Gujarat High Court
Axpert Enterprise vs Maulik Navinvhandra Patel on 23 December, 2022
Bench: A. P. Thaker
C/AO/4/2022 ORDER DATED: 23/12/2022
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 4 of 2022
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2021
In R/APPEAL FROM ORDER NO. 4 of 2022
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AXPERT ENTERPRISE
Versus
MAULIK NAVINVHANDRA PATEL
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Appearance:
H N JOSHI(7726) for the Appellant(s) No. 1
KAMAL J UPADHYAYA(7469) for the Appellant(s) No. 1
MR HARDIK H DAVE(6295) for the Respondent(s) No. 1
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CORAM:HONOURABLE DR. JUSTICE A. P. THAKER
Date : 23/12/2022
ORAL ORDER
1. Being aggrieved by the order dated 20.9.2021
passed below Exh-5 in Trade Mark Suit No.1 of 2021
by the learned 3rd Additional District Judge,
Gandhinagar, whereby the application filed by the
appellant for obtaining interim injunction came to be
rejected, the original plaintiff has preferred the
present Appeal from Order under Order 43 Rule 1(r)
of the Code of Civil Procedure.
2. The appellant is the original plaintiff and respondent
is the original defendant before the trial Court. For
the brevity and convenience, the parties are referred
to in this order, as per their status before the trail
Court.
C/AO/4/2022 ORDER DATED: 23/12/2022
3. The short facts as emerges from the record is as
follows:
3.1 That the plaintiff is a partnership firm, inter alia,
engaged in the business of manufacturing, marketing
and selling electronic weighing scales and systems
under the trademark AXPERT since 1.6.2000. That in
the year 2000, one of its partner Mr. Harshadbhai
Manibhai Patel coined and invented the said Mark and
doing business and thereafter with a view to
expansion of business, he found a partnership firm.
That, he being a active partner of the firm, and
adopter of the said mark, permitted the firm to use
and utilise the said trademark for the benefit and
betterment of the respetive concern. That,
Harshadbhai deemed it fit to assign the said
trademark to the partnership firm and, therefore, he
assigned the same to the firm by Assignment Deal
dated 20.3.2020.
3.2 That the said trademark has acquired great
popularity and significant presence in the market and
recognition in the public at large and the consumers.
That, the said mark is registered trademark and the
plaintiff is the proprietor thereof. That as an
registered proprietor, the plaintiff has every right to
restrain the wrong doer and restrain them for
infringement of its registered trademark.
C/AO/4/2022 ORDER DATED: 23/12/2022
3.3 That the defendant is also engaged in the same
business and he is selling its products under the
visually, identically, phonetically and structurally
similar trademark EXPERT. That the plaintiff came to
know about this fact recently. That the plaintiff is the
prior user of the trademark AXPERT , whereas the
defendant has started using the deceptively similar
trademark EXPERT recently. According to the
plaintiff, the defendant is very well within the
knowledge about the goodwill and reputation of the
plaintiff's registered trademark AXPERT, and yet the
defendant has deliberately, wilfully and with malafide
intention to encash the goodwill and reputation of the
plaintiff's registered trademark, has adopted identical
and/ or deceptively similar trademark EXPERT. That,
defendant applied for registration of trademark
before the Trade Mark Registry which has been
opposed by the plantiff by filing necessary
proceeding, which is pending. That, the defendant is
still providing the goods and services as per his new
trademark ÉXPERT and therefore, the plaintiff was
constrained to file the impugned Trademark Suit for
permanent and perpetual injunction, and interim
injunction against the defendant. Along with the
Plaint, the plaintiff has preferred an Application at
Exh-5 for ad-interim injunction.
C/AO/4/2022 ORDER DATED: 23/12/2022
4. The defendant has filed its reply at Exh-13 denying
the averments made in the plaint. It has pointed out
that the suit suffers from delay, laches, mis-joinder of
parties and also from suppression of facts and the
plaintiff has not come with clean hands. It has also
contended that the Logo of the defendant is not at all
visually, phonetically, structurally identical to the
Logo of the plaintiff. Of course he has admitted the
fact that his application of registration of Logo is
pending before the trademark Registry and the
plaintiff has raised objection thereof and entire
proceedings is pending for further adjudication.
