Bombay High Court
K L F Nirmal Industries Pvt Ltd vs Marico Limited on 20 December, 2023
Author: R.I. Chagla
Bench: R.I. Chagla
2023:BHC-OS:15064
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Kavita S. J.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.26759 OF 2023
IN
COMMERCIAL IP (L) SUIT NO.22293 OF 2023
K.L.F. Nirmal Industries Pvt. Ltd., ...Applicant/
Defendant
In the matter between :
Marico Limited ...Plaintiff
Versus
K.L.F. Nirmal Industries Pvt. Ltd., ...Defendant
----------
Mr. Venkatesh Dhond, Senior Counsel a/w Mr. Shriraj Dhruv, Ms.
Aastha Mehta and Mr. Ronak Shah i/b Dhru & Co., Advocates for
Applicant/Original Defendant.
Mr. Ravi Kadam, Senior Counsel a/w Mr. Hiren Kamod, Mr. Nishad
Nadkarni, Mr. Aasif Navodia, Ms. Khushboo Jhunjhunwala, Ms.
Jaanvi Chopra i/b Khaitan & Co., Advocates for Plaintiff.
Mrs. Naina Poojary, S.O.,Court Receiver present.
----------
CORAM : R.I. CHAGLA, J.
KAVITA JUDGMENT RESERVED ON : 2ND NOVEMBER, 2023.
SUSHIL
JADHAV
Digitally signed
by KAVITA
SUSHIL JADHAV
Date: 2023.12.20
JUDGMENT PRONOUNCED ON : 20TH DECEMBER, 2023.
17:57:07 +0530
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IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
JUDGMENT :
1. By this Interim Application the Applicant/Defendant has
sought vacation and setting aside of the impugned order dated 18 th
August, 2023 passed in the Interim Application (L) No.22359 of 2023
in Commercial IP Suit (L) No.22293 of 2023.
2. Mr. Venkatesh Dhond, learned Senior Counsel appearing
for the Applicant/Defendant has submitted that the Plaintiff being
aware of the law as laid down by this Court in Kewal Ashokbhai
Vasoya and Anr., Vs. Suarbhakti Goods Pvt. Ltd. 1 and Lallubhai
Amichand Limited Vs. Absolink Enterprises Pvt. Ltd. & Ors. 2 that
"giving notice" is the "Rule" and "not giving notice" is the exception
had pleaded a false case to fall within the exception viz. the object of
granting injunction would be defeated by the delay in giving notice.
This was done by a skillful combination of (I) intentional mis-
statement; and (ii) active concealment.
3. Mr. Dhond has submitted that a reading of the Plaint and
in particular Paragraphs 2, 26, 28, 30, 34 and 39 thereof makes it
1 (2022 SCC OnLine Bom 3335)
2 (IA(L) No.8399/2023 in Suit (L) No.8396/2023 - decision dtd. 3rd July, 2023
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
clear that the Court believed that the Defendant was an entity which
was suspect; it had blatantly copied the Plaintiff's distinctive blue
bottle and all its protectable features; it already had a yellow bottle,
with a very different appearance; it had only "very recently" sought
to switch to the impugned blue bottle; the Plaintiff had discovered
this impugned blue bottle only in July, 2023; since the violation was
extremely recent, the Plaintiff had immediately rushed to the Court in
early August 2023; a clear case of extreme urgency existed; and a
case of secrecy also existed. He has submitted that the ground for
seeking ex-parte ad-interim relief without notice was apart from the
aforementioned, was that the Plaintiff would "destroy/conceal all
evidence"; dump the goods in the market; "goods may be concealed
and thereafter re-appear in the market in other outlets".
4. Mr. Dhond has submitted that the Plaintiff has
deliberately pleaded the aforementioned false case in order to
misrepresent to this Court that the Defendant was a doubtful entity
with suspect antecedents who had recently switched to the impugned
bottle and who would have little qualms about 'concealing evidence';
'dumping goods'; 'secreting away the impugned goods only to
clandestinely sell them elsewhere later'. In other words, if notice was
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
given, the offending goods would disappear overnight. This is
typically the case with persons who are described as "fly by night
operators / pirators".
5. Mr. Dhond has submitted that the Plaintiff has
suppressed from this Court that the Applicant/Defendant is a well-
established business entity with an established presence for decades
and a bouquet of products and hence, would not usually function in
the manner suggested by the Plaintiff. The Plaintiff has concealed the
entire contents of the Defendant's website although referring to the
same in Paragraph 28 of the Plaint. This reference was in support of
the Plaintiff's contention that impugned product has being sold On-
line, through the website. He has submitted that from a mere perusal
of the website, it is apparent that the Defendant has a history and
tradition going back to 1948, when Mr. K.L. Francis introduced Oil
Milling in Kerala (the KLF in the Defendant's name comes from this).
The Defendant is a well-known and established market entity with
substantial sales and having wide range of products with presence
not only in India but in the Gulf. The Defendant is in fact the largest
manufacturer of cold pressed virgin coconut oil in India. The
Defendant has won a slew of awards, including from the Government
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
of India.
6. Mr. Dhond has submitted that the least that the Plaintiff
should have done was whilst making the ex-parte application was to
indicate that the other party was a well-established enterprise with a
legacy and reputation who was openly selling the impugned goods on
its website.
7. Mr. Dhond has submitted that the Plaintiff has
misrepresented to this Court that the impugned goods had been very
recently introduced in the market, by changing over from a yellow-
coloured product and this was detected by the Plaintiff only in July,
2023. He has referred to the sales of the impugned product which
have set out in Paragraph 10 of the present Interim Application and
which sales figures have been corroborated by the Certificate of the
Chartered Accountant and actual Purchase Orders; Delivery Challans;
Invoices etc. issued in relation to sales to the Canteen Stores
Department ("CSD"). He has referred to and relied upon the
compilation of documents which have been filed on behalf of the
Defendants as well as Additional Affidavit dated 6 th October 2023,
wherein the aforementioned documents have been disclosed. He has
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
submitted that the invoices/records specifically mention "Blue Bottle"
and show sales from 2017 in blue bottles. He has further submitted
that the factum of CSD Sales is established by independent third-
party records. The CSD Sales is critical because admittedly the fact
that the Plaintiff is the largest supplier of coconut oil to the CSD has
not been denied. In that context reference can be made to Paragraph
16 at Page 18 of the present Interim Application for the assertion that
the Plaintiff is the largest supplier to this CSD and the Defendant is
the second largest. Further reference can be made to Paragraph 21 at
Page 178 of the Affidavit in Reply filed by the Plaintiff to the present
Interim Application. This clearly establishes ' de facto' knowledge.
This fact was not placed before this Court and instead, a wholly
dishonest plea of "very recently" having introduced these goods by
switching over from yellow was made - which the Court believed.
8. Mr. Dhond has submitted that despite the Defendant
having specifically asserted that the impugned blue bottle was
launched in 2017, the Plaintiff denied it in the Reply. The Plaintiff
even denied that the Defendant is a CSD supplier. This aggravated
the wrongdoing of the Plaintiff. To make matters worse, during the
course of arguments, it was submitted on behalf of the Plaintiff that
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
the Defendant had not indicated "which blue bottle was being
supplied to the CSD?" and the Defendant ought to have shown the
Court, the actual image of the bottle which had been uploaded on the
CSD Portal. Therefore, from a case of "No sales to the CSD" in the
Reply, the argued case turned to/changed to "which blue bottle was
sold to the CSD".
