CS(COMM)/298/2018 of MARIE STOPS INT., Vs PARIVAR SEVA SANSTHA

IN THE HIGH COURT OF DELHI AT NEW DELHI

*IN THE HIGH COURT OF DELHI AT NEW DELHI%Judgment Reserved on: 25[th]May, 2023Judgment Delivered on: 20[th]September, 2023

+CS(COMM) 298/2018, CRL.M.A. 736/2007 (u/s 340 CrPC) andCCP(O) 47/2010CCP(O) 47/2010

CS(COMM) 479/2018 and I.A. 11070/2022 (seeking adjournment)

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CORAM:HON'BLE MR. JUSTICE AMIT BANSAL

JUDGMENT

1.By way of this common judgment, I shall decide both the two suitscaptioned above.

2.CS(COMM) 479/2018 was originally filed on 11[th]September, 2003 asCS(OS) 1691/2003 on behalf of Parivar Seva Sanstha (hereinafter referred toas ‘PSS’) seeking permanent injunction restraining passing off along withother reliefs. CS(COMM) 298/2018 was originally filed on 4[th]July, 2005 asCS(OS) 898/2005 on behalf of Marie Stopes International (hereinafterreferred to as ‘MSI’) seeking permanent injunction restraining infringementof registered trademark, passing off, along with other ancillary reliefs.

CASE SET UP BY PSS IN CS(COMM) 479/2018

3.It has been pleaded on behalf of PSS in CS(COMM) 479/2018 that:3.1PSS is an Indian Non-Governmental Organisation (NGO), originallyregistered under the Societies Registration Act, 1860 in the name ‘MarieStopes Society’ (hereinafter referred to as ‘MSS’) in the year 1978.

3.2The main activities of the plaintiff are running clinics/centers,contraceptive social marketing, reproductive health education and trainingand offering high-quality reproductive health and family planning services ataffordable prices. The main objective of the centers is to offer family planningservices and abortion in safe, confidential, and reliable manner.

3.3On 24[th]November, 1982, MSS’s name was changed to ‘PSS’. Thegrants received by PSS were routed through MSI but were received from otherorganizations/donors. PSS is an independent entity and has been using the

brand name ‘Marie Stopes’ by virtue of being registered proprietor of thesaid trademark.

3.4The defendant no.9, MSI was originally registered as ‘PopulationServices International’ and later, changed its name to ‘Population Services,Europe’ and thereafter to ‘Marie Stopes International’ in 1989.

3.5It is the case of PSS that its clinics used the trademark ‘Marie StopesClinic’. There were about 25 Marie Stopes Clinic in existence in India by theend of 1990s with reputation of providing high quality, affordable abortion,and family planning services. PSS is thus synonymous in India with the‘Marie Stopes’ name and has nurtured and extensively promoted thetrademark ‘Marie Stopes’ along with offering services and goods bearing thetrademark ‘Marie Stopes’. Additionally, PSS has also protected the trademark‘Marie Stopes Clinic’ in suits wherein the ex-doctors were using the name.The plaintiff enjoys goodwill in the trademark ‘Marie Stopes’ and spendshuge amounts of money on publicity and advertisements. On account of theaforesaid, PSS has received huge donations from other countries.

3.6PSS applied and got registered on 28[th]December, 1987 the trade mark‘Marie Stopes’ comprising device of door (hereinafter referred to as ‘the

door device’)i.e.,

inclass 10and16and

in Class 9 (hereinafter referred collectively

as ‘Marie Stopes trademarks’).

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Digitally Signed By:DINESHKUMARSigning Date:20.09.202312:37:06

CS(COMM) 298/2018 and connected

3.7MSI going against its own policy of collaborating with one agency inone country, set up competitive organization in India viz. ‘Population HealthServices’ (hereinafter referred to as ‘PHS’), the defendant no.2. The shares ofPHS are held by ‘Marie Stopes India’, the defendant no.3.

3.8It is the case of PSS that problems with MSI became clear, when MSIcommunicated its desire for changed role and agenda in January, 1995 atthe Asia workshop. Due to criticism of the international donor community onthe role of middleman, MSI evolved ‘Partnership Manual, which soughtto seize control over the working of independent national partners of MSI.The said ‘Partnership Manual’ was not signed by PSS.

3.9PSS was engaged in the following projects in collaboration with MSI:

i.Orrisa Urban Reproductive Health Project.

ii.Children by Choice and not by Chance Project-Rajasthan.

iii.European Commission aided Howrah project.

iv.European Commission aided IEC 8 clinics project.

MSI caused disruptions in the funding of the aforesaid projects and causedthe donors to terminate the funding for the projects. PSS had to continue thesaid projects from its own funds, thereby causing losses to PSS both in termsof money as well as in terms of reputation in donor circles.3.10MSI terminated the alleged 1978 Agreement vide letter dated 13[th]March, 2003. Again, letter dated 2[nd]April, 2003 was sent to PSS by MSIseeking confirmation of the terms of MSI’s letter dated 13[th]March, 2003. On10[th]April, 2003, PSS requested for copy of the 1978 Agreement from MSI,which MSI did not provide. Thereafter, MSI published caution notice on

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17[th]July, 2003. PSS sent reminder notices dated 21[st]July, 2003 and 30[th]July,2003, which were also not responded to by MSI.

3.11Accordingly, the present suit was filed seeking the following reliefs:

“(a) decree of permanent injunction restraining the Defendantstheir directors, members, officers, agents, etc from using in anymanner, the trademark/ tradename/service mark Marie Stopes,the Door Logo device as also advertising the said marks andfrom doing any thing amounting to passing off the goods andservices of the Plaintiff as its own;

(b) declaration in favour of the plaintiff to the effect that theRajasthanProjectandcontractdated29.9.2000wereillegally/wrongfully terminated by defendant No.9;

(c) mandatory injunction to the effect that the defendant No.9continue to fund the existing Rajasthan project of the Plaintiff, aswell as pay/remit to the Plaintiff additional funds in relation toany escalation in project expenses;

(d) an order for recovery of the amount of Rs. 40.42 lakhs fromthe Defendant No.9 in lieu of the completion of the of the Howrahproject;

(e) An order cancelling the illegal registration of the defendantsNo.2;

(f) an order of damages to the tune of Rs. 178 lakhs to thedamages suffered by the Plaintiff in the Orissa Project;

(g) An order for damages in favour of the Plaintiff to the tune ofRs.4,00,00,000/- in lieu of the Rajasthan Project;”

CASE SET UP IN THE WRITTEN STATEMENT OF MSI

4.MSI, the defendant no. 9, contested CS(COMM) 479/2018 by filing

written statement in which it has been pleaded that:

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4.1PSS has no locus standi to pray for an injunction against the defendantsfrom using Marie Stopes trademarks as PSS itself is licensed user of the saidmarks. PSS is not the originator or owner of the said marks. PSS waspermitted the use of the Marie Stopes trademarks in terms of the 1978Agreement. PSS has no legal rights over the said mark after termination ofthe said Agreement vide letter dated 13[th]March, 2003.

4.2MSI is the prior user of the ‘Marie Stopes International’ and ‘the doordevice’ trademarks in the United Kingdom and in India and has also registeredthe same under various classes.

4.3Registration of the Marie Stopes trademarks in the name of PSS and‘Marie Stopes’, by PSS under classes 16, 10 and 9 have been obtained bymisrepresentation and suppression of material facts regarding the licenseissued to PSS as per the 1978 Agreement. Further, no authorisation wassought from MSI, who was the sole and exclusive proprietor of the aforesaidtrademarks.

4.4The instant suit is not maintainable on the ground of passing off sinceno deception/confusion is possible amongst the public as all lawful use of‘Marie Stopes’ trademarks in India has been done either by MSI or throughits agents/licensees with proper control being exercised by MSI over such use.PSS, who was earlier licensee and authorized to use the said marks, hassince been disentitled to use them in consonance with the termination letterdated 13[th]March, 2003 as all the use was done as licensee under the 1978Agreement.

4.5As per the 1978 Agreement, the promoters of PSS had approached MSIand requested permission for the use of the word ‘Marie Stopes’ in the nameof the society to be formed subsequent to the 1978 Agreement. Further as per

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clause 3 of the said Agreement, the exclusive right in the name ‘MarieStopes’, including Marie Stopes trademarks vests with MSI.

4.6The original name of the plaintiff society ‘Marie Stops Society’ wasregistered only pursuant to the trademark license granted by MSI. The nameof the plaintiff society was changed to ‘PSS’ on 24[th]November 1982.

4.7MSI, through its contact with international donors, merely acted as aconduit for funds to PSS from these donors and would monitor and overseethe execution of projects so funded by these donors. Hence, MSI was underno obligation to provide these funds mandatorily but would oversee that PSSadhered to the terms and references set out in the project as demanded by thedonors.

4.8PSS failed to permit the audit of the Rajasthan project funded by BuffetFoundation in terms of the requirements of the donor agencies, whichultimately led to the termination of the funding and premature closure of theproject by the donor. It was solely the acts of omission/commission by PSS,which led the donors to terminate the projects and no liability/responsibilityon MSI can arise with regard to the projects mentioned in the plaint.

5.The defendant no.2, Population Health Services and its Director, Mr.Vivek Malhotra, the defendant no.1 contested CS(COMM) 479/2018 by filinga common written statement. Similarly, Marie Stopes India, the defendantno.3, its trustees, Mr. Vivek Malhotra, the defendant no.6 and Mr. NandanDas Gupta, the defendant no.7 have filed common written statement. Intheir written statements, the defendants no.1, 2, 3, 6 and 7 have supported thestand taken by the defendant no.9.

6.In its replications, PSS has re-affirmed its assertions made in the plaint.

CASE SET UP BY MSI IN CS(COMM) 298/2018

7.It has been pleaded on behalf of MSI in CS(COMM) 298/2018 that:

7.1MSI was company registered under the laws of United Kingdom, inthe name ‘Population Services Family Planning Programmes Limited’(hereinafter referred to as ‘PSFPPL’) and constitutes part of legacy of Ms.Marie Stopes, who was doctor and pioneer in the field of populationcontrol and reproductive health related services in the UK. PSI changed itsname to ‘Marie Stopes International Limited’ with effect from 12[th]August,1991 and further changed its name to MSI.

7.2MSI is voluntary organisation working in the area of reproductivehealth care and services and operates range of programmes in nearly 40countries including India.

