Bombay High Court

Santosh Vishnu Mardhekar vs Arun Shamrao Mardhekar on 3 September, 2024

Author: A.S. Chandurkar

Bench: A.S. Chandurkar

2024:BHC-AS:35381-DB

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Digitally signed
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
by KANCHAN
KANCHAN VINOD
VINOD
MAYEKAR
MAYEKAR
Date:
CIVIL APPELLATE JURISDICTION
2024.09.03
19:04:15 +0530

COMMERCIAL APPEAL FROM ORDER NO. 13 OF 2023
ALONGWITH
INTERIM APPLICATION NO. 14655 OF 2023
ALONGWITH
INTERIM APPLICATION NO. 2503 OF 2023
IN
COMMERCIAL APPEAL FROM ORDER NO. 13 OF 2023

Santosh Vishnu Mardhekar ..... Appellant/
Applicant

VERSUS

Arun Shamrao Mardhekar ..... Respondent

Mr. Sandesh D. Patil i/b. Mr.Prithviraj S. Gole for the
Appellant/Applicant.

Mr. Vinaykumar Khatu a/w. Mr. Ashok D. Kadam, Ms. Sneha
Thakre for the Respondent.

Coram : A.S. Chandurkar & Rajesh S. Patil, JJ.
Date on which the arguments were heard : 19th August 2024
Date on which the judgment is pronounced : 3rd SEPTEMBER 2024

JUDGMENT ( PER - RAJESH S.PATIL, J.) :

The present Commercial Appeal from Order is filed by the

appellant (original defendant) challenging the judgment and

order dated 17th February 2023, passed below Ex.5, by the

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District Court, Satara in Regular Civil Suit No. 1 of 2023.

2. The appellant herein is the original defendant before the

Trial Court, and the respondent herein is the original plaintiff

before the Trial Court. The parties are hereinafter referred as per

their nomenclature in the Trial Court.

3. The plaintiff on 5th December 2022 filed a suit before the

District Court, Satara against the defendant claiming recovery of

an amount of Rs.10,92,799/- and also sought an order

restraining permanently the defendant from manufacturing,

selling and storing the product in the name of " "kqHky{eh fpoMk रि टकवली". Along with the suit, the plaintiff also preferred an

interim application in the form of 'Ex.5' thereby seeking interim

orders during pendency of the suit, against the defendant and

their representatives to restrain them from manufacturing, selling

and storing the product in the name of ""kqHky{eh fpoMk रि टकवली".

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4. The plaintiff's suit is based on the ground that the plaintiff

has a trademark as "रि टकवली", "रुचक स्वारि ष्ट खमं ग", (R

RITKAWALI)". The plaintiff's trademark was registered on 9 th

March 2015. It was further the case of the plaintiff that the

defendant started selling the product Chiwda from the year 2012

under the name of ""kqHk". However, since defendant was not able

to earn sufficient income, therefore from the year 2014 - 2015

the defendant started his production in the name of " "kqHky{eh"

which was similar to the name of plaintiff product " महालक्ष्मी".

However, even then as there was no good response, the

defendant from the year 2016-2017 started selling his product in

the name of ""kqHky{eh fpoMk रि टकवली" which was similar to the

name of the product of the plaintiff.

5. After, the defendant was served with the copy of plaint and

'Ex. 5' application, the defendant filed his reply to 'Ex.5'. The

defendant denied the contentions of the plaintiff. He submitted

that his family resides at Ritkawali. He has manufacturing unit

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at Medha and the raw material process is carried out at

Ritkawali.

6. The learned District Judge, Satara, thereafter heard the

advocate of both sides, on the interim application 'Ex.5' and by

his judgment and order dated 17th February 2023, partly allowed

the 'Ex.5' application of the plaintiff, thereby temporarily

restraining the defendant from manufacturing, selling, storing

the product "रि टकवली स्पे शल शे व रिचवडा" or "रि टकवली स्पे शल" or

"शे व रिचवडा रि टकवली स्पे शल ".

7. Being dis-satisfied with the judgment and order dated 17 th

February 2023 passed by the District Judge, Satara partly

allowing Ex.5 application, the defendant has filed the present

Commercial Appeal from Order, under Section 13 of the

Commercial Courts Act.

