Haldiram Bhujiawala & Anr. vs Anand Kumar Deepak Kumar & Ors.
2015 Latest Caselaw 8017 Del

*                  HIGH COURT OF DELHI AT NEW DELHI

                                            Decided on : 19th October, 2015

+       FAO 470/2012 & C.M. Nos.19688-19689/2012, 2377/2013,
        7822/2013

        HALDIRAM BHUJIAWALA & ANR.                              ..... Appellants
                        Through:        Mr. C. Mukund and Mr.Ashok Kumar
                                        Jain, Advocates.

                                Versus

        ANAND KUMAR DEEPAK KUMAR & ORS.                         ... Respondents
                        Through:        Mr. Amarjit Singh & Mr. Mahendra S.
                                        Rana, Advocates.

                                          WITH

+       CM(M) 532/2013 & C.M. Nos.7956-7958/2013

        HALDIRAM BHUJIAWALA & ANR.                              ..... Petitioners
                        Through:        Mr. C. Mukund and Mr.Ashok Kumar
                                        Jain, Advocates.

                                Versus

        ANAND KUMAR DEEPAK KUMAR & ORS.                         ... Respondents
                        Through:        Mr. Amarjit Singh & Mr. Mahendra S.
                                        Rana, Advocates.

                                AND




F.A.O. 470/12, C.M. (M) 532/13 & F.A.O. 496/12                  Page 1 of 61
 +       FAO 496/2012 & C.M. Nos.20603-20604/2012

        HALDIRAM (INDIA) PRIVATE LIMITED                       ..... Appellant
                        Through:        Mr. Amarjit Singh & Mr. Mahendra S.
                                        Rana, Advocates.

                                Versus

        HALIDRAM BHUJIAWALA & ANR.                       ..... Respondents
                        Through:        Mr. C. Mukund and Mr.Ashok Kumar
                                        Jain, Advocates.

CORAM:
HON'BLE MR. JUSTICE V.K. SHALI

V.K. SHALI, J.

1. This order shall dispose of F.A.O. No.470/2012 titled M/s.

Haldiram Bhujiawala & Anr. Vs. Anand Kumar Deepak Kumar & Ors.,

C.M. (M) No.532/2013 titled Haldiram Bhujiawala and Anr. Vs. Anand

Kumar Deepak Kumar & Ors. and F.A.O. No.496/2012 titled Haldiram

(India) Pvt. Limited vs. Haldiram Bhujiawala and Anr.

2. In F.A.O. No.470/2012 titled Haldiram Bhujiawala & Anr. Vs.

Anand Kumar Deepak Kumar & Ors., the order dated 27.09.2012 passed

by the learned Additional District Judge in I.A. No.1675/2012 under

Order 39 Rule 1 & 2 CPC in TM No.02/2011 [earlier C.S. (OS)

No.635/1992] titled Anand Kumar Deepak Kumar & Ors. v. M/s

Haldiram Bhujiawala & Anr. is under challenge.

3. In F.A.O. No.496/2012 titled Haldiram Bhujiawala & Anr. Vs.

Anand Kumar Deepak Kumar & Ors., the appellant has challenged clause

43 (1) (a) and (b) of the order dated 27.9.2012 passed by the learned

Additional District Judge in I.A. No.1675/2012 under Order 39 Rule 1 &

2 CPC in TM No.02/2011 [earlier C.S. (OS) No.635/1992].

4. In C.M. (M) No.532/2013 titled Haldiram Bhujiawala & Anr. Vs.

Anand Kumar Deepak Kumar & Ors., the order dated 21.01.2013 passed

by the learned Additional District Judge on an application of the

appellant/defendant seeking review of the order dated 27.09.2012 passed

on I.A. No.1675/2012 under Order 39 Rule 1 & 2 CPC in TM

No.02/2011 [earlier C.S. (OS) No.635/1992] is under challenge.

5. As a matter of fact, the reading of the impugned order dated

21.01.2013 shows that the averments made in the review application were

not within the parameters of Order 47 Rule 1 of the CPC and it was a

fresh attempt to argue the application for grant of stay which was rightly

rejected by the learned ADJ.

6. It has been also noted by the court that on the day when the review

application was pressed, the appellant had already filed an appeal (FAO

470/2013) in the High Court which was pending adjudication. It was

observed that the appellant was in fact availing both the remedies that is

appeal and review and thus, was held to be guilty of abuse of the

processes of law and was visited with a cost of Rs.25,000/- out of which

Rs.10,000/- was to be paid to the legal aid.

7. I am of the considered view that the order of rejection of review is

not a substantive order and thus cannot be assailed under Article 227 of

the Constitution. More so, when the main order dated 27.9.2012 is

already under challenge, therefore, this CM (M) is liable to be dismissed

and is accordingly dismissed.

8. In F.A.O. No.496/2012 titled Haldiram (India) Pvt. Ltd. vs.

Haldiram Bhujiawala & Anr., the order dated 27.09.2012 passed by the

learned Additional District Judge in I.A. No.1675/2012 under Order 39

Rule 1 & 2 CPC in TM No.02/2011 [earlier C.S. (OS) No.635/1992]

titled Anand Kumar Deepak Kumar & Ors. v. M/s Haldiram Bhujiawala

& Anr. to the extent granted liberty to the respondents to use the trade

mark Haldiram Bhujiawala along with 'V' Logo as reflected in Trade

Mark No.330375 till decision of rectification in Para 43(1)(B) of the said

order, is under challenge. It may be pertinent here to mention that at the

time when the impugned order dated 27.9.2012 was passed, the plaintiff

in the suit, who are the appellants also in this appeal, had filed

cancellation petition of the Trade Mark Registration No.330375 which

was obtained by Rameshwar Lal and Prabhushankar Aggarwal. During

the pendency of this appeal, the cancellation petition of the appellant (in

FAO No. 496/2012) has been decided in their favour by the Intellectual

Property Appellate Board and the TM Registration No.330375 which was

in the name of Rameshwar Lal and Prabhushankar Aggarwal has been

cancelled vide order dated 26.04.2013. Subsequently, a writ was filed in

High Court of Calcutta by the defendants (respondent in FAO No.

496/2012) challenging the order dated 26.4.2013 passed by the

Intellectual Property Appellate Board (IPAB) but the court did not stay

the assailed order and thus, the registration of the trademark no. 330375

stands effectively cancelled.

9. Therefore, the defendants/respondents (in the appeal No.496/2012)

cannot use the trademark even for that limited period anymore as has

been permitted by the learned trial court in clause 43 1(a) and (b) of the

impugned order, which part of the order has been assailed in this appeal.

Thus, so far as the present appeal is concerned, it has become infructuous

by the subsequent developments which have been brought to the notice of

the court orally by the learned counsel for the plaintiff/appellant Mr.

Amarjit Singh and which are not disputed by Mr. Mukund, the learned

counsel for the defendant/respondent.

10. So effectively, court is left with only one appeal, that is, F.A.O.

470/2012 in which stay has been granted under Order 39 Rule 1 & 2 CPC

against the appellants (Haldiram Bhujiawala and Anr.) restraining them

from using the trade mark/name Haldiram Bhujiawala with 'V' logo in

whole or in parts or in any form whatsoever, except otherwise in

conformity with the clause 43 (1)(a) and (b) of the impugned order dated

27.09.2012 till the finalization of rectification/cancellation proceedings

by the IPAB or till the final disposal of the suit or unless the impugned

order is varied.

11. In order to avoid confusion as to the status of the parties, they

would be referred to in this order by the title of plaintiffs and defendants

as were originally reflected before the trial court.

