M/S Rishabh Agencies vs P Kantilal
2022 Latest Caselaw 5228 Kant

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       IN THE HIGH COURT OF KARNATAKA AT BENGALURU

          DATED THIS THE 23RD DAY OF MARCH, 2022

                         BEFORE

    THE HON'BLE MR. JUSTICE SACHIN SHANKAR MAGADUM

              M.F.A. NO.6997 OF 2021 (IPR)

BETWEEN:

M/S RISHABH AGENCIES
A SOLE PROPRIETARY CONCERN
BY AND THROUGH ITS PROPRIETOR
GAUTAMCHAND JAIN
ADULT, HINDU BY RELIGION
OCCUPATION: BUSINESS
HAVING ADDRESS AT NO.31,
AMMAN KOIL STREET, PARK TOWN
CHENNAI-560 003, TAMIL NADU STATE, INDIA

                                              ...APPELLANT

(BY SRI.RAJENDRA BANSALI, ADVOCATE FOR
SRI.ABHISHEK M R, ADVOCATE)

AND:

P KANTILAL
SOLE PROPRIETOR OF PREETHI APPLIANCES
33/34, MUTHACHARI INDUSTRIAL ESTATE
NAYANNDAHALLI, BANGALORE-560 039
KARNATAKA STATE, INDIA

                                             ...RESPONDENT

(BY SRI.SHIVARAMAN VAIDYANATHAN, ADVOCATE)
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     THIS MFA IS FILED U/O.43 RULE 1(r) R/W SECTION 151 OF
CPC, AGAINST THE ORDER DT.15.11.2021 PASSED ON IA NO.1 IN
O.S.NO.1556/2021 ON THE FILE OF THE XVIII ADDITIONAL CITY
CIVIL JUDGE, BENGALURU CITY, (CCH NO.10), DISMISSING IA
NO.1 FILED U/O.39 RULES 1 AND 2 R/W SECTION 151 OF CPC.

    THIS APPEAL HAVING BEEN HEARD AND RESERVED FOR
JUDGMENT ON 08.03.2022, COMING ON FOR PRONOUNCEMENT OF
JUDGMENT THIS DAY, THE COURT DELIVERED THE FOLLOWING:

                           JUDGMENT

The captioned Miscellaneous First Appeal is filed by the

plaintiff under Order XLIII Rule 1(r) of CPC questioning the

order dated 15.11.2021 passed by the Court below on

I.A.No.1 filed under order XXXIX Rules 1 and 2 r/w Section

151 of CPC.

2. For the sake of convenience, the parties are

referred to as per their rank before the Trial Court.

3. The facts leading to the case are as under:

The plaintiff filed a bare suit for injunction in

O.S.No.1556/2021 to restrain the respondent/defendant, its

proprietor, authorized persons, sister concerns, associates,

agents, etc., from using trademark 'preeti' and also to restrain

the defendant and its concern from committing an act of

passing off and enable others to pass off the defendant's

goods namely pressure cooker and parts thereof, kitchenware,

thermo ware and all types of domestic utensils, water filters

which may be identical with or deceptively similar with

plaintiff's trademark 'preeti'. The plaintiff claims to be a sole

proprietary concern carrying on business of all kinds of

household and kitchen appliances and therefore, has taken a

specific contention that plaintiff has honestly adopted

trademark 'preeti' and has been using the said trademark

since 1990 being the first adopter and user of the said

trademark. The plaintiff claims that he is into business of

manufacturing and marketing of said goods with distinctive

mark as well as distinctive artistic work. The plaintiff has

further specifically pleaded that due to good quality of goods,

the plaintiff has acquired immense reputation and goodwill in

the market in a short span of time. It is also specifically

contended that by virtue of long standing and concurrent use

of said mark, plaintiff has acquired intellectual property rights

including common law rights in the said mark 'preeti'.

4. The plaintiff has further contended that in the

month of August 2020, the defendant issued a false, frivolous

cease and desist notice calling upon the plaintiff from using

the said mark 'preeti' for the goods including pressure cooker

gasket on the premise that defendant is using trademark

'preethi' for the goods namely pressure cooker and its parts.

It is also contended that in the month of December 2020,

plaintiff was served with Court notice at the instance of the

defendant in a bare suit for injunction in O.S.No.5321/2020,

wherein ex-parte interim order was granted in favour of the

defendant thereby restraining the plaintiff from using the

trademark on the premise that the same is identical and

deceptively similar. The plaintiff has further contended that

after hearing both the parties, the Trial Court declined to

extend the interim injunction and consequently, interim

injunction filed by the defendant in I.A.No.1 in

O.S.No.5321/2020 was objected by order dated 20.04.2021.

