[Cites 12, Cited by 0]
Delhi High Court
More Than Water Private Limited vs Nesco Limited on 15 April, 2026
Author: Tushar Rao Gedela
Bench: Tushar Rao Gedela
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order reserved on : 01.04.2026
Order delivered on: 15.04.2026
+ CS(COMM) 125/2026, I.A. 4734/2026, I.A. 6512/2026 & I.A.
7236/2026
MORE THAN WATER PRIVATE LIMITED .....Plaintiff
versus
NESCO LIMITED .....Defendant
Advocates who appeared in this case:
For the Plaintiff : Mr. Chander M. Lall, Senior Advocate with Mr.
Anirudh Bhatia, Advocate.
For the Defendant : Mr. J. Sai Deepak, Senior Advocate with Mr.
Naqeeb Nawab, Ms. Sanandika Pratap Singh, Mr.
Sidhi Pramodh Rayadu and Ms. Purnima
Vashistha, Advocates.
CORAM:
HON'BLE MR. JUSTICE TUSHAR RAO GEDELA
ORDER
TUSHAR RAO GEDELA, J.
I.A. 3663/2026 (Under Order XXXIX Rules 1 & 2, CPC)
1. This is an application filed by the plaintiff under Order XXXIX
Rules 1 & 2, Code of Civil Procedure, 1908 ('CPC') seeking interim
injunction against the defendant.
2. The plaintiff claims to be incorporated on 02.09.2022 and engaged in
the business of manufacturing, marketing, distribution and sale of packaged
drinking water supplied through eco-friendly paper-based boxes/packaging
bearing the trademarks 'WATERBOX', 'WATER BOX', 'MORE THAN
WATERBOX'/ , 'WATER BOX IS THE RIGHT
CHOICE'/ / .
3. Plaintiff claims to be the prior adopter and user of the aforesaid
earlier, well-known trademarks and has filed the present suit for passing off
and infringement of copyright, claiming that the defendant is advertising,
marketing, promoting, offering for sale and selling packaged drinking
water bearing the impugned mark 'MY WATER BOX'(Device)/
/ , by slavishly copying, with dishonest
intention, the prominent and essential feature of the plaintiff's mark
'WATER BOX' ad verbatim, in its entirety, in respect of identical goods.
4. It is claimed that the defendant mala fide obtained the registration of
the impugned mark 'MY WATER BOX' (Device)/
bearing Application no.6879596 in Class-32 dated 26.02.2025, with user
claim of 15.10.2020.
5. Plaintiff further asserts that being a prior adopter and prior user of
the said trademarks, it has perfected its common law rights as opposed to
the defendant. It is in this backdrop that the plaintiff has instituted the
accompanying suit for passing off against the defendant and the present
application is filed for ad-interim injunction against the defendant.
CONTENTIONS OF THE PLAINTIFF:-
6. Mr. Chander M. Lall, learned senior counsel appearing for the
plaintiff submitted as under:-
6.1. Learned senior counsel opened his arguments by inviting attention
of this Court to the comparison between various marks of the plaintiff and
that of the defendant which is extracted hereunder:-
Learned senior counsel submitted that though the plaintiff's marks
are not registered, however, it is the prior adopter and user of the said
marks since the year 2018. An application for registration of the device
mark, 'More Than Water Box'/ was submitted in the year
2023 and an application for the word mark 'Water Box' was submitted in
the year 2026 by the plaintiff.
6.2. Mr. Lall, learned senior counsel contended that since the present suit
is instituted on the claim that the defendant is passing off its goods as that
of the plaintiff, it would be necessary for the plaintiff to establish prior
adoption, prior user and goodwill from the year 2018. In order to support
the said contention, he referred to various invoices commencing from
23.06.2018 which is a purchase order placed by the Predecessor-in-interest
- M/s. Meera Enterprises. He also invited attention to Invoice bearing
no.MEE-007 dated 09.02.2020 for the goods sold under the mark 'More
Than Water Box'. Thereafter, other invoices pertaining to purchases by
M/s. Meera Enterprises were also drawn attention to. Lastly, attention was
invited to Invoice no.MEE-007 dated 12.01.2020 for the goods sold under
the mark 'More Than Water Box'.
6.3. Learned senior counsel further contended that on 11.11.2018, the
mark of the plaintiff 'Water Box is the Right Choice' was created and
furnished to the plaintiff through e-mail. In order to support the contention
that as early as 2018, the plaintiff was selling its products i.e., Alkaline
Water in tetra packs, learned senior counsel drew attention to the sample
picture of the product which is as under:-
To further strengthen the aforesaid fact of creation and adoption of
the mark 'Water Box is the Right Choice', learned senior counsel placed
reliance on the No Objection Certificate issued by the creator (Mr. Jay
Nathwani) dated 09.03.2018. Further, learned senior counsel asserted that
the present mark 'More Than Water Box' used by the plaintiff was created
on 10.10.2022 by an artist under the contract of service. He stated that
since the mark of the plaintiff 'More Than Water Box' was created by an
artist under engagement by the plaintiff, the plaintiff would be the first
owner of the original artistic work embodied therein by virtue of the
provisions of the Copyright Act, 1957.
6.4. It is submitted that vide Assignment Deed dated 07.10.2022, M/s.
Meera Enterprises assigned and transferred its rights over the word mark
'Water Box' alongwith its device/logo and tagline 'Water Box is the Right
Choice' to the plaintiff. In order to establish extensive publicity and
promotion, learned senior counsel referred to various photographs of the
plaintiff's products as also the photographs available on the website -
www.morethanwater.in. He claimed that the domain name of the plaintiff
was registered on 26.02.2023 by M/s. Meera Enterprises, the Instagram
account was created in March, 2018 and the first post was published in the
year 2019. He submitted that the said Instagram account has been actively
used since 2023 for advertisement and promotion of its products and has
garnered 11,100 followers. Similarly, the plaintiff also created a Facebook
account on 25.03.2018 under the mark 'Water Box', which currently has
9,800 followers. The plaintiff also relied upon the Facebook post of
25.03.2023 promoting its product bearing the mark 'More Than Water
Box'.
6.5. Mr. Lall, learned senior counsel also emphasized that apart from the
above, the plaintiff's products under the mark 'More Than Water Box' are
being offered for sale on e-commerce platforms like IndiaMart, TradeIndia
and Amazon.in etc. He stated that even in exhibitions, the plaintiff had used
the trademark 'More Than Water Box' under which its goods were being
offered for sale.
6.6. In order to emphasize and establish substantial goodwill and
reputation in the past seven years, learned senior counsel relied upon the
CA certificate certifying the annual turnover from FY 2022-23 to 2025-26
(till December, 2025). He also brought attention of this Court to the
promotional expenses incurred by the plaintiff for its products bearing the
subject marks.
