[Cites 33, Cited by 0]
Bombay High Court
Dr. Bawasakar Technology (Agro) ... vs Anannya Agro Products And Anr. on 16 March, 2026
Author: R. I. Chagla
Bench: R. I. Chagla
2026:BHC-AS:12950-DB
Digitally signed
by PALLAVI
PALLAVI
MAHENDRA
WARGAONKAR
1 J-COMAO-28-2025 (C).doc
MAHENDRA
WARGAONKAR Date:
2026.03.17
15:15:19
+0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
COMMERCIAL APPEAL FROM ORDER NO.28 OF 2025
IN
COMMERCIAL SUIT NO.9 OF 2025
WITH
INTERIM APPLICATION NO.12806 OF 2025
Dr. Bawaskar Technology (Agro) Pvt. Ltd. )
Having its office at: S. N. 36, )
Manjari Farm, Pune - Solapur Road, )
Manjari, Pune- 412307, )
Maharashtra, India. ) ...Appellant
(Orig. Plaintiff)
Vs.
1. Anannya Agro Products & Anr. )
Having address at: )
a. Shop No. D/206, S No.320/1, )
Vighnahar Sankul Junnar )
Narayangaon, Maharashtra, )
India - 410504. )
Also having address at, )
b. Flat No. 27, Parvati Apartment, )
Shivnagar, Sutarwadi, Pashan, )
Maharashtra, India, )
Pune - 411021. )
2. Avishkar Agro Chem )
Having address at : )
Shop No. D/206, Second Floor, )
Vignhahar Complex, Nasik Road, )
Narayangaon, Maharashtra, )
India, Pune - 410504. ) ...Respondents
(Orig. Defendants)
-----------------
Mr. Hiren Kamod, a/w Mr. Sumedh Ruikar, i/b RK Dewan Legal Services,
for Appellant.
Mr. Shailendra Kanetkar, i/b Mr. Akshay Karlekar, for Respondents.
-----------------
Pallavi/ Shubham/ Mayur 1/51
::: Uploaded on - 17/03/2026 ::: Downloaded on - 17/03/2026 20:32:05 :::
2 J-COMAO-28-2025 (C).doc
CORAM : R. I. CHAGLA AND
ADVAIT M. SETHNA, JJ.
RESERVED ON : 06th FEBRUARY 2026
PRONOUNCED ON : 16th MARCH 2026
JUDGMENT:
- (PER ADVAIT M. SETHNA, J.)
Prolouge:-
1. This is a classic case where we are called upon to adjudicate the
impugned order dated 4 October 2025, passed below Exh. 5 by the
Commercial Court at Pune in Commercial Suit No. 9 of 2025 ("Impugned
Order" for short), in the context of the fundamental principles governing
trademark jurisprudence. As an Appellate Court, we are required to
examine the cardinal principles and classifications applicable to marks, viz.
generic, descriptive, suggestive, and arbitrary/fanciful. Such legal
principles, as applicable to infringement and passing off, form the subject
matter of our analysis and scrutiny in light of the findings of the Trial Court
in the Impugned Order.
2. The Trial Court had vide the Impugned Order rejected the application
of the Appellant (Original Plaintiff) seeking temporary injunction under
Order 39 Rules 1 and 2 of the Civil Procedure Code ("CPC" for short)
against the Respondents (Original Defendants). The sequitur of this being
that the Appellant/Plaintiff seeks continuation/confirmation of the earlier
order of the said Trial Court dated 2 April 2025 granting ad-interim
3 J-COMAO-28-2025 (C).doc
injunction in favour of the Appellant/Plaintiff and against the
Respondents/Defendants.
Factual Matrix:-
3. The predecessors of the Appellant/Plaintiff conceptualized,
developed and commercially introduced formulation sold under the Trade
Mark "GERMINATOR". This was coined in the year 1981 and used
continuously since then. According to the Appellant/Plaintiff, it became the
most recognized brand amongst agriculturist across India.
4. The Appellant/Plaintiff Company was incorporated on 24 April 2009
as would be evident from the Certificate of Incorporation, bearing such
date.
5. The Appellant/Plaintiff launched another product under the name
and style of "HARMONY" which is said to be one of the flagship registered
brands and Trade Mark of the Appellant/Plaintiff. This was in use since the
year 2010. The artistic label and packaging of "HARMONY" constitutes
original artistic work, according to the Appellant/Plaintiff being protected
under the Copyright Act, 1957.
6. The Appellant/Plaintiff had initially applied for registration of the
mark "GERMINATOR" under No. 3505073 on 4 March 2017 with the Trade
Mark Registry.
7. Such application of the Appellant/Plaintiff for the Trade Mark
"GERMINATOR" was deemed as abandoned by Registry of Trade Marks,
4 J-COMAO-28-2025 (C).doc
Mumbai, vide order dated 13 October 2023 for non-receipt of hearing
notice for filing a counter statement.
8. The Appellant/Plaintiff filed a review against such abandonment
order on 2 May 2024 before the Trade Mark Registry, which is pending
adjudication.
9. The Appellant/Plaintiff filed a fresh application for registration under
No. 6750663 on 11 December 2024 for the Mark "GERMINATOR" claiming
continuous use since 1981. Said application was accepted and advertised by
the Trade Mark Registry. The opposition proceedings in respect thereof are
underway.
10. The Appellant/Plaintiff's Mark "GERMINATOR" has an international
registration in U.K. on 20 March 2017.
11. The Appellant/Plaintiff had instituted a Civil Suit No.21 of 2019 on
13 August 2019 before the District Court, Pune being against the
Respondent No. 1 for Trade Mark infringement in respect of the Respondent
No. 1 Mark "GERMI-FAST" on the ground that the same was deceptively
similar to the Appellant/Plaintiff's registered Trade Mark "GERMI". The said
Suit was dismissed by the Trial Court on 2 February 2024 without any relief
in favour of the Appellant/Plaintiff.
12. On 15 February 2025, a long standing customer of the
Appellant/Plaintiff forwarded a bottle of product sold under the
Appellant/Plaintiff's Trade Mark "GERMINATOR" expressing suspicion
5 J-COMAO-28-2025 (C).doc
regarding its authenticity and genuineness. Upon inspection, the
Appellant/Plaintiff discovered that the said Respondents/Defendants had
indicated in the manufacturing and marketing of a formulation having the
similar mark of the Appellant/Plaintiff. Not just that but also the trade dress
of the bottle in which the Respondents/Defendants marketed its
formulation was also almost identical to that of the Appellant/Plaintiff.
Investigation conducted at the Appellant/Plaintiff's end also revealed that
the Respondents/Defendants were gearing this to market a similar product
under the mark "HARMONY" being identical to the Appellant/Plaintiff's
registered Trade Mark "HARMONY".
13. The Appellant/Plaintiff instituted Commercial Suit No.9 of 2025
before the Trial Court viz. District Judge-2, Pune, for Trade Mark
infringement, Passing Off and Copyright Infringement seeking reliefs to
restrain the Respondents/Defendants from using the Appellant/Plaintiff's
Trade Mark. Along with the said Suit, the Appellant/Plaintiff filed an
application for interim injunction under Order 39 Rules 1 and 2 of CPC
before the Trial Judge, against the said Respondents/Defendants.
14. The Trial Court in the Suit passed two orders on 2 April 2025. One
vide which the Appellant/Plaintiff's application for Joinder of Cause of
Action for Trade Mark Infringement and Passing Off was allowed. Another
order granting ex-parte ad-interim injunction in favour of the
Appellant/Plaintiff in terms of the prayer clauses (a) to (e) of the said
6 J-COMAO-28-2025 (C).doc
application against the Respondents/Defendants.
15. The Appellant/Plaintiff being aggrieved by the acts of the
Respondents/Defendants in continuing to sell the products under the Trade
Mark "GERMINATOR", issued Cease and Desist Notices to the
Respondents/Defendants on 18 April 2025. The Appellant/Plaintiff filed an
application on 25 April 2025 under Order 39 Rule 2A of the CPC for wilful
disobedience of the injunction order dated 2 April 2025 passed by the Trial
Court against the Respondents/Defendants. The Respondents/Defendants
filed an application under Order 39 Rule 4 CPC seeking vacation of the ad-
interim injunction order passed on 2 April 2025 by the said Trial Court.
16. Pursuant to the above, the proceedings came up for hearing before
the Trial Court. On 2 July 2025 the Trial Court recorded statements of the
Respondents/Defendants that they were ready and willing to change their
Trade Dress for the product bearing the mark "GERMINATOR" and that they
would not launch the product bearing the mark "HARMONY" in the market.
The Respondents/Defendants also submitted a photograph of the changed
Trade Dress according to them, before the Trial Court on the said date i.e. 2
July 2025. The Trial Court vide order dated 4 October 2025 i.e. the
Impugned Order rejected the prayer for injunction sought by the
Appellant/Plaintiff against the Respondents/Defendants. The Impugned
Order was uploaded on 16 October 2025.