5. The grievance of the plaintiff is that defendant has

adopted impugned identical and similar mark 'preethi' for

similar goods with an intention to grab the settled market of

plaintiff so as to gain illegal profit by misrepresentation and

therefore, contends that the impugned mark 'preethi' is

adopted by the defendant with malafide and in bad faith to

trade upon the immense reputation and goodwill of the

plaintiff. It is in this background, the plaintiff claimed that on

account of illegal activity of the defendant, sale of plaintiff's

goods has been affected and in due course of time, it is likely

to be more affected thereby resulting in substantial loss in the

market. On these set of pleadings, the plaintiff instituted the

present suit in O.S.No.1556/2021 and filed an application in

I.A.No.1 seeking ad interim order of temporary injunction

thereby restraining the defendant from passing off impugned

goods by using the impugned identical and deceptively similar

trademark 'preethi' as against established trademark of the

plaintiff i.e., 'preeti'.

6. The respondent/defendant, on receipt of summons,

contested the proceedings and filed detailed objections to the

injunction application. The Court below having examined the

rival contentions of the parties and also prima facie material

has rejected the application. The Trial Court was of the view

that though plaintiff by placing on record prima facie material

has made out a case indicating that he is a prior user,

however, the Trial Court was not inclined to grant injunction

having taken note of the rebuttal prima facie material placed

on record by the defendant. The Trial Court was of the view

that plaintiff is not entitled for interim injunction as the

material on record prima facie indicates that plaintiff is not

involved in sale of cooker and mixer accessories. On the

contrary, Trial Court found that defendant is into selling of

cookers and mixers since 1998 and the invoices produced by

the defendant indicates that defendant is selling cookers and

mixers since 2004 and it is in this background, the Trial Court

was of the view that balance of convenience lies in favour of

defendant and therefore, has come to conclusion that if

interim injunction is granted, the defendant would be put to

hardship and injury and irreparable loss. The Trial Court while

rejecting the application has taken a view that the controversy

as to whether the defendant is selling the products on the

goodwill and reputation of plaintiff's cookers and mixers

accessories and other products is a matter of trial.

Consequently, the application filed in I.A.No.1 is rejected.

7. Learned counsel appearing for appellant/plaintiff

reiterating the grounds urged in the appeal memo would

vehemently argue and contend before this Court that the

learned Judge has virtually misconstrued the interim relief

sought by the plaintiff. The plaintiff has sought for interim

injunction to restrain the defendant from using the trademark

'preethi' but the Trial Court has proceeded on an assumption

that the plaintiff is seeking relief to stop the business activities

and therefore, he would submit to this Court that it is in this

background, the order rejecting interim application seeking

injunction is erroneous and therefore, would warrant

interference at the hands of this Court.

8. Taking this Court through paragraph 19 of the

impugned order under challenge, he would submit to this

Court that the learned Judge has examined the prima facie

material and has come to conclusion that plaintiff is a prior

user of trademark 'preeti' and has further come to conclusion

that the plaintiff has made out a prima facie case. Having

recorded the above said findings on interlocutory application,

he would submit to this Court that the learned Judge erred in

holding that balance of convenience lies in favour of defendant

on the premise that defendant is selling cookers and mixers

since 2004 and therefore, if defendant is injuncted, the same

would cause hardship, injury and irreparable loss to the

defendant. He would further vehemently argue and contend

before this Court that the defendant filed an injunction suit

against the plaintiff in O.S.No.5321/2020 and interim

injunction sought by the defendant was rejected by the Trial

Court.

9. Learned counsel by taking this Court through

paragraphs 7, 10 and 11 of the plaint in O.S.No.5321/2020,

he would submit to this Court that defendant has admitted in

unequivocal terms that the trademarks are identical and the

said trademark is used for identical goods and there is a

specific allegation by the defendant against the plaintiff to the

effect that plaintiff has indulged in using identical infringing

trademark and therefore, has committed acts of passing off

defendant's goods. Learned counsel would lay emphasis on

these pleadings in the earlier suit filed by the defendant and

contend that defendant has admitted that the trademark is

identical and therefore, contends that these relevant aspects

are not dealt by the learned Judge having come to conclusion

that plaintiff has succeeded in making out a prima facie case.

10. Learned counsel to buttress his arguments has

placed reliance on the following judgments:

"1. Century Traders Vs Roshan Lal Dugar & Co. & Ors. AIR 1978 Delhi 250(DB).

2. Wockhardt Ltd. Vs Torrent Pharmaceuticals Ltd. & Anr (2018) 18 SCC 346.

3. Neon Laboratories Ltd. Vs Medical Technologies Ltd. & Ors (2016) 2 SCC 672

4. Heinz Italia & Anr Vs Dabur India Ltd.(2007) 6 SCC

1.