6.7. He submitted that the plaintiff vide the Trade Mark Application
dated 09.03.2023 applied for the device mark 'More Than Water Box'/
on a 'proposed to be used' basis in Class-32. He fairly
submitted that the said application is objected to. He also stated that the
plaintiff had applied for the registration of the word mark 'Water Box' on
15.01.2026 in Class-32 claiming use since 23.06.2018. He further stated
that the design registration from the Patent Office for Design No.408610-
001 in Class-09-03 was granted on 24.02.2024 in favor of the plaintiff with
respect to the product bearing the trademark 'More Than Water Box', as
depicted below:-
6.8. In contrast, learned senior counsel contended that the defendant's
trademark 'My Water Box' was registered on 26.02.2025 with a user claim
since 15.10.2020. He would contend that the affidavit of user filed by the
defendant before the Trade Marks Registry was based on falsehood. He
would contend that the defendant claimed creation and adoption of the
mark 'My Water Box' since the year 2018, and claimed user of the mark
since 15.10.2020, however, the said claim is bereft of any supporting
documents as none of the invoices showed the defendant having received
any consideration for the purported sale of its product bearing the
infringing mark. In fact, he would contend that these were mere transfers
where either the consignee is the defendant itself, or the products were sold
as part of the banquet packages. According to him, there are only two
invoices dated 09.06.2022 and 01.07.2022 where some charges are
reflected against the product bearing the mark 'My Water Box'. Thus,
according to learned senior counsel, the defendant was nowhere in the
commercial segment in comparison to the plaintiff who was by that time
well established and had gathered immense reputation.
6.9. Yet another relevant contention of the plaintiff argued by Mr. Lall,
learned senior counsel, is in respect of the Search Report dated 27.02.2025
generated on the Trade Mark Application filed by the defendant. He would
vehemently contend that at the time when the Search Report was generated,
it was the mark of the plaintiff 'More Than Water Box' that was cited. In
other words, he emphasized that the mere fact that at the time of scrutiny of
the defendant's application for registration of the mark 'My Water Box',
the plaintiff's mark 'More Than Water Box' was cited in objection, leads to
the presumption that the mark of the plaintiff was already a well-known
and established mark, and was in the knowledge of the defendant.
According to him, this is a clear indicator of not only the prior adoption and
user by the plaintiff but also establishes its goodwill and reputation as well
as dishonest adoption of the infringing mark by the defendant.
6.10. He also invited attention to the response of the defendant to the
objection raised by the Trade Marks Registry whereby the defendant
submitted an evasive reply that the application for the cited mark was filed
on 09.03.2023 on a 'proposed to be used' basis, while the defendant has
filed its application with a user claim of 15.10.2020. Mr. Lall would
contend that the said statement is false on the face of it in view of the
overwhelming documentary evidence placed on record by the plaintiff in
support of its user claim since the year 2018 as well as lack of evidence for
the defendant to claim use since 2020.
6.11. He would stoutly emphasize on the apparent contradistinction in the
submissions of the defendant before the Trade Marks Registry in
comparison to the stand taken by it before this Court. In other words,
learned senior counsel would submit that on one hand, the defendant has
taken a stand that 'My Water Box' is not descriptive and does not have a
dictionary or a commonly known meaning before the Trade Marks Registry
however, on the other, has claimed here that the mark of the plaintiff is
descriptive of the product. According to him, this contradiction itself is
glaring enough to warrant injunction against the defendant.
6.12. Dilating on the falsities and fabrication employed by the defendant
before the Trade Marks Registry, learned senior counsel relied upon the
photographs enclosed by the defendant alongwith its Trade Mark
Application to establish user. While referring to the photographs, he would
indicate that the same seem to be fabricated and photoshopped pictures of
some exhibition which establishes misrepresentation, fraud, dishonesty and
deception played by the defendant in order to obtain registration of its
mark, with user claim since 15.10.2020.
6.13. Apart from the aforesaid contention, learned senior counsel would
vehemently contend that irrespective of the aforesaid glaring lacunae, the
screenshot from the defendant's Instagram post is a clear giveaway for the
reason that the Instagram post of the year 2025 of the defendant establishes
that the said product under the infringing mark of the defendant was slated
to be launched only in the month of December, 2025. Thus, he would
contend that if a product under the mark 'My Water Box' was not even
launched till the month of December, 2025, the plaintiff, in view of the
aforesaid voluminous evidence in its favour, is clearly entitled to an ad-
interim injunction, restraining the defendant from any further use of the
infringing mark 'My Water Box'.
6.14. Additionally, learned senior counsel stated that the plaintiff has also
filed a petition under Section 57 of the Trade Marks Act, 1999 seeking
rectification/removal of the impugned mark 'My Water Box' (Device)/
before this Court. Notice is stated to have been issued on
04.02.2026.
6.15. Last but not the least, learned senior counsel while comparing both
the products under their own respective marks contended that both the
parties are manufacturing and offering for sale packaged drinking water
through common trade circles, distribution channels and retail outlets,
which would enhance the possibility of actual confusion. He also submitted
that there is no doubt that the consumers would be identical. Thus, the
common man will surely get confused or deceived while purchasing the
goods of the defendant, believing them to be those of the plaintiff or
somehow associated with it. To demonstrate confusion, Mr. Lall brought
attention to one such instance that occurred on 04.11.2025 when a
consumer reached out to the plaintiff while attempting to reach out to the
defendant.
6.16. Learned senior counsel further contended that drinking water is a
product of mass consumption, purchased by all strata of society, for
everyday consumption and hence, the consumers cannot be expected to
exercise high degree of care/caution and are bound to be easily misled. In
order to establish deception by the defendant with an intention to create
confusion amongst the consumers, learned senior counsel relied upon the
comparison table between the two products, which is extracted hereunder:-
Learned senior counsel claimed that the packaging of the defendant's
product is identical to that of the plaintiff's, i.e., white rectangular eco-
friendly paper-based boxes with minimalist layout, with a common
wave design, reinforcing the same visual impression.
6.17. Moreover, he also contended that in a suit for passing off, the
plaintiff has to pass the triple test. The plaintiff has, by virtue of the
voluminous documents, been able to prima facie establish (i) prior
adoption, (ii) prior use, (iii) immense reputation and; (iv) substantial
goodwill. The plaintiff has further established dishonesty and
misrepresentation by the defendant which would, in all likelihood, cause
damage to the goodwill and reputation of the plaintiff.
6.18. Learned senior counsel also relied on the judgements of this Court in
Rajasthan Aushdhalaya Private Limited vs. Himalaya Global Holdings
Ltd. & Anr.: 2025 SCC OnLine Del 4721, South India Beverages Pvt.
Ltd. vs. General Mills Marketing Inc.: 2014 SCC OnLine Del 1953 and
order dated 09.01.2026 in Anurag Saxena vs. Nishant Singh, CS(COMM)
14/2026.
7. Relying on the aforesaid, learned senior counsel prayed that an ad-
interim injunction order be passed in its favour, as per the prayers sought in
the present application.
CONTENTIONS OF THE DEFENDANT:-
8. Appearing for the defendant, Mr. J. Sai Deepak, learned senior
counsel stoutly refuted the contentions and submissions of the plaintiff.
8.1. He would contend that the defendant is a registered proprietor of the
mark 'My Water Box'(Device)/ applied for on 26.02.2025
with a user claim since 15.10.2020.