17. It was on 9 October 2025 that the Trial Court passed an order
7 J-COMAO-28-2025 (C).doc
directing that the Impugned Order shall not be acted upon until 4
November 2025. Being aggrieved, the Respondents/Defendants challenged
the above order dated 9 October 2025 of the Trial Court in a Writ Petition
(St) No.34124 of 2025. By an order dated 17 December 2025 the said Writ
Petition of the Respondents/Defendants was disposed of by directing the
Respondents/Defendants to remove the office objections within two weeks.
18. The Appellant/Plaintiff aggrieved by the Impugned Order dated 4
October 2025 filed the present Appeal assailing the Impugned Order. Vide
order dated 4 November 2025, this Court directed that the Impugned Order
dated 4 October 2025 be kept in abeyance.
19. It is in the above backdrop assailing the Impugned Order, that the
Appellants have preferred the present Appeal.
20. The Respondents/Defendants filed an Affidavit-in-Reply dated 11
November 2025 to which the Appellant/Plaintiff filed its Rejoinder dated 16
December 2025 and a Sur-Rejoinder is also filed by the
Respondents/Defendants dated 24 December 2025. Both the parties have
filed extensive written submissions all of which have been duly noted and
considered in the paragraphs below.
Rival Contentions:-
Submissions of the Appellant/Plaintiff :-
21. Mr. Kamod, learned counsel for the Appellant/Plaintiff, would at the
outset submit that the Appellant/Plaintiff had applied for registration of the
8 J-COMAO-28-2025 (C).doc
word mark 'GERMINATOR' in Class I under No. 3505073 by an application
dated 4 March 2017, claiming use since 1 March 1981. Such trademark
application was erroneously treated as abandoned by an order of the Trade
Marks Registry dated 13 October 2023. The Appellant/Plaintiff promptly
filed a review application against the said order of abandonment, which is
pending. The Appellant/Plaintiff had also applied for registration of the
word mark "GERMINATOR" by another application in Class I dated 11
December 2024 under No. 6750663, claiming use since 1 March 1981.
According to the Appellant/Plaintiff, one Seema Jain, trading as Indian
Organic Company, filed a notice of opposition against such trademark
application before the Trade Marks Registry, and the same is pending.
22. The Appellant/Plaintiff had also obtained registration for the word
mark 'HARMONY', bearing No. 4201889 in Class I, dated 10 June 2019,
claiming use since 1 June 2010.
23. According to Mr. Kamod, since 1981 and 1995, the
Appellant/Plaintiff has been openly and extensively using the trademark
"GERMINATOR" and the distinctive trade dress in respect of the said goods.
Accordingly, the Appellant/Plaintiff has acquired tremendous goodwill and
reputation in respect of goods bearing the said mark "GERMINATOR". To
substantiate such claim, the Appellant/Plaintiff has duly relied upon several
documents annexed to the plaint, including the following:-
"9.1. Statement of Annual Sales of the Appellant/Plaintiff's
9 J-COMAO-28-2025 (C).doc
goods bearing the trade mark "GERMINATOR" from 2010-
2011 to 2023-2024;
9.2. Appellant/Plaintiff's Chartered Accountant's certificate
certifying its annual sales turnover from 2010-2011 to
2023-2024 in respect of its said goods bearing the trade
mark "GERMINATOR";
9.3. Various Awards earned by the Appellant/Plaintiff's
Founder Dr. Vinayak Bawasakar who is a PHD holder
himself;
9.4. Few specimens of sales invoices from the year
1997 onwards in respect of its goods bearing the trade
mark "GERMINATOR";
9.5. Screenshots of promotional materials from the
Appellant/Plaintiff's social media accounts;
9.6. Few specimens of the promotional material in respect
of its goods bearing the trade mark "GERMINATOR";
9.7. Newspaper articles and magazines promoting the
Appellant/Plaintiff's goods bearing the trade mark
"GERMINATOR"; and
9.8. Listings of the Appellant/Plaintiff's goods bearing the
trade mark "GERMINATOR" on e-commerce."
24. Mr. Kamod would accordingly submit that all of the above form part
of the Plaint and were very much placed before the Trial Court at the time
of hearing and passing of the Impugned Order.
25. Mr. Kamod would strenuously urge that there are several
irregularities, much less illegality which would vitiate the Impugned Order.
The first being that the Trial Court has proceeded on an erroneous finding
that the mark "GERMINATOR" is generic. It was never the
Respondents/Defendants' case, as would be clear from their pleadings, that
such mark was generic. It is difficult to fathom as to how the Trial Court
10 J-COMAO-28-2025 (C).doc
reached such a conclusion, and the basis thereof is not known. There is no
justification, much less reason, to arrive at such finding that the mark
"GERMINATOR" is generic. Therefore, on such ground alone, the Impugned
Order deserves to be set aside, as Mr. Kamod would urge.
26. Mr. Kamod, would submit that the Respondents/Defendants have
failed to establish that the mark "GERMINATOR" is descriptive/common to
trade. The Respondents/Defendants have failed to produce any document
in this regard, for the Trial Court to reach to a conclusion that the said mark
is descriptive, which has an exception of secondary meaning having held
that the same is generic.
27. Mr. Kamod, would contend that the Respondents/Defendants have
relied on an alleged Permissive user/Trade Mark License Agreement dated
14 December 2024 executed between the Respondents/Defendants and one
Seema Jain. In this regard, Mr. Kamod would submit that the act of the
Respondents/Defendants to execute a license agreement to use
"GERMINATOR" is implicit to imply that the "GERMINATOR" is distinctive
and can be monopolized, contrary to it being exclusively descriptive. This is
where the Trial Court in the Impugned Order fell in serious error.
28. Mr. Kamod, in support of his submission that the Trial Court
proceeded on erroneous fact, inter alia, referred to paragraph 13 of the
Impugned Order. In this regard, he would submit that the Trial Court has
proceeded on the wrong footing that the Appellant/Plaintiff had abandoned
Pallavi/ Shubham/ Mayur 10/51
11 J-COMAO-28-2025 (C).doc
its rectification proceedings against Seema Jain's Trade Mark Registration
No. 2742855. Such finding is contrary to the facts on record. This is in as
much as a bare perusal of the paragraph 14 (e) of the Plaint would
demonstrate that the Appellant/Plaintiff's rectification Application against
Seema Jain's Trade Mark Registration (Supra) is pending before the Trade
Mark Registry.
29. Mr. Kamod would take the Court through the findings more
particularly in paragraph 9 of the Impugned Order. This is to emphasize
that the Trial Court observed that on the test of prior and consistent use the
plaintiff (Appellant/Plaintiff) has an upper edge, making it clear that such
findings are prima facie. This would go to show that the Trial Court
recognized that the Appellant/Plaintiff acquired reputation in its Trade
Mark "GERMINATOR" and their rights in relation to the said mark are,
therefore, superior to that of the Appellant/Plaintiff and the said Seema
Jain.
30. According to Mr. Kamod, the Trial Court fell in serious error in
allowing the Respondents/Defendants to place on record an amended label
and to adjudicate the Suit on the basis of such amended label. The legality
of the Respondents/Defendants' conduct ought to have been tested with
reference to the infringing label/mark which form the foundation of the
claim of the Plaintiff (Appellant/Plaintiff) and not on the basis of
subsequent unilateral modification, in such label, introduced unilaterally by
Pallavi/ Shubham/ Mayur 11/51
12 J-COMAO-28-2025 (C).doc
the Respondents/Defendants. Encouraging such practice would lead to
endless litigation and unworkable situation, which is not legally acceptable.
31. Mr. Kamod would strenuously urge that the Trial Court erred in
overlooking and in fact, failing to consider the factors which would clearly
demonstrate the dishonesty of the Respondents/Defendants. These being
the following :
A) The Respondents/Defendants adoption and use of the
Appellant/Plaintiff's impugned Trade Dress, which is a replica
of the Appellant/Plaintiff's distinctive Trade Dress. This would
lead no manner of doubt of the intention of the
Respondents/Defendants to ride upon the goodwill and
reputation of the products of the Appellant/Plaintiff, bearing
the mark "GERMINATOR".
B) The Respondents/Defendants have failed to provide any
explanation, much less justification for simply adopting the
Trade Dress of the Appellant/Plaintiff.
C) The Respondents/Defendants have similarly adopted the
Appellant/Plaintiff's Trade Mark 'HARMONY', to demonstrate a
systematic attempt to ride upon the goodwill and reputation of
the Appellant/Plaintiff. This is more so as the
Respondents/Defendant had in the earlier order of the Trial
Court dated 2 July 2025, conceded that they would not use the
Pallavi/ Shubham/ Mayur 12/51
13 J-COMAO-28-2025 (C).doc
same Trade Mark 'HARMONY'.
