M/S. Chaitanya Food Products. vs Honey Products Service Provider
2021 Latest Caselaw 1720 AP

                                                             MVR,J
                                                             C.M.A.No.177 of 2018
                                     1

               HON'BLE SRI JUSTICE M. VENKATA RAMANA

                          C.M.A.No.177 of 2018
JUDGMENT:

This Civil Miscellaneous Appeal is directed against the order of

learned IV Additional District Judge, Nellore, dated 30.01.2018 in

I.A.No.606 of 2017 in O.S.No.160 of 2017.

2. The dispute among the parties is in respect of a trade mark 'HONEY

JUJUBE'. The respondents are the petitioners/plaintiffs. The appellants

are the respondents/respondents. The respondents instituted the suit

against the appellants for grant of permanent injunction restraining the

appellants from manufacturing the Honey Jujube Sweet Pachadi at the

manufacturing unit of the appellants known as Chaitanya Food Products

and from selling it anywhere in any manner with the trademark emblem of

the respondents infringing the trademark emblem, logo and letters of the

same as is being used by the respondents and for other reliefs.

3. Pending suit, the respondents also instituted I.A.No.606/2017 under

Order 39 Rules 1 and 2 CPC for grant of temporary injunction of similar

nature against the appellants.

4. The main contention of the respondents in the trial Court was that it

is a partnership firm running business in manufacturing food products, viz.,

Jujube Sweet Pachadi and others under the brand name 'HONEY JUJUBE'

using the trademark, logo and brand as registered on 30.12.2016 under

trademark number 3091641. It was the complaint of the respondents that

the appellants with a malafide intention, without obtaining any

authorization and getting a registered trademark upon establishing a unit in

the name and style as 'Chaitanya Manufacturing Honey Jujube Sweet

Pachadi, has been packing the same with trademark, emblem and letters

used by the respondents, carrying on business illegally, unauthorisedly MVR,J C.M.A.No.177 of 2018

diluting the brand name of the respondents firm infringing its trademark.

It was also the contention of the respondents that this illegal act of the

appellants should be restrained, since it is infringing its trademark

affecting its reputation leading to irreparable loss and injury.

5. The appellants resisted the claim of the respondents filing a detailed

counter stating that the respondents had suppressed material facts and

have been relying on their registration for trademark, which has to be used

for services and not for goods in terms of 'NICE' classification of trade

marks. It was also the contention of the appellants that the respondents

approached the Court with unclean hands and the trade mark registered by

them was for services, viz., wholesale, retail, online sale, export and

import pickles, sweet pickle (fruit or vegetables) mixed pickles and pickle

relish, fruit jams, food products made from preserved, dried, cooked fruits

and vegetables, upon filing an application on 02.11.2015 claiming the user

date 01.09.2012.

6. According to the appellants, they had applied for trademark in class

29 for 'Sri Honey Ragi Seed Pachadi' & 'Sri Honey Ragi Pachadi' under two

different applications on 10.01.2012 and 04.07.2012 under goods category.

Thus, the appellants claimed that they have been honest bonafide prior

user than the respondents, who had applied for trademark on 01.09.2012.

It was also the version of the appellants that the respondents had obtained

a trademark fraudulently, which is liable for cancellation and that the

conduct of the respondents was in the nature of acquiescence, since they

were already using the trademark 'Honey' in respect of Jujube Sweet

Pickle since the year 2008 applying for registration under relevant class 29

for pickles. Thus, the appellants contended that the trademark of

themselves as well as the respondents is still pending consideration before

the Registrar of the Trademarks.

MVR,J C.M.A.No.177 of 2018

6. Asserting that they alone are entitled to use this trademark 'Honey'

in class 29 category, the appellants questioned the claim of the

respondents.

7. In the course of enquiry before the learned trial Judge, on behalf of

the respondents Ex.P1 to Ex.P7 and on behalf of the appellants Ex.R1 to

Ex.R7 were marked.

8. Basing on the material and considering the sachets of the

respondents as well as the appellants marked Ex.P6, Ex.P7 and Ex.R3

produced by the appellants, on a comparison of their appearance, learned

trial Judge granted relief in favour of the respondents, as prayed. It is

against this order, the appellants have preferred this civil miscellaneous

appeal.

9. Sri Mannem Venkata Krishna Rao, learned counsel for the appellants

submitted arguments. Whereas, on behalf of the respondents, though Sri

Sunil Kumar Jha, learned counsel had entered appearance, except filing a

purported counter producing certain documents as material papers, no

arguments, as such, were addressed. Sufficient opportunity was given to

the respondents to submit arguments, which they did not avail. Hence,

this Civil Miscellaneous Appeal is being disposed off, basing on the

material.

10. Now, the following points arise for determination:

1. Whether the respondents made out a prima facie case and

balance of convenience in their favour and against the

appellants?

2. Whether the respondents would suffer irreparable loss and injury

if temporary injunction as requested is not granted?

MVR,J C.M.A.No.177 of 2018

3. Whether the order under appeal is proper or requires

interference?

4. To what relief?

11. POINT No.1: The nature of relief sought in the suit is one for

permanent injunction restraining the appellants in user of trademark

'M/s.Honey Products' by the appellants and sale of their products of

different kinds, which are essentially appearing to be food stuffs.

12. Ex.P3 is the registered trademark certificate issued for this brand

name according to the respondents by Registrar of Trademarks, Mumbai.

The appellants also produced Ex.R7 referring to trademark number

assigned in respect of their products while producing Ex.R6 an application

for registration of trademark dated 04.07.2012.