8.2. In contrast, he would contend that the plaintiff admittedly has no
statutory rights over its claimed marks as well as no sales for the FY 2020-
21 to FY 2022-23. Equally, there is no document placed on record by the
plaintiff to indicate any expenditure on advertisement and promotion for
the years 2022-24. He contended that mere proof of some user by placing
on record intermittent sales is not a proof of substantial goodwill. He would
contend that an approximate sales of Rs.40 lakhs, that too, not relatable to
the marks of the plaintiff, cannot be stated to be accumulation of substantial
goodwill for being granted protection by this Court in an action of passing
off.
8.3. Learned senior counsel stated that it is admitted by the plaintiff that
it was incorporated in the year 2022 and it is on account of the Assignment
Deed executed by M/s. Meera Enterprises that the plaintiff claims right
over the marks 'Water Box' and 'Water Box is the Right Choice'. Other
than that, the plaintiff, it is argued, has not placed any evidence worth its
name to substantiate its user claim since 2018 or to establish substantial
goodwill or reputation.
8.4. In order to support the aforesaid contention, Mr. J. Sai Deepak
referred to two invoices placed on record by the plaintiff to predicate its
prior user. He referred to Invoice No.MEE-007 dated 09.02.2020 and
another invoice bearing the same number i.e., Invoice No.MEE-007 dated
12.01.2020. He submitted that the fabrication and forgery on the part of the
plaintiff is writ large. He states that the forgery is established from the fact
that the two invoices possibly could not carry the same invoice number; the
rounding off of Rs.0.80/- in both the invoices, while not being applicable to
one of the two invoices, also indicate that the plaintiff in its enthusiasm to
establish prior user has fabricated and forged invoices. He would contend
that though in the rejoinder, the plaintiff has attributed these fatal mistakes
as a mere clerical or accounting error, the said error itself is fatal to the case
of the plaintiff.
8.5. In addition, learned senior counsel referred to each one of the
invoices placed on record by the plaintiff alongwith the suit to drill holes in
the contentions raised on behalf of the plaintiff. He would contend that
except for the aforesaid two forged and fabricated invoices indicating sales
for a paltry amount, the other invoices are of purchases made by the
plaintiff which is neither here nor there, muchless, a proof for establishing
substantial goodwill and immense reputation.
8.6. So far as the marks themselves are concerned, learned senior counsel
would stoutly contend that there is no continuity in the use of a particular
mark, as erroneously claimed by the plaintiff from the year 2018 through
till date. In that, admittedly, the plaintiff claims to have adopted the mark
'Water Box is the Right Choice' as purported to be evidenced by the NOC
of the creator - Mr. J. Nathwani on 09.03.2018, while the next mark 'More
Than Water Box' is purportedly claimed to have been in use since 2022.
Thus, none of these marks have been in continuous use since 2018 to claim
substantial goodwill. He would contend that this is established by the
pictographical images of the device mark on the alleged product of the
plaintiff in the documents annexed by the plaintiff alongwith the plaint.
8.7. Apart from the above, learned senior counsel would also refer to the
Examination Report dated 16.09.2023, issued by the Trade Marks Registry
raising an objection under Section 9(1)(b) of the Trade Marks Act, 1999 to
the trademark application of the plaintiff filed on 09.03.2023, which is
stated to be still pending. While referring to the provisions of Section
9(1)(b) of the Act, learned senior counsel contended that the said
provisions provide absolute grounds for refusal of registration. Learned
senior counsel invited attention to the reply of the plaintiff to the
Examination Report raising the aforesaid objection wherein the plaintiff
clearly stated that the mark 'More Than Water Box' is not descriptive; that
it is applied as a device mark, and not a word mark; that it has a unique
design; and, that "the combination of "more than" and "water box"
implies that the product is something different from just a water box, which
is the category of goods for which the mark is sought". Having taken such
a stand, in contrast, the plaintiff has filed a subsequent application dated
15.01.2026 seeking registration of the word mark 'Water Box' with user
claim since 23.06.2018, which is descriptive of the product being sold.
8.8. In any case, learned senior counsel also contended that the marks of
the plaintiff and the defendant are not visually similar and that the colour
theme, font and placement of the words are also different. The comparison
table relied upon by the defendant is extracted hereunder:-
8.9. Mr. J. Sai Deepak, learned senior counsel while referring to the
Instagram page of the plaintiff, purported to have been created in the year
2018, contended that the username has been changed six times in the past
and, thus there is no way to ascertain as to what was the original name
under which the alleged Instagram page was created. According to him, the
change of username so many times, without any clarification as to the past
names, cannot enure to the benefit of the plaintiff.
8.10. Next contention of the learned senior counsel was in respect of
another false assertion by the plaintiff. He would contend that while all this
time, the plaintiff has asserted manufacture and sale of its product by using
tetra pack from the year 2018 onwards, it was only in the month of July,
2022 that for the first time, by virtue of an amendment, the Bureau of
Indian Standards (hereinafter referred to as 'BIS') had permitted use of tetra
pack/Paper-based Multilayer Laminated/Extruded Composite Cartons for
packaging and sale of water. He would contend that there is no way that the
plaintiff could have sold its products in tetra packs prior to July, 2022 and
if it did, it was contrary to and violative of the BIS Regulations which were
binding on all manufacturers of such products in the country. His
contention is that if the plaintiff has been selling its products under the
subject marks in violation of a statutory prohibition, such sales under the
subject suit marks cannot enure to the benefit of the plaintiff in a suit for
passing off. In other words, the said sales are illegal and non-est for
consideration in a Court of law.
8.11. Learned senior counsel would next contend that the FSSAI
application of the plaintiff was rejected in the year 2019 and granted
subsequently only on 31.01.2020. Thus, according to him, M/s. Meera
Enterprises had no regulatory approval between the years 2018 to 2020 and
thus prior to 31.01.2020, the plaintiff could not have possibly sold any
goods at all. Learned senior counsel would also contend that the plaintiff
has not disclosed, rather, has concealed the fact that its FSSAI application
was rejected in the year 2019 and as such, the plaintiff is not entitled to
discretionary relief under the provisions of Order XXXIX Rules 1 and 2 of
the CPC.
8.12. While referring to the FSSAI license granted to the plaintiff on
11.04.2025, learned senior counsel would contend that the note appended
thereto limited the annual sales turnover to only up till Rs.12 lakhs. He
stated that in such circumstances, the annual sales turnover of
Rs.39,60,131.41 claimed by the plaintiff for FY 2025-25 (till December,
2025) is beyond comprehension. Moreover, he would contend that the
plaintiff did not obtain the appropriate category permission from the FSSAI
authority for manufacture and sale of packaged drinking water which falls
under the Category 14.1.1. He stated that the said FSSAI registration
indicates permission under Category 14.1.4.2 and 14.1.4.3, which is for
'non carbonated water based beverages (non-alcoholic)' and 'barley
water', respectively. Learned senior counsel would contend that the
plaintiff does not have the permission to manufacture and offer for sale
packaged drinking water.