D) The Respondents/Defendants waited almost until completion
of rejoinder submissions before the Trial Court, evidently after
they sensed that the Appellant/Plaintiff is likely to succeed in
the Interim Application, to offer their willingness to change the
Trade Dress for the impugned product, which otherwise
warrants no justifiable reason.
32. Mr. Kamod, would submit that the impugned Trade Dress of the
Respondents/Defendants product before making changes thereto was
identical to the Appellant/Plaintiff Trade Mark "GERMINATOR" and its
distinctive "GERMINATOR" Trade Dress. The Respondents/Defendants are
using the impugned Trade Mark "GERMINATOR"/impugned Trade Dress for
identical products used by the Appellant/Plaintiff. Such use by the
Respondents/Defendants of the impugned Trade Mark "GERMINATOR"
with the impugned Trade Dress is likely to cause confusion amongst the
general public. Moreover, the use of the impugned Trade Mark in impugned
Trade Dress by the Respondents/Defendants would dilute the
distinctiveness of the impugned Trade Mark and Trade Dress of the
Appellant/Plaintiff, leading to injury and prejudice to the
Appellant/Plaintiff's goodwill and reputation. Therefore, such use by the
Respondents/Defendants of the impugned Trade Mark "GERMINATOR" and
its Trade Dress would tantamount to the tort of passing off by the
Pallavi/ Shubham/ Mayur 13/51
14 J-COMAO-28-2025 (C).doc
Respondents/Defendants in respect of the impugned Trade Mark and Trade
Dress.
33. Mr. Kamod would urge that the Appellant/Plaintiff has made out an
overwhelming and prima facie case for the grant of an ad interim injunction
and reliefs against the Respondents/Defendants. Unless reliefs as prayed for
are granted, the Appellant/Plaintiff would suffer irreparable injury which
money cannot compensate.
34. Mr. Kamod has placed reliance on several decisions in support of his
submission. He would refer to the decision of this Court in R.R. Oomerbhoy
Private Limited Vs. Court Receiver, High Court, Bombay & Ors 1. This Court
has held that the Defendants cannot seek seal of approval from the Court to
use a revised Trade Mark. He would rely on an excerpt from the judgment
in K.L.F. Nirmal Industries Pvt. Ltd. In the matter between Marico Limited
Vs. K.L.F. Nirmal Industries Pvt. Ltd. 2, where the Court held that under the
'Safe Distance Rule', once a party infringes on another Trade Dress, Trade
Mark, the confusion sowed is not magically remedied by de minimis fixes.
In this context, according to Mr. Kamod, the findings in the Impugned
Order regarding the amended trade dress of the Respondents/Defendants
are not teneable. The Trial Court failed to appreciate the reliance on the
amended label for the impugned product which is ex facie a dishonest
attempt by the Respondents/Defendants.
1. 2003 (5) Mh.L.J 372
2. 2023 SCC OnLine Bom 2734
Pallavi/ Shubham/ Mayur 14/51
15 J-COMAO-28-2025 (C).doc
35. Mr. Kamod would rely on the decision of this Court in Hem
Corporation Pvt. Ltd. Vs. ITC Ltd.3. This Court held that even if the
defendants intended to use the impugned Trade Mark descriptively, it
would make no difference if the use of the impugned Trade Mark is likely to
be taken as being used as a Trade Mark.
36. Mr. Kamod would then refer to the decision of this Court in Pidilite
Industries Ltd. Vs. Jubilant Agri & Consumer Products Ltd. 4 . This is to
contend that the Respondents/Defendants have manifested their own
understanding that the impugned Trade Mark "GERMINATOR" used by
them is used as a Trade Mark in as much as it includes the Trade Mark
license taken from Seema Jain for using the Trade Mark "GERMINATOR".
This, as held in the said decision, would not be altered/diluted/affected by
the subsequent withdrawal of the Application (on legal advice) post filing
of the Suit.
37. Mr. Kamod would urge that reliance on the above judgments would
indicate that the Respondents/Defendants has been taking inconsistent,
contrary stand and blowing hot and cold at the same time. Such conduct of
the Respondents/Defendants which is otherwise not acceptable in law, is in
fact given a go by in the Impugned Order, which makes it legally
vulnerable.
38. Mr. Kamod has placed reliance on the decision of the Supreme Court
3. 2012 SCC Online Bom 551
4. 2014 SCC OnLine Bom 50
Pallavi/ Shubham/ Mayur 15/51
16 J-COMAO-28-2025 (C).doc
in Rasiklal Manikchand Dhariwal and Anr. Vs. M.S.S. Food Products 5. The
Supreme Court inter alia in paragraph 70 of the said judgment has
observed that if the Trial Court commits illegality or irregularity in the
exercise of its judicial discretion that occasions in failure of justice or results
in injustice, such order is always amenable to correction by a higher court
in Appeal/Revision or by High Court in its supervisory jurisdiction. Mr.
Kamod would urge that the Trial Court in the present case did not apply the
correct test as laid down by the Supreme Court.
39. Mr. Kamod has on similar lines as above relied on the decision of this
Court in Medley Laboratories (P) Ltd. Vs. Alkem Laboratories Ltd. 6. This is
to emphasize that in discretionary matters, judicial interference is limited.
However, while making an adjudication, which may be prima facie, when
the correct test is not applied it is open for the Appellate Court to interfere
with the discretionary order made by the Trial Court. It is for this reason
that the Impugned Order warrant reversal by this Court, in the given facts.
40. Mr. Kamod would urge that the judgments cited on behalf of the
Respondents/Defendants are in completely different facts and
circumstances. Therefore, the same being clearly distinguishable on facts
alone, such decisions do not in any manner come to the rescue of the
Respondents/Defendants. Accordingly, such decisions, as cited by the
Respondents/Defendants, would not be even remotely applicable in the
5. (2012) 2 SCC 196
6. 2002 SCC OnLine Bom 444
Pallavi/ Shubham/ Mayur 16/51
17 J-COMAO-28-2025 (C).doc
given case.
41. For all the above reasons, Mr. Kamod would urge that the Impugned
Order of the Trial Court be set aside and the Appeal be consequentially
allowed.
Submissions of Respondents/Defendants :-
42. Mr. Kanetkar, the learned counsel for the Respondents/Defendants
has submitted that following three issues arise for consideration:-
(i) Whether the Plaintiff prima facie makes out the case of
passing off of the mark "GERMINATOR" by the Defendants?
(ii) Whether the Plaintiff is entitled for the equitable relief of
injunction?
(iii) Whether the Impugned Order passed by the learned Trial
Court is patently illegal and whether it can be set aside?
43. Mr. Kanetkar with respect to issue of Passing Off, contends that the
Respondents/Defendants' specific defence is that the word mark
"GERMINATOR" is a descriptive word which describes the use of the
product i.e. a product which is useful for germination process.
44. Mr. Kanetkar further submits that though the Trial Court has used the
word "generic", however, on careful perusal of entire Impugned Order it is
evident that the Trial Court has arrived at the finding that the mark
"GERMINATOR" is a descriptive mark and the Appellant/Plaintiff has failed
to establish acquisition of secondary meaning in respect of such mark.
Pallavi/ Shubham/ Mayur 17/51
18 J-COMAO-28-2025 (C).doc
45. Mr. Kanetkar would urge that it is admitted by the Appellant/Plaintiff
in the Plaint as well as Appeal that the product of Appellant/Plaintiff is used
for germination process. Mr. Kanetkar would therefore submit that the word
"GERMINATOR" is a dictionary word which is used for the purpose of
germination process. Thus, the word describes the said product.
46. According to Mr. Kanetkar the Appellant/Plaintiff is aware that the
mark "GERMINATOR" is descriptive. The pleadings merely contain vague
averments to the effect that the Appellant/Plaintiff is the continuous and
uninterrupted user of the mark "GERMINATOR". Therefore,
Appellant/Plaintiff cannot contend that the mark "GERMINATOR" is not
descriptive and/or is inherently distinctive by advertising it in a different
manner. There is no pleading in the Plaint to that effect and the said ground
raised by the Appellant/Plaintiff, for the first time, before this Court is
untenable.
47. Mr. Kanetkar submits that the Trial Court's finding on
"GERMINATOR" being a descriptive mark is based on pleadings and
documents filed on record. Therefore, when the Trial Court has given a
reasoned finding after considering the material, the same ought not to be
interfered with unless it is perverse or results in manifest injustice.
48. Mr. Kanetkar on the aspect of prior use as alleged since 1981 further
submits that although the Appellant/Plaintiff claims use of the mark
"GERMINATOR" since March 1981, no document has been produced to
Pallavi/ Shubham/ Mayur 18/51
19 J-COMAO-28-2025 (C).doc
establish that its predecessor entity i.e. Maharashtra Seeds and Pesticides
was even established in the year 1981. He further contends that the only
document relied upon is the Application for registration of the trademark
"GERMINATOR" filed in 2017 which mentions the date of use of the mark
for the first time without there being any independent proof that the
Appellant/Plaintiff is using the word mark "GERMINATOR" since 1981.