9. Mr. Dhond has placed reliance upon the Affidavit dated
2nd November 2023 where the Defendant placed on record the e-
mails exchanged with the CSD showing the CSD being provided High
Resolution Image files of the blue bottles being supplied. This was in
response to the CSD's request for High Resolution Images so that they
could be uploaded on the CSD website. This correspondence is of
December 2021 and destroys the dishonest case of the Plaintiff that
the Impugned goods have been "very recently" launched and
discovered by the Plaintiff in July 2023. He has submitted that the
Defendant has also annexed the CSD website which shows the rival
products being sold side by side.
10. Mr. Dhond has submitted that the almost cavalier
approach of the Plaintiff to being truthful and/or fair and/or candid
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
to this Court is exemplified by the defence to the Applicant's plea
about the withholding of any reference to the Non-Disclosure
Agreement dated 5th March 2021 and the Information Memorandum
circulated. He has referred to the relevant pleading at Pages 16 to 18
of the present Interim Application and the documents are at Pages 52
and 93 thereof. He has submitted that it is undisputed that the
Plaintiff signed the N.D.A. as it bears the signature of a High
Functionary of the Plaintiff, namely the Head, Mergers and
Acquisitions and Investor Relations. Therefore, the Plaintiff is a party
to the NDA. The NDA itself states its purpose, viz. "the Parties intend
to engage in discussions and negotiations concerning acquisition of
the Disclosing Party by the Receiving Party". In this context he has
referred to the first Recital of the NDA. Thus, the purpose of
executing the NDA was that the information could be disclosed.
11. Mr. Dhond has submitted that the Information
Memorandum contains a disclosure of the Applicant/Defendant and
its bouquet of products. It is entitled "Project Kepler". It states that it
is being made available/delivered to parties "who have expressed
interest in investing in KLF Nirmal Industries Pvt. Ltd." and "who
have signed and returned a confidentiality agreement". Therefore,
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
the Plaintiff was given the Information Memorandum giving details
of the Defendant's products with photographs and which includes the
impugned blue bottle.
12. Mr. Dhond has submitted that from the NDA and the
Information Memorandum it is clear that the impugned
products/bottles were being sold as they find mention in the
document of 2021. The Plaintiff, de facto, had knowledge of this fact
from the document delivered to it. This is apart from the CSD sales.
13. Mr. Dhond has submitted that the Plaintiff has in
response to the reliance placed by the Applicant/Defendant from the
NDA and Information Memorandum made a deliberate ambivalent
oral submission that it "may have or may not have got the
Information Memorandum - "we do not know", "we can't really say"
which hardly inspires any confidence. This is because admittedly, by
its E-mail dated 23rd April, 2021, the Plaintiff communicated that
"PROJECT KEPLER" (emphasis supplied) was not of strategic
relevance to them and that they would not be participating any
further. This E-mail is more than a month after the NDA and at two
places (subject and body) it makes a reference to "Project Kepler"
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
which is the title of the Information Memorandum. Clearly therefore
the Plaintiff demonstrably had the Information Memorandum.
14. Mr. Dhond has submitted that in the Plaintiff's Reply to
the present Interim Application, the case put forth is nothing but
fantasy. He has submitted that to expect that a takeover or acquisition
of a large player and/or competitor was examined by two persons
who regarded it as such a top secret that they kept this information to
themselves (who incidentally are said to have left the organization
and are not available to give any affidavit/statement) without the
involvement or even knowledge of anyone else in the organization is
to stretch credibility.
15. Mr. Dhond has submitted that in any event, as a matter
of law, it is contrary to settled principles of corporate law which
impart/attribute knowledge to a corporation. He has placed reliance
upon the decision of the Supreme Court in Indian Bank Vs. Godhara
Nagrik Co-op. Credit Society 3 at Paragraphs 19, 20 and 21 in this
context.
16. Mr. Dhond has submitted that the injunction was
3 (2008) 12 SCC 541
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
improperly sought by the Plaintiff contrary to the settled law. He has
submitted that though the Court is not examining the merits of the
case, considering the arguments of the Plaintiff that even if injunction
is wrongly obtained, this Court should continue the same; and this
Court had concluded that the two products are deceptively similar,
and this assessment cannot now change, he has made counter
submissions.
17. Mr. Dhond has submitted that the Plaintiff cannot claim
any monopoly over their blue colour. The coconut oil segment has an
abundance of several manufacturers, having the same blue coloured
bottles. These include Bajaj, Reliance, Dabur, who are well
entrenched in the market. These are extensively sold and the Plaintiff
took no steps whatsoever to stop them. The tall claims made by the
Plaintiff that "we objected to Bajaj, Reliance and Dabur as well" are
entirely misleading. These objections were Oppositions to Trademark
Applications filed. There has been no objection to sales in the market.
18. Mr. Dhond has further submitted that the finding of this
Court about similarity in the two products was because this Court
believed the case of the Plaintiff, that they were the only entity selling
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
coconut oil in what the Plaintiff described as "their distinctive blue
colour". There is no such colour/shade monopoly. He has submitted
that had this Court been aware of this, the finding would have been
different. He has submitted that in any event, in a contested hearing
(as opposed to one moved ex-parte) the attention of the Court is
invited to dis-similarities, which is often not done when an
application is moved ex-parte.
19. Mr. Dhond has submitted that the Defendants have not
adopted any of the three features highlighted in the Plaint. Since the
Defendant was anxious that they would not default in their
obligations to the CSD, qua purchase orders, they filed an Affidavit
dated 6th October, 2023 suggesting a product with even further points
of distinction qua the split coconut device, as a pro-tem arrangement.
Even this suggestion was declined by the Plaintiff.
20. Mr. Dhond has accordingly submitted that the Plaintiff is
determined to misuse an order obtained by misleading a Court, as an
instrument of oppression. In these circumstances, the ex-parte
injunction be vacated forthwith.
21. Mr. Ravi Kadam, learned Senior Counsel appearing for
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
the Plaintiff has submitted that the scope of an application under
Order 39 Rule 4 is very narrow, accordingly the burden is very high.
An application under Order 39 Rule 4 cannot be proceeded merely on
the basis of surmises and conjectures. He has submitted that the
present Interim Application has failed to make out a clear case of
knowledge on the part of the Plaintiff of the Information
Memorandum or the sale of the products in the CSD canteen; that
these were material particulars that required consideration in the
context of the order sought to be vacated; and that the Plaintiff has
knowingly, deliberately and willfully made a false or misleading
statement in respect of such material particulars.
22. Mr. Kadam has submitted that that the Defendant has not
been able to cross the first threshold and the application filed lacks
any material particulars with respect to the very first ingredient to
demonstrate knowledge of the Plaintiff of the alleged facts. He has
submitted that the application does not provide any particulars
whatsoever as to who, to whom, how or when the Information
Memorandum was provided to the Plaintiff. These particulars are not
even provided in the Rejoinder inspite of a specific issue being raised
by the Plaintiff. Further, the Defendant proceeds only on a
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
presumption that the Plaintiff ought to have noticed the products of
the Defendant on the shelves of the CSD canteen without providing
any material which demonstrates the particulars of the actual
packaging used by the Defendants in the CSD Canteen.