7.3MSI has been using the trademark ‘MARIE STOPES’ along with ‘thedoor device’ since 1973.

7.4MSIistheregisteredproprietorofthetrademark,

(‘Marie Stopes International’),

(‘the door device’) and(‘MARIESTOPES INTERNATIONAL’ along with ‘the door device’) under Classes10 and 16 since 27[th]December, 2002 in India.

7.5MSI (then known as PSFPPL), under the assumed name of ‘PopulationServices International’, entered into the 1978 Agreement with the promotersof PSS to extend its charitable activities. Pursuant to the said Agreement, PSS

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CS(COMM) 298/2018 and connected

was registered under the name of ‘Marie Stopes Society’. In furtherance ofthe Agreement, MSI granted licenses and permission to the promoters of PSSto use the Marie Stopes trademarks.

7.6PSS had irregularities in its functioning which severely jeopardised theprojects and interests of the donors, from whom, funds were procured infurtherance of its objectives.

7.7PSS amended the MOA and Dr.Dhall, the founder member and thePresident appointed by MSI, resigned from the governing body in June, 2002.Dr. Tim Black, Chief Executive of MSI was voted out from the PSS’sgoverning body in August, 2002, which was contrary to Clause 7.1 of the1978 Agreement.

7.8MSI terminated the 1978 Agreement vide letter dated 13[th]March,2003, which was followed by reminder letter dated 2[nd]April, 2003.

7.9Accordingly, the present suit was filed seeking the following reliefs:

“a) decree for permanent injunction restraining the defendant,its office bearers, assigns in business, franchisees, licensees,agents, etc. from using the impugned trade marks "MARIESTOPES" and the logo comprising "door device" or any othertrademark or logo as may be identical to or deceptively similarwith the trademark "MARIE STOPES" and the logo comprisingthe "door device" of the plaintiff, in relation to medical,reproductive healthcare and birth control services as may belikely to lead to confusion or deception amounting to passing offof the defendant's business or services for those of or associatedwith the Plaintiff;

b) decree for permanent injunction restraining the defendant,its office bearers, assigns in business, franchisees, licensees,agents, etc. from using the impugned trade marks "MARIESTOPES" and the logo comprising "door device" or any othertrademark or logo as may be identical to or deceptively similar

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with the trademark "MARIE STOPES" and the logo comprisingthe "door device" of the plaintiff, in relation to contraceptives,advertisements and reproductive healthcare services as mayamount to infringement of trade mark registration numbers01161971, 01161972 and 01161973 of the plaintiff.

c) decree for delivery up of all the infringing articles, publicitymaterials, hoardings, banners, blocks, dies and all such articlesemployed by Defendant in applying the impugned trademark tothe offending goods, to an authorized representative of theplaintiff for destruction;

d) an order for rendition of accounts of profit illegally earned bythe defendant and decree for an amount so found due or in thealternative, decree for Rs.20 lakhs towards damages or suchfurther damages as may be ascertained by the Hon'ble Court maybe passed in favour of the plaintiff and against the defendant;

e) an order for costs of the proceedings;”

CASE SET UP IN THE WRITTEN STATEMENT OF PSS

8.In its written statement, PSS has pleaded that:

8.1The 1978 Agreement was entered into between the promoters of thePSS and MSI. The society itself was not privy to this contract, nor had ratifiedthe said contract and hence, the same is not binding on it. The promoters ofthe PSS being proper parties have not been made party to the instant suit.The 1978 Agreement required that PSS upon incorporation would enter intoa subsequent Agreement with MSI. However, no such Agreement wasexecuted and hence, PSS cannot be referred to as licensee.

8.2PSS was national partner in India of MSI and did not function as asubsidiary but both parties engaged on principal-to-principal basis.

8.3The suit is barred by reasons of acquiescence, delay and laches. MSIhas acquiesced to the use of Marie Stopes trademarks by PSS by being awareof use and registration of said trademarks.

8.4PSS’s health clinics have used the trade name/trademark/ service mark‘Marie Stopes Clinic’ since its inception in 1978 and by the end of the 1990s,about 35 ‘Marie Stopes Clinics’ were in existence in India. PSS has performedall roles of proprietor of trademark including granting of franchises,protection of trademark/name ‘Marie Stopes Clinic’ in various legal suits,spending money on advertisements etc.

8.5PSS is the prior user of the trademark ‘Marie Stopes’ in India.

8.6The trademark registrations applied by PSS during the years 1981 and1982 were in the knowledge of the deputed members of MSI serving on thegoverning body of PSS and hence, MSI has acquiesced to the usage of marksby the PSS and is now estopped from restraining its use.

8.7PSS has created its reputation and goodwill in India independent ofMSI, though both of them have collaborated in the past with respect to certainprojects, albeit as separate entities. MSI has never used the ‘Marie Stopes’mark in India and PSS has exclusively popularised the same.

9.In its replication, MSI has reaffirmed its assertions made in the plaint.PROCEEDINGS IN THE SUITS

10.Summons in CS(OS) 1691/2003 were issued on 12[th]September, 2003and summons in CS(OS) 898/2005 were issued on 6[th]July, 2005.

11.Vide judgment dated 22[nd]February, 2010, this Court granted interiminjunction against PSS restraining it from using the trademark ‘MARIESTOPES’ including the door device.

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Digitally Signed By:DINESHKUMARSigning Date:20.09.202312:37:06

CS(COMM) 298/2018 and connected

12.The two suits were consolidated for joint trial on 25[th]October, 2010.On the said date, issues were also framed and Local Commissioner wasappointed for recording of the evidence. Thereafter, on 31[st]January, 2011, theissues were recasted and the parties were referred to mediation before theDelhi High Court Mediation and Conciliation Centre, which failed eventually.

13.Following are the final issues framed in the present suits:

“(1) Whether the agreement dated 2nd March, 1978 wasexecuted with promoters of Parivar Seva Sanstha and binds theParivar Sewa Sanstha (PSS)? OPD- CS(OS) No. 1691/2003

(2) if the findings on the above issue are in the affirmative, whatis the effect and meaning of the said agreement? OPD

(3) Is any plaintiff in either suit entitled to decree for permanentinjunction against the opposite party to restrain use of the mark'Marie Stopes and/or the door device in relation to the goodsproducts and services offered by such plaintiff?

(4) Does the plaintiff in CS(OS) No. 898/2005 prove that thedefendant has infringed the trademark, registrations which havebeen disclosed in the suit? OPD-CS(OS) No. 898/2005.

(5) Does the plaintiff in CS(OS) No. 1691/2003 prove that thedefendant is guilty of passing off its business activities as thoseof the said plaintiff? OPP

(6) Does the Marie Stopes International prove that it is thelegitimate user by prior adoption of the mark Marie Stopesand/or door device as alleged by it? OPD(7) Does the Parivar Seva Sansthan prove that it is entitled to amoney decree for Rs.40.2 lakhs from the 9th defendant in the suit,as alleged? OPP

(8) Are the plaintiffs in either of the suits entitled to decree fordamages as claimed? If so, to what extent? Onus on parties

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(9) Relief.”

14.Mr. Dinesh Dayal, Additional District Judge (Retd.) was appointed asa Local Commissioner to record the evidence. Evidence was recorded by theLocal Commissioner in CS(OS) 1691/2003 and CS(OS) 898/2005.

15.Subsequently, CS(OS) 898/2005 was converted to commercial suiton 2[nd]February, 2018 and CS(OS) 1691/2003 was converted to commercialsuit on 8[th]February, 2018 and the same were re-numbered as CS(COMM)298/2018 and CS(COMM) 479/2018 respectively.

16.Following witnesses appeared on behalf of MSI:

i.Mr.Tim Black (DW-1), Chief Executive and Secretary of MSI.

ii.Ms. Zoe Alison Norden (DW-2), Legal Department- The GuardianNewspaper.Newspaper.

iii.Ms.NutanWozencroft(DW-3),FinancialController-OverseasDivision of MSI.Division of MSI.

iv.Mr. V.K. Govil (DW-4), (Member of the governing body of MSI).

17.Following witnesses appeared on behalf of PSS:

i.Ms. Sudha Tewari (PW-1), President of PSS

ii.Mr.Trilok Nath Suri (PW-2), Manager Finance, PSS

iii.Mr. Syed Mahtab Ali (PW-3), Manager Finance, PSS.

18.I have heard the submissions on behalf of the parties and gone through

the record of the suits.

19.My issue wise findings are as under:

ISSUE NO.1 : WHETHER THE AGREEMENT DATED 2ND MARCH, 1978 WAS

EXECUTED WITH PROMOTERS OF PARIVAR SEVA SANSTHA AND BINDS THE

PARIVAR SEWA SANSTHA (PSS)? OPD- CS(OS) NO. 1691/2003

AND

ISSUENO.2 :IF THEFINDINGSONTHE ABOVEISSUE AREIN THEAFFIRMATIVE,WHATISTHEEFFECTANDMEANINGOFTHESAIDAGREEMENT? OPD

20.The main bone of contention between the parties relates to the existenceof the 1978 Agreement between MSI and the promoters of PSS. MSI contendsthat the collaboration between MSI and PSS commenced in the year 1978 onthe basis of the aforesaid Agreement, whereas PSS disputes the existence ofthe said Agreement.

21.To begin with, reference may be made to the respective pleadings ofthe parties on this aspect. In paragraphs 10 to 12 of the plaint in CS(COMM)298/2018, MSI has pleaded that MSI (under the assumed name of ‘PopulationServices International’) entered into an Agreement dated 2[nd]March, 1978with the promoters of PSS to extend its charitable activities in India. It isfurther pleaded that pursuant to the 1978 Agreement, PSS was set up andregistered as society in the name of ‘Marie Stopes Society’ for providingfamily planning services in India. The 1978 Agreement also gave right toMSI to terminate the said Agreement and upon such termination, the newsociety could not use the Marie Stopes trademarks. Paragraphs 10 and 12 ofthe plaint in CS(COMM) 298/2018 are reproduced below:

“10.The defendant, Parivar Seva Sansthan, is societyregistered under The Societies Registration Act No: XXI of 1860,having its registered office at C-374, Defence Colony, NewDelhi. The defendant is engaged in the business of renderingreproductive health care services involving medical terminationof pregnancy, birth control advisory and dispensation ofcontraceptives including condoms. In 1978, the plaintiff (then

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known as Population Services International) entered into anagreement with the promoters of the defendant society toextend its charitable activities to Indian population. Pursuantto the execution of the agreement dated 2[nd]March 1978, copywhereof is annexed herewith and marked as ANNEXURE-B,the defendant society was constituted, set up and registeredunder the name of "Marie Stopes Society" for providing familyplanning services in India. The plaintiff granted licenses andpermission to the promoters of the defendant society to use thetrade mark and trade name MARIE STOPES and "the doordevice".

