Gujarat High Court
Hals Foods Kitchen Private Limited vs Pithiya Jitendrakumar Sole Proprietor ... on 25 April, 2025
Author: Nikhil S. Kariel
Bench: Nikhil S. Kariel
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 104 of 2024
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2024
In R/APPEAL FROM ORDER NO. 104 of 2024
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR. JUSTICE NIKHIL S. KARIEL
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Approved for Reporting Yes No
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HALS FOODS KITCHEN PRIVATE LIMITED
Versus
PITHIYA JITENDRAKUMAR SOLE PROPRIETOR OF JAHAL ENTERPRISE
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Appearance:
MR DS NANAVATI FOR PRATIK Y JASANI(5325) for the Appellant(s) No. 1
MR HS TOLIYA WITH RH BHANSALI(2618) for the Respondent(s) No. 1
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CORAM:HONOURABLE MR. JUSTICE NIKHIL S. KARIEL
Date : 25/04/2025
ORAL JUDGMENT
1. Heard learned Senior Advocate Mr. D.S. Nanavati with learned
Advocate Mr. Pratik Y. Jasani for the appellant and learned Senior Advocate
Mr. H.S. Tolia with learned Advocate Mr. R.H. Bhansal for the respondent.
2. By way of this appeal, the appellant has challenged order dated
29.05.2024 passed by the learned 10th Additional District and Sessions
Judge, Ahmedabad (Rural) in application below Exh. 5 in Trade Mark Suit
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No. 17 of 2022, whereby the said application preferred by the plaintiff,
respondent herein, has been allowed, whereas the application preferred by
the defendant, appellant herein, has been rejected.
3. It would be pertinent to mention here that challenge by the appellant
herein is only as regards the learned District Court allowing the application
under Exh. 5 and whereas there is no challenge insofar as the order rejects
the counter claim of the defendant-appellant herein.
4. At this stage, it is observed that the parties to the present appeal
would be referred to as the appellant-defendant and the respondent-
plaintiff.
5. It appears that the respondent-plaintiff had preferred Civil Suit (TM)
No. 17 of 2022 inter alia under the provisions of the Trade Marks Act, 1999
and the Copyright Act, 1957, for injunction, account of profit and damages.
It was case of the plaintiff that the plaintiff had created artwork/ label
containing a mark "TAAM JHAAM". It is contended that the respondent-
plaintiff was the prior adopter/user of the said mark. It is further the case of
the plaintiff that the defendant-appellant was subsequent adopter of the
impugned mark/label and though the defendant had not yet started its
business, yet, the defendant was attempting to use the same trade mark/
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artwork. It is in this context that the Civil Suit was filed inter alia praying
that the defendant may be restrained from using the impugned
artwork/label including any artwork/label which may be substantial and
material reproduction of the plaintiff's artwork, more particularly to ensure
that there is restraintment against the defendant from committing an act of
infringement of copyright. Further prayers for damages etc. had also been
sought for.
5.1 It would appear that the plaintiff had also filed an injunction
application under Exh. 5 in the said Civil Suit. It would appear that the
learned District Court having issued notice and the same being served upon
the defendant, the defendant had upon appearing, filed counter claim Exh.
20 against the plaintiff inter alia seeking relief of permanent injunction,
restrainment against infringement of copyright, passing off etc., and whereas
interim injunction had also been sought for in the said counter claim vide
application Exh. 20, and whereas both the applications under Exh. 5 and
under Exh.20 had been heard together and while the application under Exh.
5 had been allowed, the application under Exh. 20 had been rejected by the
learned District Court. The present appeal from order is seeking to
challenge impugned order insofar as the order allows application below
Exh.5 granting interim injunction in favour of the respondent-plaintiff.