8.13. Likewise, learned senior counsel also attempted to establish
concealment and non-disclosure of material facts by the plaintiff in respect
of the GST registration. Though the plaintiff has filed its GST registration
of the year 2018 in the name of M/s. Meera Enterprises alongwith the suit,
however, did not disclose that the same was cancelled suo moto w.e.f.
30.12.2020. He stated that the GST registration was obtained subsequently
only in the month of December, 2022 in the name of the plaintiff, i.e., More
Than Water Pvt. Ltd. He would contend that this too clearly indicates that
there has been no continuity either in the marks of the plaintiff or sales of
its products under the claimed marks. Other than that, he would also
contend that admittedly, there have been no sales from the year 2020
through till the year 2023. Ostensibly, the lack of sale is not on account of
COVID-19 pandemic, as falsely claimed by the plaintiff, but on account of
not having statutory registrations from the FSSAI or the GST Department.
Thus, according to the learned senior counsel, the plaintiff has miserably
failed in establishing goodwill, muchless substantial goodwill.
8.14. Mr. J. Sai Deepak, learned senior counsel contended that this Court
has no territorial jurisdiction to try and adjudicate the present suit inasmuch
as though the defendant's website is interactive, yet none of its products are
open for delivery beyond the territory of the State of Maharashtra. There
are no sales in Delhi, no presence otherwise of the defendant in Delhi and
since the deliveries are restricted only to Maharashtra, this Court lacks the
requisite territorial jurisdiction to adjudicate the present suit. Moreover,
learned senior counsel submitted that in case the plaintiff asserts that the
defendants' website was interactive and that its products were available for
purchase, within the territory of Delhi, there is no reason, muchless a
cogent reason, as to why the plaintiff did not make any such purchase and
produce the product of the defendant before this Court alongwith the
invoice. In the absence thereof, learned senior counsel emphatically
contended that the plaintiff has also failed even in, prima facie, establishing
any jurisdiction conferred upon this Court, to adjudicate the present suit.
8.15. Learned senior counsel also relied upon the judgements in S. Syed
Mohideen vs. P. Sulochana Bai:2015 SCC OnLine SC 1084, Toyota
Jidosha Kabushiki Kaisha vs. Prius Auto Industry Limited & Ors.:(2018)
2 SCC 1 and Brihan Karan Sugar Syndicate Pvt. Ltd. vs. Yashwantrao
Mohite Krushna Sahakari Sakhar Karkhana:(2024) 2 SCC 577.
9. Thus, predicated on the aforesaid contentions, learned senior counsel
would contend that the application seeking ad-interim injunction ought to
be dismissed with costs.
REJOINDER OF THE PLAINTIFF:-
10. In rejoinder, Mr. Lall makes the following submissions:-
10.1 So far as the contention of the defendant that though its website is
interactive, however products were never available for sale in the territory
of Delhi is concerned, Mr. Lall, learned senior counsel refuted the same.
He would contend that the plaintiff is in possession of a fresh Expert
Report which can categorically prove and establish that the defendant has
altered its website subsequent to the filing of the present suit. He would
contend that prior to the filing of the suit, the defendant's website was
accepting orders for delivery of its products even in Delhi.
10.2 Further, the objection regarding BIS Regulations prohibiting use of
tetra packs or Paper-based Multilayer Laminated/Extruded Composite
Cartons raised by the defendant is concerned, learned senior counsel while
referring to BIS Regulations for the year 2018 stated that the restrictions, if
at all, may have only been for packaged drinking or mineral water and not
for alkaline water. He asserted that the plaintiff at the relevant period was
manufacturing and offering for sale alkaline water under its trademarks. He
stoutly asserted that alkaline water was not specifically either mentioned or
restricted in the BIS Regulations, 2018. His contention was that if there are
no express prohibitions, then restrictions to a particular product cannot be
read into or readily inferred by any legal standards. Thus, according to him,
alkaline water was implicitly permitted to be packaged and sold in tetra
packs or Paper-based Multilayer Laminated/Extruded Composite Cartons
as there was no express proscription.
10.3 So far as the contention in respect of cancellation of the GST
registration of the plaintiff is concerned, it is asserted by Mr. Lall, learned
senior counsel that the same was on account of no sale of the product of the
plaintiff due to the COVID-19 pandemic which impacted millions of lives
all over the world from the year 2020 till the year 2022. So far as the
objection regarding plaintiff's Instagram account raised by the defendant is
concerned, learned senior counsel would submit that the posts on the
Instagram account clearly points to the presence of the plaintiff's brand and
use of the subject trademarks since the year 2018. It is his contention that
the plaintiff is only to prove or prima facie establish its presence, both in
online and offline modes, prior to that of the defendant.
10.4 Learned senior counsel asserted that the plaintiff has claimed actual
sales as per the CA's certificate and has not made any exaggerated claims.
According to the learned senior counsel, the amount of turnover in the last
so many years is only one of the parameters for consideration of goodwill.
He would contend that since the defendant has been unable to show any
sale except for transfer to itself, the sales actually shown by the plaintiff
under its marks clearly establish substantial goodwill and immense
reputation garnered over the years.
10.5 Mr. Lall stoutly contended that there is nothing to dispute the fact
that the plaintiff was first in the market to put its goods for sale under its
marks much before the defendant even entered into the market. He would
also contend that having regard to the fact that the defendant's registration
under the FSSAI Act itself is of the year 2025, the question of user claim
since 2020 does not arise and such assertion would be contrary and
violative of the Food Safety and Standards Act, 2006 itself.
10.6 Learned senior counsel would contend that the defendant is a
dishonest adopter for the reason that the trademark application of the
defendant as also the documents annexed in support of such applications
are clearly forged and fabricated and the registration which has been
granted by the Trade Marks Registry based on such forgery is liable to be
revoked, clearly leaving the plaintiff as the only and sole bona fide user and
proprietor of its marks from the year 2018. Thus, the plaintiff is entitled to
an ad-interim injunction order against the defendant.
ANALYSIS & CONCLUSION:-
11. Before this Court commences examination of the application seeking
stay on merits, it has to be borne in mind that the suit of the plaintiff is
based on relief of passing off. What ingredients or principles are required to
be borne in mind while considering applications of this nature where the
suit is predicated on the allegation of passing off, is no more res integra.
The Supreme Court in a series of seminal judgments commencing from the
judgment in S. Syed Mohideen vs. P. Sulochana Bai:2015 SCC OnLine
SC 1084, Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industry
Limited & Ors.:(2018) 2 SCC 1 and Brihan Karan Sugar Syndicate Pvt.
Ltd. vs. Yashwantrao Mohite Krushna Sahakari Sakhar
Karkhana:(2024) 2 SCC 577 have laid down the parameters or the
considerations that a Court must bear in mind while considering an
application seeking stay in a suit for passing off. The relevant paragraphs of
the aforementioned judgments, ad seritim, are as under:-
(i) S. Syed Mohideen vs. P. Sulochana Bai:2015 SCC OnLine SC 1084:
"30.4. ...Thus, the scheme of the Act is such where rights of prior user
are recognised superior than that of the registration and even the
registered proprietor cannot disturb/interfere with the rights of prior
user. The overall effect of collective reading of the provisions of the Act
is that the action for passing off which is premised on the rights of prior
user generating a goodwill shall be unaffected by any registration
provided under the Act. This proposition has been discussed in extenso
in N.R. Dongre v. Whirlpool Corpn. [1995 SCC OnLine Del 310]
wherein the Division Bench of the Delhi High Court recognised that the
registration is not an indefeasible right and the same is subject to rights
of prior user. The said decision of Whirlpool was further affirmed by the
Supreme Court of India in N.R. Dongre v. Whirlpool Corpn. [(1996) 5
SCC 714].