4.1 It is also contended that the defendant is engaged in
the business of manufacturing, marketing and selling
of industrial Trucks Scales, Weighing Scale, Industrial
Automation and mainly deals with Truck and Traders'
Scale, whereas teh plaintiff is mainly engaged in the
small-scale, Electrical Weight Scale. That the
defendant is not engaged in such business like that
of plaintiff. According to the defendant, thus, the
business of both the parties are different and market
and consumers are also different.
5. It is also contended that in the year 2019, a small
amount weight scales to the tune of Rs.2,21,000/-
were ordered by the defendant from the plaintiff's
company itself and the same was further traded with
C/AO/4/2022 ORDER DATED: 23/12/2022
the Logo of the plaintiff's company itself. It is
contended that plaintiff knows that the defendant is
not in the business of small electronic weighing
machine and does not have licence for the same the
suit is mainly filed because in the year 2020, the
defendant has placed order with another compnay
instead of plaintiff. It is contended that the defendant
has not used any identical and similar trademark of
the plaintiff and has not violated or infringed
trademark of the plaintiff. It is contended that the
defendant has created a completely distinct
trademark and it is not similar to that of the plaintiff.
It has denied that plaintiff has any prima-facie case
or balance of convenience in his favour. It is
contended that rather defendant has prima-facie
case and balance of convenience is in favour of the
defendant and irreparable loss would be cost to the
defendant if the injunction is granted rather than to
the plaintiff in case of refusal thereof. It is prayed by
the defendant to dismiss teh application.
6. It appears that after hearing both the sides and
considering the decisions cited at bar, the learned
trial Court has rejected the application at Exh-5 for
interim injunction. Being aggrieved with the said
order, the original plaintiff has preferred this Appeal
from Order.
C/AO/4/2022 ORDER DATED: 23/12/2022
7. Heard learned advocate Mr. Kamal J. Upadhyaya for
the plaintiff appellant and learned advocate Mr.
Hardik H. Dave for the respondent- defendant at
length. Perused the materials placed on record and
the decisions cited at bar.
8. Learned advocate Mr. Kamal Upadhyaya for the
plaintiff has vehemently submitted the same facts
which are narrated in the pleadings of the plaintiff
and has submitted that admittedly the plaintiff is the
registered trademark AXPERT. He has further
submitted that the defendant has filed application for
registration of his trademark as EXPERT, which has
been objected by the plaintiff and the proceedings is
pending before the Trade Mark Authority. He has
submitted that both the parties are dealing with the
business of weighing machines/ scales. According to
him, whether plaintiff is manufacturing small scales
and the defendant is proposing to use its trademark
for big weighing machines/ scales for truck or other
heavy vehicles, is not a material factor for deciding
the phonetically similarity of the two trademarks. He
has submitted that facts remains that both the
parties are engaged in the business of manufacturing
in weighing machines/ scales. He has submitted that
there is only one alphabet "E" is different from the
alphabet "A" of the trademark of the plaintiff. He has
C/AO/4/2022 ORDER DATED: 23/12/2022
also submitted that however, phonetically both the
trademark is similar and the public at large would be
confused. He has submitted that when the plaintiff is
the owner of the registered trademark, he is entitled
to protection of injunction as per the provisions
contained in the Trade Marks Act.