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6. Learned Senior Advocate Mr. Nanavati appearing on behalf of the
appellant would assail the impugned decision by submitting that the
appellant is a company registered under the Companies Act, incorporated
on 30.03.2022 and running hotels/restaurants under the different brand
names being "Ghee Gud", "Octant Pizza" and "Taam Jhaam". Such
restaurants/hotels are running in multiple cities. It is submitted that the
original plaintiff had been known to the appellant-defendant since many
years and whereas the plaintiff had been a franchisee of the Octant Pizza
brand of the defendant. It is submitted that after the appellant discontinued
the franchise agreement, the respondent had instituted the suit in question
with a view to harass the appellant-defendant. It is submitted that the mark
of which infringement is alleged, is not qualified for any protection under
the Copyright Act, as the mark complained off is a label mark which is
defined under the provisions of the Trad Marks Act, 1999, more particularly
under Section 2(m) thereof. It is submitted that the said label is now being
claimed as an artistic work by claiming the same to be an artistic work under
Section 2(c) of the Copyright Act. Learned Senior Advocate would further
submit that the assignment deed by virtue of which the respondent-
plaintiff's ownership over the label mark is claimed, is suspicious and the
learned District Court ought not to have believed the same. It is submitted
in this regard that the assignment deed was executed on 28.05.2022, the bill
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for creation of logo was issued on the same date and the menu was designed
on 10.06.2022, and whereas the invoice for printing T-shirts with the
artwork was issued on 10.08.2022. It is submitted by the learned Senior
Advocate that the dates being specified to highlight the fact that the user of
the artwork/label is claimed from May, 2022, which claim is itself doubtful
and not believable. It is further submitted that while the plaintiff-respondent
was a franchisee of the appellant brand Octant Pizza, closure notice for the
same had been issued on 03.10.2022, and whereas the plaintiff therefore was
never in business with the impugned mark TAAM JHAAM till October,
2022, and therefore, the submission that the plaintiff is in business with the
mark in question from May, 2022 is a false claim. It is further submitted that
while the appellant-defendant had claimed to be prior user, adopter and
owner of the impugned trade mark/ label TAAM JHAAM, the respondent-
plaintiff instead of independently any claim, had only attempted to counter
the submissions made by the appellant-defendant.
6.1 Learned Senior Advocate would emphasize that the respondent-
plaintiff had not produced any cogent evidence with regard to the trinity test
namely (i) of having acquired a reputation or goodwill in his services, (ii)
that there was misrepresentation by the appellant-defendant by using the
mark of the respondent-plaintiff and (iii) that the respondent-plaintiff
having suffered damage on account of the act of the respondent-plaintiff
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was likely to suffer further damage due to the misrepresentation.
6.2 It is further contended that the pleadings of the respondent-plaintiff
does not contain any detail as regards being user of the mark. It is further
submitted that being user of the mark in question being a very crucial
ingredient in a suit of the present nature, the learned District Court had
erred in granting interim injunction without appreciating the issue in proper
perspective. Learned Senior Advocate would further submit in this regard
that without the user being established by the respondent there cannot be
any allegation of any confusion being created in the mind of customers as
well as public at large, and therefore, injunction ought not to have been
granted in favour of the plaintiff-respondent. It is further submitted that
though the respondent-plaintiff claims to be user of the mark from
28.05.2022, yet, the respondent-plaintiff had thereafter made application
before the Registrar of Tram Marks for seeking registration of label mark
TAAM JHAAM as proposed to be used. It is submitted that this dichotomy
would have disentitled the respondent-plaintiff for any interim injunction,
and whereas the same had not been appreciated by the District Court.
6.3 It is further submitted that the learned District Court while granting
interim injunction had relied upon a Pursis/application filed by the
defendant-appellant before the District Court at Vadodara in Trade Mark
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Suit No. 4 of 2022. It is submitted that the vide said Pursis adjournment was
sought for procuring details as regards the restaurant at Vadodara under the
brand name TAAM JHAAM was functioning or not and whereas the
learned District Court, Vadodara had misinterpreted the said Pursis and had
granted injunction against the appellant-defendant herein and whereas the
learned District Court without appreciating the said issue had directed
granting of interim injunction in the present suit also.