30.5. The above were the reasonings from the provisions arising from the
plain reading of the Act which gives clear indication that the rights of
prior user are superior than that of registration and are unaffected by the
registration rights under the Act.
31.Secondly, there are other additional reasonings as to why the passing
off rights are considered to be superior than that of registration rights.
31.1. Traditionally, passing off in common law is considered to be a right
for protection of goodwill in the business against misrepresentation
caused in the course of trade and for prevention of resultant damage on
account of the said misrepresentation. The three ingredients of passing
off are goodwill, misrepresentation and damage. These ingredients are
considered to be classical trinity under the law of passing off as per the
speech of Lord Oliver laid down in Reckitt & Colman Products
Ltd. v. Borden Inc. [(1990) 1 WLR 491 : (1990) 1 All ER 873 (HL)]
which is more popularly known as "Jif Lemon" case wherein Lord
Oliver reduced the five guidelines laid out by Lord Diplock in Erven
Warnink Besloten Vennootschap v. J. Townend & Sons (Hull)
Ltd. [(1979) 3 WLR 68 : (1979) 2 All ER 927 (HL)] ("the Advocaat
case") to three elements : (1) goodwill owned by a trader, (2)
misrepresentation, and (3) damage to goodwill. Thus, the passing off
action is essentially an action in deceit where the common law rule is
that no person is entitled to carry on his or her business on pretext that
the said business is of that of another. This Court has given its
imprimatur to the above principle in Laxmikant V. Patel v. Chetanbhai
Shah [(2002) 3 SCC 65].
31.2. The applicability of the said principle can be seen as to which
proprietor has generated the goodwill by way of use of the mark/name in
the business. The use of the mark/carrying on business under the name
confers the rights in favour of the person and generates goodwill in the
market. Accordingly, the latter user of the mark/name or in the business
cannot misrepresent his business as that of business of the prior right
holder. That is the reason why essentially the prior user is considered to
be superior than that of any other rights. Consequently, the examination
of rights in common law which are based on goodwill, misrepresentation
and damage are independent to that of registered rights. The mere fact
that both prior user and subsequent user are registered proprietors are
irrelevant for the purposes of examining who generated the goodwill first
in the market and whether the latter user is causing misrepresentation in
the course of trade and damaging the goodwill and reputation of the
prior right holder/former user. That is the additional reasoning that the
statutory rights must pave the way for common law rights of passing off."
[Emphasis supplied]
(ii) Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industry Limited &
Ors.:(2018) 2 SCC 1:-
"26. At the very outset, certain principles that govern the law of passing-
off may be usefully noticed. Such principles, in fact, have been
considered by this Court in its decision in S. Syed Mohideen [(2016) 2
SCC 683] , though in a somewhat different context i.e. the right of a
registered owner of a particular mark to bring an action for passing-off
against another registered owner of an identical or largely similar trade
mark. In S. Syed Mohideen, this Court on a collective reading of the
provisions of the Act held:
"30.4. that the action for passing-off which is premised on the
rights of prior user generating a goodwill shall be unaffected by
any registration provided under the Act."
which proposition actually stood approved in an earlier decision of this
Court in N.R. Dongre [N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC
714]. The trinity test laid down in Reckitt & Colman Ltd. was reiterated
by this Court in S. Syed Mohideen by holding that to prove and establish
an action of passing-off, three ingredients are required to be proved by
the plaintiff i.e. his goodwill, misrepresentation and damages.
xxx xxx xxx
34. To give effect to the territoriality principle, the courts must
necessarily have to determine if there has been a spillover of the
reputation and goodwill of the mark used by the claimant who has
brought the passing-off action. In the course of such determination it may
be nec essary to seek and ascertain the existence of not necessarily a
real market but the presence of the claimant through its mark within a
particular territorial jurisdiction in a more subtle form which can best be
manifested by the following illustrations, though they arise from
decisions of courts which may not be final in that particular
jurisdiction."
[Emphasis supplied]
(iii) Brihan Karan Sugar Syndicate Pvt. Ltd. vs. Yashwantrao Mohite
Krushna Sahakari Sakhar Karkhana:(2024) 2 SCC 577
"12. There is a finding recorded by the High Court in the impugned
judgment that the labels used on the bottle of country liquor sold by the
appellant and the labels on the bottle of country liquor sold by the
respondent are similar. At this stage, we may note the legal position
regarding the factual details which are required to be proved in a
passing off action. Firstly, we may refer to a decision of this Court
in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. [(2004) 6 SCC 145]
Paras 13 to 15 of the said decision read thus:
"13. The next question is, would the principles of trade mark law
and in particular those relating to passing off apply? An action for
passing off, as the phrase "passing off" itself suggests, is to
restrain the defendant from passing off its goods or services to the
public as that of the plaintiff's. It is an action not only to preserve
the reputation of the plaintiff but also to safeguard the public. The
defendant must have sold its goods or offered its services in a
manner which has deceived or would be likely to deceive the public
into thinking that the defendant's goods or services are the
plaintiff's. The action is normally available to the owner of a
distinctive trade mark and the person who, if the word or name is
an invented one, invents and uses it. If two trade rivals claim to
have individually invented the same mark, then the trader who is
able to establish prior user will succeed. The question is, as has
been aptly put, who gets these first? It is not essential for the
plaintiff to prove long user to establish reputation in a passing off
action. It would depend upon the volume of sales and extent of
advertisement.
14. The second element that must be established by a plaintiff in a
passing off action is misrepresentation by the defendant to the
public. The word "misrepresentation" does not mean that the
plaintiff has to prove any mala fide intention on the part of the
defendant. Of course, if the misrepresentation is intentional, it
might lead to an inference that the reputation of the plaintiff is such
that it is worth the defendant's while to cash in on it. An innocent
misrepresentation would be relevant only on the question of the
ultimate relief which would be granted to the plaintiff [Cadbury-
Schweppes (Pty) Ltd. v. PUB Squash Co. (Pty) Ltd., 1981 RPC 429
: (1981) 1 WLR 193; Erven Warnink Besloten Vennootschap v. J.
Townend & Sons (Hull) Ltd., 1979 AC 731 : (1979) 3 WLR 68 :
1980 RPC 31 (HL)] . What has to be established is the likelihood of
confusion in the minds of the public (the word "public" being
understood to mean actual or potential customers or users) that the
goods or services offered by the defendant are the goods or the
services of the plaintiff. In assessing the likelihood of such
confusion the courts must allow for the "imperfect recollection of a
person of ordinary memory"
15. The third element of a passing off action is loss or the
likelihood of it."