49. Mr. Kanetkar further contends that on the alleged trade dress it is
mentioned that the usage is since 1978, while the user affidavit dated 26
July 2017 filed by the Appellant/Plaintiff mentions the company having
been established in 1970. However, no document is produced to show the
existence of alleged company since 1970, and the Plaint itself states that the
company was registered in the year 2009.
50. Mr. Kanetkar further submits that if the Appellant/Plaintiff claims use
of the mark since 1981 and trade dress since 1996 then the
Appellant/Plaintiff has to prima facie establish such claim, which the
Appellant/Plaintiff has miserably failed to do so. Accordingly, the Trial
Court rendered specific findings to that effect which cannot be brushed
aside.
51. Mr. Kanetkar on the aspect of no extensive and uninterrupted use
contends that the Appellant/Plaintiff is further relying on photocopies of
magazines "Krushidarshika" (1992) and "Krushividnyan" (1999) claiming
advertisements of its product. However, these appear to be the
Pallavi/ Shubham/ Mayur 19/51
20 J-COMAO-28-2025 (C).doc
Appellant/Plaintiff's own publications and do not establish continuous
commercial use of the mark "GERMINATOR" since 1981 as claimed. Mr.
Kanetkar would further submit that there is no single document
demonstrating commercial use even in the year 1992 or 1999. He would
urge that the Appellant/Plaintiff has falsely stated that there are documents
to establish extensive and uninterrupted use by the Appellant/Plaintiff.
52. Mr. Kanetkar would further submit that five letters from alleged
customers of the Appellant/Plaintiff have been produced, which bear no
dates and contain identical wording. Further, it is claimed in the said letters
that the product "GERMINATOR" is developed in 1980 whereas, the
Appellant/Plaintiff itself claims that it is from 1981 and it is mentioned in
such letters that Appellant/Plaintiff is using the Trade Dress since 1996.
Upon perusal of photograph of the Trade Dress, it appears that the bottle
image refers to a UK Trademark Registration obtained only in 2017 and the
Appellant/Plaintiff Company itself is established in 2009.
53. Mr. Kanetkar would urge that the above mentioned correspondence
has been fabricated in collusion with customers as there is no independent
evidence to establish that the mark "GERMINATOR" is used since 1981 and
alleged Trade Dress is used since 1996. On the basis of such material and by
playing fraud upon the Court the Appellant/Plaintiff was able to obtain the
earlier ex-parte injunction order dated 2 April 2025 which was rightly
vacated by the Trial Court vide the Impugned Order dated 4 October 2025.
Pallavi/ Shubham/ Mayur 20/51
21 J-COMAO-28-2025 (C).doc
54. Mr. Kanetkar submits that the Appellant/Plaintiff claims sales through
various e-commerce platforms, however, those platforms also show several
other companies selling the agricultural products by the same Trade Mark
i.e "GERMINATOR". The Appellant/Plaintiff has intentionally suppressed
such facts. Therefore, the Respondents/Defendants has filed the
documents before the Trial Court (Exh. 48) showing the word mark
"GERMINATOR" is used in the agricultural market as the same is a
descriptive mark, to this effect the Trial Court has also given specific
finding. He would contend that, the Trial Court correctly rendered a
finding that similar bottles are used in the agricultural field and there is no
evidence filed by the Appellant/Plaintiff to show that alleged Trade Dress
of Appellant/Plaintiff has achieved distinctiveness.
55. Mr. Kanetkar further contends that prima facie, the
Appellant/Plaintiff has failed to prove prior, exclusive, extensive and
uninterrupted use, the mark cannot acquire distinctiveness or secondary
meaning for the mark "GERMINATOR". Adoption of a descriptive mark
carries the inherent risk of similar use by other players in the field. He
would submit that the Appellant/Plaintiff's advertisements describe the
product as "Dr. Bawaskar Technology's Germinator", indicating awareness
that the mark is commonly used in the market by several players.
56. Mr. Kanetkar would contend for the purpose of establishing alleged
goodwill the Appellant/Plaintiff relied on screenshots of its website and
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22 J-COMAO-28-2025 (C).doc
customer reviews of e-commerce website. However, these reviews are
recent and relate to different products of the Appellant/Plaintiff and not
specifically to the mark "GERMINATOR". According to Mr. Kanetkar,
similarly the awards relied upon by the Appellant/Plaintiff were granted for
different products of the Appellant/Plaintiff and not specifically for the
mark "GERMINATOR".
57. Mr. Kanetkar submits that the Appellant/Plaintiff produced sales
figures certified by a Chartered Accountant for 2010-11 to 2023-24.
However, these figures differ substantially from the sales figures stated in
the user Affidavit filed before the Trademark Registrar on 26 July 2017.
58. Mr. Kanetkar next contends that in the alleged C.A. Certificate the
highest sales are shown for the financial year 2020-21, despite widespread
disruption due to the Covid-19 pandemic. This discrepancy suggests that
the sales figures and the C.A. certificate may have been created later to
generate evidence and that the Appellant/Plaintiff is in the habit of creating
false evidence and has failed to establish its goodwill in respect of Trade
Mark "GERMINATOR".
59. Mr. Kanetkar would urge that the Respondents/Defendants have
elaborately pointed out the differences in the trade dress between the
bottles of the Appellant/Plaintiff and the Respondents/Defendants. A bare
perusal and comparison of such trade dress would indicate the stark
differences. The Respondents/Defendants pursuant to the orders of the Trial
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23 J-COMAO-28-2025 (C).doc
Court dated 2 July 2025 has completely changed the trade dress of the
Respondents/Defendants in so far as the mark "GERMINATOR" is concerned
qua the bottle containing the said formulation. It is the
Respondents/Defendants' case that they have significantly added the matter
to sufficiently distinguish their trade dress from that of the
Appellant/Plaintiff. For instance, there is prominent use of red colour unlike
them. There is change in the shape and colour of the background appearing
on the said bottle. Pertinently, from the Appellant/Plaintiff's trade dress, it
is evident that there is prominent use of the expression "Dr. Bawaskar"
whereas in the change trade dress of the Respondents/Defendants "Ananya
Agro Products" has been used to distinguish it from the trade dress of the
Appellant/Plaintiff. This has been sufficiently considered in the Impugned
Order. The findings in that regard therefore warrant no interference.
60. Mr. Kanetkar would submit that in the earlier Suit the
Respondents/Defendants had specifically contended that the Trade Mark
"GERMINATOR" is registered in the name of one Seema Jain from 2014 and
is valid up to 2034. However, the Appellant/Plaintiff had applied for the
Trade Mark thereafter in the year 2017. Mr. Kanetkar submits that if the
Appellant/Plaintiff had diligently been using the mark since 1981, there is
no explanation as to why did the Appellant/Plaintiff not seek registration or
take any action with respect to registered Trade Mark for such a long
period.
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24 J-COMAO-28-2025 (C).doc
61. Mr. Kanetkar further with respect to the issue of entitlement of
equitable relief for injunction would contend that the Appellant/Plaintiff
had earlier instituted Civil Suit bearing number 21 of 2019 against the
Respondent No. 1 for infringement and passing off of the product mark
"Germi-Fast" which was dismissed on 2 February 2024. The
Appellant/Plaintiff suppressed the fact that the said Suit was dismissed on
merits.
62. Mr. Kanetkar would submit that the Appellant/Plaintiff had filed
another Suit bearing No.22 of 2019 against one Puma Crop Care for
Infringement of the Trade Mark "GERMINATOR". The said Suit was also
dismissed on 14 February 2024 and the said judgment is suppressed by the
Appellant/Plaintiff. The said Suits were not challenged by the
Appellant/Plaintiff, thereby attaining finality. Therefore, now it does not lie
in the mouth of the Appellant/Plaintiff to urge that the trade mark
"GERMINATOR" is exclusively used by the Appellant/Plaintiff, as its trade
mark. Mr. Kanetkar submits that Appellant/Plaintiff's registration
application was also treated as abandoned, although a review is stated to be
pending before the Trade Mark Registry. Thus, Appellant/Plaintiff has
accepted the said decision. Therefore, Doctrines of Acquiescence and
Prosecution History Estoppel squarely applies.
63. According to Mr. Kanetkar, Appellant/Plaintiff claims to be engaged
in the production of the Agricultural Products since long period of time.
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25 J-COMAO-28-2025 (C).doc
However, if MSME Certificate i.e. Udyam Registration Certificate dated 21
February 2021 issued by the Ministry of MSME Central Government is
perused, the same is not for Production of Agricultural Products and for
repair and maintenance of electronic and optical equipments but for
installation of machineries. Also, the date of commencement of business
therein is mentioned as 24 April 2009. Therefore, it is clear from the
Appellant/Plaintiff's own document that there is no valid Udyam Certificate
for the Production of Agricultural Products. The Appellant/Plaintiff, as an
after thought, claims that they have applied for the correction in the said
certificate. Mr. Kanetkar would urge that the Appellant/Plaintiff is,
therefore in the habit of creating false documents.