6.4 It is further submitted that the learned District Court had also
committed a gross error while relying upon a typographical error in one of
the invoices issued by the artist namely 'Autumn Ads', more particularly as
regards the address of the appellant-defendant. It is submitted in this regard
that the deed of assignment as also the invoice of the logo design bears the
current address of the appellant and whereas the artist has also issued a
clarification admitting to such mistake. It is submitted that even on the said
aspect the learned District Court had committed an error, resulting the
impugned order of injunction being passed.
6.5 It is further submitted that none of the criterias for grant of
injunction namely balance of convenience, prima facie case or irreparable
injury, are existed in favour of the respondent-plaintiff, yet, the learned
District Court had passed the impugned order granting interim injunction in
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favour of the respondent-plaintiff and against the appellant-defendant.
6.6 It is further submitted at this stage that this Court may not take into
consideration submissions made with regard to an affidavit dated 29.05.2024
by the artist who created the logo/mark for the appellant-defendant, since
the said aspect is after the order impugned and whereas the affidavit
whereby it is alleged that the artist had infact not issued any clarification,
appears to be an afterthought at the behest of the respondent-plaintiff.
Learned Senior Advocate in support of his submissions would rely upon
decisions of the Hon'ble Supreme Court in case of (i) Wander Limited and
Another Vs. Antox India Private Limited reported in 1990 (Supp) SCC 727,
(ii) Laxmikant V. Patel Vs. Chetanbhai Shah and Another, reported in
(2002) 3 SCC 65, (iii) K. Narayanan and Another Vs. S. Murali, reported in
(2008) 10 SCC 479, (iv) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals
Ltd. reported in (2001) 5 SCC 73, and (v) Brihan Karan Sugar Syndicate Pvt.
Ltd. Vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana reported
in (2024) 2 SCC 577.
7. This appeal is vehemently opposed by learned Senior Advocate Mr.
H.S. Tolia appearing for the respondent-plaintiff. At the outset, learned
Senior Advocate Mr. Tolia would submit that the appellant is attempting to
create an unnecessary controversy inasmuch as, the learned District Court
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has inter alia granted interim injunction for infringement of copyright also.
It is submitted by the learned Senior Advocate that the registration of a
copyright is not mandatory and whereas for the purposes of the Copyright
Act, it would not make any difference whether the label/artwork was
registered or not. It is further submitted that Section 13(2)(ii) of the
Copyright Act inter alia envisages that copyright subsists even in a case of
unpublished work and thus use of the label/artwork is not required. Relying
upon Section 14(c) of the Copyright Act, it is submitted that the copyright
holder would have exclusive right to reproduce the artistic work in any
material form in all manners.
7.1 Learned Senior Advocate would submit that while the suit is
preferred inter alia claiming violation of the Copyright Act as well as the
Trade Marks Act, yet, predominantly the suit is preferred for infringement
of copyright and the aspect with regard to passing off would be
consequential. In any case, it is submitted by the learned Senior Advocate
that Section 2 (zb) of the Trade Marks Act, defines trade mark as being
mark capable of distinguish the goods or services of one person from
others. It is submitted that a person unauthorizedly using the artwork/ label
cannot take the defence that he is using the label/artwork prior to the
respondent-plaintiff inspite of the plaintiff not having used the
label/artwork. It is submitted in this regard that Section 2(2)(b) of the
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Trade Marks Act inter alia states about a mark printed or visually
represented as being used of the mark. It is submitted that even otherwise
Menu Card had been printed on 10.06.2022 and T-Shirt with the same mark
had been printed on 10.08.2022 and whereas the same clearly reflect the
regular and continues usage of the mark by the respondent-plaintiff. It is
submitted further in this regard that the appellant was contemplating to start
a restaurant named DHAAM DHOOM and preparations for the same had
continued upto October/November, 2022. It is submitted that only after
the said period, did the appellant-defendant even contemplate to start a
restaurant with a different name and whereas by such time, the respondent-
plaintiff had started use of the artwork/label and whereas even for such
reason, the submissions on behalf of the appellant-defendant may not be
countenanced.