13. There is no dispute that both these parties are carrying on their

business with head-quarters at Nellore. The nature and kind of products

being produced by them as well as sale appear similar.

14. Learned trial Judge considered the three ingredients of prima facie

case, balance of convenience and irreparable loss and injury, that guide

granting a temporary injunction pending final determination in a suit. The

burden in this respect is on the respondents and they cannot rely on any

latches or lapses in the case set up by the appellants.

15. In as much as it is in the nature of passing off action relating to

trademark, prior user of this trademark acquires significance. It has to be

noted that in terms of Chapter 4 and Section 31 of Trademarks Act,

registration is prima facie evidence of validity. Infringement of registered

trademark can be questioned in terms of Section 29 of this Act and certain

rights are conferred to holders of this trademark in terms of Section 28 of

this Act.

MVR,J C.M.A.No.177 of 2018

16. As rightly contended for the appellants, learned trial Judge did not

take into consideration the material produced by the parties either with

reference to Ex.P3 or Ex.P6 as well as Ex.P7. On comparison of sachets

produced by both the parties, learned trial Judge had drawn an inference

of alleged infringement of trademark claimed by the respondents without

prima facie going into the effect of registration of trademark claimed by

both the parties and with reference to the provisions of the Trademark Act.

Thus, it is flaud consideration. Without considering these questions, it is

rather difficult to hold that the learned trial Judge had considered the

prima facie case or balance of convenience, propounded by the

respondents in their favour in proper perspective.

17. Mere comparison of sachet cannot by itself lead to an inference of

infringement of trademark by the appellants. The question of prior user as

rightly pointed out for the appellants was not at all a fact considered by

the learned trial Judge.

18. It is further to be noted that by the date of institution of the suit, in

terms of Ex.R6 and Ex.R7, the appellants were in use of the trademark,

against which the respondents had complained of. In these circumstances,

on account of effect of acquiescence stated in Section 33 of Trademarks

Act, this matter should have been considered by learned trial Judge, even

otherwise.

19. Thus on consideration, when the material produced by the

respondents in clear terms did not make out a prima facie case in their

favour, in comparison to the claim of the appellants, it is rather difficult to

hold that it has been established by the respondents. These factors also

affect the balance of convenience in between these parties and to hold

that it did not tilt in favour of the respondents.

MVR,J C.M.A.No.177 of 2018

20. A dispute of this nature in the trade and commerce in between the

parties as is done in this case, cannot be lightly treated, nor can be

interfered unless there is strong material, supporting the claim of the

party, who sought such relief.

21. While learned trial Judge is right in holding that there are certain

serious questions, which require determination in a full fledged trial upon

both parties leading evidence, it cannot absolve the duty and responsibility

of the learned trial Judge to consider these two important factors, viz.

prima facie case and balance of convenience.

22. Therefore, when the material produced by the respondents is

considered vis-à-vis the contention of the appellants, the inference to draw

is that these twin factors have not been established prima facie.

23. In the counter filed in this matter, certain facts are alleged on

behalf of the respondents to the effect that the appellants were purchasing

goods from them and attempt of the appellants twice to get trademark

registered failed. Certain material is also produced in this appeal on

behalf of the respondents. These facts were never alleged in the plaint or

in the affidavit filed in support of the petition in the trial Court. The

respondents cannot be permitted to supply new material at the stage,

without following required procedure. It is further to be noted that

without a foundation in the pleadings, a party cannot be permitted to set

up a new case either in the course of enquiry or at the trial.

24. Therefore, holding that the respondents failed to make out prima

facie case or balance of convenience in their favour, this point is answered

against them and in favour of the appellants.

25. POINT No.2: When the respondents fail to make out prima facie

case and balance of convenience, suffering irreparable loss and injury in MVR,J C.M.A.No.177 of 2018

the event of refusal of temporary injunction, cannot arise. Even

otherwise, as seen from the version of the respondents in the plaint as well

as the affidavit filed in support of the petition in the trial Court, they have

reserved a right to file a separate suit for damages for alleged reparation

against the appellants. When on their own showing, when the acts

complained of against the appellants, are capable of remedied in monetary

terms, the respondents cannot seek an injunction of the nature, against

the appellants. Thus, this point is answered against the respondents and in

favour of the appellants.

26. POINT No.3: Apparently, the learned trial Judge misguided himself

confining only to superficial factors on an optical comparison of Ex.P6,

Ex.P7 and Ex.R3. They cannot by themselves be sufficient material in the

process of evaluation of the claims of the parties, de-hors consideration of

other relevant material, as discussed in point No.1 supra. Thus, the order

of the learned trial Judge cannot be supported and requires interference.

Thus, this point is answered.

27. POINT No.4: In view of the findings on points 1 to 3, this Civil

Miscellaneous Appeal has to be allowed setting aside the impugned order of

the trial Court.

28. In the result, this Civil Miscellaneous Appeal is allowed setting aside

the order of learned IV Additional District Judge, Nellore, in I.A.No.606 of

2017 in O.S.No.160 of 2017 dated 30.01.2018 and temporary injunction

granted in favour of the respondents and against the appellants is

dissolved. No costs. All pending petitions, stand closed.

____________________ M. VENKATA RAMANA, J Dt:24.03.2021 Rns MVR,J C.M.A.No.177 of 2018

HON'BLE SRI JUSTICE M. VENKATA RAMANA

C.M.A.No.177 OF 2018

Date: 24.03.2021

Rns