23. Mr. Kadam has submitted that the Defendant has missed
the point that often infringing products are not noticed by brand
owners in the market and merely because some shop owners are
selling infringing products on the same shelf (which the brand
owners may neither have knowledge or nor are responsible for)
cannot attribute / presume knowledge of the Defendant. On the
contrary, the fact that the Defendant was aware of the products of the
Plaintiff and its rights given that it was being sold on the same shelf
is in fact evidence of dishonesty on the part of the Defendant in the
adoption of the infringing marks. He has placed reliance upon
decision of this Court in Royal Canin SA vs Venky's India Limited 4
This is more so when this Court on a perusal of the conflicting marks
has already observed albeit at a prima facie stage that they are
deceptively similar and that it is apparent that the Defendant has
dishonestly adopted the infringing marks.
4 LNIN 2003 Bom 831
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
24. Mr. Kadam has submitted that assumed or presumed
knowledge of the Plaintiff without any material particulars and
without any material that conclusively demonstrates such knowledge
cannot form the basis of an application under Order 39 Rule 4 and
consequently cannot lead to any conclusion that the Plaintiff has
knowingly made a false or misleading statement. He has submitted
that the present Application is thus devoid of merit, frivolous,
misconceived, not maintainable, and a gross abuse of the process of
law. The Application ought to be dismissed in limine and the ad-
interim order be continued including in view of the fact that the
Defendant has miserably failed to make out any case for vacating or
setting aside of the said order and has indisputably failed to
discharge the burden which the Defendant approaching a Court
under Order 39 Rule 4 of the CPC is obliged to discharge. He has
submitted that the Defendant's Application and the alleged
documents produced by it do not even prima facie satisfy the
requirements of Order 39 Rule 4 before an order of the Court can be
vacated or set aside. No plausible reason has been made out for
vacating or setting aside the ex-parte Order and in any event, the
alleged reasons sought to be urged by the Defendant are
unsubstantiated, lack material particulars, are not material to the
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Order and would not affect the passing or operation or continuation
of the ex-parte Order given the settled law in regard to delay not
affecting the grant of urgent ad-interim reliefs in intellectual property
matters of this nature.
25. Mr. Kadam has submitted that in any event and without
prejudice to the aforesaid, given the blatant dishonesty and the
deliberate copying by the Defendant and the attempt of the
Defendant to come as close as possible to the Plaintiff's well known
packaging/trade dress of its Parachute coconut oil products, this
Court ought to continue the ad-interim injunction keeping in mind
the interest of justice and public interest including since the products
in question are edible coconut oil products which are consumed by
millions of people.
26. Mr. Kadam has submitted that assuming whilst denying
that there is any suppression or false or misleading statement, the
allegedly suppressed facts would have merely indicated some delay
on the part of the Plaintiff and would not be a material fact in the
overall circumstances given that it is settled law that mere delay
could not defeat an injunction and where dishonesty is apparent
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
prompt ex-parte injunctions are to be granted, as in the present case.
27. Mr. Kadam has submitted that the burden on the
Defendant seeking vacation or setting aside or variation of an ex-
parte order is very high and that it is settled law that the Defendant
has to make out an absolute case and irrefutably establish that the
Plaintiff has "knowingly made a false or misleading statement in
relation to a material particular". He has submitted that the
Defendant has failed to discharge this burden. The Defendant has
consequently failed to demonstrate that the Plaintiff has knowingly
made a false or misleading statement in respect of the Information
Memorandum when the Defendant itself has failed to prove that the
Plaintiff is even in receipt of the Information Memorandum which the
Defendant claims the Plaintiff has suppressed. The Plaintiff's bona
fides are also evident from the fact that the Plaintiff has disclosed all
reasonably ascertainable facts including those relating to trademark
registration obtained by the Defendant.
28. Mr. Kadam has submitted that an ex-parte order cannot
be vacated on the basis of conjectures or surmises. The bare
minimum requirement for the Defendant's Application to succeed in
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
the facts of the present case is that the Defendant is required to
produce absolute material to demonstrate that i) the Plaintiff had
knowledge of the alleged Information Memorandum or ii) of the
Defendant's impugned products prior to the date of knowledge
claimed in the plaint; and iii) that the Plaintiff has
knowingly/deliberately suppressed the same. Further, iv) the
Defendant is also required to demonstrate that the alleged
Information Memorandum is a material particular or v) that the
alleged date of knowledge (as per the Defendant) of the Plaintiff
about the Defendant's impugned product (which alleged date of
knowledge has not even been identified by the Defendant either in its
Application or the Rejoinder filed by it) is a material particular that
would affect the passing or continuance of the ex-parte Order.
29. Mr. Kadam has submitted that the Defendant has failed
to produce any material whatsoever and there is nothing on record to
demonstrate any of the aforementioned. The entire Application of the
Defendant proceeds on a conjecture or a surmise that the alleged
Information Memorandum was received by the Plaintiff and/or that
the Plaintiff had knowledge of the Defendant's impugned product
prior to July 2023.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
30. Mr. Kadam has submitted that the Defendant's case of
alleged intent of the Plaintiff for allegedly suppressing the
Information Memorandum or NDA was not to obtain an ex-parte
injunction but to avoid mediation. Thus, it is not the case of the
Defendant that no injunction would have been granted had the
alleged Information Memorandum or the NDA been brought to the
notice of the Court and it is evident that it does not constitute
material information which would have or could have in any manner
altered the findings of this Court or the circumstances in which such
findings were arrived at by this Court in the said Order. In any event
it is well settled that there is no requirement of mediation where
urgent reliefs are sought by the Plaintiff and for this reason also the
Application is baseless, and no grounds for vacating the injunction
have been made out and the same deserves to be dismissed.
31. Mr. Kadam has submitted that neither the contents of the
alleged Information Memorandum nor the Defendant's contention in
respect thereof are verifiable, since material particulars are missing in
the application. The assumption with respect to handing over of the
Information Memorandum on behalf of the Defendant to the Plaintiff
is derived only on the basis of a Non-disclosure Agreement (NDA)
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
executed between the Defendant and the Plaintiff which neither
identifies any confidential information nor makes any reference
whatsoever to the Information Memorandum. Merely because the
NDA was signed by the erstwhile Head-Mergers & Acquisitions of the
Plaintiff company who led the 2-member M&A team of the Plaintiff
company, this does not demonstrate and it cannot be assumed that
the alleged Information Memorandum, which the Defendant is rely
upon, has been shared with the Plaintiff. The signing of the NDA does
not in any manner demonstrate that the alleged Information
Memorandum was received by the Plaintiff or that the Plaintiff was
aware of or ought to have noticed the Defendant's impugned
products prior to July 2023. It is not even the case of the Defendant
that the Information Memorandum was handed over by the
Defendant to the Plaintiff. It is the case of the Defendant that some
consultant handed it over to the Plaintiff.