12. Briefly stated the facts leading to filing of the present appeal are

that Anand Kumar Deepak Kumar as Plaintiff No.1, Shiv Kishan

Agarwal as Plaintiff No.2 and M/s Haldiram India (Private) Limited as

Plaintiff No.3 had filed a suit for injunction against Haldiram Bhujiawala,

Defendant No.1 and Ashok Kumar, Defendant No.2.

13. It may be pertinent mentioned that the suit was originally initiated

in the year 1991 and has a chequered history of going from the trial court

right up to the Apex Court and was thereafter remanded back to the trial

court for adjudication of the application under Order 39 Rule 1 & 2 (I.A.

No.1675/2012) which culminated into passing of the impugned order

dated 27.09.2012 which is under challenge in the appeals filed before this

court.

14. This case has become a classic case of a snake and ladder game

and the family feud for sharing the trade name only with a lust to gain

more money on both the sides. There is no doubt that it takes almost a

generation to set up a business and when the business is established, the

successive generations start fighting between/amongst themselves as the

greed takes over. This is exactly what has happened with the progeny of

Ganga Bishan @ Haldiram who was the initiator of the business what has

come to stay as a brand or a class by the name of 'Haldiram' in Indian

fast food, sweets and namkeens etc. It may also be pertinent here to give a

pedigree table of the family which is as under:

PEDIGREE

GANGABISHAN @ HALDIRAM (died on 23.2.80)

Moolchand (son) RameshwarLal (son) Satidas (son) Lachmi Bai (died on 30.7.85) (died on 4.3.91) (Daughter) Kamladevi (wife)

Prabhushankar [email protected] Shivkishan# Ravishankar Madhusudan (died on 23.5.91) Mahesh Shivratan

Sharad (Minor) Manohar Lal

# Plaintiff No.2 in original suit @ Defendant No.2 in original suit

15. Ganga Bishan @ Haldiram died on 23.02.1980, but, Mool Chand

Aggarwal and Rameshwar Lal Aggarwal (both since deceased), sons of

Ganga Bishan, whose descendants are fighting now, continued to do the

business set up by Ganga Bishan @ Haldiram till 1991 in their respective

territories. Rameshwar Lal Aggarwal expired on 04.03.1991. On

10.12.1991 for the first time the plaintiffs, who are three in number,

namely, Anand Kumar, Deepak Kumar and the business concern filed a

suit claiming to be the registered proprietors of the trademark Haldiram

Bhujiawala based on the registration No.285062 and also claiming

priority to the adoption or use through their predecessor in interest Ganga

Bishan @ Haldiram. The case which was set up in the plaint was that

Haldiram Bhujiawala trade name with 'V' logo was being used by them

since 1965. But when the defendants had set up a defence in the written

statement that Rameshwar Lal Aggarwal (since deceased) father of the

defendant, Ashok Kumar, was the inventor, originator and the adopter of

the trade mark Haldiram Bhujiawala from 1958, the plaintiff amended

their plaint that Ganga Bishan was using the trade name from 1941 when

he was young and it was only in 1965 that 'V' logo was invented and he

started using the same.

16. The plaintiff opened a shop in 1983 in Chandani Chowk, Delhi

under the name and style of M/S Anand Kumar Deepak Kumar.

Subsequently in a civil suit instituted by them, a restraint order was

sought against Ashok Kumar Aggarwal, defendant No.2 and defendant

No.1 namely Haldiram Bhujiawala preventing them from opening a shop

in Delhi in 1991 contrary to the terms and conditions of a dissolution

deed dated 16.11.1974 and committing acts of infringement and passing

off.

17. Ganga Bishan @ Haldiram while he was alive had constituted a

partnership firm in 1956 under the name and style of M/S Chand Mal

Ganga Bishan to carry on the business of manufacturing and selling the

aforesaid edible articles. In the year 1969 the partnership consisted of

Moolchand, Shivkishan, Ganga Bishan and Smt. Kamla Devi (w/o

Rameshwar Lal). Prior to 1969 Rameshwar Lal was himself a partner of

Chand Mal Ganga Bishan. The firm has been stated to be trading under

the trade name Haldiram Bhujiawala. Subsequently in 1965 the firm

conceived and adopted Haldiram Bhujiawala -HRB (logo) as represented

in 'V' devise as a trademark which was duly registered on 27 th January

1981 in class 30 vide trademark No.285062.

18. On 16.11.1974, the partnership firm was dissolved and the

registered trade mark bearing No.285062 is stated to have fallen

exclusively to the share of one of the partners namely Moolchand who

was allowed to use the said trade mark in whole of the country except the

territory of West Bengal.

19. So far as West Bengal was concerned, Kamla Devi w/o

Rameshwar Lal was permitted to use the aforesaid trade mark exclusively

within the said territorial limit. It was in terms of clause 3, 7 & 8 of the

dissolution deed dated 16.11.1974 that the transfer of the registered

trademark No.285062 was allowed in the name of Moolchand and later in

the name the name of his successors in 1985 by the Registrar of

Trademarks by carrying out appropriate proceedings.

20. In this agreement of dissolution, following was the status of the

parties. The first party was Ganga Bishan, second Moolchand, third

Shivkishan and fourth Kamla Devi. The exact language of clause 3, 7 &

8 read as under :

"3. That the Second Party shall be entitled to carry on the said business under the name and style of MESSRS: CHANDMAL GANGABISHAN also trading as HALDIRAM

BHUJIAWALA having its head office at Bhjia Bazar, Bikaner and/or at such other place or places, as he may think fit and proper under the said trade name or style. The trade mark "HRB - HALDIRAM BHUJIAWALA" shall be utilized by the party hereto of the Second Part throughout India except in the territory of West Bengal. The territory of West Bengal shall be utilized by the party hereto of the Fourth Part and/or by her representatives. The other partners shall have no objection in using the trade mark by the parties hereto of the Second and Fourth Parts as mentioned above.

.............

7. That the Second Party shall be at liberty to carry on the business either as a sole-proprietor or may invite partners and carry on the business in partnership and deal with the trade mark "HRB - HALDIRAM BHUJIAWALA" Regd. At No.285062 in Class 30 in any manner, he may deem fit and proper.

8. That parties hereto of the First, Third and Fourth Parts shall have no objection if the Regd. Trade Mark No.285062 in Class 30 is transferred in the name of the Second Party in the records of the Registrar of Trade Marks by taking proper proceedings."

21. The case which was set up by the plaintiff was that the aforesaid

trademark Haldiram Bhujiawala was invented and adopted by Ganga

Bishan Aggarwal in 1941 and continued to be used by him initially

individually then through the partnership. So long as he was alive and

continued to be a part of the partnership firm M/s. Chand Mal Ganga

Bishan of which Ganga Bishan, his sons Moolchand and Rameshwar Lal

and daughter in law Kamla Devi happened to be a party, till the time the

partnership firm was dissolved on 16.11.1974. After dissolution of the

aforesaid partnership trademark with respect to the entire territory of

India except West Bengal fell to the share of Moolchand exclusively

whilst for the state of West Bengal the rights in the same were given to

Kamla Devi and her representative which included her husband

Rameshwar Lal and sons etc., who are the defendants in the suit.

22. In 1991 when the defendant tried to open a shop in Karol Bagh

contrary to the terms of the dissolution deed, problems ensued leading to

the filing of a suit for injunction by the plaintiffs, seeking restraint against

defendants, that is, against Haldiram Bhujiawala and Ashok Kumar. The

defendants had contested the claim on the ground that the dissolution

deed was signed under undue influence by Kamla Devi which stand was

sought to be amended by raising a plea that the said dissolution deed was

forged and fabricated. Incidentally, the aforesaid amendment, though

was allowed by the trial court was set aside by the first appellate court i.e.