8.1 Mr. Upadhyaya, learned advocate has also submitted
that the plaintiff is the prior user of the trademark, as
admitted by the defendant himself and the
defendant himself has in past purchased weighing
scale from the plaintiff and use the Logo of the
Plaintiff. While dealing with the impugned order of
the trial Court, he has submitted that the trial Court
has not considered the essential factor that two mark
are phonetically similar and there is likelihood of
confusion in the minds of the consumers at large. He
has submitted that the trial Court has not considered
the relevance aspect of the matter and has also
failed to take into consideration as to well
established principle in respect of the infringement of
trademark. He has submitted that the impugned
order is arbitrary, perverse and capricious one which
needs to be interfere with by this Appellate Court. He
has prayed to allow the present application by
setting aside the impugned order and to pass interim
C/AO/4/2022 ORDER DATED: 23/12/2022
injunction against the defendant. He has relied upon
the following decisions for his submissions:
1. Alfred Dunhill Limited v. R.P.S. Chawla, reported
in 2004 112 DLT 41;
9. Per contra, learned advocate Mr. Hardik Dave for the
defendant- respondent has vehemently submitted
that both the marks are different and there is no
similarity or deceptive similarity. He has also
submitted that the parties are dealing with the
different types of business. He has submitted that
the words EXPERT and AXPERT are generic words
and cannot be used as Trademarks. He has
submitted that the defendant is doing the business of
heavy vehicles and earlier he was purchasing
weighing machines from the plaintiff and as he has
now placed order with another party and not with the
plaintiff, the plaintiff has filed the present suit. He
has submitted that the plaintiff has suppressed this
material fact from the Court. He has submitted that
the defendant is not willing to deal in the small scale
weighing machine and therefore it has stopped
placing order with the plaintiff. He has submitted that
since there is no similarity or deceptive similarity
between two marks, there is no question of any
infringement of the mark of the plaintiff. He has
submitted that the trial Court has properly passed
C/AO/4/2022 ORDER DATED: 23/12/2022
the impugned order and being an Appellate Court,
this Court has limited jurisdiction to interfere in the
discretionary order passed by the trial Court. He has
prayed to dismiss the present Appeal from Order. He
has relied upon the following decisions:
1. Delhivery Private Limited v. Treasure Vase
Ventures Private Limited, reported in 2020 0
Supreme(Del) 980;
"67. The High Court of Bombay in the judgement in the case of
People Interactive (India) Pvt. Ltd. (supra) had held as under:
"11...... Miller Brewing Company v. G. Heileman Brewing
Company Inc. and noted the 'spectrum' of degrees of
distinctiveness: (1) generic or commonly descriptive; (2)
merely descriptive; (3) suggestive; (4) arbitrary or fanciful.
Generic or commonly descriptive words - examples such as
'necktie', 'plastic', 'soda', 'perfect', 'best', 'No.1' come to
mind - are used to name or describe the goods in question.
These can never become trade marks on their own. They
never acquire distinctiveness or a secondary meaning.
They do not tell one man's goods from another's. They do
not indicate origin. An expression in the CS (COMM)
217/2020 Page 44/59 second category, a merely
descriptive term, is often used to describe some particular
characteristic or ingredient: 'airtight', perhaps. Ordinarily,
even these are not registrable unless they have acquired a
secondary meaning and refer exclusively to one particular
trader's goods...........
12. ........ The degree of distinctiveness, and, therefore, the
possibility of registration as a trade mark, is inversely
C/AO/4/2022 ORDER DATED: 23/12/2022
proportional to the degree of obviousness: the more
obvious the word, the less the degree of distinctiveness
and the chances of its registration. I use the word
'obvious' here to mean not 'evident' but commonplace.
13. Words in everyday language, words of the common
tongue are not to be allowed to be monopolized.
Expressions that find themselves at the lower end of this
four-position fretboard cannot easily be shifted higher up
the scale. To make that ascent, it will not do to misspell
the word. That, it is settled, is of no aid to the applicant.
Indchemie discusses this aspect of the law.
****** ********* ********
19. .......... The claim in the plaint is, thus, for exclusivity
over 'shaadi'. But this falls within the first
Indchemie/Miller Brewing class of generic or commonly
descriptive words. This is the lowest end of the
distinctiveness spectrum; and, absent other proof, it is
entirely immobilized, incapable of moving anywhere
further up that scale. Shaadi is nothing but generic: it
refers to marriage, not bicycles, pressure cookers or
potato chips. I think it is wholly incorrect to take a generic
or commonly descriptive expression as part of a mark, and
then, by this process of deconstruction, lift the generic
expression out of the mark, claim that it is 'prominent' or
'essential' or 'leading', and then lay claim to an exclusivity
it could never have had if used on its own. This seems to
me to be a roundabout way of trying to achieve that
which is impossible to begin with..........(Emphasis supplied)
C/AO/4/2022 ORDER DATED: 23/12/2022
"78. Similarly, a coordinate bench of this Court in the case
of Bata India Limited vs. Chawla Boot House and Anr. 2019 SCC
Online Del 8147 held as under:
"30. 'POWER‟, could at best be termed as a `SUGGESTIVE', could at best be termed as a `SUGGESTIVE'
mark for footwear, which would make it an inherently
distinctive mark. In the context of footwear, it would at
best be considered as a laudatory epithet. It is not
immediately connectable to footwear. Even if one applies
the competitors' need test, Defendant No.2 has not shown
a single footwear product using the word 'POWER‟, could at best be termed as a `SUGGESTIVE'.