32. Mr. Kadam has submitted that an attempt has been made
by the Defendant to draw a link between the NDA and the
Information Memorandum by placing reliance on the project name
'Project Kepler' which has been mentioned on the alleged Information
Memorandum and in an E-mail dated 23rd April, 2021. This is
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
despite the Plaintiff at the very outset showed its disinterest in
participating in the acquisition opportunity shared by one Equirus
(financial advisor to the Defendant) in respect of the Defendant
Company. The mere reference to 'Project Kepler', does not constitute
any evidence whatsoever of the receipt by the Plaintiff of the
Information Memorandum or any other document containing images
of the impugned product.
33. Mr. Kadam has thereafter referred to the alleged
Information Memorandum which contains images of the range of
products of the Defendant and in this context, he has submitted that
the images of this products shown in the Information Memorandum,
assuming whilst admitting that it contained images of the impugned
product, the focus of the Plaintiff's representatives (of the M&A
team) engaged in the initial/preliminary screening would be to view
any such document from the perspective of a business as a whole
and not scrutinize it brand by brand / product by product in the
context of infringement. Therefore, no false, much less deliberate or
knowingly false statement has been made by the Plaintiff. Further, the
issue of infringement is not only about the blue bottle but the entire
packaging being the consolidated effect of several distinctive
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
features / marks coupled with the blue color scheme.
34. Mr. Kadam has submitted that it is incorrect on the part
of the Defendant to assume that the alleged information, if any
provided to one person within the Plaintiff's organization would
necessarily imply that the entire organization had active knowledge
as contemplated under Order 39 Rule 4, was aware of it or was
deemed to have been aware of it or had access to the same with a
view to knowingly make a false or misleading statement with respect
to the same. He has submitted that the Plaintiff being a listed
company and therefore any information involving any potential
merger or acquisition constitutes price sensitive information and is
not permitted to be shared by anyone else other than recipients of
such information. The price sensitive information is highly
confidential and stringently governed under the relevant SEBI
regulations including the Insider Trading Regulations. He has
submitted that the reliance placed by the Defendant on the doctrine
of indoor management cannot be put into force to impute knowledge
to the entire Plaintiff company and therefore the Defendant's reliance
on the case of Indian Bank Vs. Godhara Nagrik Coop Credit Society
Ltd (supra) is misplaced.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
35. Mr. Kadam has submitted that the internal enquiries with
regard to the alleged Information Memorandum revealed that the
proposal of the Defendant did not even cross the preliminary
evaluation process and therefore no material or information, if any,
provided to the Plaintiff was ever shared by the 2 member team of
merger or acquisition (M&A) with any other teams of the Plaintiff
company at the relevant time or any time thereafter. The M&A team
decided that the deal was not to be pursued since the same was not
of strategic relevance to the Plaintiff and hence was not progressed at
the very initial stage and no information with respect to the proposal
trickled down or was disclosed further.
36. Mr. Kadam has submitted that it is essential in cases of
trademark infringement to consider public interest whilst deciding an
application made under Order 39 Rule 4, especially given the fact
that the product in question is edible in nature and where the
dishonesty in adoption of the infringing mark is apparent and
evident. He has submitted that without prejudice to the submission
that no false statement has been made on the part of the Plaintiff,
assuming whilst not admitting that the information was shared with a
member of the Plaintiff, there is at best an incorrect/inadvertent
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
statement made by the deponent of the Plaint who had no knowledge
of the alleged Information Memorandum or its contents. Such
incorrect/inadvertent statement is not made knowingly by the
deponent on behalf of the Plaintiff and does not / cannot constitute a
ground for vacating the ad-interim order since the parameters set out
in Order 39 Rule 4 of the CPC do not exist, have not been met, nor
made out. No false statement is made and no material fact has been
deliberately suppressed which affects the merits of the Plaint on the
basis of which the ad-interim order came to be granted. Thus, there
arises no ground for the Court to vacate or modify its injunction and
it is in the interest of justice as well as public interest, to ensure that
the ad-interim Order continues to remain in force.
37. Mr. Kadam has placed reliance upon the decision of this
Court in Shaw Wallace & Company Vs. Mohan Rocky Spring Water 5
at Paragraphs 10, 11 and 14 wherein this Court has, despite an
incorrect statement being made by the Plaintiff therein, held that as
the purpose of granting temporary injunction in a suit for
infringement of trade mark is not only to protect the interest of the
Plaintiffs but also to protect the interest of the general public.
5 MIPR 2007 (0) 185
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Accordingly, denial of temporary injunction to the Plaintiffs merely
because the Plaintiffs have made an incorrect statement in the plaint,
would not be in the interest of justice. He has also placed reliance
upon the decision of this Court in Hindustan Unilever Limited Vs.
Farooq Usman Batliwala & Ors.,6 at Paragraphs 13 and 14 in this
context. Further, reliance has been placed on decision of the Delhi
High Court in the case of Apollo Tyres Ltd Vs. Pioneer Trading
Corporation & Anr.,7 at Paragraphs 2, 23, 24 and 118, wherein the
Delhi High Court had found merit in the submission that the aspect of
public interest would also have to be considered by the Court while
considering whether, or not, to continue the injunction granted
against the defendant.
38. Mr. Kadam has submitted that the Defendant has placed
reliance on selected paragraphs of the decisions of this Court in
Kewal Ashokbhai Vasoya (supra) and Lallubhai Amichand Limited
(supra) which is misplaced and misleading. He has submitted that
the Plaintiff has in fact satisfied all requirements set out in the
judgment in Kewal Vasoya (supra) in respect of grant of ex-parte
6 [(IA (L) NO.37027 / 2022 in COMIP Suit (L) NO.26527/2022]
7 2017 SCC OnLine Del 9825
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
reliefs as the Plaintiff has made full and reasonably accurate
disclosure of material facts and has invited the Court's attention to
factual, legal and procedural issues, as required.
39. Mr. Kadam has submitted that under Order 39 Rule 4 the
Court nevertheless has a discretion to continue the injunction (or
impose a fresh injunction) despite a failure to disclose. Although the
discretion should be exercised sparingly, the overriding consideration
will always be the interests of justice. This has been held by this
Court in Kewal Vasoya (supra).
40. Mr. Kadam has submitted that the mere fact that the
Plaintiff 'ought to have been aware' or 'may have been aware' can
never be the basis for vacation or setting aside of the Court's Order.
The Defendant is required to produce irrefutable and positive
evidence of the Plaintiff having undeniable knowledge of the
Defendant's impugned product, prior to the date claimed by the
Plaintiff, and such knowledge having been deliberately suppressed by
the Plaintiff for it to discharge its burden under Order 39 Rule 4 of
the CPC. In the present case, the Defendant failed to even identify the
date from which according to it, the Plaintiff had knowledge about
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
the impugned products. The Defendant has also miserably failed to
demonstrate that the Plaintiff had any knowledge about the
Defendant's impugned products prior to July 2023.