High Court. Appeal filed by the defendants was also dismissed by the

Apex Court with a direction that this stand of forgery for the time being

be kept aside and the issues be framed on the plea of undue influence but

the defendants were permitted to cross-examine the witnesses without

there being a formal plea of forgery being on record and in case they are

able to prima facie show to the court that such a plea is made out then in

that event, an additional issue on that score may be framed.

23. These are the broad spectrum of facts though the facts are given in

detail in the impugned order and are not being reproduced herein for the

sake of brevity. In essence, the question at the ad interim stage to be

decided is whether the learned ADJ was right in passing a restraint order

against defendants prohibiting them from using the trademark/ name

Haldiram Bhujiawala with 'V' logo in whole or in parts or in any manner

whatsoever except as per the exception carved out by the Ld. ADJ in the

clause 43 (1)(a) and (b) of the impugned order, in the light of dissolution

deed dated 16.11.1974 on the basis of which they were to confine their

activities only to the stage of West Bengal.

24. I have heard Mr. Mukund, the learned counsel for the

defendant/appellant for considerable length of time. I have also heard

Mr. Amarjit Singh and Mr. Mahendra Rana also for different

plaintiffs/respondents. I have also considered the record filed, written

submissions submitted by both the sides thoughtfully.

Argument of conducting mini trial

25. The first contention which has been raised by Mr. Mukund, the

learned counsel for the defendant, is that while deciding an application

under Order 39 Rules 1 & 2 CPC, the court is not expected to hold a mini

trial and decide the suit itself. It has been contended that by passing an ad

interim order against the defendants restraining them from using the

trademark Haldiram Bhujiawala vide order dated 27.9.2012, the learned

Trial Judge has conducted a mini trial without permitting the parties to

adduce their respective evidence and adjudicating the real lis between the

parties.

26. The learned counsel for the defendants has relied upon the

judgments of the Supreme Court in Anand Prasad Agarwalla vs.

Tarkeshwar Prasad and Ors.; (2001) 5 SCC 568 and Hindustan

Petroleum Corporation Limited v. Sriman Narayan and Anr.; (2002) 5

SCC 760.

27. I have considered both these judgments. There is no dispute about

the proposition of law which has been laid down by the Apex Court in

these two judgments that while deciding the application under Order 39

Rules 1 & 2 CPC, the court should not hold a mini trial at that stage and

then grant an ad interim order by way of temporary injunction. The

question which arises for consideration is whether it can be said that in

the instant case, the learned Trial Judge had held a mini trial before

passing an order in favour of the respondent.

28. Mr. Singh and Mr. Rana have contested this submission of the

defendant. It has been contended by them that the facts of the case are so

complex that it is bound to result in a detailed discussion of the

submissions. Further, it has been stated that the prolonged litigation in

deciding the application has also created an impression as if a mini trial is

being held.

29. There is no merit in the contention of the learned counsel for the

defendant that the court has held a mini trial. If one sees the stand of the

defendant herein, it has kept on shifting from time to time. To illustrate

this example originally it has been their stand that the dissolution deed

signed on 16.11.74 has been signed by Kamla Devi under undue

influence which was latter on changed to the same being forged by the

plaintiffs. Sometimes, the defendants have claimed the ownership of the

trade mark through their grandfather Ganga Bishan and sometimes, they

have claimed the right to use the trade mark through their father

Rameshwar Lal, who is claimed to be the inventor and originator of the

trade mark. The learned Additional District Judge had to deal with all

these points which have been raised by the defendants. Obviously when

such a wide spectrum of contentions are raised by the defendants

themselves and the court is called upon to deal with the same by a

detailed reasoning, it is not open to the defendants to complain about the

same by raising a plea that a mini trial is being held.

30. Even before this court also all those submissions which were raised

before the trial court have been raised. Once a party raises the point, the

court is obligated to deal with the same. As a matter of fact, the

defendant has been responsible for continuously shifting his stand

especially with regard to the dissolution deed signed by their mother.

Therefore it can't be said that a mini trial has been conducted. Because

of these reasons, I feel that this contention of the learned counsel is bereft

of any merit.

Principles governing the grant of injunction not adhered to

31. The second contention of the learned counsel for the defendant is

that the principles which have to be adhered to for grant of injunction

have not been observed. The learned counsel has referred to various

judgments of the Supreme Court with regard to principles governing the

grant of ad interim injunction under Order 39 Rules 1 & 2 CPC. It will

be worthwhile to refer to the said judgments as well as the observations

passed in those judgments before we analyze the facts of the present case,

whether the trial court has fallen in this error or illegality while deciding

the application under Order 39 Rule 1 & 2 CPC in favour of the plaintiff.

32. The first judgment which has been referred to by the learned

counsel for the defendant is Mool Chand Yadav and Anr. Vs. Raza

Buland Sugar Company Limited, Rampur and Ors.; (1982) 3 SCC 484.

In the said case, the bone of contention was one room in a building

known as Hari Bhawan which was occupied by Mool Chand Yadav, who

is described as General Manager of UP State Sugar Corporation Limited,

Rampur Unit. The dispute which had arisen was as to whether Hari

Bhawan is a property which vested in Corporation and whether the

Corporation was entitled to occupy it and whether a part of it can be used

by its GM.

33. A suit came to be filed by the respondent/Raza Buland Sugar

Company Limited, Rampur against Mool Chand Yadav or the officers of

the Corporation from occupying the said Hari Bhawan. In the said suit,

Mool Chand Yadav and the Corporation officers were injuncted from

occupying the Hari Bhawan. An appeal was filed against the said order

which was pending. Subsequently, an application was filed that Mool

Chand Yadav and the officers of the Corporation had flouted the orders of

the court and thus they were allegedly guilty of contempt and they should

be punished in accordance with law. An application came to be filed by

Mool Chand Yadav who was granted a month's time to vacate the

premises. An appeal was preferred against the said order which was

pending. The Division Bench of the Allahabad High Court refused to stay

the operation of the order by virtue of which Mool Chand Yadav was

granted a month's time to vacate the premises. This is how the special

leave petition came to be filed in apex court. The apex court in the

backdrop of these facts observed that judicial approach requires that

during the pendency of the appeal the operation of an order having

serious civil consequences must be suspended.

34. On the strength of the aforesaid judgment, it seems perhaps the

contention of the learned counsel for the defendant is that as in the

aforesaid case, the learned trial court had injuncted the

appellant/defendant from using the trade name Haldiram Bhujiawala

during the pendency of the suit and this is the question which deserved to

be tried and decided on merits, therefore, on the basis of the appeal

having been filed by the defendant in the present case, operation of the

aforesaid ad interim order injuncting the defendant from using the trade

mark of Haldiram Bhujiawala deserves to be stayed during the pendency

of the suit.

35. This reasoning given by the defendant is totally bereft of any

merits. The reason for this is that in the present case there is

overwhelming prima facie evidence to show that the use of trademark/

name Haldiram Bhujiawala with 'V' logo is assigned or inherited by the

plaintiff for the entire country except the State of West Bengal.

36. The second judgment which has been relied upon is Wander

Limited and Anr. Vs. Antox India Pvt. Limited; 1990 (Supp) SCC 727 in

which it has been held as under:

"Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction , it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case

considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."

"The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the Appellate Court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by the court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the Trial Court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion."

After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. vs. Pothan Joseph; MANU/SC/0001/1960: [1960] 3 SCR 713 said:

... These principles are well established, but as has been observed by Viscount Simon in Charles

Osention & Co. v. Johnston the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case.

The appellate judgment does not seem to defer to this principle.