8. Mr. Sandesh D. Patil, learned counsel appeared on behalf of

the applicant (original defendant) made his submissions. He

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submitted that the case of the plaintiff was not that of 'passing

off' but was that of 'infringement of trademark'. He submitted

that the plaintiff's mark was that of "रि टकवली" written in bold

font along with three words written below it "रुचक स्वारि ष्ट

खमं ग", with a portrait of a boy standing with the cap in his right

hand, wearing a green T-shirt and the word "R" written on the

said T-shirt and wearing orange trouser. He submitted that the

plaintiff however was selling his product with the name

"महालक्ष्मी" written in larger font and in a smaller font the word

"रि टकवली" written below the word "महालक्ष्मी" and a upper body

picture of a boy with a cap in his hand, on the top of the word

"महालक्ष्मी" above which the word "रुचक स्वारि ष्ट खमं ग" is written

in a circle. The printing on packet in which the plaintiff was

selling his product, was different from the actual registered

trademark of the plaintiff. He submitted that the defendant was

selling his product as per the plaintiff's own case in a packet

wherein the name of "शु भलक्ष्मी" was written in a large font and

below it, in a small font word "रि टकवली" written on the

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background of blue colour. He submitted that there was no

similarity between the registered trademark of the plaintiff and

the packet on which the defendant was selling his product. He

submitted that the plaintiff uses a logo and mark on his packet

which infact is quite different than the registered trademark of

the plaintiff.

9. Mr. Patil further submitted that, the ground on which the

plaintiff had sought injunction, in the plaint, in fact on the bare

reading will show that such injunction cannot be granted to the

plaintiff. He submitted that the plaintiff had only sought an

injunction against the defendant not to manufacture, sale and

store product in the name of ""kqHky{eh fpoMk रि टकवली". Whereas

the learned District Judge has passed an order restraining the

defendant from the manufacturing, selling and storing the

product "रि टकवली स्पे शल शे व रिचवडा or रि टकवली स्पे शल or शे वरिचवडा

रि टकवली स्पे शल". He submitted that the learned Judge failed to

appreciate all these facts and without considering the legal

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position, has passed the impugned judgment and order of

infringement of the trademark against the defendant and has

granted a relief which in real sense was not sought in the Ex.5

and/or in plaint.

10. To buttress his submissions, Mr. Patil referred to the

following judgments :-

(a) The judgment delivered by Nagpur Bench of Bombay High Court in the case of Orange City Mobile Collection, Nagpur vs. City Collection, Nagpur & Ors., 2017 (3) Mh. L. J. 180

(b) The judgment of Full Bench of this Court in case of Lupin Ltd. vs. Johnson & Johnson, 2015 (1) Mh.L.J. 501

11. Mr. Patil, appearing for the appellant also tendered an

undertaking of his client that his client is ready for the sake of

removing any kind of ambiguity to change the colour of his

packet from red colour background entirely to blue colour

background.

12. Mr. Patil submitted that the present Commercial Appeal

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From Order, requires to be allowed and the impugned judgment

and order should be quashed and set aside.

13. Mr. Vinaykumar Khatu, learned counsel appeared on behalf

of the respondent (original plaintiff) who made his submissions.

He submitted that after taking into consideration the entire facts

and hearing the parties, the learned District Judge had allowed

the application Ex.5 of the plaintiff. He submitted that the

plaintiff for generations was in business of Shev Chiwda at

Village Ritkawali. He submitted that the defendant was trying to

imitate the plaintiff in taking advantage of the brand of the

plaintiff and has started the business in the similar kind of name,

as that of the plaintiff. Hence, the plaintiff has no option but to

file a suit for infringement of the trademark, against the

defendant. He submitted that the plaintiff is carrying on his

business in the village Ritkawali and the defendant has also now

started conducting his business in the same village. He

submitted that the defendant has not mentioned in his reply as to

from when he has started conducting his business. He submitted

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that the plaintiff and the respondent are into the same business

that of 'Shev Chiwda'. Hence, the public at large are going to be

confused that the product which the defendant is selling is that of

the plaintiff. He relied upon the following judgments in support

of his submissions :-

(a) The judgment of Supreme Court in case of S. Syed Mohideen vs. P. Sulochana Bai, (2016) 2 SCC

(b) The judgment of Delhi High Court in case of Hamdard National Foundation (India) & Ors. vs. Sadar Laboratories Pvt.Ltd., 300 (2023) DLT 420

(c) The order of Supreme Court in Petition for Special Leave to Appeal (C) No. 9494 of 2023 in case of Sadar Laboratories Pvt. Ltd. vs. Hamdard National Foundation (India) & Anr.