41. Mr. Kadam has submitted that the mere alleged presence
of the infringing product in the market is of no consequence and the
Defendant is required to demonstrate positive evidence of the
Plaintiff's knowledge of the presence of Defendant's impugned
products instead of merely making assumptions or allegations about
the Plaintiff's possibility or probability of knowledge of the impugned
products. The Defendant's reliance on alleged CSD documents (stray
purchase orders/invoices etc.) do not assist the Defendant in any
manner inter alia since they do not correlate to the impugned
product in the impugned packaging which has been injuncted. The
only publicly accessible document or third-party document sought to
be produced by the Defendant are certain regional newspaper
clippings of April and May 2023. However, the impugned products
have been left out of and are conspicuously missing from the said
newspaper clippings and no inference of knowledge of the Plaintiff
can be derived or even assumed from the same.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
42. Mr. Kadam has submitted that the other documents
produced by the Defendant which are at Pages 115 to 117 of the
Defendant's Compilation are the Defendant's own documents which
are undated and do not in any manner prove use of the bottle either
from 2013 or 2017 or anytime thereafter prior to the date of
knowledge pleaded by the Plaintiff. Not a single third-party invoice
demonstrating even a single sale of the impugned bottle bearing the
impugned packaging to any third party has been produced by the
Defendant.
43. Mr. Kadam has submitted that even assuming whilst
denying that the Defendant's impugned product was available in the
market prior to July 2023, the same is of no significance in
establishing that the Plaintiff had knowledge of the said products
prior thereto or that it has deliberately suppressed such knowledge or
made any misleading or false statement before this Court. In any
event, according to the Defendant, the Plaintiff's intention behind
suppressing such knowledge is to allegedly to avoid mediation and
not to secure the ad-interim order and thus cannot be the subject
matter of an application under Order 39 Rule 4.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
44. Mr. Kadam has thereafter referred to alleged sales figures
produced by the Defendant from which it is evident that the sales
figures are from year 2019 onwards and not from 2013 or 2017 and
even for the years 2021-22 and 2022-23, the same are unaudited
figures. Further, the sales figures are meagre and not substantial, and
at best run into a few crores only. The sales figures for 2019-2020 is
shown as Rs.7.69 crore and for the subsequent years i.e. 2020-2021
is Rs.3.7 crores; for the year 2021-2022 is Rs.5.99 crores and for the
year 2022-2023 is Rs.7.12 crores only. This does not in any manner
evince that the Plaintiff had knowledge of the impugned products
prior to July 2023. The two recent CSD purchase orders produced by
the Defendant in respect of the month of October, 2023 are
approximately INR 45 Lakhs and INR 61 Lakhs respectively, which
would amount to a total of approximately INR 1 Crore. Therefore, it
is reasonable to conclude that at best, the Defendant would have a
total of approximately only 5-6 purchase orders in a year that too
from an institutional seller such as CSD. He has further submitted
that the Defendant has not produced any material to co-relate the
sale figures with the impugned label / packaging, whether from the
year 2013 or 2017 or 2019 or anytime thereafter.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
45. Mr. Kadam has submitted that assuming whilst denying
that the products of the Defendant and the Plaintiff are both sold
through the canteen Stores Department (CSD), the Plaintiff cannot be
expected to have knowledge of the Defendant's products merely
because one channel of sale for the rival products is the same. Merely
because the Plaintiff's quantum of sales to the CSD can be said to be
high, it can never be assumed that the Plaintiff is aware of every
infringing product made available through the CSD. Further, it cannot
be assumed that the Plaintiff was aware about the Defendant's
infringing product allegedly sold through CSD. An identical plea of
suppression and presence of products in the same trade channel has
been considered by this Court in the case of Royal Canin SA Vs.
Venky's India Ltd. (supra), wherein the contentions of the Defendant
regarding suppression were rejected and the dishonesty on the part
of the Defendant was taken judicial note of by this Court. The
dishonesty on the part of the Defendant being that it has tried to
come as close as possible to the Plaintiff to draw an association with
the Plaintiff or ride upon its goodwill and reputation. The difference
between the sales figures of the Plaintiff and the alleged sales figures
of the Defendant is significant which is indicative of the fact that the
presence of the Defendants products as compared to that of the
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Plaintiffs is miniscule and that too only in one trade channel which is
the CSD. Thus, there can be no attribution or assumption of
knowledge on this basis alone.
46. Mr. Kadam has submitted that the alleged documents
relied upon by the Defendant in respect of its alleged sales to CSD
conspicuously lack any image or any identification of the product
being ordered/supplied under the invoices. The documents do not
have any reference to the impugned product and have nothing
therein to co-relate them with the impugned product. This has been
expressly averred by the Plaintiff in its Reply, to which the Defendant
has failed to produce any material to co-relate the said documents to
the impugned product. The Defendant's feeble attempt to rely on the
word "blue bottle" mentioned in these documents, but its deliberate
failure to produce any documents to support its contentions (despite
being called upon to do so) is a telling fact and is a giveaway of the
Defendant's dishonesty and falsity of its claims.
47. Mr. Kadam has submitted that the Defendants have
during the arguments filed an additional Affidavit dated 2nd
November, 2023 i.e. after the pleadings in the Application had been
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
completed and in fact even after the Plaintiff had made its arguments
in the matter. The Defendant's additional Affidavit was neither served
on the Plaintiff prior to the hearing nor was the Plaintiff permitted
any opportunity to deal with the same since the same was tendered
across the bar during oral arguments in rejoinder by the Defendant's
counsel on 2nd November, 2023. The Plaintiff has strongly objected
to the said Additional Affidavit being taken on record in a belated
manner and the Plaintiff having no opportunity to deal with the
same. He has submitted that in any event and without prejudice to
the aforementioned submission, the contents of the additional
Affidavit are denied. A mere perusal of the additional Affidavit
makes it evident that the Defendant has even now, failed to produce
the images of the product required to be annexed to the alleged CSD
purchase orders which are at Pages 131 and 132 of the Defendant's
compilation of documents as well as CSD Invoices/Delivery Challans
dated 17th June, 2017 and 21st June, 2017 at Pages 28 to 55 of
Defendant's Compilation of Documents. The Defendant has instead
sought to rely upon an alleged E-mail of 3rd December, 2021 which
allegedly attaches the images of the impugned products in their
correspondence with the CSD.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
48. Mr. Kadam has submitted that the correspondence relied
upon in additional Affidavit appears to be as recent as December
2021 and thus there is still nothing on record to demonstrate that the
alleged CSD Orders / Invoices of 2017 as sought to be relied upon by
the Defendant were in respect of the impugned bottle.
49. Mr. Kadam has submitted that without prejudice to the
above submission, a perusal of the CSD purchase order dated 27th
September, 2022 at Page 46 of the Defendant's compilation of
documents would demonstrate that the same pertains to certain
"introduction circular of new items in the CSD range". It therefore
appears that the Defendant's products or allegedly the impugned
products were never a part of the CSD range prior to September 2022
and at best (assuming whilst denying), were only approved for listing
with the CSD in September 2022. Even as regards the alleged CSD
purchase order of September 2022, there is no material on record to
demonstrate that the same pertains to the Defendant's impugned
products.
50. Mr. Kadam has submitted that the Defendant's own
document (alleged screenshot of the CSD website) at Page 759 of the
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Additional Affidavit dated 2nd November 2023, demonstrates that
the Defendant is depicting and selling a yellow packaging on its
website though it is described as 'KLF Nirmal Brand Pure Coconut Oil
50 ml BLUE HDPE BOTTLE' and is not selling the impugned product
in the blue impugned packaging/label.