64. Mr. Kanetkar would submit that the judgments relied by the
Appellant/Plaintiff in the Appeal pertain either to actions for infringement
of inherently distinctive i.e. coined marks. However, the present dispute
concerns passing off of a descriptive mark. In view thereof, the findings
arrived by the Trial Court cannot be interfered. Mr. Kanetkar would urge
that it is a specific finding of the Trial Court that Appellant/Plaintiff failed
to substantiate that he was the first proprietor to use the mark
GERMINATOR. Therefore, Appellant/Plaintiff has failed to make out any
ground to establish that the Impugned Order is vitiated by an error of law.
65. Mr. Kanetkar has placed reliance on Judgments of Supreme Court
and High Court to support his contentions. Mr. Kanetkar draws this Court's
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26 J-COMAO-28-2025 (C).doc
attention to judgment of Supreme Court in Skyline Education Institute
(India) Pvt. Ltd. vs. S.L. Vaswani & Anr.7. Applying this to the given facts,
he would urge that the word mark GERMINATOR is a descriptive word. The
Appellant/Plaintiff in addition to prior use has to establish that the word is
used by the Appellant/Plaintiff exclusively, uninterruptedly and extensively
and whether it has acquired secondary meaning and distinctiveness. Also,
once the Court of first instance exercises its discretion to grant or refuse to
grant temporary injunction based on objective consideration of material and
cogent reasons, the Appellate Court will be loath to interfere merely
because on a de novo consideration it may form a different opinion on
prima facie case, balance of convenience, irreparable injury and equity.
66. Mr. Kanetkar further places reliance on the judgment of this Court in
Garware Polyester Ltd. v. 3M Company and Ors. 8 wherein it was held that
there is no presumption of distinctiveness. Absent cogent material,
distinctiveness is not a conclusion easily to be reached. Accordingly, in the
given facts and circumstances, Appellant/Plaintiff cannot claim that Trade
Mark "GERMINATOR" is distinctive on the ground of acquisition of such
mark.
67. Mr. Kanetkar would draw this Court's attention to the decision of S.P.
Chengalvaraya Naidu (dead) by Lrs. Vs. Jagannath (dead) by Lrs. And Ors. 9
7. 2010 2 SCC 142
8 MANU/MH/1150/2016
9 AIR 1994 SC 853
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wherein it has been held that a party suppressing material facts and
important documents from Court is required to be thrown out of the Court
at any stage of the proceeding as such suppression is nothing but fraud on
Court. He further relies on Bhaskar Laxman Jadhav and Ors. Vs. Karamveer
Kakasaheb Wagh Education Society and Ors.10 wherein it was held that it is
for the Court to decide, which fact is material and which is not. Obligation
is on the litigant to come upfront and clean with all the facts. He also places
reliance on Pidilite Industries Ltd. Vs. Astra Chemtech Pvt. Ltd. And Ors. 11
wherein this Court vacated ex-parte injunction granted in favour of the
Plaintiff, thereby holding that the Plaintiff made misleading statements and
he must disclose all material facts.
68. Mr. Kanetkar on the aspect of Doctrine of Acquiescence and
Prosecution History Estoppel would rely on the judgment of Shantappa Vs.
Anna12 wherein this Court has laid down Doctrine of Prosecution History
Estoppel and held that even if passing off action is common law remedy
and registration of Trade Mark is irrelevant, it does not mean that earlier
conduct and stands taken by the parties before Trade Marks Registry and in
infringement action cannot be gone into.
69. Mr. Kanetkar would contend that the Appellant/Plaintiff has relied on
the judgment of Delhi High Court in Sunil Mittal and Ors. Vs. Darzi on Call
10 AIR 2013 SC 523
11 AIR 2025 BOM 112
12 MANU/4816/2023
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28 J-COMAO-28-2025 (C).doc
and this Court in Neon Laboratories Ltd. Vs. Themis Medicare Ltd 14.
However, the said decisions were rendered in infringement actions, which is
not applicable in the given case.
70. It is further submitted that under Order 41 Rule 22 read with Section
108 CPC, this Court being the first Appellate Court has ample power to
give its own findings. Since the Impugned Order is in favour of the
Respondents/Defendants, there is no requirement for them to file separate
appeal or cross-objections merely against the findings, as an appeal always
lies against the order and not against findings. Even if findings regarding
licensed use of the said mark which is not argued by the
Respondents/Defendants are ignored, the appeal deserves dismissal. In such
context, reliance is placed on judgments of the Supreme Court Baldev Singh
& Ors v. Manohar Singh & Anr15 and Banarsi & Ors v. Ramphal16.
71. Mr. Kanetkar would submit that in the light of aforesaid submissions,
the Appeal is devoid of merits and therefore deserves to be dismissed.
Analysis:
72. At the outset, we are constrained to observe that the Impugned Order
begins with reasons that are not well founded, conflicting with the well
settled legal parameters making it vulnerable, thereby warranting
intervention of this Court. To illustrate, the Trial Court, inter alia in
13 MANU/DE/1028/2017
14 MANU/MH/1633/2014
15 (2006) 6 SCC 498
16 (2003) 9 SCC 606
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29 J-COMAO-28-2025 (C).doc
paragraph 7 of the said Judgment, observes that the word "GERMINATOR"
is a 'generic' word. In this regard, it is pertinent to note that such finding is
completely extraneous to the pleadings on record. The
Respondents/Defendants nowhere in the written statement has taken such
plea of the said mark being 'Generic'.
73. An objection was raised by Mr. Kanetkar that the Appellant/Plaintiff
has not questioned the Impugned Order on its findings of the said mark
being 'Generic'. However, the record bears out that the Appellant/Plaintiff
has in the Appeal Memo dealt with the findings of the Trial Court in this
regard, despite of it being the Court's independent findings, dehors the
pleadings. At this juncture we may refer to decision of the Supreme Court
in Trojan & Co. v. Nagappa Chettiar 17 where the Supreme Court held that it
is well-settled that the decision in a case cannot be based on grounds
outside the pleadings of the parties and it is the case pleaded that has to be
found. Thus, the Trial Court has erred in going beyond the pleadings and
defense in the written statement to observe and hold that the mark
"GERMINATOR" is generic, a finding in light of the said decision is not
tenable. Moreover, the Respondents/Defendants are not correct in
submitting that this aspect is not dealt with by the Appellant/Plaintiff in the
Appeal Memo, as it finds mention in grounds [(h), (l) and (dd)] of the
Appeal Memo.
17. AIR 1953 SC 235
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74. The Impugned Order then records a finding that the said mark
"GERMINATOR" would fall in the category of a descriptive word mark. The
Trial Court has observed that even if a trademark is descriptive or common
dictionary word, the same is entitled to legal protection provided it acquires
distinctiveness. Mr. Kanetkar to support such finding of the Trial Court
placed reliance on a decision of this Court in Garware Polyster Ltd. (supra),
where the subject mark was 'sun control' for window films. As noted by this
Court in the decision of Garware Polyster Ltd. (supra), even as the record
bears out that the Respondents/Defendants have not been able to produce
any document/material/evidence on record in support of the contention
that the mark "GERMINATOR" is used in the descriptive sense in relation to
the subject goods/liquid solution in question.
75. Mr. Kamod, is therefore, justified in distinguishing the decision in
Garware Polyester Ltd. (supra). The Respondents/Defendants without any
supporting material, in support of its stand that the mark "GERMINATOR" is
descriptive, is unable to even meet, much less cross over such threshold to
even prima facie demonstrate that the word mark "GERMINATOR" is used
purely as a Descriptive mark. A similar view is taken by the Delhi High
Court in Marico Limited v. Agro Tech Foods Ltd. 18 where the subject matter
was 'LOSORB' in relation to edible oil product. The Court reiterated that a
descriptive mark cannot be monopolized unless it has become distinctive to
18 MANU/DE/3131/2010
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31 J-COMAO-28-2025 (C).doc
a particular product, from the consumer's perspective, by acquisition of
secondary meaning to be demonstrated by the material produced by the
Plaintiff, as in the given case.
76. We find that the Trial Court has placed reliance on some undated
photographs produced by the Respondents/Defendants (at Exh.48) where a
number of players in the market used the mark "GERMINATOR", in the
common field activity. This, alone may not satisfy the legal requirements.
This is in as much as the Appellant/Plaintiff has been using the said mark
much prior to the use of such mark by the Respondents/Defendants. The
latter is in use thereof only since December 2024. We, accordingly, find
merit in the stand of the Appellant/Plaintiff that its use of the said mark
since 2010 is, in any way, prior to the Respondents/Defendants' claim of
user since December 2024 as also the Respondents/Defendants' licensor's
user claim since 2014. It is thus clear that the Respondents/Defendants are
aware of the distinctive nature of the registered Trade Mark
"GERMINATOR". This being so, it is not open to the
Respondents/Defendants to contend and canvass that such mark is
descriptive and support an inconsistent finding in this regard, in the
Impugned Order.