7.2 Learned Senior Advocate would also rely upon Section 2(2)(c) of the
Trade Marks Act to submit that usage of the mark in relation to the services
shall be construed as a reference to the use of the mark or any statement
showing availability of such services. Furthermore, Section 27(2) of the
Trade Marks Act is also relied upon to submit that the suit inter alia
preferred for passing off is also maintainable and whereas it is submitted
that the suit had been preferred when the respondent-plaintiff had not
started its business using the disputed artwork or label i.e. the suit was filed
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in quia timet action i.e. in anticipation of a wrongful act which is about to
happen. Learned Senior Advocate would further rely upon certain
documents which are part of the record which would show that while the
assignment deed indicated an Email ID to be created, the Email ID namely
[email protected] was created on 05.01.2023, and is owned by the
respondent-plaintiff herein. It is submitted that though this aspect had been
highlighted in the affidavit-in-rejoinder by the respondent-plaintiff in the
Civil Suit (Page 825), yet, the same had not been controverted by the
appellant-defendant. It is further submitted that by the learned Senior
Advocate that there is discrepancy in two invoices issued by the same
agency which allegedly prepared the logo design for the appellant-defendant,
reliance is being placed on Page Nos. 312 and 316 of the paper book which
would show two invoices with the same invoice number, date and purpose,
but showing two different addresses of the appellant-defendant. Emphasis is
also laid on a letter of intent dated 12.07.2022 for DHAAM DHOOM
restaurant, deed of partnership dated 25.08.2022, whereas the deed reflects
JSK Hospitality (appellant - defendant) mentioning address where the
present TAAM JHAAM restaurant is located as being the address where the
DHAAM DHOOM was to come up. It is submitted by the learned Senior
Advocate in this regard that till around August-September, 2022, there was
no occasion for the appellant-defendant to have contemplated opening of
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TAAM JHAAM at the place where the appellant-defendant was
contemplating to open restaurant named DHAAM DHOOM. It is further
submitted that the appellant is habitual infringer having been injuncted by
the Commercial Court for using trade mark DHAAM DHOOM vide its
order dated 27.09.2022 in Commercial Trade Mark Suit No. 27 of 2022. It
is further submitted that an alleged sister concern of the appellant in
Vadodara, which has disowned any association with the appellant is also
under an injunction from using the trade mark TAAM JHAAM. Learned
Senior Advocate would submit that while the later affidavit of the artist i.e.
the affidavit after the impugned order under consideration may also be
taken into consideration by this Court since according to the learned Senior
Advocate, the said affidavit reflects the conduct of the parties. It is
submitted by the learned Senior Advocate that in the affidavit, the artist
inter alia denies having created any artwork or having assigned the same to
the appellant-defendant. It is submitted that while the defendant had sought
time to submit an affidavit by the same artist dated 03.06.2024, which
affidavit has not been placed on record till hearing of this appeal and hence,
there could be reasonable presumption that there is no such affidavit issued
by the artist. It is further submitted that while this Court may or may not
take cognizance of the later incident but the fact remains that the artist had
by way of an affidavit filed before the learned District Court, submitted that
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he had not prepared any artwork for the defendant and whereas while the
said aspect would be examined by the learned District Court at the stage of
trial, but the said aspect will clearly disentitle the appellant from claiming
that interim injunction ought not to be granted in favour of the respondent-
plaintiff.
7.3 Learned Senior Advocate would in support of his submissions rely
upon decisions of the Hon'ble Supreme Court in case of (i) Wander Limited
and Another Vs. Antox India Private Limited reported in 1990 (Supp) SCC
727, (ii) Laxmikant V. Patel Vs. Chetanbhai Shah and Another reported in
2002 (3) SCC 65, (iii) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals
Ltd. reported in (2001) 5 SCC 73, (iv) K. Narayanan and Another Vs. S.
