Vanesa Care Private Limited And ... vs Mcnroe Consumer Products Private
2022 Latest Caselaw 4183 Cal

13.07.2022
 KC(24)

                               F.M.A. 785 of 2022
                       Vanesa Care Private Limited and Anr.
                                    -versus-
                        Mcnroe Consumer Products Private
                                Limited and Ors.



             Mr.   Ranjan Bachawat, Sr. Adv.,
             Mr.   Sayan Roy Chowdhury,
             Mr.   Mohan Vidhani,
             Mr.   Avijit Dey,
             Mr.   Sumit Agarwal..................For the appellants.

             Mr. Sayantan Bose,
             Mr. Rajdeep Shaw,
             Mr. Saptarshi Das................For the respondents.

We admit the appeal against the ex-parte ad-

interim order dated 22nd December, 2021 made by the

Judge-in-charge, Bench-VI, learned City Civil Court,

Calcutta in Title Suit No. 1604 of 2021.

By the impugned order the appellants/defendants

have been restrained from "using, marketing and

advertisement under the mark 'TEMPTATION' and the

said artistic representation of the said trade mark and

also from passing of their goods under impugned mark

TEMPTATION".

As will appear from our observations below, we

are in a position to dispose of this appeal by dispensing

with all formalities.

The appellants/defendants claim to be the

registered proprietor of the word mark "Temptation" for

use in "cosmetics, perfumeries, toiletries included in

class 3" according to the certificate of registration

issued by the Trade Marks authority.

Mr. Ranjan Bachawat, learned senior advocate for

the appellants contends that his clients are using this

word mark since 2002.

The respondents/plaintiffs is the registered

proprietor of a label mark comprising, inter alia, of the

word "Temptation".

Mr. Sayantan Bose, learned advocate for the

respondents/plaintiffs submits that his client has been

using this label mark from 1998 whereas Mr. Bachawat

submits that admittedly this use is from 2007.

Mr. Bachawat submits that as would appear from

the relief (a) claimed in the plaint, the foundation of the

cause of action of the respondent/plaintiff is

infringement of copyright in "Temptation". The

impugned judgment and order narrates the case of the

respondents/plaintiffs as if it was for infringement of

their trade mark.

Mr. Bachawat placed Section 28(3) of the Trade

Marks Act, 1999 and argued that a proprietor of a

registered trade mark could not maintain an action for

infringement against another.

Both learned counsel, however, admitted that a

passing off action was maintainable. Mr. Bose

emphasises that his action is on passing off and on that

basis the impugned order has been passed.

In our opinion, the impugned judgment and order

is totally bereft of reasons which were required to be

advanced by the learned judge while considering grant

or refusal of grant of an ad-interim order in such an

action. There is no prima facie finding regarding user or

length of use of the respective marks by the parties.

The registration of the respective marks and the

effect thereof are not discussed. Even if the respondents

alleged passing off, to what extent the appellants were

passing off their goods as those of the respondents,

ought to had been discussed even shortly in the

judgment.

Moreover, the fact that the notice to "cease and

desist" was issued by the respondents/plaintiffs on

22nd December, 2020, replied to by the

appellants/defendants on 4th January, 2021 but the

suit instituted by the respondents/plaintiffs a year later

was an important consideration before grant of an order

of injunction.

When the respondents/plaintiffs could wait for

one year to file the suit why could not the application

for injunction have been considered in the presence of

the appellants/ defendants and upon hearing them?

The appellants have also filed this appeal about

five months after the order of injunction. This is

explained by their learned counsel by saying that his

clients had waited to contest the matter on its

returnable date, but for a substantial period of time, the

bench was not sitting. Hence, they were compelled to

file the appeal before this court.

We are of the view that the above facts need to be

established at the trial court level. Whether the

respondents/plaintiffs are entitled to an order of

injunction or not, must be decided upon full prima facie

consideration of the above facts, upon hearing the

appellants/defendants and by a reasoned order.

We order accordingly.

If the bench is not available, the learned Chief

Judge, City Civil Court shall assign this injunction

application to another bench within a week of

communication of this order to hear it out as

expeditiously as possible from the 'Motion' stage.

Before exchange of affidavits or written objection,

the learned trial court has to come to a decision

whether at all an interim order of injunction should be

granted in favour of the respondents/plaintiffs.

Since the impugned order of injunction is

continuing for a period of about seven months, we limit

the said order of injunction till 31st July, 2022. After

31st July, 2022 it shall automatically expire, if not

discharged or varied earlier by the learned trial court.

Within that time, the learned court shall consider the

application for injunction taken out by the

respondents/plaintiffs at the "Motion" stage in the

presence of the appellants/ defendants. The learned

trial court shall endeavour to dispose of the interim

application after exchange of affidavits within three

months from date.

The appeal (F.M.A. 785 of 2022) is accordingly

disposed of.

(I.P. MUKERJI, J.)

(SUBHENDU SAMANTA, J.)