An infringement action is available where there is violation of specific property-right acquired under and recognized by the statute. In a passing-of action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which lends to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another person has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trade to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damage to the business or goodwill of the other trader. Speaking of the legal classification of this form of action, Lord Diplock said :

"Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms to some of which separate labels have become attached in English law. Conspiracy to injure a person in his trade or business

is one, slander of goods another but most protean is that which is generally and nowadays, perhaps misleadingly, described as "passing off". The form that unfair trading takes will alter with the ways in which trade is carried on and business reputation and goodwill acquired. Emerson's maker of the better mousetrap if secluded in his house built in the woods would today be unlikely to find a path beaten to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his wares" See Erven Warnink B.V. v. J. Towhand & Sons (Hull) Ltd. 1979 All E.R. 731."

37. I have copiously referred to the judgment cited by the learned

counsel for the defendant because of the fact to understand that the ratio

laid down in the said judgment cannot be simply applied mechanically to

the factual matrix of the instant case. The Wander's case (supra) dealt

with a claim based upon "continuous use" culminating into an issue of

passing off whereas the instant case involves two deceptively similar

registered trademarks and therefore the said judgment does not support

the case of the defendant.

38. Apart from the aforesaid two judgments which have been cited

before this court, another judgment which is also referred to in the

impugned order in this context is Gujarat Bottling Co. Ltd v. Coca Cola

Company & Ors; (1996) 16 PTC 89 (SC) wherein it has been observed as

under:

".....The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection has, however, to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies."

39. The learned counsel for the defendant has cited Morgan Stanley

Mutual Fund vs. Kartick Das; (1994) 4 SCC 225 on the question of grant

of stay. I have gone through the said judgment; however, I am unable to

appreciate as to how the observations passed by the Apex Court in the

said judgment are helpful to the defendant in the light of the facts of the

present case. In the aforesaid judgment the question involved before the

Apex Court was as regards the definition of the word 'consumer' under

the provisions of SEBI while as in the instant case, the question of grant

of injunction is involved in the backdrop of the Trademarks Act. It has

been repeatedly observed by the Apex Court that while applying the

principles of law laid down in a particular judgment, there must be

examination of facts of the two cases, namely, the reported as well as the

case in hand and find some amount of similarity so as to make the

proposition of law applicable. Therefore, as in the instant case, there is

no pari materia or nexus between the facts of these cases; I find that this

judgment is of no help.

40. In Colgate Palmolive (India) Limited vs. Hindustan Lever Limited;

(1999) 7 SCC 1, the Apex Court had examined the question of grant of

interlocutory injunction and had observed that the following basic

principles must be observed by the court before such an injunction is

granted.

"24. We, however, think it fit to note herein below certain specific considerations in the matter of grant of interlocutory injunction, the basic being-non-expression of opinion as to the merits of the matter by the Court, since the issue of grant of injunction usually, is at the earliest possible stage so far as the time frame is concerned. The other considerations which ought to weigh with the Court hearing the application or petition for the grant of injunctions are as below:-

(i) Extent of damages being an adequate remedy;

(ii) Protect the plaintiff's interest for violation of his rights though however having regard to the injury that may be suffered by the defendants by reason therefor;

(iii) The court while dealing with the matter ought not to ignore the factum of strength of one party's case being stronger than the others;

(iv) No fixed rules or notions ought to be had in the matter of grant of injunction but on the facts and circumstances of each case - the relief being kept flexible;

(v) The issue is to be looked from the point of view as to whether on refusal of the injunction the plaintiff would suffer irreparable loss and injury keeping in view the strength of the parties case;

(vi) Balance of convenience or inconvenience ought to be considered as an important requirement even if there is a serious question or prima facie case in support of the grant;

(vii) Whether the grant or refusal of injunction will adversely affect the interest of general public which can or cannot be compensated otherwise."

41. A perusal of the judgments cited and the facts of the case in hand

do not show in any manner that the learned ADJ has not followed any of

the principles of law which governs the grant of injunction. It is not in

dispute that while deciding the question of grant of injunction, the three

basic parameters, namely, existence of a prima facie case, balance of

convenience being in favour of the party concerned and that in the event

of the ad interim injunction not being granted in its favour, it is likely to

suffer an irreparable loss, are the conditions which are required to be

established. In the instant case, seen on this parameter, if we analyze the

evidence which has been produced by the plaintiff as well as by the

defendant before the learned trial court in this protracted litigation till

now then I have absolutely no hesitation in holding that prima facie the

plaintiffs have been able to establish all the three requirements which are

sine qua non for grant of an interim injunction. This argument of the

defendant is therefore without any merit and deserves to be rejected.

Concealment of material facts

42. The third argument of the learned counsel for the defendant has

been that there is concealment of facts by the plaintiffs. It is stated that

the conduct of the plaintiff has also to be seen while granting or refusing

the ad interim injunction to the plaintiff. Reliance in this regard has been

placed on case titled Mandali Ranganna & Others vs. T. Ramachandra &

Others; (2008) 11 SCC 1, Biswaroop Roy Choudhary vs. Karan Johar;

(2006) 131 DLT 458 and Warner Bros. Entertainment Inc. & Anr. Vs.

Harinder Kohli & Others; ILR (2009) 1 Delhi 722.

43. In Mandali's case the issue pertaining to grant of ad interim

injunction was involved before the Supreme Court in a property dispute.

In this case, the Karnataka High Court had permitted the private

respondents to make construction on the suit land subject to the final

decision. It was in this context that the Apex Court had observed as

under:-

"21. While considering an application for grant of injunction, the court will not only take into consideration the basic elements in relation thereto viz. existence of a prima facie case, balance of convenience and irreparable injury, it must also take into consideration the conduct of the parties.

22. Grant of injunction is an equitable relief. A person who had kept quiet for a long time and allowed another to deal with the properties exclusively, ordinarily would not be entitled to an order of injunction. The court will not interfere only because the property is a very valuable one. We are not, however, oblivious of the fact that grant or refusal of injunction has serious consequence depending upon the nature thereof. The courts dealing with such matters must make all endeavours to protect the interest of the parties. For the said purpose, application of mind on the part of the courts is imperative. Contentions raised by the parties must be determined objectively."

44. Similarly in, Biswaroop Roy Choudhary's case (supra), the learned

Single Judge of this Court had also dealt with the issue of delay and

laches in applying for grant of an ad interim injunction. That was a case

where production of a film was involved and the Court had denied the

grant of ad interim injunction purely on the ground of delay and laches as

it was observed that because of the aforesaid reason of delay in

approaching the Court for seeking an ad interim injunction the other party

had spent considerable amount of money in making the film and thus the

balance of convenience was shifted in favour of the party who had made

the film and the plaintiff in that case could not be permitted now to use,

blackmailing or taking coercive steps by filing the suit and trying to

obtain injunction.

45. The third case is of Warner Bros. Entertainment Inc. &

Anr.(supra), where also the point which has been raised is that the

plaintiff in a given circumstance must come to this court with clean hands

in case it wants an ad interim injunction.

46. The aforesaid principles are no doubt very bedrock to the grant of

ad interim relief in favour of a party. But it is pertinent to note that the

very grant of ad interim relief is a discretionary relief which is to be

exercised on very well settled principles of law and keeping in mind the

unique factual matrix of each case.

47. In the present case, the suit itself was filed originally in 1991 when

the present defendant had intended to start the shop in Karol Bagh area

using the name of Haldiram Bhujiawala. So there was no delay in

approaching the court. Therefore, the aforesaid judgements where an ad

interim injunction had been granted keeping in view the factum of

inordinate delay is certainly not helpful to the defendant.

48. There is no dispute about the fact that a party who is claiming ad

interim injunction along with the main suit must, apart from establishing

three basic facts, namely, prima facie case, balance of convenience and

irreparable loss. It must also show bonafide conduct. But it is also true

and correct that every averment/ allegation made by a party must be

substantiated with material and cogent facts and evidence.