Murali reported in (2008) 10 SCC 479 and (v) Brihan Karan Sugar Syndicate
Pvt. Ltd. Vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana
reported in (2024) 2 SCC 577.
8. Heard learned Senior Advocates on behalf of the respective parties
and perused the documents on record including the impugned decision as
well as the paper book.
9. At the outset, this Court seeks to refer to the decision of the Hon'ble
Supreme Court in case Neon Laboratories Ltd Vs. Medical Technologies
Ltd. & Ors., whereby the Hon'ble Supreme Court had reiterated the scope
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and ambit of exercise of jurisdiction by Appellate Court with regard to
interlocutory orders. It has been observed by the Hon'ble Supreme Court
that Appellate Court ought not to reassess 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. It has been
further observed by the Hon'ble Supreme Court that 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. The Hon'ble
Supreme Court has further reiterated that the Court, while granting interim
injunction is required to look into the three aspects namely; (1) whether a
prima facie case is made out; (2) whether balance of convenience lies in
favour of the applicant; and (3) whether irreparable loss or damage will be
caused to the applicant, if the interim injunction is declined
10. Considering the law as reiterated by the Hon'ble Supreme Court in
the above decision, from the perspective of the impugned order passed by
the learned District Court, it would clearly appear to this Court that no
interference is required in the order passed by the learned District Court.
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The learned District Court had as far as the aspect of prima facie case is
concerned, observed that while the appellant - defendant and the
respondent - plaintiff, both have applied for registration of trademark
'TAAM JHAMM' vide applications dated 13.10.2022 and 21.10.2022
respectively, yet the submissions of the plaintiff appears to be believable in
view of the deed 28.05.2022 for creating logo and branding design of the
work of label / logo ''TAAM JHAMM'. Furthermore, menu of ''TAAM
JHAMM'' dated 10.06.2022 and T-shirt printed on 10.08.2022 were also
placed on record, which aspect had also weighed with the learned District
Court. Learned Court had also considered that the plaintiff had placed on
record assignment letter issued by the artist concerned dated 28.05.2022,
whereby the artist had declared that the plaintiff is the only exclusively
owner / proprietor / author of the artistic work of 'TAAM JHAMM' for
lifetime. On the other hand, learned Court notes that the appellant -
defendant had placed document showing the defendant inviting quotation
and one M/s. 'Autumn Ads' through senior artist Mr. Amod Vishwakarma
giving quotation in response to letter dated 12.04.2022, while the address of
the registered office is mentioned at a particular place, yet on considering
other documents placed on record by the defendant, it would appear that
the rent agreement for the said address had been entered into on
02.05.2022, whereas the address in question would not have been used for
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any purpose prior to the said date. That according to the learned District
Court, as far as the appellant - defendant was concerned, the address was
not in existence on 12.04.2022, hence, the version of the appellant -
defendant creates suspicious. The learned District Court also notes that the
respondent - plaintiff had also filed Trademark Suit before the learned
District Court at Vadodara, seeking injunction against the infringement of
copyright and other ancillary reliefs against the proprietory concerned of Mr.
Sunil Jasani, Authorised Signatory of the appellant Company and whereas
the learned District Court had granted ad interim relief in favour of the
plaintiff against the said concerned as regards not using the trademark
''TAAM JHAMM'' or any other similar / art work / label. The learned
District Court had also noted that the appellant - defendant had proposed
and was in the process of opening a restaurant by name of "DHAAM
DHOOM" at the very address and whereas the learned District Court in a
different Trademark Suit filed by one Ahura Restaurant, had granted ex
parte ad interim injunction against the said Mr. Sunil Jasani and whereas
ultimately, the Suit had been disposed of after settlement had arrived
between the parties.
11. Learned District Court had also noted that the appellant - defendant
had not replied to the contention of the respondent - plaintiff as regards
creation of email ID [email protected]. The learned Court is of
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the prima facie opinion that there appears to be dishonest intention on part
of the defendant - appellant and whereas the learned Court was also of the
opinion that on the above ground, interim injunction ought to be granted.