77. Moreover, the Appellant/Plaintiff in the Plaint has annexed several
documents to indicate its goodwill and reputation in the said mark
"GERMINATOR" coupled with its distinctive Trade Dress. This being: (a)
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32 J-COMAO-28-2025 (C).doc
statement of Annual Sales of the goods of the Appellant/Plaintiff bearing
the Trade Mark "GERMINATOR" from 2010-11 to 2023-24; (b) the
Appellant/Plaintiff's C.A.'s Certificate certifying its Annual Sale Turnover
from 2010-11 to 2023-24 in respect of the said goods bearing Trade Mark
"GERMINATOR"; (c) various awards earned by the Appellant/Plaintiff's
founder Dr. Vinayak Bawaskar; (d) few specimen of Sale Invoices from the
year 1997 onwards in respect of the goods bearing Trade Mark
"GERMINATOR"; (e) screenshots of promotional material from the
Appellant/Plaintiff's social media accounts; (f) few specimen of
promotional material in respect of its goods bearing Trade Mark
"GERMINATOR"; (g) newspaper articles and magazines promoting the
Appellant/Plaintiff's goods bearing Trade Mark "GERMINATOR" and (h)
listing of the Appellant/Plaintiff's goods bearing the Trade Mark
"GERMINATOR" on e-commerce websites. The Respondents/Defendants
have in their written statement attempted to deny the above on the ground
of these being fraudulent. Such stand of the Respondents/Defendants
would also apply to the Udyam Registration Certificate in favour of
Appellant/Plaintiff which according to them is not proper. However, in this
context, there is no finding/deliberation in the Impugned Order of the Trial
Court, being the Court of first instance, except to state that the
Appellant/Plaintiff has placed such documents in an abrupt manner. In our
prima facie view, there is no suppression much less suppression of facts on
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33 J-COMAO-28-2025 (C).doc
the part of the Appellant/Plaintiff neither does this appear from the findings
in the Impugned Order. Also, the decisions cited in that regard are therefore
not applicable. In any event, the veracity of such allegation ought to be
examined during trial by leading evidence.
78. It is apparent from the record that even at this stage, the
Appellant/Plaintiff has been able to demonstrate prior extensive use of the
said mark coupled with the product source association in the consumer's
mind qua such mark, in order to establish that the said mark
"GERMINATOR" for the product of the Appellant/Plaintiff has acquired
distinctiveness. The Trial Court has clearly found that the Appellant/
Plaintiff has an 'upper edge' in relation to continuous use of the said Trade
Mark, comparatively having sound reputation. Even then, the said mark is
held to be Descriptive. This is another instance of inconsistent/mutually
contradictory findings making the Impugned Order susceptible to challenge.
79. We find merit in the contentions advanced by Mr. Kamod and
reliance placed by him on the decisions in the case of Corn Products
Refining Co. vs. Shangrila Food Products Ltd.19, Pidilite Industries Ltd. v.
Riya Chemy20 and Jagdish Gopal Kamath & Ors. v. Lime and Chilli
Hospitality Services Private Limited21. The ratio in these decisions assist the
Appellant/Plaintiff. This Court in Pidilite Industries (supra) relying on the
19 (1960) 1 SCR 968
20 2022 SCC OnLine Bom 5077
21 2015 SCC OnLine Bom 531
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34 J-COMAO-28-2025 (C).doc
latter decisions in Jagdish Kamath (supra) has held that the burden of
proving alleged use by third parties or use common to trade, in regard to
the contention that the mark is descriptive, lies on the party who is
asserting the same, which in the present case would be on the
Respondents/Defendants. In Pidilite Industries (supra), the Court held that
the principle or requirement of proving extensive and substantial use by
third parties is applicable even at the interlocutory stage which, the
Respondents/Defendants, has prima facie, failed to prove.
80. The Impugned Order has placed due reliance on extensive, exclusive
and continuous use for claiming monopoly/distinctiveness qua a descriptive
word as Trade Mark. In this context, the record/additional compilation of
documents in the written statement bears out that the
Respondents/Defendants have themselves filed the sale invoices of the
Appellant/Plaintiff before the Trial Court. This, in fact, would demonstrate
the use of the Trade Mark "GERMINATOR" since 2005. Further, the
Appellant/Plaintiff has produced documents from the compilation of
documents, to show its prior user since 1992 followed by continuous use in
1994, 1996, 1999, 2000, 2001 and 2002. The Appellant/Plaintiff's Trade
Mark Application No.6750663 for the mark "GERMINATOR" was filed
before the Trademark Registry with user affidavit and evidence claiming use
since 1 March 1981. It has been accepted and advertised in the journal by
the Trademark Registry. This is not controverted by the
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35 J-COMAO-28-2025 (C).doc
Respondents/Defendants. In any event, it is quite clear that the
Appellant/Plaintiff's user of the said Trademark since 2010 is much prior to
the Respondents/Defendants' user claim since December 2024 coupled with
the Respondents/Defendants' licensor's user claim since 2014, as noted
above. The record also bears out that the Appellant/Plaintiff has a
Copyright Registration Certificate dated 18 June 2019 in respect of the
word mark "GERMINATOR".
81. Mr. Kanetkar is at pains to deal with and distinguish all documents
relied on by the Appellant/Plaintiff as noted (supra). He would contend
that the magazines copies which have been relied upon by the
Appellant/Plaintiff are the Plaintiff's own publication. No independent
magazine or like material is produced to show the use of the said mark
"GERMINATOR" since 1981. At the prima facie stage, we are not conducting
a mini trial. In view thereof, what is material for us, at this stage, is to
ascertain whether the Appellant/Plaintiff is able to show that the mark
"GERMINATOR" is distinctive to its products and that it is in continuous,
extensive and uninterrupted use of the said mark as a prior user. We limit
ourselves accordingly at this stage of the proceedings.
82. In the above backdrop, for the purpose of further analysis/testing the
findings in the Impugned Order regarding the said mark "GERMINATOR" as
Generic and/or descriptive, it would be apposite to refer to Section 9 of the
Trademark Act, which reads thus:-
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36 J-COMAO-28-2025 (C).doc
"9. Absolute grounds for refusal of registration. -- (1) The trade marks -
(a) which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from
those of another person;
(b) which consist exclusively of marks or indications which may serve
in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods
or rendering of the service or other characteristics of the goods or
service;
(c) which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and
established practices of the trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if before
the date of application for registration it has acquired a distinctive
character as a result of the use made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if--
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of
--
(a) the shape of goods which results from the nature of the goods
themselves; or
(b) the shape of goods which is necessary to obtain a technical
result; or
(c) the shape which gives substantial value to the goods.
Explanation.--For the purposes of this section, the nature of goods or services
in relation to which the trade mark is used or proposed to be used shall not be
a ground for refusal of registration."
Sub-section(1)(a) refers to the Trade Mark devoid of distinctive
character which would indicate that such words/marks would fall under the
category of generic words, in respect of which there cannot be a Trade
Mark. Section 9(1)(b) refers to descriptive marks for which, they cannot
stand alone, be a Trade Mark. The proviso to sub-section (1) of Section 9
refers to Trade Marks which shall not be refused registration, if before the
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37 J-COMAO-28-2025 (C).doc
date of application of the registration they acquired a distinctive character
or becomes a well-known Trade Marks. This would include marks which are
suggestive, arbitrary or fanciful which being inherently distinctive can best
illustrate a Trade Mark. The Court cannot be oblivious to such parameters
and principle when dealing with the issue of Passing Off.
83. In other words, the statutory provisions as noted above, under the
Trade Mark Act provide for a categorical classification as envisaged under
the Abercrombie Spectrum in the case of Abercrombie & Fitch Company v.
Hunting World, Incorporated.22 The Trial Court ought to have been cautious
in applying the expressions 'generic' and 'descriptive' to the mark
"GERMINATOR". This, more particularly, when the concepts, connotations
and legal implications flowing from these are distinct and different. We are,
therefore, not able to accede to the submissions of Mr. Kanetkar that the
Trial Court though referring to the mark being 'generic' actually meant that
it is descriptive. This classification being fundamental in Trade Mark
jurisprudence, such reasoning is not in sync with what the law stipulates
and/or mandates.
84. In Abercrombie & Fitch Company (Supra) the Court considered that
'Deep Bowl' when used for an article which is a 'Deep Bowl' does not only
describe the article but only identifies it. Therefore, 'Deep Bowl' is generic
when used for a 'Deep Bowl'. Similarly, the term 'spoon' is not merely
22 537 F.2d 4 (2d Cir.1976); MANU/FESC/0340/1976
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descriptive of the article i.e. 'spoon' but identifies the article and therefore is
generic. Such test of the marks being categorized under what is commonly
known as Abercrombie Spectrum, is often applied by the Supreme Court in
its judgments. Noteworthy, is the decision in Pernod Ricard India Private
Ltd. & Anr. Vs. Karanveer Singh Chhabra 23 where as an example, marks like
'Kodak' being inherently distinctive become entitled to highest protection.