11.It was specifically set out in Clause 34 of agreement dated2[nd]March 1978 (hereinafter referred to as "the trade mark useragreement")thatthepromotersofthedefendanthadapproached the plaintiff and requested for permission to usethe trade mark MARIE STOPES in the name of the societv tobe formed bv the defendant.

Clause 3 of the said trademark user agreement unambiguouslvspecifies that the plaintiff is the owner of the name MARIESTOPES and has exclusive right to use thereof includingemblems, specimen whereof were specifically provided in theschedule to the said Trade Mark User Agreement, which interalia, included the "door device".

12.Under the said Trade Mark User Agreement, thedefendant was permitted to use the trade mark MARIESTOPES in relation to the clinics to be established by thedefendant. The terms of the agreement further specified that ifthe defendant does any acts/deeds or things and/or omitted to doanything which in the sole opinion of the plaintiff might injure orimperil or be against the interest of the plaintiff and/or trademark MARIE STOPES, then- the plaintiff had the liberty toterminate the said Trade Mark User Agreement forthwith andupon such termination, the defendant was to absolutely stopusing the mark MARIE STOPES. With effect from 24[th]November 1982, the name of the defendant society was changed

from MARIE STOPES SOCIETY to "Parivar Seva Sanstha", itspresent name.”

22.The response of PSS to the aforesaid pleadings is contained inparagraphs 26 to 28 of its written statement, which have been reproducedbelow:

“26. The contents of paragraph 10 are denied to the extent thatthe plaintiff granted any license. It is vehemently denied thatthere exists license agreement entered into between thePlaintiff and the Defendant and the Plaintiff is put to strictproof thereof. It is submitted that photocopy of an allegedagreement with promoters which itself required the execution ofa subsequent contract with the Defendant (and never was) willnot suffice and the Plaintiff is required by law to produce awritten license or ratification by the defendant society of thealleged trademark license agreement with the Defendant entity.It is further submitted that there has never been any agreementof trademark license between the Plaintiff and the Defendantfor any of the projects undertaken by the two. In fact theDefendant is an independent entity that works in collaborationwith the Plaintiff but is not in any manner subordinate to orcontrolled by the Plaintiff. Such averments of the Plaintiff aredenied as being completely false.

27. The contents of paragraph 11 are denied in entirety. It issubmitted that where no agreement existed between the partiesto the instant suit there arises no question of relying on anyclause of the same. The Plaintiff is put to strict proof of theaverments in the paragraph under reply.

28. The contents of paragraph 12 are denied. It is submitted thatthere was no subsequent license agreement between thePlaintiff and the Defendant entity as was required andtherefore there arises no question of termination of the same.The Plaintiff has since acquiesced to the defendant's use of thesaid trademark and cannot now claim any rights in India of the

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trademark MARIE STOPES. The Plaintiff is put to strict proofof the averments in the paragraph under reply. It is however amatter of record that the Defendant's name was changed witheffect from November 24, 1982 from Marie Stopes Society toParivar Seva Sanstha, its present name.”

23.PSS, in its written statement has denied the existence of the 1978Agreement between MSI and PSS. However, there is no outright denial of theexistence of the 1978 Agreement. It is not the case of MSI that the saidAgreement was between PSS/MSS and MSI. The Agreement was betweenMSI and the promoters of PSS, as PSS/MSS was yet to be registered at thatpoint of time.

24.It is also pertinent to mention here that in its response dated 10[th]April,2003 [CS(COMM) 479/2018, plaintiff’s documents vol.1, Pg no.300] to thetermination notice dated 13[th]March, 2003 [Ex.DW-1/14], PSS did not disputethe existence of the 1978 Agreement. It only stated that it did not have copyof the 1978 Agreement.

25.On behalf of MSI, Dr. Tim Black (DW-1), who was the ChiefExecutive and Secretary of MSI has deposed that the 1978 Agreement wasexecuted and the same was signed by him on behalf of MSI (then known asPSI) and by Dr. Dhall, Mr. Govil and Mr. Arora as the promoters of the newsociety proposed to be set up in India. He has identified his signatures on eachpage of the 1978 Agreement. The relevant extract from his affidavit ofevidence is as under:

“6.I say that “Marie Stopes House” is the nerve Centre ofMSI’s U.K. Centre network which is the largest private sectorproviding family planning services in Britain. In order to spreadits population and birth control services overseas, MSI lookedfor local partners in other countries. It was during this phase in

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1978 that I met Dr. (Ms.) Sudesh Bhal Dhal, qualifiedGynecologist, Mr. V. K. Govil and Mr. G.K. Arora of NewDelhi, India. They expressed their desire to set up Indian localpartner and affiliate of MSI in India. Accordingly, anagreement dated 02[nd]March 1978 was executed in the name ofPopulation Services International {the assumed name underwhich Population Services (Family Planning Programme)Ltd.} carried its population and birth control activities asmentioned above. The agreement was signed by me personallyon behalf of Population Services International and it wassigned by Dr. Dhal, Mr. Govil and Mr. Arora as the promotersof the new society proposed to be set-up in India by MSI. I havea copy of the agreement with me and I am advised that copythereof has also been placed on record of the suit. I identify mysignature on each page of the said agreement. The originalagreement was retained by the promoters in India forregistering the society in the name of Marie Stopes Society andshould be available with PSS. I say that PSS is deliberatelywithholding the original agreement and disputing it falsely. Acopy of the agreement as placed on suit record which bears mysignature may be exhibited as EXHIBIT DW1/10. I alsoidentify the signature of Dr. Dhal, Mr. V. K. Govil and Mr. G.K. Arora as they had signed on each page of the said agreementin my presence. The said agreement was necessitated to recordgrant of permission by MSI to PSS to enable PSS to use the trademark/trade name "Marie Stopes" and to enable it to register asa society under the said name to reflect its affiliation with MSI.All ownership in the trade mark Marie Stopes and Marie Stopeslogos as depicted in the agreement itself, always belonged toMSI. PSS therefore had no right to use the licensed trademarks/trade name once the permission was withdrawn andaffiliation with MSI was broken. Any further use afterdiscontinuation of affiliation would constitute misrepresentationto world at large and lead to deception.”

26.Dr. Tim Black, who was unwell at the time of cross-examination, wascross-examined through video conferencing at the High Commission of India

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in London. He was cross-examined by the counsel on behalf of PSS for threedays from 19[th]to 21[st]August, 2014. He could not be cross-examined anyfurther as he expired on 11[th]December, 2014.

27.It is contended on behalf of MSI that since further cross-examinationof Dr. Tim Black could not be continued on account of his death, histestimony can be looked into by the Court. Reliance in this regard is placedon the following judgments:

i.Krishan Dayal v. Chandu Ram, 1969 SCC OnLine Del 134.

ii.Dever Park Builders Pvt. Ltd. v. Madhuri Jalan, 2002 SCC OnLine

Cal 535.

28.On behalf of PSS it was contended that since the cross examinationcould not be completed, it should not be given any weight. Reliance in thisregard is placed on the judgment of the Andhra Pradesh High Court inSomagutta Sivasankara Reddy v. PalapandiaChinnaGangappa,MANU/AP/1284/2001.

29.In Krishan Dayal (supra), Single Bench of this Court has held thatstatement of witness in examination-in-chief cannot become inadmissibleby reason of the subsequent death of the witness before his cross-examination.The Court would have to decide as to what weight can be attached to theexamination-in-chief in view of the facts and circumstances of the case. TheCourt may also take into account whether the testimony of such witness hasbeen corroborated or supported by surrounding circumstances.

30.Similar view has also been taken by the Calcutta High Court in DeverPark Builders (supra). The relevant observations of the Court are set outbelow:

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“19.Therefore, from the aforesaid catena of decisions whichare rendered in Civil cases and from the discussion reached byme hereinabove I hold that the testimony of the deceaseddefendant is admissible and the Court is bound to consider itsweight to be attached for deciding this matter. Each and everyproof in examination in chief does not require being cross-examined. There are cases where no cross-examination is reallyrequired. I find here portion of the examination-in-chief hasbeen cross-examined and such portion in my view should beabsolutely admissible in evidence and be considered without anyhesitation by the learned Judge at the time of hearing anddeciding of the suit. Cross-examination is essentially needed tobring out the truth of the oral testimony, but in case ofdocumentary evidence where there is no suggestion or pleadingas to fraud and forgery the cross-examination hardly matters.”

31.In Somagutta (supra), relied upon by PSS, the Andhra Pradesh HighCourt has made similar observations that the evidence of person who couldnot be cross-examined on account of his death may be admissible. However,the weight of probative value thereof, would vary from case to case.32.In light of the aforesaid decisions, it is clear that the evidence of aperson who died before completion of cross examination can be consideredby the Court. The only issue which has to be considered by the Court is theweight that is to be attached to such testimony in the facts and circumstancesof the case. Further, in cases of documentary evidence, where there is nosuggestion with regard to fraud or forgery, it would not matter whether cross-examination of the witness has been carried out and the testimony of awitness, who expired before the completion of cross-examination, can beconsidered by the Court.

33.In the present case, as noted above, Dr. Tim Black has deposed clearlyon the execution of the 1978 Agreement and identified his signatures as well

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as the signatures of Dr. Dhall, Mr. Govil and Mr. Arora on the same, whosigned in his presence. It is borne out from the record that Dr. Tim Black wascross-examined over three days on behalf of PSS and 148 questions were putto him in the cross-examination. In the cross-examination on record, not asingle question was put to the said witness about the execution of the 1978Agreement or its existence.

34.The evidence of Dr. Tim Black is corroborated by the evidence of Mr.V.K. Govil (DW-4), who was duly cross-examined on behalf of PSS. Mr.V.K. Govil was practicing Advocate and was involved in the drafting of the1978 Agreement. In his testimony, Mr. Govil has deposed that he drafted the1978 Agreement, which was signed by Dr. Tim Black, Dr. Sudesh Dhall, Mr.G.K. Arora and by Mr. Govil himself. He has identified his signatures on allthe pages of the 1978 Agreement. He has further deposed that the original1978 Agreement was retained by him for the purposes of registration of theproposed society. Once the society was registered under the name of ‘MarieStopes Society’, the original 1978 Agreement was given by him to Dr. SudeshDhall, who placed it in the office files of PSS.