To this Court, it would appear that the considerations, which had weighed
with the learned Court, were relevant and germane to the issue and in view
of the law laid down by the Hon'ble Apex Court as referred to hereinabove,
this Court ought not to interfere, even if this Court was of the opinion that
on the very set of material, if this Court was conducting the matter, then a
different conclusion would be arrived at and whereas as it is this Court is of
the considered opinion that the order passed by the learned District Court
was perfectly justifiable under the circumstances.
12. In so far as the submissions made on behalf of the appellant -
defendant, as regards the aspect of label marked being claimed as artistic
work by claiming shelter of Section 2(c), it would appear that the Copyright
Act, more particularly Section 14(c) inter alia reserves exclusive rights to the
holder to reproduce artistic work and whereas the copyright as per Sections
13(2) and 13(ii) would subsist even if unpublished artistic work and
therefore, the plaintiff was right in complaining and learned District Court
was justified in granting injunction also on the ground of infringement of
copyright. In any case, to this Court, it would appear that delving further in
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the legal issue, may have its own consequences at the stage of trial and
whereas this Court restrains itself from engaging any further discussion on
such aspect.
13. In so far as the allegations that the assignment deed in favour of
plaintiff - respondent appears to be suspicious, prima facie, does not hold
good as it appears to this Court that while the bill was executed dated
28.05.2022 and the bill thereof was issued for the said date, the menu was
decided after approximately two weeks from the date of the deed and the
invoice for printing T-shirt with the art work was approximately after more
than two and half months from the date of the deed. It is also required to be
mentioned that while the appellant - defendant relying upon the fact that
the closure notice had been issued to the respondent - plaintiff on
03.10.2022 as regards a franchise of brand Octant pizza of the ownership of
the appellant - defendant. In this regard, it would appear that the mere fact
that a closure notice had been issued, would not have any bearing at this
stage, since it would prima appear that materials had been placed on record
to show that a logo had been created, a menu had been decided and even T-
shirt with the art work had been printed. Thus, the said submissions would
not further case of the appellant - defendant.
14. In so far as the submissions with regard to the trinity test for an
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action of passing off is concerned, (a) prior user (b) reputation / goodwil
and (c) likelihood of deception, it would appear as noted hereinabove that
the Suit is preferred as much as for infringement of copyright as for passing
off. This Court is of the opinion that in view of the fact that on the ground
of infringement of prima facie of infringement of copyright, since the
learned District Court would have been justified in granting injunction, the
learned District Court would be justified in not addressing the issue of
trinity test. Nevertheless, to this Court, it would appear that the aspect of an
assignment deed in favour of the respondent - plaintiff, invoices for printing
of menu card as well as for printing of T-Shirt with the art work in quesiton,
reflects a prior user. Furthermore, the documents relied upon by the
appellant - defendant before the learned District Court do not inspire
confidence as prima facie as noted hereinabove, the documents appear to be
manipulated as the letter inviting quotation dated 12.04.2022 at Mark 17/4
and 21/4 appear to be quite suspicious, since the defendant would not have
been aware about the address in question as the rent agreement for the
same, had been entered into at a later date. While the same is attempted to
be attributed to a typographical error, yet at this stage, the same would not
be determinable as it would only be ascertained after leading of evidence as
to whether the document was a gotten up document or was a genuine
document. Again, it would appear that the respondent - plaintiff has in his
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favour an assignment deed, whose genuineness has not been challenged.
Thus, there definitely exist a prima facie case of likelihood of deception,
more particularly, since there exist a clear similarity between the logo used
by both the parties.