(d) The judgment of this Court in case of Pidilite Industries Ltd. vs. S. M. Associates & Ors., 2003 (5) Bom.C.R. 295.

(e) The order of Delhi High Court in case of Siddharth Suri vs. Registrar of Trade Marks in C.A. (COMM IPD-TM) 77 of 2021 dated 10 th January 2023.

14. We have heard learned counsel of both the sides and with

their help, considered the documents on record including the

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packet of Shev Chiwda in which the plaintiff is selling his product

and also the packet of the defendant in which he is selling his

product. Also before us the parties tendered copy of the

registered trademark (device mark) of the plaintiff. For ease of

reference, the registered trademark of the plaintiff is reproduced

hereinbelow :-

Plaintiff's Trademark (Device)

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15. So also, we have considered the pictorial representation of

the packet of the plaintiff containing Shev Chiwda. The same

also for the purpose of reference is reproduced hereinbelow :-

Plaintiff's Packet

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16. From the bare perusal of the registered trademark of the

plaintiff and the pictorial representation of the plaintiff of its

packet appears to be quite different. Though the plaintiff has

registered trademark which appears from the documents

tendered before us to be a device mark, includes a name and a

small boy standing with hat in his right hand. However, the

pictorial representation of the plaintiff on his packet, the picture

of boy is separated from the word "रि टकवली" and in the middle of

two, in large font appears to be "महालक्ष्मी". Therefore, it appears

that the plaintiff is infact not using his registered 'device mark' on

his packet meant for sale of Shev Chiwda.

17. Coming to the pictorial representation of the defendant

used on his packet which was tendered before us, the same is

reproduced hereinbelow for sake of easy reference.

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Defendant's Packet

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18. It appears that the defendant has used only a face of a

young boy and in large font used the word " शु भलक्ष्मी" and below

the same there is a word "रि टकवली" with blue background and

again "शे वरिचवडा" in red colour is used in the larger font.

19. On the mere perusal of the pictorial representation of the

packet of the defendant, we find that the same is quite different

than the registered trademark of the plaintiff. So also, the

defendant has used in English language slogan "Bass Khate Jao",

which does not appear on the packet of the plaintiff. This

coupled with the fact that the defendant is ready and willing to

change the background colour of his pictorial representation of

his packet, a copy of which has been tendered before us by the

defendant, according to us the packet of defendant will then be

quite different in colour than that of plaintiff. The proposed

colour combination of defendant's packet which was tendered

before us is reproduced hereinbelow :-

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Proposed packet of Defendant

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20. We have also considered the submissions made by the

plaintiff in his plaint. Paragraph nos. 2, 6, 7, 8 and 12 of the

plaint are reproduced hereinbelow :-

2. The Plaintiff in order to increase the marketing and preserve the quality of products has register the trademark as "Ritkawali", "RuchkarSwadisthaKhamang" (R Ritkawali).

The registration number is 2917476 and the same is registered on 9/3/2015.

6. The business of the plaintiff is being conducted under the name of " Mahalaxmi Chiwda Ritkawali". However since the name "Mahalaxmi" is the name of deity and "Ritkawali" being the name of place, the same cannot be legally registered as Trademark and considering the said legal difficulty, the plaintiff has registered his trademark as "Ritkawali", "Ruchkar Swadistha Khamang" and the plaintiff is selling the products under the said trademark.

7. The defendant is the resident of Medha and he is also carrying out the similar business of Chiwda and Farsan. The defendant has started his business in the year 2012 and 2013 under the name of "Shubh" Chiwda, Farsan, however he was not able to earn sufficient income through the same. Considering the said position, the defendant in the year 2014-2015 the defendant started production in the name of "Shubhlaxmi" which is similar to the name of Plaintiff's product "Mahalaxmi" However the defendant was still not getting proper response. The defendant there for in the year 2016-2017 had started to manufacture and sell his products under the name. "Shubhlaxmi Chiwda Ritkawali" which is similar to the name of product of the present plaintiff. Since the defendant was getting response from the customers, the defendant also started to match the packaging, design and colour in the year 2018-2019.