35.In the cross-examination of Mr. Govil conducted on behalf of PSS, hehas reiterated that he signed the 1978 Agreement in his individual capacityand physically handed over the original 1978 Agreement to Dr. Sudesh Dhall.He has denied the suggestion put to him on behalf of PSS that there was nosuch Agreement or that nothing was handed over to Dr. Sudesh Dhall.

36.Dr. Sudesh Dhall also filed an affidavit dated 3[rd]March, 2006 at thestage of hearing of interim application (I.A. No.4907/2005 in CS(COMM)298/2018) wherein she deposed in favour of the execution and existence of

the 1978 Agreement. The relevant portions from her affidavit of evidence areas under:

“2.I requested MSI to establish an entity in India which wouldconform to MSI's protocols and Licensee Agreement which wasgiven shape in an Agreement in 1978 where I was one of thepromoters. An Agreement dated 2[nd]March 1978 was signed byme.

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4.Isaythatallactivitiesincludinggovernance,administration and compliances of PSS were to be approved byMSI, London, before acted upon by PSS in India throughout thetenure of my relationship and Chairmanship of PSS up till 2002.All the terms of the Agreement dated 2[nd]March 1978 werefollowed strictly in the letter and spirit by the Governing Bodyof the Executive Committee Members as well as other membersof the Society at all points of time. All the members of theGoverning Body were elected in accordance with the terms ofthe1978Agreement.TheMemorandum&ArticlesofAssociation of PSS were duly approved by MSI, UK.”

37.However, Dr. Dhall could not appear as witness in the case. In thisregard, Mr. V.K. Govil in his evidence has deposed that he contacted thehusband of Dr. Dhall with regard to her appearing as witness in the case andwas informed by her husband that Dr. Dhall was suffering from dementia andParkinson’s and therefore, was not in mental condition to depose as awitness. The relevant medical certificate in this regard has been exhibited asEx.DW-4/4.

38.In view of the above, in my opinion, the evidence of Dr. Tim Black hasbeen sufficiently corroborated by the evidence of Mr.V.K. Govil. As notedabove, Dr. Tim Black was cross-examined over three days and subjected to148 questions, with none of the questions dealing with the existence of the

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1978 Agreement. Further, there are no allegations of forgery or fraud of thedocumentary evidence. Therefore, in my considered view, maximum weightwould have to be given to the evidence of Dr. Tim Black in the facts andcircumstances of the present case.

39.The combined evidence of Dr. Tim Black and Mr. V. K. Govil, thepleadings in the suit as well as the response dated 10[th]April, 2003 to the legalnotice 13[th]March, 2003 leaves no doubt in my mind that the 1978 Agreementwas duly executed between MSI and the then promoters of PSS.

40.Next, it is contended on behalf of PSS that the 1978 Agreement wasexecuted by ‘Population Services International’ on its letter head, which is anAmerican entity and not UK entity.Therefore, even if it is assumed that the1978 Agreement was executed, it was not with the UK entity, PSFPPL, thepredecessor of MSI.

41.In paragraph 6 of the plaint in CS(COMM) 479/2018 as well as inparagraph 7 of the affidavit of evidence of PW-1, it has been admitted by PSSthat MSI was originally registered as ‘Population Services International’. Theparagraph 6 of the plaint has been produced hereinbelow-

“6.The defendant No.9 was originally registered asPopulations Services International. In the year 1979-80 theDefendants name was changed to Population Services, Europe.Subsequently, the name of the defendant was changed to MarieStopes International sometime around 1989, even though thedefendant was registered as charity in name of Population”Populations Services International. In the year 1979-80 theDefendants name was changed to Population Services, Europe.Subsequently, the name of the defendant was changed to MarieStopes International sometime around 1989, even though thedefendant was registered as charity in name of Population”Services Family Planning Programme Ltd. …

42.The aforesaid averments have been supported in paragraph 7 of theaffidavit of evidence filed by Ms. Sudha Tewari, PW-1, which is as under:

“7. I say that the defendant No.9 was originally registered asPopulations Services International. In the year 1979-80 theDefendants name was changed to Population Services, Europe.Subsequently, the name of the defendant was changed to MarieStopes International sometime around 1989, even though thedefendant was registered as charity in name of Population”Services Family Planning Programme Ltd……...

43.With respect to the aforesaid deposition, Ms. Sudha Tewari, PW-1, inher cross examination, has stated that it is ‘cut paste’ error.

44.This aspect has been explained by Dr. Tim Black, DW-1 in histestimony. DW-1 has stated that ‘Population Services international’ and‘Population Services Europe’ were the assumed names under which PSFPPLcarried out its population and birth control activities. Dr. Tim Black wasextensively cross-examined on this aspect. The relevant extracts from thecross-examination of Dr.Tim Black are set out below: -

Q52. Is there any charity or company registered as PopulationService Europe in UK?

A.No. But it was the trading name we adopted forPopulation Services Family Planning Programme Limited inUK.

Q53. Do you have any documents from Charity or Company’sdepartment or any other government organization which refersto your trading name Population Services Europe.

A.No. (Vol: We were not required to have any registration.)

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Q.83. If the name of the American Company was changed toPopulation Services International in 1972 why is it referred to as

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Population Services International & Co. Inc. in Article 4 (b) and7?

A.Because it was incorporated in US in 1971 as PopulationServices Inc. and it adopted the trading name PopulationServices International when we embarked on our first overseasproject.

Q.140.YouhavereferredtoPopulationServicesInternational as the assumed name of the UK Company inparagraph 2 of your affidavit. Do you refer to the AmericanCompany?

A.Yes. Phill Harvey and I formed both the AmericanCompany and the UK Company and we worked the twocompanies as associate companies.

Q.141.If the Population Service International was neitherregistered in UK nor it had established its business in UK, underwhat authority or provision of law you were using the name inUK?

A.We were using it as trading name with the authority ofthe Board of the US Company which at that time consisted ofmyself, Phill Harvey and another.”

45.From the aforesaid, it is clear that ‘Population Service International’was the assumed name under which the UK entity, PSFPPL carried out itsactivities and therefore, there was nothing unusual if the 1978 Agreement hadbeen executed on the letterhead of ‘Population Service International’.Resultantly, I do not find any merit in the submission of PSS that the 1978Agreement had nothing to do with the U.K. entity.

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46.Next, it has been contended on behalf of PSS that since the original ofthe 1978 Agreement has not been produced, the same cannot be proved on thebasis of the photocopy placed on record. Reliance has been placed on thejudgments in Jagmail Singh v. Karamjit Singh and Ors, (2020) 5 SCC 178

and Ram Mehar v. Ali Mohd and ors, 2021 SCC Online Del 3388.

47.In this regard, reference may be made to relevant provisions of theIndian Evidence Act, 1872:-

“63. Secondary evidence ––

(3) copies made from or compared with the original;

65. Cases in which secondary evidence relating to documentsmay be given.––

(a)when the original is shown or appears to be in thepossession or power –

of the person against whom the document is sought to beproved, or

of any person out of reach of, or not subject to, the process of theCourt, or

of any person legally bound to produce it,

and when, after the notice mentioned in section 66, such persondoes not produce it;

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(c) when the original has been destroyed or lost, or when theparty offering evidence of its contents cannot, for any otherreason not arising from his own default or neglect, produce itin reasonable time;

66. Rules as to notice to produce.—

Secondary evidence of the contents of the documents referred toin section 65, clause (a), shall not be given unless the partyproposing to give such secondary evidence has previously givento the party in whose possession or power the document is, or tohis attorney or pleader, such notice to produce it as is prescribedby law; and if no notice is prescribed by law, then such notice asthe Court considers reasonable under the circumstances of thecase:

Provided that such notice shall not be required in order torender secondary evidence admissible in any of the followingcases, or in any other case in which the Court thinks fit todispense with it: ––

(2) when, from the nature of the case, the adverse party mustknow that he will be required to produce it;

67.Proof of signature and handwriting of person alleged tohave signed or written document produced. –– If document isalleged to be signed or to have been written wholly or in part byany person, the signature or the handwriting of so much of thedocument as is alleged to be in that person’s handwriting mustbe proved to be in his handwriting.”

48.In Jagmail Singh (supra), relied upon by PSS, the Supreme Court hasheld that for the secondary evidence to be admitted, foundational evidencehas to be given proving as to why the original evidence could not be furnished.

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49.In the present case, both Mr. V.K. Govil and Dr. Tim Black havetestified that the original Agreement was in possession of PSS and they havedeliberately withheld it, which lays the foundational evidence as to why theoriginal Agreement could not be produced by MSI. Hence, the requirement tosend notice as per Section 66 of the Indian Evidence Act stands dispensedwith as the instant case falls within proviso 2 to Section 66 of the IndianEvidence Act.

50.In Ram Mehar (supra), the appellant claimed that he had lost theoriginal documents in house fire and hence, pleaded that his case fell underSection 65(c) of the Indian Evidence Act. However, no evidence was led forproving the statement with respect to the aforementioned fire. It was held thatin the absence of foundational evidence for leading secondary evidence,secondary evidence is inadmissible.

51.In the present case, even if it is assumed that the original 1978Agreement is not with PSS, then as per the evidence on record, it has to betaken to be lost. Even in this scenario, the photocopy of the said Agreementwould be admissible as secondary evidence in terms of Section 65(c) of theIndian Evidence Act and no notice under Section 66 is required.

52.In light of the discussion above, in my opinion, the photocopy of the1978 Agreement would be admissible as secondary evidence. Further, in viewof the fact that the signatures of Dr. Tim Black and Mr. V.K. Govil, the twosignatories of the 1978 Agreement have been proved in evidence, theaforesaid 1978 Agreement stands proved in terms of Section 67 of the IndianEvidence Act, 1872.

53.At this stage, reference may be made to the relevant portions of theAgreement dated 2[nd]March, 1978 entered into between Population Services

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International (now known as MSI) and Dr. Sudesh Dhall, Mr. V.K. Govil andMr. G.K. Arora as promoters of the society to be incorporated. The 1978Agreement is reproduced below:

“This AGEEMENT is made on the Second day of March. Onethousand nine hundred and seventy eight BETWEEN PopulationServices International of 108, Whitfield Street, London W.1.,United Kingdom, (here is after referred to as PSI) of the One Partand

1.Dr. (Mrs) Sudesh Bahl Dhall of L1/18 Haus Khas Enclave,New Delhi.