49. However, the defendant has failed to convince the court giving any

specific instances which would show that the plaintiffs have been guilty

of concealment of material fact with a view to score an unfair advantage

over the defendants. Therefore, the court is not persuaded to accept the

plea of the defendant that the plaintiffs are responsible for concealment of

fact or that their conduct has been such which disentitles them to grant of

any ad interim injunction. Accordingly, this contention of the defendant

also does not carry any weight.

No interim order when the prior user by the plaintiff itself becomes subject-matter of adjudication.

50. The fourth argument which has been made by the learned counsel

for the defendant is that no interim order be passed against the defendant

when he has been claiming user much prior to the plaintiff's claim and it

becomes a matter of adjudication. Reliance in this regard is placed by the

learned counsel for the defendant on both the judgments of the single

judge as well as the Division Bench judgment passed in ALKEM

Laboratories Limited vs. Mega International (Private) Limited reported

in (2007) 34 PTC 557 (Del) and (2009) 41 PTC 302 (Del) (DB).

51. The contention of the learned counsel for the defendant essentially

has been that the case of the plaintiff as setup in the plaint originally was

that he was using the trade name Haldiram Bhujiawala with effect from

1965 although the registration for the word Haldiram Bhujiawala with

'V' logo (trade mark no.285062) was in the year 1981. The defendant in

its written statement had categorically stated that Rameshwar Lal, s/o

Ganga Bishan was the inventor, originator and the proprietor of the trade

name Haldiram Bhujiawala with effect from 1958 although the

registration was done vide TM No.330375 in the year 1980. It has been

contended, after the defendant took the plea that it was using the trade

mark with effect from 1958, which was much prior to the use of the said

trade name by the plaintiff from the year 1965. The plaintiff changed its

stand in the plaint by amending the plaint and took the plea that the

plaintiff is using the same since 1941.

52. It was further stated by the defendant that no documentary

evidence has been placed on record by the plaintiff to show that it was

using the trade name from 1941. Therefore, in the absence of any

documentary evidence, no injunction could have been granted in favour

of the plaintiff because the very prior user of the Trade Mark between the

plaintiff and the defendant was the bone of contention and had to be

adjudicated.

53. Alternatively, it was contended that the defendant being the prior

user of the trade name Haldiram Bhujiawala, to which the plaintiff was

claiming proprietary right, both the defendant and the plaintiff being the

concurrent users, ought to have been permitted to use the said trade name

and the defendant could not be injuncted from using the said trade name.

54. I have considered this submission of the leaned counsel. The plea

of concurrent user is an argument of desperation because it was not the

case of the defendant. Moreover, this plea of concurrent user is

completely demolishing the claim of the defendant that Rameshwar Lal,

father of the defendant, was the inventor and originator of the trade name

Haldiram Bhujiawala and it was got registered by him vide registration

No.330375. The fact of the matter is that this registration of the

trademark no. 3300375 also stands since revoked on the objections of the

plaintiff, thus, there is no basis to use the mark. Further Rameshwar Lal

has given a certificate and an affidavit to the effect that his father was the

inventor and originator which also goes against them. Both these

documents are in the nature of an admission. A person does not make an

admission against his own interest unless and until it is true and correct.

This is the rationale of making it relevant under Section 21 of the

Evidence Act. So far as the dissolution deed signed by the mother is

concerned, that only gives them a permission to use the trade name in

West Bengal. Therefore, this submission is also without any merit.

Irreversible Damage

55. The sixth arguments of the learned counsel for the defendant is that

wherein an interim order, if granted, will lead to irreversible situation,

that is, the party's reputation, credibility, goodwill, etc., would suffer. No

interim order should be passed. Correspondingly, it was urged where the

plaintiff's losses, if any, are capable of being remedied by award of

damages then the plaintiff is not entitled to any ad interim orders.

56. There is no dispute about the fact that apart from prima facie case

and the balance of convenience before an ad interim injunction is granted

in favour of a party, what must be shown is an irreparable loss. An

irreparable loss is a loss (in case the injunction is not granted), if it is of

such a nature that it cannot be compensated in terms of money.

57. The contention of Mr. Mukund, the learned counsel for the

defendant is that during the pendency of the appeal itself, the operation of

the ad interim order ought to have been stayed as it has serious civil

consequences on their business. In order to further support his

submission with regard to severity of impact of the grant of ad interim

restraint order against the defendant, it was contended that the defendants

were carrying on the business activities in the name of

Haldiram/Haldiram's/ Haldiram Bhujiawala and Haldiram Bhujiawal

with 'V' logo between February, 1992 to 12.5.1999 when the ad interim

restraint order was passed against them for the first time by Hon'ble Mr.

Justice J.B. Goel in the suit while deciding I.A. No.1675/2012.

58. It has been stated that the defendant had to stop the use of different

names between 1999 to 3.6.2010 when the business activity was being

carried out under a name other than Haldiram. It has been stated that

after 11 years of use of the aforesaid trade name Haldiram etc., the

Division Bench of this court vacated the ad interim order granted by the

learned Single Judge Mr. Goel and remanded the matter back. It has been

stated that no amount of compensation can restore the losses and the

goodwill which the defendant lost for these 11 years while as the plaintiff

has been the beneficiary of the order.

59. It has been further contended that the interim order was again

granted by the learned ADJ on 27.9.2012, the operation of which has

been stayed by this court and the same continues till date. Therefore, at

this point of time when the substantial portion of time has passed while

the litigation between the plaintiff and the defendant is pending, passing

of an ad interim injunction restraining them from user of the trade name

Haldiram is likely to cause irreparable loss to them which no amount of

money can compensate.

60. Correspondingly, it has been argued that so far as the plaintiff is

concerned, in case the injunction is refused to them then certainly they

can be compensated for the non-grant of injunction by the court and

ultimately in case they succeed in the suit. Therefore, this should be the

basis of grant or denial of injunction to the parties and accordingly, the

appeal of the defendant against the plaintiff deserves to be allowed.

61. No doubt the principles of law which have been urged by the

learned counsel Mr. Mukund before this court for the grant of ad interim

injunction cannot be faulted with but the fact of the matter remains as to

whether the injunction deserves to be granted to the plaintiff or not or

whether ad interim injunction deserves to be refused to the plaintiff has to

be tested in the light of the three tests which have been enunciated by the

courts repeatedly and which have been reproduced hereinabove, namely,

the existence of a prima facie case, the irreparable loss caused to the

plaintiff and the balance of convenience, whether it exists in favour of the

plaintiff or not.

62. So far the existence of prima facie case is concerned, there is no

dispute about the fact that the trade mark Haldiram Bhujiawala was the

trade name invented by Ganga Bishan, father of Mool Chand and

Rameshwar Lal, whose progenies are fighting for the use of the trade

mark.

63. It is also not disputed that Rameshwar Lal has setup a case that he

is the originator and the original adopter of the name Haldiram

Bhujiawala but that plea which has been taken by the defendant is false

on account of the fact that the plaintiff have brought to the notice of the

court an affidavit and certificate purported to have been filed by

Rameshwar Lal himself in a litigation initiated with their other family

members, who happen to be their cousins etc. in Calcutta wherein he has

admitted that the mark Haldiram Bhujiawala was the name invented,

adopted and originated by his father, Ganga Bishan.

"EVIDENCE OF DISTINCTIVENESS

I, Rameshwar Lal Aggarwal, son of Shri Ganga Bishan alias Haldi Ram,aged 47 years, Indian by nationality resident of 3-A, Brajodulal Street, Calcutta, do hereby solemnly affirm and declare as under :-

                2.1     .................

                3.2     .................

                4.3 That trade mark of my firm if "Haldiram

Bhujiawala" with letters HRB prominently placed" in the centre and the said mark being used by my firm since 1958 and by virtue of said user during the past 20 years the said trade mark has acquired much wide reputation that the word "HALDIRAM" forming the essential, leading and distinctive part thereof has become exclusively associated with business activities of my firm along for Bhujia, Namkin and Sweet Meat etc. "HALDIRAM" forming the essential part of the trade mark of may firm is the nick name of my father who was trading under the name "HALDIRAM BHUJIAWALA" since his young age.