Descriptive marks such as Mother Dairy, Air India, Windows, Doordarshan,
LIC, SBI are not inherently distinctive but must acquire secondary meaning
in the minds of the public, to associate the mark with a particular source.
Therefore, simply put a mark like "GERMINATOR", prima facie, could be
suggestive. This for the reason that a consumer would have to take a
mental leap to understand the relationship between such mark and the
product sold under it. It is well-settled principle that suggestive trade marks
are liable to be protected under the Act whereas descriptive trade marks,
per-se are not entitled to protection.
85. The Supreme Court in Pernod Ricard India Private Ltd & Anr. (supra)
also summarized the legal principles governing the Infringement of Trade
Mark and passing off. The Supreme Court observed that passing off action
applies to both registered and unregistered marks where an intent to
deceive is not a necessary element nor is the proof of actual deception or
damage. What is required is likelihood of confusion or deception. A
23. 2025 SCC Online SC 1701
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common law action of passing off being a tortious action, misrepresentation
that affects or likely to affect the Plaintiff's business/reputation is the key.
We may now advert to the decision of the Supreme Court in Laxmikant V.
Patel Vs. Chetanbhat Shah & Another 24. The Court observed in an action for
passing off when there is a possibility/probability of confusion qua the mark
and product, an injunction ought to be granted, even though the defendants
adopted it innocently. This would be apposite in the given factual matrix.
86. We have noted the submission of Mr. Kamod that the use and
adoption by the Respondents/Defendants of the said trademark
"GERMINATOR" and Trade Dress of the Appellant/Plaintiff's is a near
replica to that of the Appellant/Plaintiff. In this regard, in the order dated 2
July 2025 passed by the Trial Court a statement on behalf of the
Respondents/Defendants was recorded, to the effect that the
Respondents/Defendants shall change the trade dress of its product bearing
the mark "GERMINATOR". We have taken due note of the finding in the
Impugned Order that the added matter in the changed trade dress by the
Respondents/Defendants is sufficient to distinguish the product of the
Respondents/Defendants from that of the Appellant/Plaintiff. In this regard,
the Trial Court in the Impugned Order has pertinently noted that both
products i.e. of the Appellant/Plaintiff and Respondents/Defendants are
used by agriculturists who have rudimentary knowledge of the composition
24. (2002) 3 SCC 65.
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and details of the compounds used in agricultural products/operations.
They would only go by the Trade Mark and Trade Dress of such products. In
view of such findings it is apparent that the manner in which the trademark
"GERMINATOR" is depicted on the product of the Appellant/Plaintiff, a
clear source product affiliation/connection cannot be overlooked. The
customers of such products being agriculturists and persons of imperfect
recollection with impressionable minds are likely to associate the mark
"GERMINATOR" only with the product of the Appellant/Plaintiff.
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87. In our view, even on a side by side comparison of the two products,
as above, the added matter in the changed trade dress of the
Respondents/Defendants does not, prima facie, rule out the attempt by the
Respondents/Defendants to ride on the goodwill and reputation of
Appellant/Plaintiff. Evidently, the 'Essential Feature' of the trade dress
"GERMINATOR" is almost identical to that of the Appellant/Plaintiff. In
view thereof, the likelihood of confusion even after such unilateral change
in the trade dress by the Respondents/Defendants in its Trade Dress cannot
be prima facie brushed aside at this juncture of the proceedings.
88. Mr. Kanetkar has attempted to support the findings in the Impugned
Order in regard to the above. However, the Respondents/Defendants have
not been able to provide any justification/explanation for adopting a
deceptively similar Trade Dress to that of the Appellant/Plaintiff, where the
minimalistic changes does not, prima facie, rule out the possibility of
Passing Off by the Respondents/Defendants, of their products as that of the
Appellant/Plaintiff.
89. We find substance in the submission of Mr. Kamod to the effect that
the practice of Respondents/Defendants to place on record an amended
label and to invite the Trial Court to adjudicate the Suit on the basis of such
label is legally untenable. Permitting this as a practice would amount to
granting an impermissible seal of approval to the Respondents/Defendants
unilateral modification of its marks/label, which is not what the law
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42 J-COMAO-28-2025 (C).doc
mandates.
90. It is apposite to refer to the decision of this Court in KLF Nirmal
Industries P. Ltd. (supra). This Court observed that the Defendant cannot
seek a seal of approval from this Court to use a revised packaging which
continues to be in violation to that of the Plaintiff. This Court found merit in
the submission of the Plaintiff that once a party infringes on another's Trade
Mark or Trade Dress, the confusion sowed is not magically remedied by de
minimis fixes. A similar view was taken by this Court in an earlier decision
in R. R. Oomarbhoy P. Ltd. (supra). The principles laid down in these
decisions are clearly and squarely applicable to the given facts where the
Respondents/Defendants cannot be permitted to sow confusion by de
minimis fixes/changes in its Trade Dress and that too by seeking an
imprimatur of this Court. The Respondents/Defendants have not
distinguished these decisions cited on behalf of the Appellant/Plaintiff,
apart from a bare denial which does not persuade us, to depart from the
same.
91. We cannot loose sight of the fact that the Respondents/Defendants
had earlier adopted the impugned Trade Mark "Harmony" which they by a
statement recorded in an order dated 2 July 2025 passed by the said Trial
Court stated that they would not trade in its products with the name
"Harmony". So also, the Respondents/Defendants were earlier using the
trademark 'Germi-Fast' which they decided to change to "GERMINATOR"
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43 J-COMAO-28-2025 (C).doc
only in December 2024 without any justification as claimed by the
Appellant/Plaintiff. Mr. Kanetkar has placed much reliance on the Suits filed
earlier by the Appellant/Plaintiff in respect of the mark "Germi-Fast" and
"GERMINATOR" both of which were dismissed. On such ground the
Respondents/Defendants would seek dismissal of the present Appeal.
However, considering the unique factual matrix in the given case, we are of
the prima facie opinion that such stand does not aid or assist the
Respondents/Defendants in the present lis.
92. The Trial Court in the Impugned Order has referred to such fact of
the License Agreement being executed in favour of the
Respondents/Defendants as a permitted user. However, the Trial Court
proceeds on the basis that if the said Seema Jain can have registration of
the trademark "GERMINATOR", which is descriptive, the Appellant/Plaintiff
can also claim an exclusive right, therein. Such finding is not legally sound.
This, given the fact that the said Seema Jain having a trademark
registration for the said mark "GERMINATOR", makes it clear that it is
distinctive and can never be descriptive. In view thereof, as held by this
Court in Pidilite Industries Ltd. v. Riya Chemy (supra), the
Respondents/Defendants are estopped from taking inconsistent and
mutually contradictory stands, as the Impugned Order, would indicate.
93. The pleadings, more particularly, the written statement of the
Respondents/Defendants bears a clear reference to Permissive
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44 J-COMAO-28-2025 (C).doc
User/Trademark License Agreement dated 14 December 2024 executed
between them and one Seema Jain. This to prima facie suggest that the
Respondents/Defendants have acknowledged and accepted the use of the
mark "GERMINATOR" as a trademark. Had it only been descriptive, there
was no need, much less occasion for the Appellant/Plaintiff to enter into a
License Agreement with the said Seema Jain. At this juncture, the decision
of this Court in Hem Corporation (P) Ltd. vs. ITC Ltd.25 is instructive. This
Court had held that even if a Defendant genuinely intended to use the
impugned trademark descriptively, it would make no difference if the use of
the impugned trademark is likely to be taken as being used as a trademark.
In the given facts, it is, prima facie, apparent that the
Respondents/Defendants intended to use the word mark "GERMINATOR",
as a trademark.
94. It is pertinent to note that in paragraph 13 of the Impugned Order,
the Trial Court has erred in proceeding on a footing that the
Appellant/Plaintiff has abandoned its rectification proceedings against
Seema Jain's Trademark Registration No.2742855. However, the record
more particularly, the Plaint (paragraph 14e) indicates that the
Appellant/Plaintiff's rectification application filed against Seema Jain's
trademark registration is pending before the Trade Mark Registry. It is trite
law that the Trial Court being the Court of first instance recording a factual
25 2012 SCC OnLine Bom. 551
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45 J-COMAO-28-2025 (C).doc
finding contrary to the existing record, makes it perverse.
95. Mr. Kanetkar contended that the First Appellate Court has ample
powers to give its own findings and that inconsistent defenses can be raised
in the written statement although the same may not be permissible in case
of plaint. In this context, he also relies on the provisions of Order 41 Rule
22 of the CPC and refers to the judgment in Baldev Singh & Ors. (supra).