8. In reality, the defendant are using the name

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"Shubhlaxmi Chiwda Ritkawali" which is quite similar to the name of product of plaintiff "Mahalaxmi Chiwda Ritkawali" and are continuing to do so even today.

12. The Plaintiff because of the said circumstances, have to clarify to everyone that the products Mahalakshmi and Shubhlakshmi are different and that they are not same. The Plaintiff has tried to mark out the difference to the people who had contacted him. However, the people who had not contacted him are being duped and are therefore not purchasing the product of the Plaintiff and hence the same is causing huge financial loss and is also depreciating the goodwill of the plaintiffs business and the said loss cannot be recovered and the same is irreparable and it is the defendant who is responsible for the same.

(Emphasis supplied)

21. Taking into consideration the pleadings of the plaintiff and

considering the pictorial representation of the proposed packet of

the defendant and the registered device mark of the plaintiff, we

don't find that the defendant has infringed the plaintiff's

registered trademark.

22. The learned Judge of the Trial Court while considering the

"Ex-5" Application of the plaintiff did not consider the above facts

and has arrived at the conclusion on the basis that the defendant

did not place on record any matter to distinguish the wrapper of

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defendant from that of plaintiff. The goods of both parties are

the same and have same characteristics, the target users of the

goods are not intelligent and are likely to misconceive the

product of the defendant with that of the plaintiff. The

geographical location for business of both parties and their

products/ goods are entirely the same. The customers from small

villages and market area of the defendants are the same so there

is prima facie ground to assume that, the defendant wanted to

ride on the reputation and goodwill of the plaintiff. Thus had

arrived at the conclusion that the plaintiff was able to prove a

prima facie case in order to grant interim relief on application

Ex.5. Hence, the learned trial Judge granted temporary

injunction, thereby directing defendant and his agents from

manufacturing, storing, selling the product "रि टकवली स्पे शल शे व

रिचवडा" or "रि टकवली स्पे शल" or "शे व रिचवडा रि टकवली स्पे शल ", till the

decision of suit.

23. We have considered the findings of the Trial Court, the

learned Judge has granted a relief which infact was not even

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sought by the plaintiff. The plaintiff's prayer was not to allow

the defendant to use ""kqHky{eh fpoMk रि टकवली" ("Shubhlaxmi Chiwda Ritkawali") whereas the learned Judge has granted

injunction restraining the defendant using " रि टकवली स्पे शल शे व

रिचवडा" (Ritkawali Special Shev Chiwda) or "रि टकवली स्पे शल"

(Ritkawali Special) or "शे व रिचवडा रि टकवली स्पे शल " (Shev Chiwda

Ritkawali Special).

24. Therefore the impugned judgment of the Trial Court on the

face of it suffers from perversity as the learned Trial Court has

travelled beyond the pleadings and granted a relief which is not

even sought by the plaintiff. Therefore we are of the opinion that

the impugned judgment requires to be interferred with.

25. Taking into consideration the registered trademark (device)

of the plaintiff and the plaintiff's packet in which he sells his

"Shev Chiwda" both are quite different. The defendant's packet

as per the plaintiff case is deceptively similar to that of the

plaintiff's packet and the same is creating confusion in the minds

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of the customers.

26. According to us the plaintiff himself is not using his

registered trademark on his packet. Hence, prima facie the

plaintiff is not able to prove that the defendant's packet is similar

to the registered trademark (device) of the plaintiff.