2.Mr. V.K. Govil of 4, Marina Hotel, Connaught Place, NewDelhi.

3.Mr.G.K. Arora of 4, Marine Hotel, Connaught Place, NewDelhi.

(hereinafter referred to collectively as ‘the Promoters of theOther Part)Whereas:

1.PSI was established in the United Kingdom with theobject of providing family welfare services in any part of theworld as are specifically defined in the objects Clause of theMemorandum and Articles of Association of PSI (herein afterreferred to “the said objects and purposes”)

2.The Promoters are desirous of executing the said objectsand purposes in India and for this purpose are desirous offorming registered Society in the Union Territory of Delhi.

3.PSI is the owner and has the exclusive rights in the name‘Marie Stopes’ and its Emblems specimen whereof is given inthe Schedule hereunder (hereinafter collectively referred to as“the said Marks”).

4.The promoters have approached and requested PSI topermit and grant licence for use of the said Marks by the

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proposed Society to be formed by the Promoters and also forusing and/c including the word “Marie Stopes” in the name ofthe clinics and/or new proposed Society and also to use theword to be registered with the name “Marie Stopes” under theprovisions of the Societies Registration Act, 1860 Act No.21 of1860 in the Union Territory of Delhi in India (hereinafterreferred to as “the said New Society”) to which request PSI hasagreed on the terms and conditions hereinafter set forth.

NOWTHESEPRESENTSWITNESSETHANDITISMUTUALLY AGREED BY AND BETWEEN THE PARTIESHERETO AS FOLLOWS:

1.Pursuant to the said Agreement and in consideration ofthe Promoters forming the said New Society in the UnionTerritory of Delhi in India for carrying out and executing saidobjects and purposes subject to the provisions of Clause 2 below,PSI hereby grant permission and licence for the use of the saidMarks as are specified in the Schedule given hereunder by thesaid New society in the name of the New Society and/or inrelation to the clinics run and maintained by the said NewSociety.

2.The Promoters hereby undertake that this Agreementshall be adopted and cause to be adopted by the said NewSociety immediately after the registration of the Said NewSociety and thereafter the said New Society shall carry out theterms of this Agreement to the full extent.

3.The Promoters and/or the said New Society subject to theprovisions of Clause 2 above shall not pay any money for thelicence hereby granted by PSI during the continuance of thisAgreementandthereafterthefollowingtermsshallbeapplicable.

a)If the said New society shall do or cause to be done directlyor indirectly whether as principal or agent any acts deeds orthings and/or to omit to do anything which may injure or imperilor be against the interest of PSI and/or the said Marks, of which

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events PSI shall be sole judge and the decision of PSI in thisbehalf to be final and binding on the liberty to terminate andcancel this Agreement forthwith by writing letter to the saidNew Society. On termination of this Agreement the said NewSociety shall absolutely stop using the said Marks and also takeimmediately effective steps to change its name and to removethe name ‘Marie Stopes’ from the name of the said NewSociety.

b)If the said New Society shall fail and/or neglect to carryout the directions in sub Clause (a) above, PSI shall be at libertyto specifically enforce its rights under this Agreement throughcourt of law.

(c)Notwithstanding anything herein before contained itshall be lawful for PSI to terminate this Agreement withoutassigning any reason therefore by giving 3 months notice inwriting and immediately on receipt of the notice the said NewSociety shall take effective steps for deletion of the word ‘MarieStopes’ from the name of the said New Society. After the expiryof the notice period the said New Society shall not use in anymanner whatsoever the word ‘Marie Stopes’ and/or the saidMarks and shall not represent or indicate in any wayconnection with PSI.

4.The Promoters hereby undertake that immediately afterthe registration of the said New Society, they shall cause thesaid New Society to enter into an Agreement with PSI on thelines of draft annexed hereto and marked ‘A’.”

SCHEDULE referred to above :

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IN WITNESS WHEREOF THIS AGREEMENT has beenexecuted on the day and the year first above written.”

54.It was contended on behalf of PSS that the 1978 Agreement, even if itis assumed that it existed, was not between MSI and PSS. The said Agreementwas between MSI and the then promoters of PSS. The said Agreement wasrequired to be ratified by PSS upon its incorporation, which was never done.Therefore, the aforesaid Agreement is not binding on PSS. No freshAgreement was entered into between MSI and PSS upon its incorporation.55.Per contra, on behalf of MSI, it has been contended that even if thesaid 1978 Agreement was not formally approved/ratified by PSS, the saidAgreement was duly acted upon. In this regard, reliance is placed on behalfof MSI on the following documents:

i.Certificate of Registration of PSS dated 11[th]July, 1978 (in the name ofMSS) [Ex.PW-1/34].MSS) [Ex.PW-1/34].

ii.Memorandum of Association (MOA) and Articles of Association(AOA) of PSS dated 22[nd]August, 1978 [Ex.PW-1/2].(AOA) of PSS dated 22[nd]August, 1978 [Ex.PW-1/2].

56.A perusal of recital 4 of the 1978 Agreement would show that PSS waspermitted to be registered in the name of ‘Marie Stopes Society’ only on thebasis of the 1978 Agreement. In the absence of the 1978 Agreement, therewas no basis for PSS being registered under the name of ‘Marie StopesSociety’. Further, in terms of clause 1 of the Agreement, MSI granted alicense for the use of its trademarks by the new society to be incorporated andthe clinics to be run and maintained by the said society. The fact thatimmediately after signing of the 1978 Agreement, society in the name of

‘Marie Stopes Society’ was registered on 11[th]September, 1978 itself showsthat the 1978 Agreement was duly acted upon.57.Now, reference may be made to the Memorandum of Association ofPSS [Ex.PW1/2] as well as relevant clauses of the rules and regulations ofPSS :

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RULES AND REGULATIONS OF THE PARIVAR SEVASANSTHA1.…

2. Interpretation:

(f) ‘Population Service Europe’ means Population ServicesEurope, company Incorporated in England under theCompanies Act 1948 and 1967 and also registered as charity No.265443 with the Charity 'Commission in London, England.

6. President

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6.1 The President or the Society shall be nominee of PopulationServices Europe with the right to Population Services Europe towithdraw and re-appoint another.

8. Alterations to Members of the Governing Body:

8.1 If any member or the Governing Body shall be likely toremain outside the Union Territory of Delhi for period not lessthan three months an alternate for such member of the GoverningBody may be appointed:

(a) in the case of the President by Population Services Europeand

(b) in the case of member being an elected member by theGoverning Body.

8.2 An alternate so appointed shall not hold office as such for aperiod longer than that permissible to the original member inwhose place he has been so appointed and shall vacate office ifand when the original member returns to the Union Territory ofDelhi.”

58.A perusal of MOA of PSS shows that the ‘Marie Stopes door device’logo has been used therein, which could not have been used in the absence ofthe aforesaid 1978 Agreement. In terms of Clause 6 of the rules andregulations of PSS reproduced above, the President of PSS was the nomineeof Population Services Europe, the then assumed name of MSI. This showsthe collaboration with MSI and control of MSI over the new society, PSS.59.In this regard, reference may be made to the judgment of the SupremeCourt in Kollipara Sriramulu v. T. Aswatha Narayana, AIR (1968) SC 1028,the relevant paragraph of which is set out below:

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“3. … It is well established that mere reference to futureformal contract will not prevent binding bargain between theparties. The fact that the parties refer to the preparation of anagreement by which the terms agreed upon are to be put in amore formal shape does not prevent the existence of bindingcontract. There are, however, cases where the reference to afuture contract is made in such terms as to show that the partiesdid not intend to be bound until formal contract is signed. Thequestion depends upon the intention of the parties and the specialcircumstances of each particular case. As observed by the LordChancellor (Lord Cranworth) in Ridgway v. Wharton [6 HLC238, 63] , the fact of subsequent agreement being prepared maybe evidence that the previous negotiations did not amount to aconcluded agreement, but the mere fact that persons wish to havea formal agreement drawn up does not establish the propositionthat they cannot be bound by previous agreement. In VonHatzfeldt-Wildenburg v. Alexander [(1912) 1 CH 284, 288] itwas stated by Parker, J. as follows:

“It appears to be well settled by the authorities that if thedocuments or letters relied on as constituting contractcontemplate the execution of further contract between theparties, it is question of construction whether the executionof the further contact is condition or term of the bargain orwhether it is mere expression of the desire of the parties as tothe manner in which the transaction already agreed to will infact go through. In the former case there is no enforceablecontract either because the condition is unfulfilled or becausethe law does not recognize contract to enter into contract.In the latter case there is binding contract and the referenceto the more formal document may be ignored.”

60.There is nothing in the 1978 Agreement to suggest that ratification ofthe Agreement by the proposed society was sine qua non for the saidAgreement to be binding contract. As noted above, the 1978 Agreement wasduly given effect to by the parties and therefore, it cannot be said thatratification of the Agreement by the new society to be incorporated, was

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pre-condition to be fulfilled, failing which the Agreement could not be actedupon. In my reading of the 1978 Agreement, ratification was only in the natureof desire of the parties and merely because it was not ratified, would notaffect the binding nature of the Agreement. It is relevant to note here that notonly was the Agreement acted upon to register PSS as society, but it wasalso continuously acted upon till the disputes arose between the parties in theyear 2002. Till 2002, the President of PSS was the nominee of MSI. Further,other members of the governing body were also nominees of MSI.

61.On behalf of PSS reliance is placed on section 19(e) of the Specificrelief Act to submit that ‘pre-incorporation agreement’ is binding on partiesonly if the same is ratified by the entity post its incorporation. I do not findmerit in the aforesaid submission as in the present suit MSI is not seekingspecific performance of the Contract. Further, the language of Section 19 (e)itself suggests that the same is applicable only in the case of companies thatare to be incorporated. Admittedly, PSS was registered as society and not asa company.

62.Therefore, I do not find merit in the submission of the PSS that justbecause further agreement between MSI and PSS, as contemplated under1978 Agreement was not executed or the 1978 Agreement was not ratified,the 1978 Agreement would not be binding on PSS.

63.In view of the discussion above, I have no hesitation in holding that theAgreement dated 2[nd]March, 1978 was duly executed between MSI and thepromoters of PSS, the same was acted upon and was binding on PSS.