51. Mr. Kadam has submitted that the Defendant is in
contempt of this Court's Order if the CSD website listings depict the
impugned product as on present date or even on 2nd November,
2023 or any time after the order was passed and in force. It is settled
law that the Defendant is required to purge contempt before it can
request the Court to even consider its application under Order 39
Rule 4 of the CPC.
52. Mr. Kadam has submitted that the Defendant has
through its website, sought to demonstrate that it is not a 'fly by
night operator' and that its reputation has been captured on its
website and the Plaintiff has suppressed the same from this Court. He
has submitted that it is apparent from the Plaint that the words 'fly by
night operator' has not been used and the same also does not find
place in the impugned order and the said order was not granted on
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
any assumption or submission that the Defendant is a fly by night
operator.
53. Mr. Kadam has referred to the relevant Paragraphs 39
and 40 of the Plaint which provides reasons for moving ex-parte and
which predominantly on the apprehension of the impugned products
being dumped in the market and/or the apprehension that the goods
may be concealed and thereafter re-appear in the market in other
outlets. He has submitted that in any event and without prejudice to
the aforementioned submission, the law does not contemplate that
ex-parte reliefs can only be granted against small entities or entities
who are fly by night operators.
54. Mr. Kadam has submitted the reliance placed by the
Defendant on its website cannot be construed as evidence in support
of the Defendant's claims and cannot discharge the Defendant's
burden of proving the truth of its tall claims that otherwise have no
basis.
55. Mr. Kadam has submitted that there is no delay or
acquiescence on the part of the Plaintiff in approaching this Court or
taking steps to protect its rights in its marks/labels/packaging. The
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Plaintiff in its Reply to the application at Paragraphs C(ii) set out an
indicative, and not exhaustive list of the actions which Plaintiff has
taken against several entities which have attempted to / have
infringed the Plaintiff's rights in its Parachute coconut oil product
packaging marks/labels and the Plaintiff has taken action against
them to protect its rights as also the interest of general public. The
present suit is not a one off action initiated by the Plaintiff and the
Plaintiff has not sought to suppress any relevant facts to snatch an
order.
56. Mr. Kadam has submitted that assuming whilst denying
that the alleged Information Memorandum was shared with the
Plaintiff, at best, an allegation of delay can be attributed to the
Plaintiff, which in any event, is not sufficient to defeat a prompt ex-
parte injunction. He placed reliance upon the judgment of the
Supreme Court in Midas Hygiene Industries (P) Ltd. Vs. Sudhir
Bhatia and Ors.,8 at Paragraphs 4 and 5 which has held that "In cases
of infringement either of Trade Mark or of Copyright normally an
injunction must follow. Mere delay in bringing action is not sufficient
to defeat grant of injunction in such cases. The grant of injunction
8 (2004) 3 SCC 90,
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
also becomes necessary if it prima facie appears that the adoption of
the Mark was itself dishonest." In this context he has also relied upon
the decision of Supreme Court in Laxmikant V. Patel Vs. Chetanbhai
Shah & Anr., 9 at Paragraphs 13 and 14. This decision is also for the
principle that where initial adoption by the Defendant itself is vitiated
by fraud and/or is dishonest, once a case of passing off is made out
the practice is generally to grant a prompt ex-parte injunction
followed by appointment of local Commissioner, if necessary.
57. Mr. Kadam has submitted that the infringing nature of
the Defendants' impugned label/packaging and trade dress and the
dishonesty in adoption is writ large and the ad-interim order has
been granted after a careful comparison of the rival
marks/labels/packaging pursuant to this Court arriving at a finding
that the same are prima facie in violation of the rights of the Plaintiff.
58. Mr. Kadam has submitted that it is settled law that it is
no defence to state that others are also infringing the marks/labels of
the Plaintiff and the Defendant cannot seek shelter behind other
infringers or potential infringers.
9 (2002) 3 SCC 65
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
59. Mr. Kadam has submitted that reliance upon the other
entities use of blue bottle in support of the Defendant's contention
that the colour scheme of the Parachute coconut oil products of the
Plaintiff are common to trade is a mere afterthought and is an
unsustainable argument in view of the settled law in this regard. He
has submitted that no other entity including the Defendant, as per
the Defendant's own admission, was using the aforementioned
features or colour scheme in respect of coconut oils prior to the
Plaintiff. Further, the Defendant has not led any documentary
evidence whatsoever to show the actual use or extent of sales of the
alleged third party products sought to be relied upon by it. He has
placed reliance upon the decision of this Court in Pidilite Industries
Limited Vs. Riya Chemy (Supra) and in particular Paragraph 52 of
the said decision in this context.
60. Mr. Kadam has submitted that it is evident the colour
blue has no connection with the characteristic of the product coconut
oil and cannot be a defense to the Defendant's unauthorized use of
the impugned packaging/label.
61. Mr. Kadam has submitted that the revisions now sought
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
to be proposed by the Defendant to the impugned packaging (as a
stop gap measure to fulfill certain CSD purchase orders) are
inconsequential, insignificant and do not make the impugned
packaging/label non-infringing. The Defendant cannot seek a seal of
approval from this Court to use a packaging which continues to be in
violation of the rights of the Plaintiff. This is apparent from a mere
perusal of the allegedly revised packaging. This Court in R.R.
Oomerbhoy Vs. Court Receiver, High Court 10 at Paragraph 26
observed that "It has been said many times that it is no part of the
function of this Court to examine imaginary cases of what the
defendant could or could not do under this form of injunction. The
best guide, if he is an honest man, is his own conscience; and it is
certainly not the business of this Court to give him instructions or
hints as to how near the wind he can sail. Honest men do not attempt
to sail near the wind". He has submitted that it is settled law that
under the 'Safe Distance Rule', once a party infringes on another's
trademark or trade dress, the confusion sowed 'is not magically
remedied' by de minimis fixes.
62. Mr. Kadam has distinguished the decision relied upon by
10 (2004 (1) BomCR 436)
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
the Defendant viz. Procter & Gamble Hygiene and Health Care
Limited & Anr., (Supra) in which only the prayer for appointment of a
Court Receiver for making an inventory of goods was granted ex-
parte (as opposed to an injunction and seizure of goods), only in
view of the extensive and chartered history of prior/ongoing
disputes/litigation between the parties, which is evidently missing in
the present case. He has further distinguished the decision relied
upon by the Defendant viz. Indian Bank Vs. Godhara Nagrik Co-op.
Credit Society Ltd. (supra) which is on the doctrine of indoor
management which cannot be put into force to impute knowledge to
the entire company of the Plaintiff and therefore reliance on this
decision is misplaced and of no assistance to the Defendant.
63. Mr. Kadam has submitted that the Defendant has
miserably failed to make out any case for vacating or setting aside of
the said order and has failed to discharge the heavy burden on a
Defendant who has approached this Court under Order 39 Rule 4 of
the CPC. In any event and without prejudice to the above submission,
given the blatant dishonesty and the deliberate copying by the
Defendant and the attempt of the Defendant to come as close as
possible to the Plaintiff's well known packaging/trade dress of its
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Parachute coconut oil products, this Court ought to continue the ad-
interim injunction in the interest of justice and public welfare since
the products in question are edible coconut oil products which are
consumed by millions of people across the world.