(Emphasis supplied)"

.......................................

"Dated 16.11.1974

TO WHOM SO EVER IT MAY CONCERN

This is to confirm that the name Haldi Ram Bhujiawala (HRB) which was originally adopted and used by my father since 1941 shall remain the sole property to

my brother Mool Chand and his representative for whole of India except the State of West Bengal. I or any of my representatives shall not claim any further right on this and I shall trade under the name Haldi Ram Bhujiawala in West Bengal only.

Sd/-

(RAMESHWAR LAL AGGARWAL)"

64. Section 58 of the Evidence Act lays down that a fact which is

admitted and need not be proved and this admission by Rameshwar Lal

(since deceased), father of the defendants obviously points out it was

Ganga Bishan who had invented, originated and adopted the trade name

Haldiram Bhujiawala.

64A. The aforesaid facts clearly and unequivocally help the plaintiff to

establish a prima facie case of their grandfather being the inventor and

originator of the trade name to which they have acquired their right to the

trade mark in whole of India except the State of West Bengal.

Change of user qua Regd. TM No.285062 from 1965 to 1941 or before, after Defendants' categorical assertion in their written statement qua prior user of 1958 - No interim order, when prior user claimed by plaintiff itself, becomes a matter of adjudication.

65. The next argument which has been urged by Mr. Mukund, the

learned counsel for the defendant is that in the original plaint filed on

10.12.1991, the plaintiff had stated that he has been using the trade mark

Haldiram Bhujiawala since 1965 and also that the firm M/s. Chand Mal

Ganga Bishan in which mother of appellant No.2/defendant No.2 was

partner was owning the trade mark certificate of 285062 dated 27.1.1981

and its supporting document stated that the user of the aforesaid trade

mark was started from 1965 which continued till date.

66. The defendants filed their written statement and stated that they

have been using the mark Haldiram Bhujiawal since 1958 and had also

placed on record the evidence to that effect. It was alleged by Mr.

Mukund, once the defendants took the stand that they had been using the

trade mark since 1958, the plaintiff filed his application for amendment of

the plaint and shifted his date of user from 1941 so as to defeat the claim

of prior user of the appellant.

67. It was contended by Mr. Mukund that in a case of this nature where

the user of the trade name from 1965 or from 1941 by the plaintiff or by

the defendant from 1958 itself was the subject-matter of adjudication by

the court, no ad interim injunction ought to have been granted in favour

of the plaintiff as neither of the parties could claim exclusive right to such

name Haldiram Bhujiawala.

68. I have carefully considered this submission. Though in the first

instance, the argument advanced by Mr. Mukund may seem to be very

convincing one but on deeper examination, I find this argument to be

without any merit. It is stated that the court while considering an

application under Order 39 Rule 1 & 2 CPC especially in a case where

parties amend their pleadings, court does not see the stand of the parties

on the basis of unamended pleadings of the parties. More so, when the

parties have been fighting over the ad interim order itself for more than

two decades, there is bound to be change in circumstances. Further, once

the amendment is allowed then the amendment relates back to the date of

inception of the plaint or the written statement as the case may be and

whether a party is entitled to an ad interim relief or not has to be

considered by the court on the basis of the last pleading. Moreover, in the

instant case, it is not only the plaintiff, who had amended the plaint, the

defendant has also amended his written statement from time to time and

has been shifting his stand though in a different context. Therefore, in

my considered opinion, this amendment which has been sought by the

plaintiff with regard to the change of date has to be considered on its

merits.

69. It may also be pertinent here to mention no doubt in the original

plaint, the plaintiff has stated that they have been using the trade name

Haldiram Bhujiawala from 1965 but that was essentially on account of

the fact that though that date was given in the trade mark application

submitted by them for the purpose of registration of 'V' logo which was

stated to have been granted in their favour vide trade mark certificate

No.285062 on 27.1.1981 and it related back to the date which was given

by them from 1965.

70. Mr. Amarjit Singh, the learned counsel for the plaintiff had pointed

out that 1965 was taken as a date because in that year, logo Haldiram

Bhujiawala logo in word 'V' was adopted. Further, the fact of the matter

remains that it is the admitted case of the parties that Ganga Bishan @

Haldiram had been using this trade name Haldiram Bhujiawala from his

young days even though young days have not been defined and he

originally started his business in Bikaner and that is how the year was

changed from 1965 to 1941 when Ganga Bishan used to carry out the

business of selling namkeens and other saltish articles/eatables at Bikaner

under the said trade name. Under these circumstances, it could not be

said that because of the subsequent developments which had taken place

between the parties, namely, the starting of the business under the trade

name Haldiram Bhujiawala by Rameshwar Lal, father of the defendants

in West Bengal in 1958 coupled with the fact that in 1974, there was

dissolution of the partnership consisting of three partners in which mother

of the defendants was a party and a signatory to the dissolution by virtue

of which the user of trade name Haldiram Bhujiawala was allocated to

Moolchand in respect of whole of India except West Bengal while as

Kamla Devi (w/o Rameshwar Lal) was given the exclusive use of the

same in West Bengal. It became crystal clear that the user of the trade

name Haldiram Bhujiawala under the trade mark No.285062 was not

under adjudication as is sought to be urged by the learned counsel for the

defendants and therefore, nothing much turns on this submission.

71. I have considered the rival contention on this score. Prima facie it

is established that the trade name Haldiram Bhujiawala was

invented/originated by Ganga Bishan and passed on to the partnership

Chand Mal Ganga Bishan. Once the partnership was dissolved, it was

allocated to Moolchand in respect of whole of the country except State of

West Bengal which was given to Kamla Devi (w/o Rameshwar Lal), who

had started business in West Bengal in 1953. Essentially, what was given

to them was a license to use the trade name in West Bengal only.

Therefore, the opening of shop by they progeny of Rameshwar Lal, that

is, defendants were absolutely wrong on their part.

Declaration dated 16.11.1974, allegedly signed by late Sh. Rameshwar Lal Agarwal (father of the appellant), denied by appellant/defendant as a forged and fabricated document, prima facie being a disputed document, held in order dated 3.6.2010 by this Hon'ble Court as well as trial court in the impugned judgment

72. The next argument which has been advanced by Mr. Mukund, the

learned counsel for the appellant/defendant is that the declaration dated

16.11.1974 allegedly signed by Late Rameshwar Lal Aggarwal, father of

the appellant as well as the dissolution deed dated 16.11.1974 signed by

Kamla Devi is forged.

73. There is no dispute about the fact that stand of the defendant with

regard to the dissolution deed has been ambivalent. The defendant in the

written statement with regard to the signature of Kamla Devi on the

dissolution deed have, in the first instance, been simply denied and it has

been stated that Kamla Devi was an illiterate person and it was sheer out

of respect of her being the daughter-in-law to Ganga Bishan, his father-

in-law, who was the another partner of Chand Mal Ganga Bishan apart

from Moolchand and Shivkaran that she had signed the document. Later

on it was stated by the defendant that the said dissolution deed was signed

by Kamla Devi under undue influence and finally it was contended that

the said dissolution deed is a forged one and it does not bear the

signatures of Kamla Devi at all.

74. It may also be pertinent here to mention that at the stage when the

defendant took the plea that the dissolution deed was signed by Kamla

Devi out of respect and courtesy to elder in the family, namely, Ganga

Bishan @ Haldiram, the case of the appellant/defendant was that they are

not claiming their right to the inheritance of trade mark through their

mother but they are claiming the right to use the trade mark through their

father Rameshwar Lal. Sometimes, they have been claiming their right

directly from their grandfather, Gang Bishan. All these shifting stands

have been taken by the defendant by amending their written statement

from time to time also.