15. In so far as the submissions as regards the order of the learned
District Court, Vadodara, where injunction is stated to have been granted
against the appellant - defendant with regard to using the brand name
'TAAM JHAAM', while it is attempt to be contended that the plaintiff -
respondent was misinterpreting the order, yet it does not appear that there
has been any attempt to seek for any clarification of the said aspect. While it
is true that the learned District Court, Vadodara, had inter alia relied upon
the fact of the defendant therein, appellant herein, having closed the
business, yet at the same time, learned District Court had also clearly
injuncted the appellant - defendant from carrying on business in the name
of 'TAAM JHAAM' or in any other similar mark / art work / label till the
next date of hearing. It is also not pointed out that the defendant therein,
appellant herein having closed down the business of restaurant, the Suit is
disposed of as having become infructuous. Thus, it could not be contended
that interim injunction was granted merely on account closure of the
business of restaurant rather as clearly discernible from the order, the
learned District Court had inter alia relied on that aspect, while also referring
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to the discussion in the earlier part of the said para. For this reasson, the
said contention on behalf of the appellant - defendant cannot be accepted.
16. In so far as the decision of the Hon'ble Supreme Court having been
relied upon by the appellant in case of Wander Limited and Another Vs.
Antox India Pvt. Ltd. (Supra), it would appear that the learned advocate has
relied upon the observations of the Hon'ble Supreme Court in case of an
action for passing of whereas as noted hereinabove and as submitted by the
learned advocate for the defendant, the Suit is both for an action of passing
off and for an action for infringement of copyright and whereas as noted by
the learned District Court also, the injunction is granted for an infringement
of copyright and not in an action only for passing of and whereas the said
decision would not help the cause of the appellant defendant. Furthermore,
in the said decision, the Hon'ble Supreme Court has inter alia observed that
interlocutory remedy is intended to preserve the rights of the parties, which
may appear on a prima facie case and whereas the consideration, which
would weigh with the Court, when the defendant has commenced his
enterprise would be different from consideration, which weigh when the
defendant has not commenced the enterprise in question. In the opinion of
this Court, while it would appear that the defendant - appellant herein, has
commenced the enterprise, yet one could not be oblivious of the fact that
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the enterprise is commenced upon a logo / label, which is disputed by the
plaintiff - respondent and where prima facie, the plaintiff has been able to
establish an assignment whereas the document, which relied upon by the
appellant - defendant in support of the assignment appears to be suspicious
and where for the same cause, the appellant - defendant has been injuncted
by a competent Court, which injunction has not yet been questioned, the
respondent - plaintiff would definitely be entitled for an interim injunction.
17. In so far as the decision of the Hon'ble Supreme Court in case of
Laxmikant V. Patel (Supra), paras 7 to 14 and 17 having been relied upon by
the learned advocate for the appellant, in the considered opinion of this
Court, what would be relevant to the fact of the case would be the
observations of the Hon'ble Supreme Court at paras 8 and 17, where the
Hon'ble Supreme Court has observed that an action for passing off will lie
wherever the defendant Company's name, or its intended name, is calculated
to deceive, and so to divert the business from the plaintiff, for the confusion
between two businesses then only a case is made out. The Hon'ble Supreme
Court has also observed that what is to be considered is not limited to the
date of proceedings rather the Court has also to take into account the name
in which business may be carried out in the future. The Hon'ble Supreme
Court has further observed that refusal to grant an injunction inspite of
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availability of fact which are prima facie established by overwhelming
evidence and material on record justifying the grant thereof would occasion
a failure of justice. Relevant also would be the observation of the Hon'ble
Supreme Court that once a case of passing of is made out, the practices
generally to grant a prompt ex parte injunction.
18. Having regard to the fact situation, elaborately explained hereinabove,
it would appear that the fact clearly justifying grant of an interim injunction
and to this Court, it would appear that non grant of interim injunction in
view of the overwhelming prima facie case, would have occasioned a failure
of justice. As against the same, it does not appear that the appellant -
defendant has produced any material much less any cogent material based
upon, which the learned trial Court would have been justified in refusing the
interim injunction. For such reason, to this Court, it would appear that even
the said decision would not come to the aid of the appellant - defendant.
