sproctor protested against the procedure and pointed out thatsections 666 and 377 of the Civil Procedure Code should becomplied with. The District Judge made order suspending theinjunction and appointed a date of inquiry. It was held that theprocedure to be followed by a person against whom an injunctionhas been issued and who desires to obtain a discharge of thatinjunction is clearly laid down in sections 377 and 666 of the Civil
CA
Weerasinghe v. Ran Banda
J45
Procedure Code. Since the procedure was not followed, theappellant was entitled to the relief of this injunction and the orderrelating to the suspension of the injunction and the date fixed forinquiry was set aside.
In the present case the learned District Judge was correct inrefusing to order the suspension of the interinn injunction and wascorrect in making the order to enter order nisi. But the procedureadopted on behalf of the defendant-petitioner in supporting anapplication for a suspension of the interim injunction even beforeorder nisi was entered is unknown to the law.
I refuse the application to set aside the order of the learnedDistrict Judge dated 26.8.83 refusing the 1stdefendant-petitioner's application to suspend the interiminjunction. I also refuse thd application to suspend the operation ofthe ex parte order of the learned District Judge dated 21.7.83granting the interim injunction. I dismiss the application in revisionand I refuse the application for leave to appeal; Thedefendant-petitioner will pay the plaintiff-respondent a sum of Rs.525/- as costs in respect of both applications.
L. H. DE ALWIS, J. -I agree.
Applications for revision and leave to appeal refused.