64. Having considered the rival submissions, in my view it is
necessary to refer to Order 39 Rule 4 of CPC, under which the
present Interim Application has been made. Order 39 rule 4 of CPC is
reproduced below for reference:
ORDER XXXIX TEMPORARY INJUNCTIONS AND
INTERLOCUTORY ORDERS
(4) Order for injunction may be discharged, varied or set
aside -- Any order for an injunction may be discharged,
or varied, or set aside by the Court, on application made
thereto by any party dissatisfied with such order:
2[Provided that if in an application for temporary
injunction or in any affidavit supporting such
application, a party has knowingly made a false or
misleading statement in relation to a material particular
and the injunction was granted without giving notice to
the opposite party, the Court shall vacate the injunction
unless, for reasons to be recorded, it considers that it is
not necessary so to do in the interests of justice:
Provided further that where an order for injunction has
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
been passed after giving to a party an opportunity of
being heard, the order shall not be discharged, varied or
set aside on the application of that party except where
such discharge, variation or setting aside has been
necessitated by a change in the circumstances, or unless
the Court is satisfied that the order has caused undue
hardship to that party.]
65. The essential requirement for vacation of an ex-parte
order i.e. where a party has knowingly made a false or misleading
statement in relation to a material particular is required to be
established in an application for vacation of the ex-parte order under
Order 39 Rule 4. Presuming that this has been established, even then
under the first proviso to Order 39 Rule 4 this Court may not vacate
the injunction if it considers that it is not necessary to do so in the
interest of justice.
66. Having considered Order 39 Rule 4, in my view the
Defendant has in the present case failed to establish / discharge the
burden of proving that the Plaintiff has knowingly made a false or
misleading statement in relation to a material particular in either the
Plaint or in the Interim Application for temporary injunction. In the
present case, the Defendant has sought vacation of the ex-parte order
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
on the basis of conjectures or surmises. The contention on behalf of
the Defendant that the Plaintiffs had received the Information
Memorandum and / or had knowledge of the Defendant's impugned
product prior to July 2023 is without producing a single document to
demonstrate the same.
67. I further find that the document which has been relied
upon by the Defendant viz. the Non-Disclosure Agreement (NDA) has
no reference to the Information Memorandum. There is an attempt
made by the Defendant to draw a link between NDA and the
Information Memorandum by relying upon the project named
"Project Kepler" mentioned in the alleged Information Memorandum
and by further placing reliance upon the E-mail dated 23 rd April,
2021 which refers to "Project Kepler". However, a perusal of the said
E-mail shows that the Plaintiff at the very outset expressed its
disinterest in participating in the acquisition opportunity shared by
one Equirus (financial advisor to the Defendant) in respect of the
Defendant Company. The mere reference to 'Project Kepler', in my
view cannot constitute evidence that the Plaintiff Company had
received the Information Memorandum and/or any other document
containing the images of the impugned product.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
68. I am of the view that the Information Memorandum is
not a material and / or relevant document, presuming that the
Plaintiff had knowledge of the Information Memorandum and had
not disclosed the same, as the Information Memorandum was not
capable of being scrutinized in the context of infringement given the
fact that the issue is not only about the blue bottle but the entire
packaging being the consolidated effect of several distinctive
features / marks coupled with the blue color scheme. Further, the
Information Memorandum contained images of the several products
of the Defendant and the focus of the Plaintiff's representatives i.e. of
the M&A team engaged in the initial/preliminary screening was to
view any such document from the perspective of a business as a
whole and not scrutinize it brand by brand / product by product in
the context of infringement. Thus, presuming that the knowledge of
the M&A team can be attributed to the Plaintiff as contended by the
Defendant, there is no knowingly false or misleading statement made
by the Plaintiff in the Plaint or in the Interim Application for
temporary injunction.
69. I find much merit in the submission of Mr. Kadam that
assuming that the Information Memorandum was shared with a
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
member of the Plaintiff, at best an incorrect/inadvertent statement
has been made by the deponent of the Plaint who had no knowledge
of the alleged Information Memorandum or its contents and such
incorrect/inadvertent statement is not made knowingly by the
deponent on behalf of the Plaintiff and does not / cannot constitute a
ground for vacating the ad-interim order since the parameters set out
in Order 39 Rule 4 of the CPC do not exist, have not been met, nor
made out. The decision relied upon by the Plaintiff viz. Shaw
Wallace & Company (Supra), in support of this submission is apposite
in this context. This Court was of the view that the purpose of
granting temporary injunction in a Suit for infringement of trademark
is not only to protect the interest of the Plaintiffs but also to protect
the interest of the general public and that denial of temporary
injunction to the Plaintiffs merely because the Plaintiff has made an
incorrect statement in the Plaint, would not be in the interest of
justice. This has also being held by the Delhi High Court in Apollo
Tyres Ltd. (Supra) which decision had been relied upon by the
Plaintiff. The Delhi High Court has held that the aspect of public
interest would have to be considered by the Court whilst considering
whether, or not, to continue the injunction granted against the
Defendant.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
70. In Kewal Ashokbhai Vasoya (Supra), this Court has laid
down the general principles and tests for a Plaintiff moving without
notice and seeking temporary injunction. In my view, the Plaintiff
has been able to satisfy the requirements laid down in the above
decision in respect of grant of ex-parte relief by making full and
reasonable accurate disclosure of material facts and has invited the
Court's attention to the factual, legal and procedural issues as
required.
71. It is relevant to refer to the finding of this Court in
Paragraph 16 of the ex-parte order dated 18 th August, 2023 which
reads thus:
"Prima facie, there is no manner of doubt that the
Defendant's respective impugned labels/packaging and
the impugned products as aforementioned, are
deceptively similar to or rather almost identical with the
PARACHUTE Registered Marks of the Plaintiff, the
Parachute Packaging/Labels, the Flag Device, the
Parachute Tree Device, the Broken Coconut Device as
well the Distinctive Parachute Bottles/Containers. The
Defendant's respective labels/packaging used on the
respective impugned products, is a reproduction /
substantial reproduction of the Plaintiff's original artistic
works comprised in the Plaintiff's Parachute
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Packaging/Labels and/or the including the Flag Device,
Parachute Tree Device and the Broken Coconut Device.
The similarities between the rival
marks/labels/packaging cannot be a matter of
coincidence. Undoubtedly, the Defendant must have
placed the Plaintiff's marks/labels/packaging before
them when adopting the impugned
marks/labels/packaging. It appears that the Defendant
is in fact trying to come as close as possible to the
Plaintiff's range of products. In the aforesaid
circumstances, I am satisfied that the Plaintiff has made
out a strong prima facie case for the grant of ex-parte ad-
interim reliefs. The balance of convenience is in favour of
the Plaintiff. Unless reliefs as prayed for are granted, the
Plaintiff will suffer irreparable harm / injury which
cannot be compensated in terms of money."