Though, some pending applications have been shown, it is
a well-known fact that mere filing of applications or
registering marks does not create any goodwill and also
does not imply any use of the mark. The Plaintiff has been
taking action against the marks which it considers
conflicting to its interest, vigilantly."
By applying the aforesaid position of law, to the facts I
say, the mark which is phonetically similar to the English
word 'delivery' do not require any imagination, thought
and perception, more so for delivery services. Similarly, in
Bata India Limited (supra) this Court held 'POWER' could
at best be termed as a suggestive mark as the same is not
immediately connectable to footwear, but a laudatory
epithet and such suggestive marks are held to be
inherently distinctive marks. Whereas, in the case in hand,
the mark 'DELHIVERY' is immediately connectable to the
delivery services and cannot be termed as a suggestive
mark.
79. The reliance placed by Mr. Grover on the judgment of this
Court in the case of Anil Verma (supra) is concerned, the same
C/AO/4/2022 ORDER DATED: 23/12/2022
has no CS (COMM) 217/2020 Page 57/59 applicability in the
facts of this case, inasmuch as the Court was concerned with the
marks 'Cash for Gold' and 'Gold Buyers' which were held to be
suggestive in the following manner:
"26. The expressions Cash for Gold and Gold Buyers do not
describe the entire gamut of services offered by the
Plaintiff. As stated above, the Plaintiff carries out a wide
range of business from its stores including the
sale/purchases of gold, diamonds, silver, antique, watches
etc. Some portion of the business could be buying of gold
from the customers in return for money. Even the word
'cash' does not denote what is understood in the actual
sense by the Plaintiff, as the payment upon purchase of
various commodities is made through the banking
channels, demand draft or even by cheques. Thus, Cash for
Gold could be suggestive of some part of the business of
the Plaintiff but does not describe fully the complete
range of services offered by the Plaintiff. The Defendants
have not placed on record any independent market survey
or evidence, which suggests that the term Cash for Gold is
perceived as a descriptive expression. Even the term Gold
Buyers cannot be held to be descriptive at the prima facie
stage, by applying the Degree of Imagination test as,
though the Plaintiff may be buying gold from customers,
but it also is involved in buying various other commodities
apart from gold. Moreover, in respect of the marks 'CASH
FOR GOLD' and 'GOLD BUYERS', as is evident from the
various other third party user documents which have been
placed on record by the Defendants, there are several
alternative ways in which third parties have referred to
identical businesses. Such alternative marks/names used
are 'CASH 4 GOLD', 'GOLD BUYERS', 'SELL YOUR GOLD'
C/AO/4/2022 ORDER DATED: 23/12/2022
'CASH EXCHANGE', 'GOLD EXCHANGE', 'MONEY FOR
GOLD', 'MONEY 4 GOLD', 'SELL GOLD', 'POST GOLD FOR
CASH', 'EZY CASH GOLD', 'GOLD-BUYER', 'WE BUY GOLD',
etc."
80. In view of my above discussion, the prayer made by the
defendant in the application being I.A.6523/2020 under Order
XXXIX Rule 4 needs to be allowed and the interim injunction
granted by this CS (COMM) 217/2020 Page 58/59 Court vide
order dated July 03, 2020 needs to be vacated. Accordingly,
I.A.6523/2020 is allowed and disposed of and I.A.5109/2020
under Order XXXIX Rules 1 & 2 is dismissed. It is stated that the
aforesaid is a prima-facie view and is not an expression on the
merits of the suit. I.A. 6572/2020 Dismissed as infructuous.
2. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals
Ltd., reported in (2001) 5 SCC 73;
"34. Broadly stated in an action for passing off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks, i.e. both
words and label works.
b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are
used as trade marks.
d) The similarity in the nature, character and performance
of the goods of the rival traders.
C/AO/4/2022 ORDER DATED: 23/12/2022
e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to
exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for
the goods and
g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the
competing marks.
10. In rejoinder, learned advocate Mr. Upadhyaya has
submitted that the defendant himself has filed an
application for word EXPERT and that he is taking
defence that the word is generic one and cannot be a
trademark. Regarding the decisions cited by the
other side, he has submitted that the decisions are
not applicable to the facts of the case. He has
submitted that the observations made in the case of
Cadila Healthcare (Supra) is rather helpful to the
plaintiff. He has prayed to allow the Appeal.
