M/S. Krbl Ltd. vs M/S. Overseas Pvt. Ltd
2011 Latest Caselaw 5957 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI


+     FAO 520/2011 & CM Nos.21994-95/2011

                  Judgment delivered on: 7th December, 2011

M/s KRBL LTD                                        ..... Appellant
                        Through:       Mr. S.K. Bansal, Adv.

                  versus

M/s PK OVERSEAS PVT LTD                          ..... Respondent
                   Through:            Mr. N.K. Manchanda, Adv.

CORAM:
HON'BLE MR. JUSTICE KAILASH GAMBHIR

KAILASH GAMBHIR, J. (Oral)

*

1. By this appeal filed under section 104 read with Order 43 rule 1

of the Code of Civil Procedure, 1908 the appellant seeks to challenge

the order dated 27.8.2011 whereby the interim relief under Order 39

rule 1& 2 sought by the appellants in the suit for permanent

injunction seeking to restrain infringement of trademark was

dismissed.

2. The adumbrated facts of the case are that the plaintiff filed a

suit under section 134 and 135 r/w section 27(2) of the Trade Marks

Act, 1999 on the ground of passing off and under section 51 of the

Copyright Act, 1957 for infringement of or likely infringement of

copyright in artistic work, for permanent injunction, rendition of

accounts and delivery against the defendant/respondents. As per the

plaintiff they are the registered proprietor and user of the trademark

"AARATI" and the Copyright involved in the said trademark in respect

to its product of premium rice and alleged that the use of the

trademark "DIYA" and the copyright involved therein by the

defendants/respondents is same/similar. The appellant/plaintiff in the

very suit had filed an application under order 39 rule 1 & 2 for

restraining the defendants/respondents from using the trademark

"DIYA" which was dismissed vide order dated 27.8.2011. Feeling

aggrieved with the same, the appellant has preferred the present

appeal.

3. Arguing for the appellant, Mr. S.K. Bansal, learned counsel

contends that the learned Trial Court has totally misconstrued the

principles for the grant of interim injunction especially in the matters

involving infringement of trademark and copyright of the author.

Counsel further submits that the learned Trial Court has not

appreciated the fact that the respondent has brought out the

packaging bag with the same/similar colour combinations as that of

the colour combination of packaging bag of the appellant/plaintiff to

take advantage of the tremendous goodwill and reputation of the well

established brand name of the appellant/plaintiff. Counsel also

submits that the appellant has been using the packaging material in

particular background of combination of colours since the year 2005

while the respondent brought out a deceptively similar packaging

material with almost identical combination of colours much later in

the year 2009 to encash on the goodwill of the appellant. Counsel for

the appellant further submits that voluminous documents were placed

on record by the appellant to show that the appellant had been

advertising their product and the packaging material with the said

combination of colours, but no such documentary evidence was placed

on record by the respondent. Counsel for the appellant also placed

reliance on Section 2 (m) & 2(zb) of the Trade Mark Act to support

his arguments that the definition of trademark and mark envisaged

therein includes combination of colours of the packaging.

4. I have heard learned counsel for the appellant at considerable

length and given my thoughtful consideration to the pleas raised by

him.

5. It is well settled that the grant of interim injunction under order

39 rule 1 & 2 of CPC is based on the fact whether the plaintiff has

established a prima facie case to be tried, whether the balance of

convenience lies in his favour and whether if an interim injunction is

not granted in his favour, he would suffer irreparable loss and injury.

From the material placed on record by the plaintiff the learned Trial

Court in para 4.2 of the impugned order has clearly observed that

according to the respondent they have been using their trademark

"DIYA" since 1985 and with the label in question since 2004. The

Trial Court has also observed that while the appellant has placed on

record various bills from 2005 onwards that rice under mark

"AARATI", was being sold in the market of India and abroad and

similarly the defendant also placed on record a few old bills of the

years 1995, 1996, 1997 onwards that rice under the mark "DIYA" was

being sold by them under different packaging/weighing. In the

background of these conflicting claims this Court does not find any

perversity or illegality in the impugned order passed by the learned

Trial Court taking a view that there is a triable issue as who was the

prior user, since both the parties have placed on record their

respective bills for selling rice under different packaging in respect of

rice under the mark AARATI and DIYA. However learned counsel for

the appellant has laid much stress on the similarity of both the

packaging material i.e. one brought out by the appellant and the other

brought out by the respondent because of the combination of colours,

which argument cannot be appreciated at this stage in the absence of

any clear picture emerging to take a prima facie view as to who

brought out the said packaging material prior in time in the market

and who in the later period in time. These findings of facts certainly

can be decided by the learned Trial Court after the parties lead their

respective evidence and not at the interlocutory stage.

6. The Apex Court in a catena of judgments has held that the order

of interim injunction being a discretionary relief would not be

ordinarily interfered by the appellate court unless it is shown that the

discretion has been exercised arbitrarily, capriciously or perversely

and by not granting the interim relief manifest injustice has been

dome to the plaintiff. It has been held by the Apex Court in the case of

Skyline Education Institute vs. S.L Vaswani (2010)2SCC142 that once

the court of first instance exercises its discretion to grant or refuse to

grant relief of temporary injunction and the said exercise of discretion

is based upon objective consideration of the material placed before

the court and is supported by cogent reasons, the appellate court will

be loath to interfere simply because on a de novo consideration of the

matter it is possible for the appellate court to form a different opinion

on the issues of prima facie case, balance of convenience, irreparable

injury and equity. In the light of the aforementioned legal principles,

in the facts of the case at hand no case has been made out by the

plaintiff to persuade this court being the appellate court to interfere

in the impugned order passed by the court of first instance.

7. Hence, in the light of the above, this Court does not find any

illegality or perversity in the impugned order passed by the learned

Trial Court. There is no merit in the present appeal and the same is

hereby dismissed. However, the learned Trial Court is directed to

expeditiously decide the case filed by the appellant/plaintiff on its

merits after deciding the preliminary issues.

KAILASH GAMBHIR,J DECEMBER 07, 2011 rkr