(emphasis supplied)
13. Thus, the volume of sale and the extent of advertisement made by the
appellant of the product in question will be a relevant consideration for
deciding whether the appellant had acquired a reputation or goodwill.
14. At this stage, we may also refer to the decision of this Court in Toyota
Jidosha Kabushiki Kaisha. In this decision, this Court approved its
earlier view in S. Syed Mohideen v. P. Sulochana Bai that the passing off
action which is premised on the rights of the prime user generating
goodwill, shall remain unaffected by any registration provided in the Act.
In fact, this Court quoted with approval, the view taken by the House of
Lords in Reckitt & Colman Products. The said decision lays down triple
tests. One of the tests laid down by the House of Lords was that the
plaintiff in a passing off action has to prove that he had acquired a
reputation or goodwill connected with the goods. Thereafter, in para 40
of Toyota case, this Court held that if goodwill or reputation in a
particular jurisdiction is not established by the plaintiff, no other issue
really would need any further examination to determine the extent of
the plaintiff's right in the action of passing off."
[Emphasis supplied]
12. Essentially, the Supreme Court in the aforesaid authoritative
pronouncements has clearly delineated that in a suit based on action of
passing off, three ingredients need to be considered, which are as under:-
(i) goodwill owned by a trader;
(ii) misrepresentation, and;
(iii) damage to goodwill;
13. Apart from the above, it is also to be noted that the Supreme Court in
Toyota (supra) had also applied the 'territoriality principle' and held that
the plaintiff must place adequate evidence to show that it had acquired
substantial goodwill for its goods, in the case of Toyota, the car under the
brand name 'Prius' within the particular jurisdiction claimed. Though the
said principle may strictly not apply in the facts of the present case, there is
no denying the fact that while the plaintiff is operating within the territory
of the State of Gujarat, the defendant is operating within the territory of the
State of Maharashtra. It is in this context that the principle of territoriality
may have some bearing or impact on the facts of this case.
14. It is also clear from the aforesaid judgments that at the time when the
Court is to consider an application under Order XXXIX Rules 1 and 2 of
CPC seeking injunction, the paramount consideration would revolve
around which of the party, in comparison to the other, has been able to,
prima facie, establish or demonstrate substantial goodwill in the market
first. Thus, registration of a trademark or the lack of it for this purpose
would be irrelevant. Apparently, this consideration is solely based on rights
arising out of common law and not the statute. Thus, registration of
trademark or lack of it, for the time being, is rendered an irrelevant
consideration for appreciating whether any order restraining the other party
from using the trademark can at all be passed.
15. From the arguments addressed by learned senior counsel for the
parties and having closely perused the pleadings and minutely examining
the documents, the following order is passed.
16. The plaintiff at the first instance was to, prima facie, establish
substantial goodwill on the basis of (i) sales figures; and (ii) the expenses
incurred on promotion and advertisement.
17. Though the plaintiff has applied for registration of the device mark
'More Than Water Box' in the year 2023, the user detail is specified as
"proposed to be used basis". In other words, the plaintiff is unsure about
the intended date of launch of the product under the device mark 'More
Than Water Box'/ . It is also relevant to note that prior
to the year 2022-23, the plaintiff has propounded that its predecessor-in-
interest i.e., M/s. Meera Enterprises was using the mark 'Water Box is The
Right Choice', that too in a tetra pack.
18. In support of its contentions, the plaintiff has placed on record and
invited attention to some invoices/purchase orders commencing from
23.06.2018. However, from page nos.380 to 385 and 387 to 390 of the
plaintiff's documents are purchase orders of the Meera Enterprises for
various raw materials like, '15 gsm poly coating on aluminium coated craft
paper', 'water bottle sheet printing'. On page nos.386 and 397 are the
invoices for a product 'Water Box', both of which bear the common
Invoice No.MEE-007, and are dated 09.02.2020 and 12.01.2020
respectively. The earliest invoice dated 23.06.2018, on which reliance was
placed, describes the invoice having been raised for purchase of '15 GSM
Poly Coating on Aluminum Coated Craft Paper' for a sum of Rs.4099.32.
This particular invoice surely cannot be construed to be a proof or evidence
for sale of water in tetra pack under the plaintiff's marks, whether it is
'Water Box is The Right Choice' or 'More Than Water Box'. The next
invoice dated 06.12.2019 is also similar to the invoice dated 23.06.2018,
which too does not refer to either of the aforenoted marks of the plaintiff.
The invoice dated 06.12.2019 also is a purchase by Meera Enterprises
having no relation to the subject marks. Similarly, invoices dated
16.11.2019, 21.11.2019, 11.06.2019 have no remote reference to any of the
marks claimed by the plaintiff and seem to be in the nature of purchase
orders, and not proof of sales.
19. So far as the invoice dated 09.02.2020 on which significant reliance
was placed by the plaintiff is concerned, it refers to sale of a product
described as 10 pieces of 'Water Box 1 Ltr. Pack' and 10 pieces of 'Water
Box 500 ml. Pack'. However, learned senior counsel for the defendant had
raised a doubt as to the authenticity of this invoice on the basis that another
invoice for similar products uncannily bear the same number, i.e., Invoice
No.MEE-007, dated 12.01.2020, which is prior to the invoice dated
09.02.2020. His contention was that the fabrication of the said invoice is
apparent on the basis that on the one hand, the invoice dated 12.01.2020
bearing Invoice No.MEE-007 had added IGST @ 18% and as against that,
the value was calculated at Rs.280.80 to the total value of supply of
Rs.1560/-, and the total bill was raised for Rs.1840.80 while rounding off
Rs.0.80. And on the other hand, in the invoice 09.02.2020 bearing Invoice
No.MEE-007, though the rounding off of Rs.0.80 is indicated, the said
figure has no reference or relevance to the amounts calculated therein.
Predicated on the said submission, learned senior counsel for the defendant
had hotly contested the genuineness of the said documents.
20. This Court had closely scrutinized the two controversial invoices and
it appears, at least at this stage, that there is some doubt which has arisen on
account of the rounding off of "Rs.0.80" since in the Invoice dated
09.02.2020 the said rounding off is out of context. That apart, it is also
intriguing to note that both invoices bear the same number i.e., "MEE-007",
though they are apart by almost a month. Though, the plaintiff in its
rejoinder has sought to clarify it by stating that it was an inadvertent
accounting/clerical error, however, at this stage and at this far point in time,
this Court is unable to accede to the submissions of the plaintiff on this
account. Thus, in view of the doubt upon the veracity of these invoices, this
Court is unable to place reliance upon them at this stage. However, the said
documents can be tested at the appropriate stage of trial.