75. Mr. Amarjit Singh, the learned counsel for the plaintiff has taken

the plea that this stand of the defendant is totally a convenient stand

which has kept on changing from time to time. It has been stated that this

plea has absolutely no merit as would be evident from the fact that all

these pleas are contradicting one another. Sometimes, the defendant says

that they are inheritors of the trade name through their father and when it

becomes inconvenient to them, they bank upon the right to use the trade

mark through their mother and assail the dissolution deed. He has also

drawn the attention of the court to the declaration of Rameshwar Lal

signed on 16.11.1974 in which Rameshwar Lal has categorically admitted

that the trade name Haldiram Bhujiawala was invented, originated and

attributed to his father Ganga Bishan at Bikaner which clearly contradicts

the stand of the appellant/defendant that their father Rameshwar Lal was

the originator and inventor of the trade name. It has also been stated by

him that the signatures of Rameshwar Lal are stated to be forged on

account of the fact that there is another similar affidavit signed by

Rameshwar Lal on the same lines which has been disbelieved by the

court but without realizing the fact that Rameshwar Lal has given two

affidavits dated 9.6.1976 and 9.6.1978, contents of which is not doubted

by the defendants. In the said affidavits a definite stand is taken

supporting the invention and origination of the trade name attributable to

his father in a litigation started by their cousins against them in Calcutta

itself which tantamount to an admission in the pleadings which also goes

against the appellant/defendant. All these facts clearly show that this is a

false stand taken by the defendants.

76. I have carefully considered this rival contention and gone thorugh

the voluminous record. Suffice it would be first to say that so far as

Kamla Devi is concerned, the defendants were not claiming right to use

through Kamla Devi. She has chosen to remain silent for almost eight

years without seeking impleadment in this suit. It is only in the year 1999

that she has filed a suit for dissolution of partnership and rendition of

accounts. Further, where you take the stand that documents is signed out

of respect or under misrepresentation, undue influence, fraud or even is

alleged to be forged then one is prima facie admitting the existence of

documents and onus of fraud, coercion, undue influence, forgery to be

proved is on him which can be only done during the trial. All these facts

clearly show that prima facie at this stage the existence of correctness of

the document of dissolution is to be assumed. Therefore, this fact also

goes against the defendant.

77. Ganga Bishan had consciously permitted Rameshwar Lal to use the

trade name Haldiram Bhujiawala only in West Bengal and for the rest of

the country, the rights were given to Moolchand, his other son.

Therefore, Ashok Kumar, the son of Rameshwar Lal, after the death of

later could not have encroached upon the territory which was meant

exclusively to be used by Moolchand and his successors by opening a

shop in Karol Bagh, Delhi which compelled them to file a suit for

injunction.

78. Further the conduct of the defendants does not contemporaneously

matched with the pleadings or the stand taken by them before the court.

In the first instance, the appellants are taking the plea that the mother of

the appellant/defendant had signed the dissolution deed out of respect to

her grandfather, namely, Ganga Bishan which later on changed to undue

influence and forgery.

79. Curiously enough at no point of time till 1999, the

appellant/defendants have chosen to make their mother Kamla Devi as a

party despite the fact that she is not only necessary but also a proper party

to the suit. Kamla Devi would have been the best person to take a stand

before the court as to whether she signed the dissolution deed out of

respect, undue influence or because it was a forged document. It may be

borne here in mind that the suit itself was filed in 1991 and for a period of

eight years, neither Kamla Devi nor any of the appellant/defendant made

any effort to make her as a party and it is only in the year 1999 for the

first time that a suit for declaration was filed by Kamla Devi seeking a

declaration that the dissolution deed which is purported to be signed by

her is a forged document and claiming other consequential relief.

Obviously, Kamla Devi would not have done so unless and until she had

consulted the defendant and the defendants had realized that this was one

of the main weaknesses in their case as the stand taken by them was not

fitting in with the factual matrix of the case.

80. In addition to this, prima facie once a document is placed on record

then there is a presumption of the correctness of the document and a

person who takes up a plea that the document is signed under undue

influence or is a forged document or that it is signed by fraud the onus of

proving that the signatures on the document were obtained by undue

influence, force or fraud, is on such a party because this is a fact which is

especially within the knowledge of such a party and by virtue of Section

106 of the Evidence Act, that party has to discharge that onus which can

be done only during the course of appeal and at the prima facie stage the

document is taken to be the one which is a correct and genuine document

and it will obviously go in favour of the respondent/plaintiff.

81. The same would be the reasoning which would be applicable to the

declaration dated 16.11.1974 purported to have been signed by

Rameshwar Lal Aggarwal, the father of the defendant. Therefore, this

contention of Mr. Mukund, the learned counsel for the defendant is

without any merit.

Documents post 27.9.2012 not to be relied

82. The another argument which has been urged by Mr. Mukund, the

learned counsel for the appellant/defendant is that the order of the

Division Bench dated 3.6.2010 has not been complied with both in letter

and spirit. In this regard it was contended by the learned counsel that the

Division Bench had specifically stated that the documents which was

filed by the respondent/plaintiff post 12.5.1999, that is, the date when the

order of restraint was passed by the learned single judge of this court

against the present appellant will not be considered by the learned ADJ

while deciding the application under Order 39 Rule 1 & 2 CPC afresh. It

has been stated that the very fact that the learned ADJ has placed reliance

on the affidavit dated 9.6.1976 in order to pass a fresh restraint order in

itself shows that it has not followed the orders of the Division Bench in

letter and spirit and thus, the order of restraint which has been passed

pursuant to deciding the application under Order 39 Rule 1 & 2 CPC is

not sustainable in the eyes of law.

83. I have considered this submission made by the learned counsel for

the appellant; however, I do not agree with this submission of the learned

counsel. The learned ADJ has considered both the situations, that is, the

situation both where the documents were on record pre 12.5.1999 as well

as post 12.5.1999 and in both the situations he has found the prima facie

case in favour of the respondent/plaintiff so as to pass an injunction order

against the present appellant.

84. It may also be pertinent here to mention that although the Division

Bench has specifically referred to in its order dated 3.6.2010 that

documents post 12.5.1999 may not be taken into consideration by the

learned ADJ while deciding the application under Order 39 Rule 1 & 2

CPC. The impugned order dated 27.9.2012 not refers to documents dated

09.07.1976 filed after 12.5.1999. The document to which reference is

made is not such a document that if it is ignored or overlooked or taken

off, the record as if the balance will be titled in favour of the defendant as

it contained facts which were already covered in the affidavit dated

09.06.1978 which was on record prior to 12.05.1999. It was never

visualized that it will take so long to decide the interim application but in

the last one year or so, there have been so many major developments in

the litigation between the parties in different forums that those facts

which go to the root of the matter will have to be necessarily considered

by this court as otherwise non-consideration of the said facts and the

documents by this court will only result in passing an inchoate order

which will not be sustainable in the eyes of law.

85. The illustration of this would be reflective from the fact that the

trade mark registration No.330375 was obtained in the name of

Rameshwar Lal and Prabhushankar Aggarwal in the year 1980. This

registration was obtained by Rameshwar Lal and Prabhushankar

Aggarwal on the ground that Rameshwar Lal is the inventor, originator

and propagator of the trade mark while as the respondent/plaintiff herein

had raised various objections including the one that the same has been

allegedly obtained in collusion with the attorney who was looking after

the matters of both the warring group, namely, Rameshwar Lal and

Moolchand. It may be pertinent here to mention the registration of trade

mark 330375 which was got done by Rameshwar Lal was cancelled on

the objections having been raised by Moolchand and its progeny, who are

the respondent/plaintiffs herein. After the cancellation of the trade mark

certificate by the Intellectual Property Appellate Board the defendant had

chosen to file a writ petition in Calcutta and in this writ petition also they

were unsuccessful in obtaining any stay order against the operation of the

judgment passed by the Tribunal. Meaning thereby that the registration of

the trade mark was prima facie got done by Rameshwar Lal and

Prabhushankar Aggarwal surreptitiously and was not sustainable in the

eyes of law.

