Atotech Deutschland Gmbh And Anr vs Grauter And Well (India) Limited ...
2021 Latest Caselaw 11085 Bom

                       skn                               1              4-COMAP(L)-17941.2021.doc


                             IN THE HIGH COURT OF JUDICATURE AT BOMBAY
                                ORDINARY ORIGINAL CIVIL JURISDICTION

                                COMMERCIAL APPEAL (L) NO. 17941 OF 2021
                                                 WITH
                                INTERIM APPLICATION (L) NO. 17950 OF 2021

                       Atotech Deutschland GmbH and another.            ...       Appellants.
                            V/s.
                       Grauer & Well (India) Limited and another.       ...       Respondents.




                       Mr.Birendra Saraf, Senior Advocate with Hiren Kamod, Mr.Nishad
                       Nadkarni, Mr.Aasif Navodia and Ms.Khushboo Jhunjhunwala i/b
                       Khaitan and Co. for the Appellants.

                       Mr.Venkatesh Dhond, Senior Advocate with Mr.Rishikesh Soni,
          Digitally
                       Mr.Dinesh Pednekar, Mr.Swapnil Gupte i/b. Economic Laws Practice
SANJAY
          signed by
          SANJAY
          KASHINATH
                       for Respondent No.1.
KASHINATH NANOSKAR
NANOSKAR Date:
          2021.08.21
          11:42:35
          +0530

                                   CORAM :           NITIN JAMDAR AND
                                                     C. V. BHADANG, JJ.

                                   DATE :            18 August 2021.

                       P.C. :

                                   Heard the learned counsel for the parties.

2. The Appellant- Atotech Deutschland GmbH has filed a Commercial I.P. Suit (L) No.14501/2021 in this Court based on its registered trademark TRICHROME in relation to chemicals used for skn 2 4-COMAP(L)-17941.2021.doc

electroplating, regulators, correctors etc. According to the Appellants/Plaintiffs, the Defendants are using the identical mark regarding identical goods, and a clear case for infringement under Section 29 of Trade Marks Act, 1999 is made out.

3. The suit was filed on 22 June 2021. In this suit, Interim Application No.14507/2021 was taken out for injunction. By order dated 19 July 2021, the learned Single Judge has declined to grant any ad-interim relief and has directed the application to come up for hearing in due course. Therefore, the Plaintiffs are before us in this appeal under section 13 of the Commercial Courts Act, 2015.

4. The reasons for refusal of ad-interim order are to be found in paragraph-3 of the impugned order which read thus:

3. Admittedly, the cease and desist notice was given on 9 July 2018 followed by one more on 8 th October 2018. th

The plaint states no reply has been given. Still the plaint has been signed and verified on 22nd June 2021 but lodged only on 5th July 2021and a copy served on 15 th July 2021 by email. I have to also note that plaintiff no.2 has his office at Goregaon (West), Mumbai and defendant no.1 has his office at Kandivali (East), probably a distance of 10 kms.

The learned Senior Advocate for the Appellants submitted that considering the case of the Appellants and the scheme of the Act of 1999, the delay cannot be a sole reason to refuse interim relief as the skn 3 4-COMAP(L)-17941.2021.doc

infringement is clear on the face of it. The learned counsel submitted that there is no reason whatsoever that after rejecting the ad-interim order, the application is directed come up in regular course without any date. The learned counsel for the Appellant submits that the aspect of delay will not be relevant in the case with fact situation such as the present one. In support of his submission, he relied upon the following decisions: Midas Hygiene Industries v. Sudhir Bhatia1; Bal Pharma Limited v. Centaur Laboratories Pvt.Ltd.2; Schering Corporation v. Kilitch Co. (Pharma) Pvt.Ltd. 3; Anglo French Drugs and Industries Ltd. v. Eisen Pharmaceutical Company Pvt.Ltd.4; Kaviraj Pandit Durga Dutt Sharma v. Navarathna Pharmaceutical Laboratories5; Hiralal Prabhudas v. Ganesh Trading Company6; and Charak Pharma Pvt.Ltd. v. Glenmark Pharmaceuticals Ltd.7 The learned counsel has also relied upon the order passed by this Appeal Bench of this Court on 4 August 2021 in Commercial Appeal No.40/2021 wherein similar order refusing ad-interim relief without elaborating the aspect of delay and directing the application to come up in regular course is set aside, and the learned Single Judge was requested to consider the application early or to consider the ad-interim relief.

5. The learned Senior Advocate for Respondent No.1

1 (2004) 3 SCC 90 2 2001 SCC Online Bom 1176 3 1990 SCC Online Bom 425 4 1996 SCC Online Bom 580 5 AIR 1965 SC 980 6 AIR 1984 Bom 218 7 2014 (57) PTC 538 (Bom) skn 4 4-COMAP(L)-17941.2021.doc

submitted that though Respondent No.1 has no objection to taking up the application for hearing early and the Respondent will co- operate for the same, there is no error in refusing to grant ad-interim relief on the ground of delay.

6. We have to note the nature of the suit in which the interim order is passed and the scheme of the Act of 1999, which stress upon the rights that flow from the registration of the trademark. Various decisions appear to indicate that the aspect of delay in the case of infringement based on registration would be looked at differently than a regular civil cause. In the order rejecting ad-interim relief, there are no reason as to how the aspect of delay negates the Appellants' assertion that protection under the Act of 1999 under registration of a trademark should be extended immediately. We do not mean to suggest that every order regarding an ad interim relief till pleadings are completed should be elaborate like a judgment considering the heavy board, but we make the above observations considering the statutory scheme in the context of the facts of this case.

7. In these circumstances, we are of the opinion that the appropriate course of action would be to permit the Appellants to request the learned Single Judge to take the application for hearing at an early date, as early as possible, preferably within four weeks. If the learned Single Judge is of the opinion that it is not possible to skn 5 4-COMAP(L)-17941.2021.doc

take up the interim application at an early date, the learned Single Judge may consider the prayer of the Appellants for ad-interim relief afresh on its own merits uninfluenced by the observations made in the order dated 19 July 2021 and the order passed in the appeal. For doing so, we clarify that the ad-interim order dated 19 July 2021 will not come in the way of the learned Single Judge to consider the application for ad-interim relief afresh.

8. With the aforesaid observation, the appeal is disposed of.

9. In view of disposal of appeal, interim application does not survive and stands disposed of accordingly.

      (C.V. BHADANG, J.)                    (NITIN JAMDAR, J.)