21. Along with the rejoinder, the plaintiff has filed four invoices dated
28.09.2025, 19.12.2025 (2 invoices) and 02.01.2026 in support of its claim
of substantial sales under the marks 'Water Box' and/or 'More Than Water
Box'. This Court has carefully examined even these invoices which
indicate certain sales having been made by the plaintiff of its product under
the mark 'Water Box'. There is no reference to the mark 'More Than Water
Box' in any of the four latest invoices. That apart, these four invoices
indicate a total sales of Rs.57,662/-. It is to be noted that the plaintiff relied
on the CA certificate placed on record to substantiate the sale figures,
which indicates a sale turnover of Rs.39,60,131.41 for the year 2025-26 (up
to December, 2025), however, has filed only these four invoices. Thus, at
least as of now, there is no documentary evidence placed on record by the
plaintiff to show substantial sales of its product 'water' under the mark
'Water Box' or 'More Than Water Box', which would match the annual
sale turnover of Rs.39,60,131.41 exclusively for the products sold under
the said marks. In the absence of such crucial corroborative documentary
evidence, at this stage of consideration of the stay application, this Court is
unable to connect the purported sales figures contained in the CA
certificate with that of any actual sales premised on invoices. Moreover, for
an action for passing off, especially when the plaintiff is vehemently
asserting its rights purportedly from the year 2018, it is incumbent upon the
plaintiff to, even at this stage of consideration of the interim injunction,
prima facie, establish substantial sales of its products under the mark
"More Than Water Box", which would have established goodwill and
reputation in favor of the plaintiff. There being none, the Court is unable to
appreciate the arguments of the plaintiff.
22. The plaintiff, in the meanwhile, has filed an application bearing I.A.
No.7236/2026 seeking permission to file additional documents, including
invoices raised by the plaintiff against purchase of its product under the
mark 'Water Box'. The notice on the said application was issued on
19.03.2026. Thereafter, the plaintiff moved another application bearing I.A.
No.8792/2026 seeking to place on record additional documents. However,
the said applications have not been pressed as of now. Thus, the additional
documents so filed cannot be considered at this stage.
23. The other limb of the ratio laid down by the Supreme Court in order
to consider, whether it be at the stage of passing of interim injunction
orders or final decree, is the aspect that the plaintiff needs to establish or
prima facie establish, as the stage may be, goodwill in the mark claimed by
the plaintiff, by showing expenditure incurred on promotion of the mark.
24. The plaintiff has placed on record, alongwith the plaint, invoices to
indicate the expenditure incurred by it on account of promotion of its
business which are commencing from page nos.391 to 396 of its
documents. The invoices referred to are dated 16.09.2024, 06.01.2025,
08.01.2025, 08.03.2025, 10.12.2024 and 28.02.2025. Though the invoices
do not describe as to what is the subject matter of business promotion
however, at this stage, the Court may construe that these invoices are
generated in respect of expenses incurred by the plaintiff on account of
promotion of its mark 'More Than Water Box'. Though the plaintiff has
claimed and asserted that the mark 'Water Box' has been in extensive use
since the year 2018 through its predecessor, M/s. Meera Enterprises, to
show goodwill and reputation garnered over the last many years, however,
barring the aforesaid invoices raised from the month of September, 2024
onward till 08.03.2025, no such documentary proof or evidence has been
placed on record for the period prior to September, 2024. Thus, except for a
bald averment that the plaintiff has incurred substantial expenditure on
account of promotion and advertisement of its mark 'Water Box' and
'More Than Water Box', there is no evidence to substantiate the same at
this stage. The plaintiff has also placed on record screenshots of what it
claims to be its pages on Instagram and Facebook to show extensive
promotion of its brand on e-platforms. The Instagram page which claims to
have been created in March, 2018 by the predecessor-in-interest
demonstrates (i) that the username has been changed six times in the past
and; (ii) the record does not disclose any extensive promotion prior to 2023
or followers in such substantial numbers so as to gather or infer that the
plaintiff's marks have earned a reputation or goodwill in the market
amongst the consumers. Thus, even on this count, this Court is unable to
appreciate the arguments of the plaintiff.
25. The aforesaid analysis of the invoices raised on account of
promotion and advertisement of the plaintiff's brand, that too commencing
from September, 2024 onwards does not relate back to the claimed user of
the year 2018 or any time soon thereafter. The plaintiff has been unable to,
prima facie, demonstrate any causal connection between the invoices on
record with any purported advertisements or promotions claimed to have
been carried out prior to September, 2024. In the absence of this causal
connection too, this Court is unable to appreciate any merit in the
arguments of the plaintiff.
26. A lot was argued and vehemently too, that the defendant who is
registered only in the year 2025 has failed to show any substantial sales or
even launch of its product under the mark 'My Water Box' though the
defendant claimed its user from the year 2020. It was also vehemently
projected that the defendant has launched, if at all, its product only on or
about 03.12.2025 based on the Instagram post of the defendant itself.
27. It is trite that the plaintiff has to succeed on its own merits and not on
the lack of merits of the defendant. This Court has also perused the
purported invoices placed on record by the defendant. Barring a few
invoices pertaining to purported sale of the goods manufactured by the
defendant under the mark 'My Water Box', the other invoices pertain to its
other food services etc., which have no remote connection with the subject
matter of the present suit. The invoices in respect of the mark 'My Water
Box' does not seem to be a sale for consideration as no such consideration
value has been indicated against the said product in those invoices. It
appears to be a mere transfer or a stock transfer not involving any sale at
all. Thus, at this prima facie stage, it appears that the said invoices cannot
be said to be sales in the ordinary sense to construe 'goodwill'.
28. If that is the case, the question now would be as to whether the
plaintiff would still succeed in obtaining an ad-interim injunction in its
favour.
29. The question seems to be vexed for the reason that though the
plaintiff claims user since 2018 of the marks 'More Than Water Box',
except for certain invoices of the year 2020, which too appear to be
doubtful, no document worth consideration has been placed on record by
the plaintiff. The only other four invoices showing sale of the product -
Water were filed alongwith the rejoinder which are for the period from
28.09.2025 to 02.01.2026. These too only reflect in the description the
mark 'Water Box' and not 'More Than Water Box'.
30. Resultantly, none of the parties have been able to clearly establish,
atleast at this stage, from a prima facie point of view, substantial goodwill
or reputation in their own respective marks. Though the plaintiff has placed
on record the invoices on account of expenditure incurred by it on
promotion and advertisement of its business, however that too commenced
only from 16.09.2024 to 08.03.2025. Thus, there is no document or any
other proof for establishing substantial expenditure on account of
advertisement and promotion of the plaintiff's mark for the period
commencing from 2018 till 2024.
31. For the purpose of appreciating the aforesaid analysis, it would be
apposite to extract hereunder the sale figures claimed by the plaintiff to
evidence substantial sales predicated whereon, the plaintiff asserts goodwill
in the marks 'Water Box' and 'More Than Water Box'. The same reads
thus:-
Clearly and as certified by the CA, there were no sales of any nature
whatsoever for the period 2020 to 2023. The sales turnover for the FY
2024-25 is Rs.9,06,410/- and for FY 2025-26 (till December, 2025) is
stated to be Rs.39,60,131.41. For FY 2018-19, the turnover is stated to be
Rs.38,500/- only and for FY 2019-20, the turnover is Rs.1,50,000/-. The
invoices placed on record, subject to proof during trial, arguendo, at best
indicate sales only within the territory of the State of Gujarat and not even
a single invoice has been placed on record to show sales beyond the State
of Gujarat by the plaintiff.