64.Accordingly, Issues no.1 and 2 are decided in favour of MSI.

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ISSUE NO.4: DOES THE PLAINTIFF IN CS(OS) NO. 898/2005 PROVE THATTHE DEFENDANT HAS INFRINGED THE TRADEMARK REGISTRATIONS WHICHHAVE BEEN DISCLOSED IN THE SUIT? OPD-CS(OS) NO. 898/2005.

65.MSI has filed CS(COMM) 298/2018 claiming infringement of itstrademarks bearing no.1161971, 1161972 and 1161973, exhibited as Ex. DW-1/11, Ex.DW-1/12 and Ex.DW-1/13 respectively, as well as passing off.66.It is submitted on behalf of PSS that PSS is the prior registeredproprietor and user of the Marie Stopes trademarks, bearing no.483376B,483375 and 483378, exhibited as Ex.PW-1/18, Ex.PW-1/19 and Ex.PW-1/20respectively in India.

67.In view of Section 28(3) of the Trade Marks Act, 1999, no infringementaction can lie against the defendant unless its registration is declared to beinvalid. For ease of reference, Section 28(3) is extracted below:

“28. Rights conferred by registration.—

(3) Where two or more persons are registered proprietors oftrade marks, which are identical with or nearly resemble eachother, the exclusive right to the use of any of those trade marksshall not (except so far as their respective rights are subject toany conditions or limitations entered on the register) be deemedto have been acquired by any one of those persons as against anyother of those persons merely by registration of the trade marksbut each of those persons has otherwise the same rights asagainst other persons (not being registered users using by wayof permitted use) as he would have if he were the sole registeredproprietor.”

68.It is an admitted position that both PSS and MSI are the registeredproprietors of the identical Marie Stopes trademarks in the same classes. Sinceboth the PSS and MSI are registered proprietor of almost identical trademarks,

in my view, in terms of section 28(3) of the Trade Marks Act, 1999, noinfringement action can lie against PSS.

69.Accordingly, issue no.4 is decided in favour of PSS.

ISSUE NO.6: DOES THE MARIE STOPES INTERNATIONAL PROVE THAT IT ISTHE LEGITIMATE USER BY PRIOR ADOPTION OF THE MARK MARIE STOPESAND/OR DOOR DEVICE AS ALLEGED BY IT? OPD :

ISSUE NO.5: DOES THE PLAINTIFF IN CS(OS) NO. 1691/2003 PROVE THATTHE DEFENDANT IS GUILTY OF PASSING OFF ITS BUSINESS ACTIVITIES ASTHOSE OF THE SAID PLAINTIFF? OPP;

AND

ISSUE NO.3: IS ANY PLAINTIFF IN EITHER SUIT ENTITLED TO DECREE FORPERMANENT INJUNCTION AGAINST THE OPPOSITE PARTY TO RESTRAIN USEOF THE MARK'MARIE STOPES AND/OR THE DOOR DEVICE IN RELATION TOTHE GOODS PRODUCTS AND SERVICES OFFERED BY SUCH PLAINTIFF?

70.I have already decided above that case for infringement cannot bemade out since PSS and MSI both are the registered proprietors of almostidentical trademarks in the same classes. However, Section 27(2) of the TradeMarks Act provides that de hors the provisions of the Act, an action of passingoff would be maintainable. Therefore, since the parties have filed the presentsuits for infringement as well as passing off, the case of the parties can beconsidered in the context of passing off. reference in this regard may bemade to the judgment of S. Syed Mohideen v. P. Sulochana Bai, 2016 (2)SCC 683, wherein the Supreme Court held that an action for passing off shallremain unaffected by any registration provided under the Trade Marks Act.

71.It is the case of PSS that its clinics have been using the trademark‘Marie Stopes Clinic’ since 1976. There were about 25 Marie Stopes Clinicsin existence in India by the end of 1990s with reputation of providing highquality, affordable abortion and family planning services. PSS is thussynonymous in India with the ‘Marie Stopes’ name and has nurtured andextensively promoted the trademark ‘Marie Stopes’ along with offeringservices and goods bearing the trademark ‘Marie Stopes’. Additionally, PSShas also protected the trademark ‘Marie Stopes Clinic’ in suits wherein theex-doctors were using the name. PSS enjoys goodwill in the trademark ‘MarieStopes’ and spends huge amounts of money on publicity and advertisements.Ms. Sudha Tewari, PW-1 has deposed in her affidavit of evidence regardingthe aforesaid facts.72.MSI claims proprietary rights in the Marie Stopes trademarkscomprising the door device logo on account of being the prior user of the saidmarks in UK since 1976. The relevant extracts from the affidavit filed byDr.Tim Black, DW-1 are given below:

“3.I say that Dr. Marie Stopes, British Citizen was pioneerin publicly propagating need for birth control and safe abortionin United Kingdom. She had set-up birth control clinic tofacilitate safe abortion in London in March 1921 by the name of“Mother’s Clinic”. Dr. Stopes expired in 1958 but her workcontinued at the said premises by the “Society for ConstructiveBirth Control Clinic” (SCBCC). As the said clinic went intoliquidation, it was taken over by Population Services (FamilyPlanning Programme) Ltd. in 1976 alongwith the lease of theclinic premises which was located at 106-108 Whitefiled,London. copy of the lease order dated 26.04.1976 recordingthe transfer of lease is placed on record and may be exhibited asEXHIBIT DW1/3.

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4.I say that pursuant to said takeover of Mother’s Clinicand in order to commemorate the initiative taken by Dr. MarieStopes, decided to name the said clinic after Marie Stopes’sname. Accordingly, the name of the clinic was changed by mefrom “Mothers Clinic” to “Marie Stopes House” and ever since1976, the said clinic has been known as “Marie Stopes House”.Mr. Harry Stopes son of Ms. Marie Stopes, at our request hasacknowledged right of Population Services (Family PlanningProgramme) Ltd’s right to use of name of his mother, MarieStopes for the clinics. letter dated 28.02.2003 signed byMr.Harry Stopes has been placed on record and may beexhibited as EXHIBIT DW1/4.

5.I say that we spent large amount to give publicity andcreate awareness about “Marie Stopes” House in London byinserting large number of advertisements in local newspapers.Some specimen copies of such advertisements published in thenewspaper titled “Guardian” dated 29[th]November 1976, 17[th]January 1977, 02[nd]December 1977, 11[th]January 1978 and 19[th]January 1978 have been placed on record, duly certified by theHistoric Newspapers, Scotland and may be exhibited asEXHIBIT DW1/5 to EXHIBIT DW 1/9 respectively.”

73.DW-1, Dr. Tim Black has stated in his evidence that after taking overthe lease of the clinic run by Dr. Marie Stopes in 1976, the name of the clinicwas changed to ‘Mothers clinic’ to ‘Marie Stopes House’. Mr. Harry Stopesson of Marie Stopes also acknowledged the aforesaid in his communicationdated 20[th]February, 2023 [Ex.DW-1/4]. MSI also gave huge publicity to thisfact in newspaper advertisements. No cross examination of Dr. Tim Black,DW-1 was conducted on the aforesaid aspects.

74.The aforesaid facts have also been confirmed by Ms. Sudha Tewari,PW-1 in her cross-examination conducted on 28[th]May, 2012. The relevantextracts from her cross-examination are set out below:

“Q13. Are you aware what happened to Dr. Marie Stopes clinicin U.K after he death?

Ans. Dr. Marie Stopes clinic which was called ‘Mother’s clinic’could not be sustained and went into voluntary receivership.

Q14. When was that?

Ans. I understand this was sometime in 1975.

Q15. Do you know what happened to “Mother’s clinic” of Dr.Marie Stopes clinic after 1975?

Ans. I understand that Population Services Family planningProgramme Ltd., which was established in 1973, took over thispremises on lease basis in 1976.”

75.Regarding the advertisements in The Guardian Newspaper, Ms. ZoeAlison, DW-2 from Legal Department of the Guardian Newspaper, U.Kdeposed as witness and proved the photocopies of the said advertisementsfiled by MSI. She was duly cross-examined by the counsel for PSS. Therelevant extracts from her deposition are set out below:

Q.1Are you from the Guardian Newspaper UK?A.YesA.Yes

“Q.2 Are you carrying your records of the GuardianNewspaper published on 29[th]November, 1976, 17[th]January,1977, 2[nd]December, 1977, 11[th]January, 1978 and 19[th]January, 1978?

A.Yes.

Q.3Can you look into the copies of these newspapers whichare part of the suit record and confirm that they are true copiesof newspaper publications by your company?

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A.Yes. They are the same copies that I have. Same text. Ihave checked each page. The newspapers are already part ofEx.DW1/5 to DW1/9.

XXXX by Mr. Anil Airi, Advocate for the Plaintiff.

“Q.3 Have you brought the original newspaper with you or thecopies of the newspapers?

A.I have printed copies of the newspaper from our archivecase.

Q.4What you have brought with you is not the newspaper asit was printed and published on those dates. Is that correct?

A.It is print out of the scanned copy of the publishednewspaper as they are stored in our archives.

Q.5Are you responsible for maintaining the computer andarchive department of Guardian?

A.No. It is historic archive which is not maintained. Thingsare not added to it but I can have access to it only.

Q.6Can you tell when these papers were scanned andarchived?

A.I do not know.

Q.7Does it bear any certificate from the person who scannedand archived the newspapers?

A.No. (Vol.- but you must have password and user ID toaccess the archives).

Q.8Are the password and IDs to access the archives given toother employees of Guardian also?

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A.Yes. But you can only access and not modify anycontents.

Q.9Is there separate department within Guardian forscanning and archiving?

A.I do not know if it is maintained within the Guardian. I donot know who does it.

Q.10 Do you have the advertisement which is on page 14 ofEx.DW1/5 with the heading “Sex should be fun” in the copy ofthe newspaper brought by you?

”A.Yes.

76.On behalf of PSS, it has been contended that all the aforesaidadvertisements are incomplete as the entire newspapers were not produced. Itis further stated that DW-2, who was examined to prove the advertisements,only brought print outs of the scanned copies from the archives. Therefore, inthe absence of an affidavit under Section 65B of the Indian Evidence Act,1872, the print outs of the scanned documents cannot be taken into evidence.Further, from the advertisements, it appears that the advertisements wereissued by PSI, an American organisation and not by MSI. In any event, theaforesaid newspaper advertisements by themselves do not constitutetrademark user and hence, it cannot be said that MSI was the prior user of theMarie Stopes trademarks.