72. In Paragraph 17 of the said order, this Court was satisfied
that giving notice to the Defendants before passing the said order
would defeat the purpose of granting ad-interim relief. Thus, this
Court had upon comparison of the rival products arrived at a prima
facie finding that the Defendant has dishonestly adopted its marks /
lables / packaging and that the respective lables / packaging used on
the impugned products are a reproduction / substantial reproduction
of the Plaintiff's original artistic works comprised in the Plaintiff's
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Parachute packaging / labels and / or including the Flag Device, the
Parachute Tree Device, the Broken Coconut Device. This finding was
arrived at after this Court was prima facie satisfied that the Plaintiff
has been able to establish its goodwill and reputation in its products
bearing the PARACHUTE Registered Marks, Parachute
Packaging/Labels, the Flag Device, the Parachute Tree Device, the
Broken Coconut Device as well as distinctive Parachute Bottle /
Container.
73. In the decisions of this Court in Kewal Ashokbhai Vasoya
(supra), this Court has held that "the Court nevertheless has
discretion to continue the injunction (or impose a fresh injunction)
despite a failure to disclose. Although the discretion should be
exercised sparingly, the overriding consideration will always be the
interests of justice." Although, in my view, there has been no
suppression of any material particular, presuming that there was a
suppression, this is a fit case for this Court to exercise its discretion to
continue the injunction (or impose a fresh injunction), in view of the
overriding consideration which is always the interest of justice.
74. Further, I do not find any merit in the submission of the
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Defendant that the Plaintiff had knowledge of the Defendant's
impugned product prior to the date claimed by the Plaintiff and such
knowledge has been suppressed by the Plaintiff. The Defendant has
failed to produce any positive evidence of the Plaintiff having
knowledge of the Defendant's impugned product prior to the date
claimed by the Plaintiff and / or since when the Plaintiff had
knowledge of the Defendant's impugned product and / or
demonstrated that the Plaintiff had knowledge about Defendant's
impugned product prior to July, 2023. Thus, the mere reference to
the alleged Purchase Orders and / or alleged Invoices / Delivery
Challan relating to sales to CSD is insufficient to establish the
Plaintiff's knowledge prior to the date claimed by the Plaintiff. These
documents only mentioned the words "blue bottle" but there is no
image or identification of the product being ordered / supplied under
these documents. Thus, it is unable to ascertain as to whether the
impugned products were the subject matter of these documents.
There is nothing on record to connect the CSD purchase orders /
Invoices / Delivery Challan with impugned product bearing
impugned packaging / label, much less any proof of their having
been sold from 2013 or 2017 or any time thereafter, as contended by
the Defendant.
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
75. The documents which had been produced by the
Defendants during the arguments and particularly after the
arguments of the Plaintiff had been concluded do not in any manner
demonstrate that the alleged CSD orders / Invoices of 2017 sought to
be relied upon by the Defendant were in respect of the impugned
bottle. At best, the documents being images of impugned products
which have been attached to the E-mail dated 3rd December, 2021
sent by the Defendant to CSD would only show that the Defendant
supplied the impugned product to CSD in December, 2021 and not in
year 2017. This is contrasted with the CSD Purchase Order dated
27th September, 2022 which pertains to "Introduction Circular of
new items in CSD range" from which it appears that the Defendant's
impugned products were never part of the CSD range prior to
September, 2022 and were only approved for listing with the CSD in
September, 2022.
76. The reliance placed by the Defendant on its website in
order to show that the Defendant's reputation has been captured and
that the Defendant was not a fly by night operators is in my view
irrelevant, particularly considering that the said ex-parte order had
not been passed on the premise that the Defendant was a fly by night
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
operator but upon being satisfied that a prima facie case has been
made out upon perusal of the rival products and given the immense
goodwill and reputation which has been gained by the Plaintiff in
respect of its products. In any event, the mere writing on the Website
of the Defendant cannot be construed as evidence to support the
claim of the Defendant.
77. With regard to Defendant's contention of delay or
acquiescence on the part of the Plaintiff, I do not find much substance
in its contention, particularly considering the settled law as laid down
in the decision relied upon by the Plaintiff viz. Midas Hygiene
Industries (P) Ltd. (supra) and Laxmikant Patel (Supra). In the
former case it has been held that mere delay in an action for
infringement of Trademark or Copyright is not sufficient to defeat the
grant of injunction and in the later case it has been held, once a case
of passing off is made out the practice is generally to grant a prompt
ex-parte injunction followed by appointment of local Commissioner, if
necessary.
78. In the present case, I am of the prima facie view that
there has been no delay in the Plaintiff approaching this Court and /
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
or that there is any suppression of delay, considering that the
Defendant is not able to establish as to when the Plaintiff had
knowledge of the Defendant's product contrasted with the Plaintiff's
case of being aware of the Defendant's impugned products in July,
2023. The Plaintiff upon being aware has acted with utmost dispatch
and proceeded to take action against the Defendant. In the ex-parte
order, this Court had considered the prior proceedings which have
been initiated by the Plaintiff against several entities who have
attempted to / have infringed the Plaintiff's right in the Parachute
Coconut Oil Product packaging marks / labels in order to protect the
Plaintiff's right as also in the interest of general public.
79. The decisions relied upon by the Defendant on
knowledge of the Plaintiff are clearly distinguishable on facts and are
thus inapplicable in the present case.
80. It is settled law that it is no defence to state that others
have also infringing the marks/labels of the Plaintiff as the Defendant
cannot seek shelter behind other infringers or potential infringers.
Further, the Defendant's reliance upon third party entities using the
same colour scheme in respect of coconut oil product as that of the
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Plaintiff is insufficient without the Defendant leading documentary
evidence to show the actual use or extent of sales of the alleged third
party products sought to be relied upon by it. This has been held by
this Court in Pidilite Industries Limited Vs. Riya Chemy (Supra).
81. I find much merit in the submission of Plaintiff that the
Defendant cannot seek a seal of approval from this Court to use a
revised packaging which continues to be in violation of the Plaintiff.
This Court in R.R. Oomerbhoy Vs. Court Receiver, High Court (Supra)
has held that "it has been said that many times that it is not part of
the function of this Court to examine imaginary cases of what the
defendant could or could not do under this form of injunction. The
best guide, if he is an honest man, is his own conscience; and it is
certainly not the business of this Court to give him instructions or
hints as to how near the wind he can sail. Honest men do not attempt
to sail near the wind". Further, I find merit in the submission of the
Plaintiff that under the 'Safe Distance Rule', once a party infringes on
another's trademark or trade dress, the confusion sowed 'is not
magically remedied' by de minimis fixes.
82. In view thereof, I do not find any merit in the
IA(L) 26759.2023 in COMIP(L) 22293.2023.doc
Defendant's application under Order 39 Rule 4 of the CPC, as the
Defendant in my view has failed to make out any case for vacating
and / or setting aside the said order by discharging its burden and /
or meeting the essential requirements for vacating an ex-parte order
under Order 39 Rule 4 of CPC. In that view of the matter, the ex-
parte ad-interim order dated 18th August, 2023 shall continue to
operate till further orders.
83. The Interim Application (L) No.26759 of 2023 is
accordingly disposed of.
84. The Interim Application (L) No.33259 of 2023 shall be
placed for hearing on 11th January, 2024.
[R.I. CHAGLA, J.]