86. One of the arguments of the learned counsel for the defendant has

been that the defendant may be permitted to use the mark Haldiram

Bhujiawala notwithstanding the fact that its trademark registration

330375 has been cancelled on account of the fact that the appellant has

been using the aforesaid trade mark since 1958 while as the plaintiff had

stated that it had started user of the mark only in 1965 and the trade mark

No.285062 has been registered in 1981. It is only later on the written

statement having been filed by the present defendant that the pliantiff

took the plea that it is using the trade mark since 1941. It is, therefore,

urged that no case for passing off is made out against the present

defendant on account of the fact that the trade mark happens to be

registered in favour of the plaintiff.

87. Mr. Mukund, the learned counsel for the defendant has contended

that the plaintiff had not setup a case of passing off in the plaint.

Therefore, there is no point in considering a plea which has neither been

pleaded nor is any prima facie evidence produced about the same.

88. I have carefully considered the submission of the defendant in this

regard. The plea of concurrent user which is taken by the present

appellant is self destructive of the plea that Rameshwar Lal was the

inventor or a prior adopter. The plea of concurrent user pre-supposes the

pre-existing and pre-established right of another in the mark. It may be

pertinent here to refer to the fact that one of the submissions which the

defendant had made originally was that their father Rameshwar Lal was

the inventor and originator of the trade mark Haldiram Bhujiawala which

was totally contrary to the affidavit dated 09.06.1978 and the certificate

dated 16.11.1974 which was placed on record showing that Rameshwar

Lal himself had admitted that his father Ganga Bishan @ Haldiram was

originator and inventor of the trade name Haldiram for which he was

doing business originally in Bikaner till 1958 when Rameshwar Lal

opened the shop in Calcutta. Thus, from the aforesaid discussion, the

only irresistible conclusion which can be drawn at the moment is that the

plaintiff has been able to establish before the trial court that it has got a

prima facie good case on account of the fact that it has been established

that Ganga Bishan was the originator and inventor of the trade name

Haldiram Bhujiawala, and was the partner of the partnership firm which

was started by him under the name and style of Chand Mal Ganga Bishan

by virtue of which the trade name came to be used exclusively by the

partnership firm. On account of dissolution of the partnership in 1974,

the trade name Haldiram Bhujiawala had been exclusively assigned in

favor of Moolchand and his successors for use throughout India except

the State of West Bengal because so far as the said State of West Bengal

is concerned, Rameshwar Lal had started a shop under the name of

Haldiram Bhujiawala at Calcutta and thus, to that extent, he was

permitted to use the trade name/trademark, so far as West Bengal is

concerned. The balance of convenience is in favour of the plaintiff

because not only it was doing business pursuant to the allocation of the

trade name in favour of Moolchand in Delhi by running more than one

shop since 1983, firstly, in Chandni Chowk and then at various other

places but as a matter of fact, it was also legally authorized to use the said

trade name at all places other than West Bengal.

89. The contention that the plaintiff would suffer an irreparable loss is

also satisfied inasmuch as the defendants by opening the shop in Delhi,

which was not within their domain, had tried to encroach upon the

domain of the plaintiff and by usurping the said trade name of Haldiram

Bhujiawala in a domain where they were not supposed to function, they

were causing irreparable loss to the plaintiff but were also adding to the

confusion of the public at large. This confusion emanates from the fact

that both the respondent and the petitioner were using the word Haldiram

with 'V' logo or Haldiram Bhujiawala or Haldiram in different

letters/font with a perceptible difference and thus, creating a doubt in the

minds of the public at large as to which one is the genuine one.

90. In addition to this, the other conditions which are essential for the

grant of an ad interim injunction, namely, that a party must come to the

court with clean hands and that there should be no delay in approaching

the court for grant of an ad interim relief, has also been satisfied by the

plaintiff and not proved by the defendant to be the deficiencies in the case

of the plaintiff which may disentitle them the relief claim. Accordingly,

for the above mentioned reasons, I feel that so far as the appeal of the

defendant is concerned, it is without any merit and the same is liable to be

dismissed.

91. Further, it may be pertinent here to mention that the Hon'ble

Division Bench while disposing of the appeal filed against the ad interim

order dated 12.05.1999 had specifically observed that the entire trial may

be completed within a period of six months. It seems that many six

months have elapsed in between, however, the trial court has not been

able to decide the suit till date. I have been given to understand that the

evidence of the respondent/plaintiff has been substantially completed and

some evidence still remains to be recorded. It is very strange that despite

a specific direction, the judicial officer conducting the trial has not

deemed it proper to seek enlargement of time from the court when more

than six years have elapsed from the direction of the order having been

passed by the Division Bench. I, therefore, direct that the learned

Registrar General shall prepare a list of officers, who have remained in

that particular court for more than six months and have dealt with the

aforesaid case and seek their explanation as to why the aforesaid direction

passed by the Division Bench was not complied with by them. The

explanation furnished by such of the officers, who remained posted in the

said court for more than six months and yet were not able to complete the

trial, shall be placed before this court after a lapse of three months.

92. The learned trial judge had permitted the defendant to use the trade

name Haldiram Bhujiawala for a limited period as per the exception

carved out in clause 43 (1)(a) and (b) of the impugned order, till the time

the said order is modified or vacated or till the time rectification order is

passed by the Tribunal, as those two connected appeals and the CM (M)

have also already been disposed of and the contingency which permitted

the defendant to use the trade name has also cease to exist. The

defendant had used the aforesaid trade name for a considerable length of

time, causing irreparable loss to the plaintiff and they ought to stop

forthwith the use of the trade name; however, I am cognizant of the fact

that as the business has been done by them under the name of Haldiram,

they must have got printed certain menu cards, pamphlets, boxes, etc.,

which will go waste and they need to be compensation for the same. I,

accordingly, fix a period of two weeks within which the defendant must

destroy the same. So far as the plaintiffs are concerned, they shall deposit

a sum of Rs.5 lacs with the Registrar General of this court within a period

of one week from today so that in the event of the boxes, pamphlets,

boards, etc., which are got printed by the defendant under the banner of

Haldiram are to be removed forthwith, that the defendant is duly

compensated by disbursing the said amount to the defendant, from the

aforesaid amount. So far as the disbursal of the amount of Rs.5 lacs in

order to compensate the defendant is concerned, this shall be done by the

Trial Court on production of documents which will show the amount of

money spent by them in getting their boxes, pamphlets, etc. printed in the

last three months.

93. In view of the above, the appeal against the impugned order dated

27.9.2012 passed by the learned ADJ stands dismissed and the restraint

order against the defendants, their representatives, agents, assignees etc.

from using the trade name/mark Haldiram Bhujiawala HRB with 'V' logo

in any form whatsoever, wholly or in parts forthwith, till the final

disposal of the suit, as ordered by the trial court, stands affirmed except

that para 43 (1) (a) and (b), which permitted the defendant to use the trade

name on certain contingency, stands deleted. Further, clause 43 (1) (c)

stands modified to the extent that now instead of the defendant, the

plaintiff shall maintain an account of sales made by them using the

aforesaid trade name/mark or logo, duly audited in accordance with law,

till final disposal of the suit and shall file the same before the court as and

when called upon to do so.

V.K. SHALI, J.

OCTOBER 19, 2015 'AA' 'AD'