27. Full Bench of this Court in case of Lupin Ltd. (supra) while

dealing with a reference question "Whether the Court can go into

the question of the validity of the registration of the plaintiff's

trade mark at an interlocutory stage when the defendant takes up

the defence of invalidity of the registration of the plaintiff's trade

mark in an infringement suit?", held that there is no express or

implied bar taking away the jurisdiction of the Civil Court to

consider the challenge to the validity of the trade mark at the

interlocutory stage by way of prima facie findings. The purpose

of registered trademark was to prevent others from using an

identical trademark. Paragraph no. 34 of the said judgment

reads as under :-

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34. While we agree with Dr.Tulzapurkar for the Plaintiff that the object of providing for registration of a trade mark and recognising the exclusive right of the registered proprietor to use the registered trade mark in order to prevent others from using an identical or deceptively similar trade mark is to obviate the necessity of proving in each and every case the Plaintiff's title to the mark, its distinctiveness and its reputation, we are of the view that the object has been achieved by raising a presumption, and a strong presumption in law, as to the validity of registration of the mark. The burden is therefore cast, and a heavy burden at that, on the Defendant to question the validity of registration. While such a challenge can finally succeed only in a rectification proceedings which now lie before the Intellectual Property Appellate Tribunal (IPAT), we do not find any express or implied bar in the Trade Marks Act to completely take away the jurisdiction and power of the Civil Court to consider the challenge to the validity of registration of the trade mark at the interlocutory stage by way of a prima facie finding on such issue.

(Emphasis supplied)

28. In the present proceedings, according to us the plaintiff is

not using the registered device mark, on his wrapper, therefore

the plaintiff cannot seek infringement of his trademark, against

the defendant on the basis that the defendant is using similar

kind of trademark on his packet.

29. In the judgment delivered by Nagpur Bench of Bombay

High Court, by one of us (A. S. Chandurkar, J.) in the case of

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Orange City Mobile Collection, Nagpur (supra) Trial Court in suit

for passing off, of goods, granted temporary injunction which

was challenged before the High Court. The High Court held that

the material placed on record by plaintiff was not sufficient to

grant an order of temporary injunction in favour of the plaintiff.

Hence, the High Court quashed and set aside the temporary

injunction granted in favour of the plaintiff.

29.1. The High Court relied upon Supreme Court judgment

reported in AIR 1965 SC 980 - Kaviraj Pandit Durga Dutt Sharma

vs. Navratna Pharmaceutical Laboratories, which observed that,

in an action for passing off, defendant could escape liability if it

can be shown that the added matter was sufficient to distinguish

his goods from those of the plaintiff. The High Court accepted

the statement made by the defendant, that they are willing to

increase fonts of the words "Orange" and "Mobile" in its logo to

make the entire trade name of the defendant conspicuously

visible. The defendant was directed without prejudice to the

rights of the parties to increase the fonts of the said words in its

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logo during the pendency of the suit.

30. The ratio laid down in the matter of Orange City Mobile

Collection, Nagpur (supra) is squarely applicable in the present

proceedings. Even before us the defendant through its counsel

has tendered an undertaking that they are willing to change the

background colour from red to blue colour of its packet, in which

he is selling Shev Chiwda. Hence, in the present proceedings we

are directing the defendant, without prejudice to the rights and

contentions of the parties to change the background colour of the

packet in which they are selling the Shev Chiwda, from red

colour to blue colour background.

31. The plaintiff has also raised a grievance that the defendant

has suppressed the fact about he being granted a new trademark

by the Registry during the pendency of the present proceedings.

The defendant has admitted that he had applied for two different

trademarks, and the same have been granted by the Registry. He

submitted that that will have no bearing on the present

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proceedings.

According to us, the defendant now getting a new

trademark will not have any bearing on the pending proceedings

as a plaintiff's suit for infringement is based on a registered

device mark, the fact that plaintiff himself is not using his device

mark on the packet sold by him, that itself, calls for an

interference from us to the discretion exercised by the Trial Court

by granting an injunction.

32. Taking into consideration the facts of the present

proceedings wherein the plaintiff is not using his registered

device mark on his packet meant for selling Shev Chiwda, the

Trial Court granted relief which was not even sought by the

plaintiff. Hence the ratio laid down in the authorities relied upon

by the learned counsel for the plaintiff will not be applicable to

the present proceedings.

33. As a result of the aforesaid discussion, the following order

is passed :-

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ORDER

(a) The order passed by the Trial Court below

Ex.5 dated 17th February 2023 is hereby quashed

and set aside. The application below Ex.5 stands

rejected.

(b) Without prejudice to the rights and

contentions of the parties, the defendant is

directed to change the background colour of the

packet in which he sells Shev Chiwda, from red

colour to blue colour as undertaken by him.