11. It is well settled that in an appeal against exercise of
"discretion" by the Court of first instance, the power
of appellate Court to interfere with the exercise of
discretion is restrictive. Merely because, on facts, the
appellate Court would have concluded differently
from that of the Court below, that would not, by
C/AO/4/2022 ORDER DATED: 23/12/2022
itself, provide justification for appellate Court to
interfere. To justify interference, the appellate would
have to demonstrate that 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 injunction. An appeal
against the exercise of discretion is an appeal on
principle.
12. It is well settled principles of law that in an Appeal
against exercise of 'discretion' by the Court of first
instance, the power of appellate Court to interfere
with the exercise of discretion is restrictive. Merely
because on facts, the appellate Court would have
concluded differently from that of the Court below,
that would not , by itself, provide justification for
appellate Court to interfere. To justify interference,
the appellant would have to demonstrate that 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 injunction.
An appeal against the exercise of discretion is an
appeal on principle. In the case of Wander Ltd. V.
Antox India P. Ltd, (Supra) wherein it has been
C/AO/4/2022 ORDER DATED: 23/12/2022
adumbrated that the Appellate Court ought not to
"re-assess the material and seek to reach a
conclusion different from the one reached by the
Court below if the one reached by that 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".
13. In view of the above settled principles of law, power
of this Court, as an Appellate Court, to interfere with
the order passed by the trial Court is very limited and
only in exceptional circumstances, the Appellate
Court can interfere with the discretionary order
passed by the trial Court. The Appellate Court cannot
re-evaluate the entire evidence and arrive at a
conclusion contrary to the conclusion arrived at by
the trial Court. However, in case where the order
passed by the trial Court is found to be invalid,
illegal, arbitrary, perverse or contrary to the settled
C/AO/4/2022 ORDER DATED: 23/12/2022
principles of law, the Appellate Court has all powers
to interfere with the same. Considering the above
principles of law, this Court has only to see as to
whether the trial Court has committed any error in
passing the impugned order. It has also to see
whether the main basic principles of law namely,
prima-facie case, balance of convenience and
irreparable loss are satisfied or not in passing the
order.
14. Having considered the submissions made on behalf
of both the sides, coupled with the aforesaid
principles of law and the material placed on record as
well as the decisions cited at bar, it reveals that
plaintiff is the registered owner of the trademark
"AXPERT". It also reveals that the defendant has
filed application for registration of his trademark/
Logo "EXPERT" . It also reveals that the plaintiff is
dealing in the business of small scale weighing
machines. It also reveals that as per the contention
of the defendants, he is dealing with weighing
machines/ scales for the Trucks and heavy vehicles.
Now, it appears that both are dealing with the
business of weighing machines/ scales. It also
appears that the plaintiff is dealing with the goods
which fall under Clause-9 in the name of AXPERT
C/AO/4/2022 ORDER DATED: 23/12/2022
and the defendant is also dealing with the goods
which also fall under the Clause-9- Weigh Bridges,
Weighing Scales, Weighing Machines, Electronic
Weighing Bridges, Electronic Weighing Bridges,
Weighing Apparatus and for that he has applied for
registration of his trademark as EXPERT. Thus, the
trademark to be registered by the defendant also
falls under the Clause-9. Thus, the market would be
somewhat similar and consumers may also be
common. Regarding question of manufacturing of
weighing machines for small category or for larger
category, is immaterial. It is admitted fact that the
plaintiff is the owner of the registered trademark
AXPERT.
15. At this juncture, it is worthwhile to refer Sections 28,
29 and 135 of the Trade Marks Act, 1999, which
provide as under:
"28. Rights conferred by registration.
(1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to
the registered proprietor of the trade mark the ex-
clusive right to the use of the trade mark in relation
to the goods or services in respect of which the
trade mark is registered and to obtain relief in re-
C/AO/4/2022 ORDER DATED: 23/12/2022
spect of infringement of the trade mark in the man-
ner provided by this Act.
(2) The exclusive right to the use of a trade mark
given under sub-section (1) shall be subject to any
conditions and limitations to which the registration
is subject.