Mr. Kanetkar has also contended that there is no requirement for the
Defendant to file separate Appeal or Cross-objections against the findings
qua such defendants, placing reliance on the decision of Banarasi and Ors.
(supra). In this regard, we find that the above Judgments are in the context
of Order 6 Rule 17 and Order 41 Rule 22 of the CPC. Evidently, this is not
even remotely the subject matter in the present proceedings. In view
thereof, the said decisions as referred to by Mr. Kanetkar are neither
apposite nor applicable in the given factual matrix, where we are
confronted with a case under Order 39 Rule 1 and 2 of the CPC.
96. The submission of Mr. Kanetkar that "GERMINATOR" is not a coined
or invented term, is also not consistent with the record. The said word
"GERMINATOR" was used as a mark by the predecessor of the
Appellant/Plaintiff way back in the year 1981. Thereafter, the sole
proprietorship of the Appellant/Plaintiff underwent a change to Pvt. Ltd.
Company in the year 2009 in the name and style of Dr. Bawaskar
Technology (Agro) Pvt. Ltd. However, they continued to use and adopt the
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46 J-COMAO-28-2025 (C).doc
said mark "GERMINATOR" in respect of the agricultural products. As
discussed above, the Appellant/Plaintiff have successfully demonstrated at
this prima facie stage, continuous and extensive use of the mark
"GERMINATOR". Also, as to how it is distinctive to the Appellant/Plaintiff,
by placing on record sufficient material/documentary evidence, in this
regard.
97. On the aspect of change in the Respondents/ Defendants' trade dress,
the Trial Court, in the Impugned Order, has placed emphasis on the
decisions in S. Sayed Mohideen Vs. P. Sulochana Bai26 and Kaviraj Pandit
Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories 27. In this
regard, there is no quarrel with the principle that the
Respondents/Defendants may escape liability if he can show that the added
matter is sufficient to distinguish his case from that of the
Appellant/Plaintiff. However, for the reasons noted above, this is not the
case in the given factual matrix. The 'essential feature' of the Trade Mark
and Trade Dress i.e. word "GERMINATOR" is prominently displayed on the
Respondents/Defendants alleged new trade dress. This being identical, does
not rule out the possibility of likelihood of confusion and Passing Off the
product of the Respondents/Defendants as that of the Appellant/Plaintiff.
For such reasons, the said decisions are of no assistance to the
Respondents/Defendants, and does not take their case any further.
26. MANU/SC/0576/2015
27. MANU/SC/0197/1964
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47 J-COMAO-28-2025 (C).doc
98. It is trite law that the discretion conferred upon the Court under
Order 39 Rules 1 and 2 by the CPC ought to be exercised in conformity with
the settled judicial principles, which is echoed by the Supreme Court in
Rasiklal Manikchand Dhariwal (supra) as rightly relied on by Mr. Kamod.
The Supreme Court has caveated such principle by holding that if the Trial
Court commits irregularity or illegality in exercise of the judicial discretion
then such order is always amenable to correction by a higher court in
Appeal or Revision or by the High Court in its supervisory jurisdiction.
99. In the given case, the Trial Court refused to grant injunction to the
Appellant/Plaintiff. The Trial Court has by such findings, overlooked the
settled legal principles applicable to cases of Passing Off. In the case of
Medley Laboratories (P) Ltd. (supra) the Division Bench of this Court held
that the correct test to be applicable in a case of Passing Off is the
possibility/likelihood of confusion and not actual confusion, following the
decision of the Supreme Court in the case of Cadila Health Care Ltd. vs.
Cadila Pharmaceuticals Ltd28. When a wrong test is applied, the Appellants
as held in that case were right in submitting that the decision deserves
interference, which is apposite in the given factual complexion. In this
regard, the decision cited by Mr. Kanetkar in Skyline Education Institute
(supra) relates to the discretion of the Appellate Court in adjudicating
grant/refusal of interim injunction; and the aspect of extensive use in those
28. (2001) 5 SCC 73
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48 J-COMAO-28-2025 (C).doc
facts. It cannot be applied to the distinct factual matrix in the present case.
Accordingly, the same is of no assistance to the Respondents/Defendants.
100. The decision relied by Mr. Kanetkar in Shantapa vs. Anna (supra) is
clearly distinguishable. In the said facts the Plaintiff therein had taken a
contradictory stand pertinent to the Trade Mark of the defendant before the
Trademark Registry and also suppressed such stand taken from the Court.
In such circumstances, the Court rightly refused the grant of any equitable
relief of injunction, which situation clearly does not exist in the given
factual matrix.
101. Mr. Kanetkar's reliance on T.V. Venugopal vs. Ushodaya Enterprises
Ltd. & Anr.29 is noted. There the Court held that the word "Eenadu" though
descriptive, has acquired secondary meaning and is fully identified with the
product and services provided by the Plaintiff in that case. In fact, the Court
there has held that even the descriptive trademark can acquire
distinctiveness. Such finding assists the case of the Appellant/Plaintiff in the
given case, as against to that of the Respondents/Defendants.
102. We are conscious of the law that this Court would not ordinary
interfere with the exercise of discretion in the matters of grant of temporary
injunction by the Trial Court. This is in conformity with the landmark
decision in Wander Ltd & Anr Vs. Antox India P. Ltd.30. An exception is
carved out where the grant of interlocutory injunction to the plaintiff could
29. 2011(4) SCC 85
30. 1990 SCC OnLine SC 490
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49 J-COMAO-28-2025 (C).doc
not have been refused, making it obligatory on the part of the Appellate
Court to interfere as held by the Supreme Court in Laxmikant V. Patel
(Supra). This decision was followed by the Supreme Court in subsequently
in Ramdev Food Product (P) Ltd. Vs. Arvindbhai Rambhai Patel & Ors 31
where the Court held that when wrong standards are adopted and applied a
case for interference is made out. The Supreme Court in Anand Prasad
Agarwalla V. Tarkeshwar Prasad & Ors.32 held that it would not be
appropriate for any Court to hold a mini trial at the stage of grant of
temporary injunction.
103. We now advert to the settled law that an order which is contrary to
pleadings and law, is a perverse order. In Godfrey v. Godfrey33, the Court
defined "perverse" as "turned the wrong way"; not right; distorted from the
right or deviating from what is right, proper, correct, etc. Juxtaposing this to
the facts in the given case, the findings in the Impugned Order, as noted
above, deviates from the pleadings and material/documents on record and
is not in sync with the same. It can therefore be said that the Trial Judge
has departed from such settled legal principles, more particularly in a
pending Suit. This cannot be countenanced.
104. For all the reasons as noted above, we find that the
Appellant/Plaintiff has been able to establish a prima facie case for a grant
31. (2006) 8 SCC 726
32. (2001) 5 SCC 568
33. 106 NW 814
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50 J-COMAO-28-2025 (C).doc
of injunction against the Respondents/Defendants in the given factual
complexion. Moreover, the balance of convenience lies clearly in favour of
the Appellant/Plaintiff who would sustain irreparable harm/prejudice if
such relief is refused to them. Following the settled legal parameters for
grant of injunction under Order 39 Rules 1 and 2 of the CPC, the trifecta of
prima facie case, balance of convenience and irreparable prejudice are
clearly made out by the Appellant/Plaintiff for us to allow the Appeal.
105. In light of the foregoing discussion/reasons, we pass the following
order:-
ORDER
(i) Commercial Appeal From Order No.28 of 2025 is allowed;
(ii) The Impugned Order dated 4 October 2025 passed by the
Commercial Court in Pune in Commercial Suit No.9 of 2025
is quashed and set aside.
(iii) The Respondents/Defendants are injuncted from Passing
Off the trade mark "GERMINATOR" or any other mark that
is identical or deceptively similar to the Appellant/Plaintiff's
trade mark "GERMINATOR" and/or trade dress of the
Appellant/Plaintiff's product, containing the trade mark
"GERMINATOR" or any other mark, trade mark or trade
dress that is deceptively similar to the Appellant/Plaintiff's
trade mark or trade dress in respect of the mark
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"GERMINATOR", in relation to any goods in the course of
the business or otherwise, either personally or through their
dealers, consultants, distributors, employees or
representatives, pending final disposal of the Suit before the
Trial Court.
(iv) Accordingly, the Interim Application No.12806 of 2025
preferred by the Appellant/Plaintiff in the said Appeal,
would not survive and the same is disposed of.
(v) No order as to costs.
[ADVAIT M. SETHNA, J.] [R.I. CHAGLA, J.]
106. At this juncture, upon pronouncement, Mr. Kanetkar learned counsel
appearing for the Respondents/Defendants, would request a stay of this
judgment. Upon hearing both the parties, we direct that the parties shall
maintain status-quo for a period of four weeks from the date of uploading
of this judgment, which in the given factual complexion, would serve the
ends of justice.
[ADVAIT M. SETHNA, J.] [R.I. CHAGLA, J.]
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