77.In my opinion, Section 65B of the Indian Evidence Act, is not attractedin the present case as the documents proved by DW-2 were not electronicrecords. They were photocopies of newspapers and in the nature of secondaryevidence in terms of Section 63 of the Evidence Act read with section 65 (c)of the Evidence Act. Since the documents were already on record, the role of

DW-2 was only limited to confirm whether the said documents werephotocopies of the original. DW-2 has testified that Ex. DW-1/5 to Ex. DW-1/9 are true copies of the original newspapers. In order to prove the saidphotocopies, DW-2 produced printouts of the scanned copies of the originalpublished newspapers stored in the archives. As per my understanding, thereis no bar under Section 65B of the Evidence Act, for document on record ofthe suit to be proved by producing electronic records.

78.A perusal of the advertisement showed that it was issued by “T. Black,PSI, Marie Stopes House, 108, Whitfield Streat, London, W.1.”. I havealready held above that PSI was the assumed name under which PSFPPLcarried out its activities.

79.On the other hand, no evidence has been produced on behalf of PSSwith regard to use of Marie Stopes trademarks by PSS in the year 1978.Evidence in this regard given by Ms. Sudha Tewari, PW-1 is hearsay asadmittedly she joined PSS only in the year 1981 and therefore, had nopersonal knowledge of the events of 1978. The relevant portion of the cross-examination of PW-1 is set out below:-

“Q33.I put it to you that you were not in the organization in 1978and hence you have no knowledge as to why it was name MarieStopes Society?

Ans.Yes, that is correct.”

80.Therefore, in my opinion, MSI has placed sufficient material on recordto establish its prior use and goodwill and reputation of the Marie Stopes trademarks in UK.

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81.Next, it is contended on behalf of the PSS, that the conduct of theparties show that the use of Marie Stopes Trademarks by PSS in India wasindependent. In this regard, reliance is placed on the following:

i.Registration of trademarks in favour of PSS as proprietor and not asa licensee. [Ex. PW-1/18 to PW-1/20]a licensee. [Ex. PW-1/18 to PW-1/20]

ii.Various copyright registrations in favour of PSS. [Ex. PW-1/21 to PW-1/32]1/32]

iii.Various franchises agreements entered into by PSS. [Ex. DW 4/X-18]iv.Legal proceedings initiated by PSS for persons infringing the MarieStopes Trademarks in India. [Ex.DW 4/X-14, to DW 4/X-16]iv.Legal proceedings initiated by PSS for persons infringing the MarieStopes Trademarks in India. [Ex.DW 4/X-14, to DW 4/X-16]

82.PSS has also claimed acquiescence by MSI in respect of its long andcontinuous user of the Marie Stopes trademarks. It has further been contendedby PSS that it was PSS that developed, used and promoted the Marie Stopestrademarks since its incorporation in 1978. PSS has attained goodwill in theaforesaid trademarks in India on account of uninterrupted use for the lastthirty years and since, MSI has failed to establish any goodwill or reputationin respect of the aforesaid marks in India no case for passing off is made out.Reliance has been placed on the following judgments:

i.Intex Technologies and Anr. v. AZ Tech and Anr., 2017 SCC OnLineDel 7392.Del 7392.

ii.Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limitedand Ors., (2018) 2 SCC 1.and Ors., (2018) 2 SCC 1.

iii.Roland v. Sandeep Jain and Ors., 2021 SCC OnLine Del 3482.

iv.Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt.Ltd. and Anr., 2023 SCC OnLine Del 583.Ltd. and Anr., 2023 SCC OnLine Del 583.

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83.Per contra, on behalf of MSI it has been contended that the entire useof the Marie Stopes trademarks by PSS in India is on the basis of the 1978Agreement, as licensee of MSI. In this regard, counsel for the plaintiff hasplaced reliance on the judgment of this Court in Baker Hughes Limited v.Hiroo Khushalan, 1998 PTC (18).

84.In my considered view, all the aforesaid factors relied upon by PSSwould not change the fundamental premise that all the registrations obtainedby PSS of the Marie Stopes trademarks and copyrights as well as all theaforesaid actions were on account of PSS being licensee of MSI in terms ofthe 1978 Agreement. PSS and MSI never dealt with each other on principal-to-principal basis. Therefore, the entire usage, goodwill and reputation arisingout of the said use of the Marie Stopes trademarks by PSS in India wouldenure to the proprietor of the marks, i.e., MSI and not PSS.

85.In view of the above, reliance placed on behalf of PSS on the judgmentsin Intex Technologies (supra), Prius Auto Industries (supra), Roland (supra)and Tech Square Engineering (supra), would not come to the assistance ofPSS as in all the aforesaid cases, unlike the present case, there was nocollaboration between the parties or permitted user by the defendants.

86.The fact of collaboration between PSS and MSI since its inception hasbeen specifically admitted by PSS in paragraph 6 of its plaint. The relevantportion of paragraph 6 of the plaint in CS(COMM) 479/2018 is set out below:

“6. ……. The Plaintiff has been collaborating with theDefendant No.9 since its inception. In fact members of theDefendant No.9 were members of the governing body of thePlaintiff till recently. The Plaintiff is however independententity and as such has been interacting with the Defendant No. 9as national 'partner'. The brand name "Marie Stopes" is used

in India by the Plaintiff as registered trademark in variousclassesasalsoregisteredcopyrightsorappertauntartwork/logos with all rights in India vesting with the Plaintiff.”

87.The aforesaid fact has been reiterated in paragraph 7 of the affidavit ofof evidence of Ms. Sudha Tewari, PW-1. Therefore, from its very inception,the use of the Marie Stopes trademarks by PSS was on account ofcollaboration between MSI and PSS.

88.At this stage, reference may also be made to the Technical AssistanceAgreement [Ex.PW-1/50] executed between PSS and MSI in 1997 in respectof the ‘Orissa project’, wherein PSS has specifically acknowledged theownership of MSI in respect of the Marie Stopes trademarks. The relevantextract from the Technical Assistance Agreement is set out below:

“In addition, particular attention will be paid to the quality ofservice provision, given that MSI’s brand name ‘Marie Stopes'is to be used within the project. MSI will consequently expectthat existing protocols procedures 'and working methods ascurrently adapted by PSS in other programmes shall also apply”here conforming to MSI standards.

89.It is also relevant to note that the aforesaid Agreement was signed byMs. Sudha Tewari, PW-1 on behalf of PSS.

90.Till 2002, as per the rules and regulations of PSS (Ex. PW-1/2), thePresident of PSS had to be nominee of MSI. In August, 2002 the rules wereamended to remove this requirement. It is not disputed that the nominees ofMSI continued to be on the governing body of PSS from 1978 to 2002.Therefore, the governing body and management of PSS continued to be underthe control of MSI till 2002. It is apparent from the above that till the timedisputes arose between the parties in the year 2002, PSS recognised MSI as

being the proprietor of the Marie Stopes trademarks and therefore, MSI didnot object to the use of Marie Stopes trademarks by PSS till then.

91.MSI never objected to the aforesaid registrations obtained by PSS aswell as the aforesaid actions as it was under bonafide belief that the saidregistrations were on the basis of the permitted use under the 1978 Agreement.There was never any assertion by PSS of its independent rights in respect ofthe aforesaid trademarks. Therefore, I do not find any merit in the submissionof PSS with respect to acquiescence of PSS’s use of Marie Stopes trademarksby MSI. However, once the 1978 Agreement was terminated, PSS was notentitled to use the same.

92.At this stage, reference may be made to the decision in Baker Hughes(supra). In the aforesaid case, joint venture agreement was entered intobetween the plaintiff (a company incorporated in United Kingdom) and thedefendant(acompanyincorporatedinIndia),whichcontemplatedincorporation of joint venture company in India. The company to beincorporated in India had, as part of its name, ‘Baker’, which was part ofthe name of the plaintiff’s company. The Agreement provided that the Indiancompany would not be entitled to use the name ‘Baker’ in the event theshareholding of the plaintiff company in the Indian company fell below 40%.Disputes arose between the parties and the plaintiff company sought torestrain the Indian company from using the name ‘Baker’. single Bench ofthis Court held that the use of the name ‘Baker’ by the Indian company waspermissive in nature and once the relationship between the plaintiff and thedefendant ended, the defendant company could not use the name ‘Baker’ andcontinued use by the defendant would amount to passing off. The defendanttherein made an argument that the said Agreement was not binding on the

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Indian company as it was not adopted by the Indian company, which is similarto the submission being made on behalf of the PSS in the present case.However, the said argument was rejected by the Court. Even otherwise, dehors the Agreement, it was held that the use by the defendant would amountto passing off. Relevant observations from the judgment in Baker Hughes(supra) are set out below:

“From the conduct of the second defendant, it appears to methat the 'Basic Agreement' was adopted and acted upon by thesecond defendant. The second defendant having taken thebenefit of the 'Basic Agreement' cannot be heard to say that thesame was not adopted by it. If the same was not adopted by thesecond defendant, the question that arises is as to how it wasusing the trade name Baker as part of its corporate name.Prima facie it appears to me that the trade name Baker belongsto the plaintiffs which fact would be evident from the furtheranalysis of the matter detailed in the latter part of the judgment.Obviously the permission to the second defendant to use thetrade name Baker as part of its corporate name flowed from the“basic agreement”. The allotment of shares of second defendantto the first plaintiff is also as per the basic the ‘basic agreement’.

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The use of the name Baker as part of its corporate name by thesecond defendant was permissive in nature and once theplaintiffs disassociated themselves from the second defendantthe use of the word Baker in the corporate name of the seconddefendant becomes highly improper, and it impinges upon theright of the plaintiffs to use the same exclusively, Learnedcounsel, for the plaintiffs submitted that assuming withoutadmitting that the 'Basic Agreement' was not binding on thesecond defendant even then the plaintiffs will be entitled tointerim injunction as the second defendant is passing off itsgoods and business as that of the plaintiffs by using the wordBaker in its corporate name despite the fact that the plaintiffs

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have proprietory right over the name Baker and the goodwillattached thereto. It was pointed out that the word Baker is beingused by the plaintiffs and its associate companies all over theworld for long time. The second defendant was not entitled touse the word Baker in its corporate name after the first plaintiffhad sold its share in the second defendant. Once the firstplaintiff snapped its ties with the second defendant thecontinued use of the word Baker in the corporate name of the”second defendant cannot be permitted.