19. In the case of Cadila Healthcare (Supra), learned advocate has relied
upon the observations of the Hon'ble Supreme Court, where the Hon'ble
Supreme Court has inter alia observed that in trademark matters, in addition
to balance of convenience, the Courts are now required to go into question
of comparable strength. In so far as the said aspect is concerned as noted
hereinabove, it would appear that the Suit is preferred inter alia for an action
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of passing off along with an action for infringement of copyright and
whereas since this Court is of the very clear opinion that the learned District
Court had granted interim relief for infringement of copyright, the law laid
down by the Hon'ble Supreme Court would not advance the cause of the
appellant.
20. In so far as the decision of the K. Narayanan (Supra), it would appear
that the law laid down by the Hon'ble Supreme Court is with regard to right
to sue accruing only after trademark has been registered and whereas to this
Court, it would appear that in view of the observations of this Court, while
considering the law laid down by the Hon'ble Supreme Court in case of
Cadila Healthcare (Supra) would also hold good in so far the said decision
also.
21. In so far as the case of Brihan Karan Sugar Syndicate Pvt. Ltd. Vs.
Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana reported in (2024)
2 SCC 577 is concerned, it would appear that the learned advocate is
referring to the observations of the Hon'ble Supreme Court, more
particularly at paras 14 and 17, whereby the Hon'ble Supreme Court has
inter alia laid down that the plaintiff in passing off action as per the triple
test has to prove that he had acquired reputation or goodwill connected with
the goods. It is observed by the Hon'ble Supreme Court relying upon the
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decision of the Hon'ble Supreme Court in case of Toyota Jidosha Kabushiki
Kaisha Vs. Prius Auto Industries Ltd. & Ors. reported in 2000 (2) SCC 1
that if the goodwill or reputation in a particular jurisdiction is not
established by the plaintiff, no other issue would need any further
examination to determine the extent of the plaintiff's right in the action of
passing off. Furthermore, it is observed by the Hon'ble Supreme Court that
for establishing goodwill of the product, it is necessary for the appellant to
inter alia prove the figures of sale of the product as well as expenditure
incurred on promotion and advertisement. In the considered opinion of this
Court, the crux of the arguments of the learned advocate for the appellant -
defendant being with regard to the action of passing of and whereas to this
Court, since it is very clearly observed by the learned District Court that the
Suit is also for infringement of copyright and whereas considering a prima
facie case is made out as regards infringement, the learned District Court
having granted interim injunction, to this Court, no interference would be
required at this stage.
22. At this stage, it also requires to be mentioned that the learned Senior
Advocate for the appellant - defendant had also made submission as regards
'classical trinity test' and whereas it appears to this Court that such a test
would be required to be gone into, if the Suits were only preferred for an
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action of passing off. To this Court, it would appear that while the plaintiff
had preferred a Suit inter alia raising a grievance as regards passing off and
whereas the Suit was also for raising a grievance with regard to infringement
of copyright, therefore, the aspect of whether requirement for 'classical
trinity test' is fulfilled, does not require to be addressed at all.
23. To this Court, it would appear that since the substantive Suit is
pending at large before the learned District Court, and as noted
hereinabove, since cogent and relevant reasons have been mentioned by the
learned District Court, the issue as regards whether a case of passing off is
made out or not, is not required to be gone into at this stage, more
particularly since the plaintiff - respondent herein has been able to make out
a prima facie case with regard to infringement of copyright.
24. Having regard to the discussions, observations and conclusions
arrived at, to this Court, it would appear that the learned District Court had
granted interim injunction on valid and germane grounds and hence, there is
no requirement for interfering with the said decision. Hence, the present
Appeal From Order is disposed of as rejected. Consequently, the Civil
Application is also disposed of.
It is clarified that learned trial Court shall adjudicate the Civil Suit
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without being influenced by any of the observations made by this Court as
hereinabove and without being influenced by any of the observations made
by the learned District Court, while passing the order impugned before this
Court.
(NIKHIL S. KARIEL,J)
Y.N. VYAS