(3) Where two or more persons are registered pro-
prietors of trade marks, which are identical with or
nearly resemble each other, the exclusive right to
the use of any of those trade marks shall not (ex-
cept so far as their respective rights are subject to
any conditions or limitations entered on the regis-
ter) be deemed to have been acquired by any one
of those persons as against any other of those per-
sons merely by registration of the trade marks but
each of those persons has otherwise the same
rights as against other persons (not being regis-
tered users using by way of permitted use) as he
would have if he were the sole registered propri-
etor."
"Section 29. Infringement of registered trade
marks.
(1) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively
C/AO/4/2022 ORDER DATED: 23/12/2022
similar to, the trade mark in relation to goods or
services in respect of which the trade mark is regis-
tered and in such manner as to render the use of
the mark likely to be taken as being used as a trade
mark.
(2) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of
trade, a mark which because of--
(a) its identity with the registered trade mark
and the similarity of the goods or services cov-
ered by such registered trade mark; or
(b) its similarity to the registered trade mark
and the identity or similarity of the goods or
services covered by such registered trade
mark; or
(c) its identity with the registered trade mark
and the identity of the goods or services cov-
ered by such registered trade mark, is likely to
cause confusion on the part of the public, or
which is likely to have an association with the
registered trade mark.
(3) In any case falling under clause (c) of sub-sec-
tion (2), the court shall presume that it is likely to
C/AO/4/2022 ORDER DATED: 23/12/2022
cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of
trade, a mark which--
(a) is identical with or similar to the registered
trade mark; and
(b) is used in relation to goods or services
which are not similar to those for which the
trade mark is registered; and
(c) the registered trade mark has a reputation
in India and the use of the mark without due
cause takes unfair advantage of or is detri-
mental to, the distinctive character or repute
of the registered trade mark.
(5) A registered trade mark is infringed by a person
if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his busi-
ness concern or part of the name, of his business
concern dealing in goods or services in respect of
which the trade mark is registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he--
C/AO/4/2022 ORDER DATED: 23/12/2022
(a) affixes it to goods or the packaging
thereof;
(b) offers or exposes goods for sale, puts them
on the market, or stocks them for those pur-
poses under the registered trade mark, or of-
fers or supplies services under the registered
trade mark;
(c) imports or exports goods under the mark;
or
(d) uses the registered trade mark on business
papers or in advertising.
(7) A registered trade mark is infringed by a person
who applies such registered trade mark to a mate-
rial intended to be used for labeling or packaging
goods, as a business paper, or for advertising goods
or services, provided such person, when he applied
the mark, knew or had reason to believe that the
application of the mark was not duly authorised by
the proprietor or a licensee.
(8) A registered trade mark is infringed by any ad-
vertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary
to honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character;
or
(c) is against the reputation of the trade mark.
C/AO/4/2022 ORDER DATED: 23/12/2022
(9) Where the distinctive elements of a registered
trade mark consist of or include words, the trade
mark may be infringed by the spoken use of those
words as well as by their visual representation and
reference in this section to the use of a mark shall
be construed accordingly.
Section 135. Relief in suits for infringement or
for passing off.
(1) The relief which a court may grant in any suit for
infringement or for passing off referred to in section
134 includes injunction (subject to such terms, if
any, as the court thinks fit) and at the option of the
plaintiff, either damages or an account of profits, to-
gether with or without any order for the delivery-up
of the infringing labels and marks for destruction or
erasure.
(2) The order of injunction under sub-section (1)
may include an ex parte injunction or any interlocu-
tory order for any of the following matters,
namely:--
(a) for discovery of documents;
(b) preserving of infringing goods, documents
or other evidence which are related to the
subject-matter of the suit;
(c) restraining the defendant from disposing of
C/AO/4/2022 ORDER DATED: 23/12/2022
or dealing with his assets in a manner which
may adversely affect plaintiff's ability to re-
cover damages, costs or other pecuniary
remedies which may be finally awarded to the
plaintiff.