32. Similarly, even the defendant's documents do not indicate that it has
effected any sale, if at all, subject to proof during trial, anywhere beyond
the territory of the State of Maharashtra.
33. So far as the other two ingredients to be satisfied in an action of
passing off, i.e., misrepresentation and damage to goodwill are concerned,
this Court need not consider the same at this stage since the plaintiff has
failed to, prima facie, establish goodwill and reputation in its favor.
Additionally, the same is not ascertainable at this stage keeping in view the
documents placed on record. Hence, the said issues could be appropriately
considered during trial.
34. Additionally, the defendant had vehemently argued as its opening
objection, the question of lack of territorial jurisdiction with this Court.
There have been vehement and hotly contested arguments addressed by
both the parties. The issue with respect to whether the defendant has an
interactive website and whether the said website is accessible or amenable
to the local limits of the territorial jurisdiction exercised by this Court,
would comprise issues of facts as well as law. Thus, at this stage, it would
not be appropriate for this Court to dwell or delve over the said aspect and
it can be kept reserved to be raised and taken up for consideration at an
appropriate stage.
35. Another relevant aspect which may also require consideration is one
with respect to whether 'water' which is defined as liquid food as
appearing in the BIS Regulations of the year 2022, could be packaged in a
tetra pack. Both sides had taken opposite stands relying upon two different
regulations/circulars. In that, the plaintiff had relied upon the notification
dated 24.12.2018 issued by the FSSAI, while the defendant relied upon the
notification of July, 2022 issued by the Bureau of Indian Standards (BIS)
which is in the nature of amendment. For the purpose of appreciating and
clarification, relevant portions of both the circulars/notification are
extracted hereunder:-
FSSAI Packaging Regulations, 2018:
Clause 4(4) of FSSAI Packaging Regulations, 2018:
BIS Regulations, 2022:
36. The plaintiff asserted that the notification dated 24.12.2018 notifying
the FSSAI Packaging Regulations, 2018, in Clause 4(4)(a), required that
the plastic materials used for manufacturing of containers for packing and
storing the food products should confirm to either of the Indian Standards
specifications as provided in Schedule -III, while its proviso stipulated that
drinking water (both Packaged and Mineral Water) shall be packed in
colourless, transparent and tamper-proof bottles or containers made of
polyethylene (PE) conforming to IS:10146 etc., or sterile glass bottles only.
It was the assertion of the plaintiff that the proviso did not refer to
'Alkaline Water' which it claimed was the product it was manufacturing
and selling from the year 2018 in tetra packs. Thus, according to the
plaintiff, there was no bar on any entity manufacturing or selling 'Alkaline
Water', in tetra packs, therefore, the objection raised by the defendant is
unfounded.
37. On the other hand, the defendant relied upon the Amendment No.1
of the month of July, 2022 in the BIS Regulations to contend that it was
only by way of an amendment to the said regulations that for the first time,
Paper based Multilayer Laminated/Extruded Composite Cartons (Aseptic
and Non-Aseptic) for processed liquid food products and beverages was
permitted. It was contended that 'water' is 'liquid food' and was allowed to
be, for the first time, packaged and sold in Paper based Multilayer
Laminated/Extruded Composite Cartons. Therefore, clearly and by
necessary implication, the manufacture and sale of water in any form could
not have been carried out in tetra packs or Paperbased Multilayer
Laminated/Extruded Composite Cartons prior to the month of July, 2022.
38. Having heard learned counsel for the parties on the aforesaid aspect
and after having had the benefit of both the notifications reproduced above,
this Court is unable to align with the arguments of the plaintiff. This is for
the reason that Alkaline Water in any form is still water which needs to be
packaged and sold. Undoubtedly, the Amendment No.1 to the BIS
Regulations as amended in the month of July, 2022 clearly provides that
water would fall within the ambit of 'Processed Liquid Food'. The same
also appears to be in conformity with clause 4(4)(a) and its proviso in the
FSSAI Packaging Regulations, 2018 where drinking water alone has been
specified, whether packaged or mineral. No doubt, there is no specific
mention of 'Alkaline Water', however, that by itself could not mean that
Alkaline Water is anything other than water or processed liquid food.
Moreover, Alkaline Water is either a natural product or manufactured by
adding chemicals and/or minerals to make the normal water alkaline. That
by itself would not pull it out from the ambit of 'Processed Liquid Food'.
Thus, the arguments of the plaintiff are based on misreading of the
aforementioned regulations and are completely unfounded. Consequently,
unless a clear picture is arrived at after leading cogent evidence, it would
not be possible to observe with conviction that alkaline water was
permitted to be packaged and sold in tetra packs or Paperbased Multilayer
Laminated/Extruded Composite Cartons before July, 2022 i.e., prior to the
amendment in BIS Regulations.
39. Another relevant aspect which may be significant, at this stage, is the
fact that when the plaintiff filed its trade mark application on 09.03.2023
for registration of the mark 'More Than Water Box', the user detail was
specified as 'proposed to be used'. This by itself may be inferred as an
admission that the mark 'More Than Water Box' was not commercially
launched or otherwise used by the plaintiff at that time. Thus, to that extent
at least, the plaintiff would be proscribed from asserting any prior use or
adoption of the mark "More Than Water Box" before 2023. The only other
mark remaining is "Water Box is the Right Choice". In respect of this
particular mark, neither has the plaintiff sought any registration nor has it
placed on record even a single sales invoice or proof of expenditure on
account of advertisement or promotion brought out in the said mark. Thus,
from the above narration it is clear that the plaintiff claimed
commencement of its mark "Water Box is the Right Choice" in the year
2018 and then transformed from the said mark to "More Than Water Box"
in the year 2022. However, there is no regular or continuous use of a single
mark, whether under "Water Box is the Right Choice" or "More Than
Water Box", since the year 2018, till date. Thus, the plaintiff's stand does
not appear to be consistent at this stage.
40. In view of the analysis and observations on the relevant
considerations postulated by the ratio laid down by the Supreme Court in S.
Syed Mohiddin (supra) and other judgments, the other arguments raised on
different issues are not required to be considered by this Court at this stage
and are left open to be considered at an appropriate stage.
41. After the aforesaid thorough examination of the material on record
and in view of the aforesaid analysis, this Court is of the considered
opinion that the plaintiff has been unable to at least prima facie, establish a
case for grant of ad-interim injunction against the defendant. However,
having regard to the overall facts and circumstances of the aforesaid case
and on the principles of equity, it is deemed appropriate in the peculiar
facts arising in the present case, to direct both parties to continue to
manufacture and offer for sale, their respective products under their
respective trademarks i.e. "More Than Water Box" and "My Water Box"
only within the territories of their respective States i.e. the State of Gujarat
so far as plaintiff is concerned and the State of Maharashtra so far as the
defendant is concerned, during the pendency of the present suit.
42. The aforesaid analysis and observations shall not tantamount to any
expression of the merits of the suit and are confined only to the
consideration for the adjudication of this application.
43. Having regard to the aforesaid analysis, the application is disposed of
in view of the above directions.
44. List on the date already fixed.
TUSHAR RAO GEDELA, J.
APRIL 15, 2026