93.The aforesaid judgment was upheld by the Supreme Court in BakerHughes Limited & Anr v. Hiroo Khushalan & Anr., 2004 (29) PTC 153(SC).

94.The facts of the aforesaid case are very similar to the case at hand.There was collaboration between the parties. PSS was registered as societyin the name of ‘Marie Stopes Society’ on the basis of the 1978 Agreement.PSS was permitted and continued to use the Marie Stopes trademarks in termsof the 1978 Agreement between the parties. Once the permissive user wasterminated by MSI vide termination notice dated 13[th]March, 2003 [Ex.DW-1/14], PSS had no right to use the Marie Stopes trademarks and any such userwould amount to passing off.

95.In Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd., 2001 (5)SCC 73, the essential elements for constituting passing off have beenelucidated by the Supreme Court in the following terms:

“10. Under Section 28 of the Trade and Merchandise Marks Acton the registration of trade mark in Part or of the register,a registered proprietor gets an exclusive right to use the trademark in relation to the goods in respect of which the trade markis registered and to obtain relief in respect of infringement of thetrade mark in the manner provided by the Act. In the case of an

unregistered trade mark, Section 27(1) provides that no personshall be entitled to institute any proceeding to prevent, or torecover damages for, the infringement of an unregistered trademark. Sub-section (2) of Section 27 provides that the Act shallnot be deemed to affect rights of action against any person forpassing off goods as the goods of another person or the remediesin respect thereof. In passing-off action is maintainable. Thepassing-off action depends upon the principle that nobody has aright to represent his goods as the goods of somebody. In otherwords man is not to sell his goods or services under thepretence that they are those of another person. As per LordDiplockin ErvenWarninkBV v. J.Townend&Sons [(1979) 2 All ER 927] the modern tort of passing off hasfive elements i.e. (1) misrepresentation, (2) made by traderin the course of trade, (3) to prospective customers of his orultimate consumers of goods or services supplied by him, (4)which is calculated to injure the business or goodwill ofanother trader (in the sense that this is reasonably foreseeableconsequence), and (5) which causes actual damage to abusiness or goodwill of the trader by whom the action isbrought or (in quia timet action) will probably do so.”96.It is to be noted that both MSI and PSS both are using the word mark‘Marie Stopes’. PSS uses the mark ‘Marie Stopes’, whereas MSI uses themark ‘Marie Stopes International’. Both, MSI and PSS are also using ‘thedoor device’. An added factor for confusion would be the inherent nature ofthe services. Both MSI and PSS are NGOs, which are engaged in the activitiesrelating to reproductive health services. The continuing use of Marie Stopestrademarks by PSS after the termination of the 1978 Agreement wouldamount to misrepresentation about the continuing association/collaborationbetween PSS and MSI with an intent to ride on the goodwill and reputationof the marks of MSI, which would amount to passing off. It would also bedetrimental to public interest as the public at large is likely to associate PSS’s

activities with those of MSI. Applying the principles of passing off as set outin the aforesaid precedent to the facts of the present case coupled with theobservations made above, MSI has established case of passing off as theuser by the PSS after termination of the 1978 Agreement amounts to passingoff and therefore, MSI is entitled to decree of permanent injunction againstPSS.

97.In view of the discussion above, Issues no. 3, 5 and 6 are decided infavour of MSI.

ISSUE NO.7: DOES THE PARIVAR SEVA SANSTHAN PROVE THAT IT ISENTITLED TO MONEY DECREE FOR RS.40.2 LAKHS FROM THE 9THDEFENDANT IN THE SUIT, AS ALLEGED? OPP

AND

ISSUE NO.8: ARE THE PLAINTIFFS IN EITHER OF THE SUITS ENTITLED TO ADECREE FOR DAMAGES AS CLAIMED? IF SO, TO WHAT EXTENT? ONUS ONPARTIES

98.PSS claims recovery in relation to the various ongoing projects at thetime when disputes arose between PSS and MSI. At that time, there werefollowing 4 projects in respect of which recoveries have been sought by PSS:

I.Orrisa Urban Reproductive Health Project. (hereinafter referred to as‘the Orissa project’)‘the Orissa project’)

II.Children by Choice and not by Chance Project-Rajasthan. (hereinafterreferred to as ‘the Rajasthan project’)referred to as ‘the Rajasthan project’)

III.European Commission aided Howrah project. (hereinafter referred toas ‘the Howrah project’)as ‘the Howrah project’)

IV.European Commission aided IEC 8 clinics project. (hereinafter referredto as ‘the 8 clinics project’)to as ‘the 8 clinics project’)

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99.In respect of all the aforesaid projects PSS seeks damages from MSI onthe ground that funding in respect of the aforesaid projects as promised wasnot made and hence, PSS had to spend its own funds for completion of theseprojects resulting in losses.

100.On the other hand, MSI submits that role of MSI under the aforesaidprojects was only that of conduit of funds between the donor and PSS. MSIwas not obliged to arrange for any funds for the said projects and its role wasonly to oversee that the funds provided by the donors are spent in propermanner.

THE ORISSA PROJECT

101.The Orissa Project was bilateral project between the BritishGovernment and the Indian Government and funded through Department forInternational Development (DFID), which is an arm of the BritishGovernment. Technical Assistance Agreement [Ex. PW-1/50] was signedbetween the MSI and PSS for the aforesaid project. MSI was the monitoringagency under the said Agreement whereas PSS was the implementing agency.The programme was terminated by DFID vide letter dated 19[th]February, 1999[Ex. DW-3/1].

THE RAJASTHAN PROJECT

102.The Rajasthan Project was funded by the ‘Buffett Foundation’. As perthe Memorandum of Understanding with Buffett Foundation [Ex. PW-1/5],role of MSI was to act as funding conduit for making available project fundsto PSS and monitoring the progress of the project. The aforesaid project was

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terminated by the donor i.e., the Buffet Foundation vide letter dated 26[th]March, 2003 [Ex. PW- 1/56].

THE HOWRAH PROJECT

103.As per the contract dated 16[th]April, 1996 [Ex. DW- 3/19], the aforesaidproject was to be funded by the European Commission and the role of MSIwas only to act as facilitator of the funds. Further, MSI held fiduciaryresponsible for the execution of the project.

THE 8 CLINICS PROJECT

104.European Commission (EC) entered into contract dated 18[th]January,2000 with MSI, who held fiduciary responsible for the execution of theproject. As per the letter dated 20[th]August, 2003 [Ex. DW-3/24], PSS haddirectly written to EC terminating the project as of 31[st]August, 2003 andseeking reimbursement of funds. This is clear acknowledgment that thefunds for the project were to come directly from EC.

105.A perusal of the contracts executed in relation to the aforesaid projectswould show that the role of MSI was only to act as facilitator of the funds.In her cross examination, Ms. Sudha Tewari, PW-1 has specifically admittedthat MSI was only facilitator. Relevant part of cross examination is set outbelow:

“Q37. Is it correct that as per technical assistance agreement,PSS was obliged to submit financial reports and cash flows ofthe funds for Odisha, project to DFID?

Ans. Yes, through MSI as it was the conduit for funds from DFID.

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Q11. So are you saying that MSI acted as conduit of funds?

Ans. Yes, in addition to their other scope of work.”

106.For the 8 Clinics Project, PSS itself sought reimbursement of fundsfrom the donor, EC, vide letter dated 20[th]August, 2003 [Ex. DW-3/24], whichis clear acknowledgment that the funds for the project were to come directlyfrom EC. Therefore, evidence on record, clearly shows that MSI was only aconduit of funds between the donors and PSS and it held fiduciaryresponsibility for execution of the aforesaid projects.

107.As per the evidence on record, all the aforesaid projects were ultimatelyterminated by the donors except for the IEC 8 clinic project, which wasterminated by PSS itself. One of the reasons given by the donors was that PSSdid not permit the audit of the aforesaid projects by the auditor nominated bythe donors showing lack of transparency on behalf of the PSS. In the affidavitof Ms. Nutan Wozencroft, DW-3, it has been specifically stated that PSS didnot permit any audit or monitoring of the disbursement made for the HowrahProject and therefore, EC decided to hold the funds [Ex. DW-3/20]. In respectof the Rajasthan Project, PSS in its communication dated 24[th]March, 2003[Ex. PW-1/55] refused to agree for appointment of an external consultant formonitoring the project. Hence, the aforesaid project was terminated by thedonor i.e., the Buffet Foundation vide letter dated 26[th]March, 2003 [Ex. PW-1/56].

108.Even if it is assumed that the funding for the projects was improperlystopped by the donors or that the projects were wrongfully terminated by thedonors, surely, PSS cannot put the blame on MSI. If there was any grievance

of PSS with regard to the above, the remedy was to initiate appropriate legalaction against the donors.

109.In some cases, PSS continued with the projects even after terminationby the donor, either of its own funds or funding from other donors. Therefore,it cannot be said that PSS suffered any losses on account of the funding beingwithdrawn by the donors. If PSS continued the projects despite thetermination by the donors, no liability can be fastened upon MSI.

110.In view of thereof, PSS is not entitled to damages or money decree asclaimed.

111.MSI also claims rendition of accounts and in the alternative, damages.In terms of paragraph 43 of the affidavit of Ms.Nutan Wozencroft, DW-3, ason 31[st]October, 2003, PSS was holding an amount of Rs.5,85,83,073/-belonging to the Buffet Foundation, which has not been accounted for by PSS.112.However, it is not the case of MSI that MSI had to refund the amountto Buffet Foundation. Further, nothing has been shown that the aforesaidamount belonged to MSI. In view thereof, I am not inclined to grant the reliefof rendition of accounts in favour of MSI.

113.No evidence has been led on behalf of MSI that it suffered any lossesso as to claim damages from PSS.

114.In view thereof, neither PSS nor MSI is entitled to damages/moneydecree/rendition of accounts.

115.Issues no.7 and 8 are decided accordingly.RELIEF

116.In view of the discussion above, MSI is entitled to decree ofpermanent injunction on the basis of passing off.

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117.Accordingly, CS(COMM) 298/2018 is decreed against the defendant,PSS in terms of prayer (a) of the suit.PSS in terms of prayer (a) of the suit.

118.CS(COMM) 479/2018 is dismissed in its entirety.

119.Parties to bear their own costs.

120.Decree sheet be drawn up.

121.All pending applications, if any, stand disposed of.

SEPTEMBER 20, 2023

rt/at/sr

AMIT BANSAL, J.

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