(3) Notwithstanding anything contained in sub-sec-
tion (1), the court shall not grant relief by way of
damages (other than nominal damages) or on ac-
count of profits in any case--
(a) where in a suit for infringement of a trade
mark, the infringement complained of is in re-
lation to a certification trade mark or collective
mark; or
(b) where in a suit for infringement the defen-
dant satisfies the court--
(i) that at the time he commenced to use
the trade mark complained of in the suit,
he was unaware and had no reasonable
ground for believing that the trade mark
of the plaintiff was on the register or that
the plaintiff was a registered user using
by way of permitted use; and
(ii) that when he became aware of the
existence and nature of the plaintiff's
right in the trade mark, he forthwith
ceased to use the trade mark in relation
to goods or services in respect of which
C/AO/4/2022 ORDER DATED: 23/12/2022
it was registered; or
(c) where in a suit for passing off, the defen-
dant satisfies the court--
(i) that at the time he commenced to use
the trade mark complained of in the suit,
he was unaware and had no reasonable
ground for believing that the trade mark
for the plaintiff was in use; and
(ii) that when he became aware of the
existence and nature of the plaintiff's
trade mark he forthwith ceased to use
the trade mark complained of.
16. Thus, considering the aforesaid provisions of the Act,
it is crystal clear that certain rights have been
created in favour of the owner of the registered
trademark. In case of infringement of such
registered trademark, the person concerned can
institute Suit for infringement and/ or passing off
action against the wrong doer. Now, in the present
case it is admitted fact, as observed earlier that, the
plaintiff is the registered owner of the trademark
AXPERT, whereas the defendant has applied further
trademark for his goods which fall under the same
Clause-9 with trademark EXPERT. It also appears
from the record that the plaintiff has not granted any
permission or licence to the defendant. Now,
C/AO/4/2022 ORDER DATED: 23/12/2022
considering the two trademarks, as referred to
above, it clearly appears that only difference
between the two is that in the trademark of the
plaintiff, alphabet "A" is used, whereas in case of
the defendant, alphabet "E" is used in the
trademark. It is also crystal clear that
pronouncement of both the words would be same.
There is phonetical similarity between both the
trademarks. Therefore, there is every likelihood of
confusion being raised in the minds of the consumers
at large. It is also likelihood that goods of the
defendant could be passed off, as of plaintiff due to
phonetical similarity between the two trademarks.
Therefore, there is prima-facie case in favour of the
plaintiff and balance of convenience is also in his
favour. Further, if the interim injunction is not
granted in favour of the plaintiff then irreparable loss
would be cause to the plaintiff rather than the
defendant as if ultimately plaintiff fails in the Suit,
the defendant could be compensated in terms of
money by directing the plaintiff to pay damages to
the defendant.
17. Now, on perusal of the impugned order of the trial
Court, it appears that its entire focus is on the fact
that the plaintiff has suppressed the fact of defendant
having placed order earlier for the plaintiff's goods
C/AO/4/2022 ORDER DATED: 23/12/2022
and as the defendant has stopped to purchase it from
the plaintiff and has given order to other party,
plaintiff has filed the Suit. However, on perusal of the
pleadings of the party, the plaintiff has averred that
the defendant was earlier employee of the plaintiff.
Considering the material placed on record, simply
because the plaintiff has not averred regarding the
earlier sale-transaction, it does not mean that it has
not come with clean hands. That fact itself does not
affect the right of the plaintiff who is owner of the
registered trademark. It also appears that the trial
Court has not considered the effect of phonetic
similarity between the two trademarks. Thus, the trial
Court has not properly appreciated the facts and law
while deciding the interim injunction application. The
order of the trial Court is clearly arbitrary, perverse
and capricious one. Therefore, in view of the above
discussion, the impugned order needs to be
interfered with by this Court and the impugned order
is not sustainable in the eyes of law.
18. In view of the above discussion, the present Appeal
from Order is liable to be allowed. Therefore, if the
following order is passed, it will meet the ends of
justice:
The present Appeal from Order is hereby
allowed. The impugned order dated 20.9.2021
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passed below Exh-5 in Trade Mark Suit No.1 of 2021
by the learned 3rd Additional District Judge,
Gandhinagar, is hereby quashed and set-aside.
The interim injunction application at Exh-5 filed
in the aforesaid Suit by the plaintiff is hereby partly
allowed. There would be interim injunction in terms
of Para-30(A), (B) and (C) thereof against the
defendant till the final disposal of the Suit.
No order as to costs.
Civil Application, if any, stands disposed of
accordingly.
Direct Service is permitted.
(DR. A. P. THAKER, J)
FURTHER ORDER
At this stage, learned advocate for the
respondent requests to stay the operation of this
order for 6 weeks from today. The same is objected
by the learned advocate appearing for the other side.
Considering the observations made by this
Court in the above order, the request is declined.
(DR. A. P. THAKER, J)
SAJ GEORGE