5. Dhariwal Industries Ltd. & Anr Vs M.S.S.Food Products (2005) 3 SCC 65.

6. Laxmikant V.Patel Vs Chetanbhai Shah & Anr (2002) 3 SCC 65.

7. Sushil Vasudev Vs Kwality Frozen Foods Pvt. Ltd PTC (SUPPI)(2) 235 (KAR).

8. Midas Hygiene Industries (P) Ltd & Anr Vs Sudhir Bhatia & Ors (2004) 3 SCC 90

9. State of Punjab Vs Dhanjit Singh Sandhu 2014 (0) GLJHEL-SC 55122 {2014 (15) SCC 144}.

10. Suzuki Parasarampuria Suiting Pvt. Ltd Vs Official Liquidator of Mahendra Petrochemical Ltd. 2018(0) AIJEL-SC 62932 (FB) {2018 (10) SCC 707}.

11. Bachhaj Nahar Vs Nilima Mandal 2008 (0) GLHEL-

SC 42971 {2008 (17) SCC 491}."

11. Per contra, learned counsel appearing for the

respondent/defendant repelling the contentions canvassed by

the appellant's counsel would, however, support the order

under challenge and would point out to this Court that learned

Judge has rightly declined to exercise judicial discretion in

granting interim injunction having regard to the facts and

circumstances of the case. Placing reliance on the doctrine of

'he who comes to Court should come with clean hands' would

straight away take this Court to ground No.5(iv) of the appeal

memo and would bring to the notice of this Court that plaintiff

has admitted in unequivocal terms that his trademark

application No.749147 is abandoned by the authority.

Therefore, he would submit to this Court that plaintiff himself

has not come with clean hands and therefore, the learned

Judge was justified in rejecting the application. He would

further contend before this Court that the actual dispute

started on account of legal notice issued by the defendant on

24.08.2020 calling upon the plaintiff to stop selling of pressure

cooker gaskets under the mark 'preeti' on the ground that it is

deceptively similar to defendant's esteemed trademark

'preethi' and surrender all printed materials used in arriving at

the deceptive trademark 'preeti' and also called upon the

plaintiff to submit statement of accounts disclosing all the

profits made by using the deceptive trademark 'preeti'.

12. Learned counsel would further take strong

objection and would persuade this Court to draw adverse

inference against the plaintiff for having not placed on record

all prima facie materials of both the parties. Placing reliance

on the document which is a notice of opposition to application

for registration of trademark by the plaintiff firm, he would

submit to this Court that the plaintiff himself is guilty of

infringing the trademark and there are serious allegations

against the plaintiff firm who has tried to capitalize the

goodwill of the opponents company namely Maya Appliances

which claims that it has developed transborder reputation over

the trademark 'preethi'. Relying on this document, learned

counsel appearing for the defendant would contend that the

plaintiff himself has pirated the logo of some other company

and therefore, the application submitted by the plaintiff firm is

rightly abandoned by the authority and therefore, plaintiff

cannot seek discretionary relief of interim injunction. He

would also place reliance on the invoices of the plaintiff firm

and would contend before this Court that plaintiff has been

selling cooker gaskets by marketing that the gaskets are

suitable to other pressure cookers of different brands. He

would further bring to the notice of this Court that the counsel

appearing for the plaintiff has not disputed the fact that they

are not into business of selling cookers and mixers but are

only into selling the parts relating to cookers and mixers and

therefore, there is no infringement of trademark as alleged

and therefore, defendant has not at all committed any act of

passing off goods of the plaintiff.

13. To buttress his arguments, learned counsel for

defendant has placed reliance on the following judgments:

"1. (1998) 5 SCC 567-Ashok Transport Agency Vs. Awadesh Kumar & Ors.

2. 2003 (6) Bom CR 287 - Municipal Counsil Vs. K.Ravindra & Company & Ors.

3. 127 (2006) DLT 80 - Svapn Constructions Vs IDPL Employees Co-operative Group Housing Society Ltd & Ors.

4. (2012) 2 SCC 567 - Rasiklal Manikchand Dhraiwal Vs. M.S.S. Food Products.

5. Order of the Hon'ble XVIII Addl City Civil Judge (CCH-10) dated 03.12.2021 in O.S. 2467/2021.

6. 1991 (11) PTC 1 (SC) - Wander Ltd & Ors Vs. Antox India (P) Ltd.

7. AIR 1985 SC 330 - Asst Commission Central Excise Chandan Nagar Vs Dunlop India Ltd & Ors.

8. (2012) 6 SCC 792 - Best Sellers Retail (India) Private Limited Vs. Aditya Birla Nuvo Limited & Ors.

9. 2009 (6) KarLJ 566 - Paragon Steels (P) Ltd Vs. Paragon Rubber Industries.

10. 2010 (42) PTC 480 (Karn) - Presteege Property Developers & Ors Vs Prestige Estates Projects Pvt Ltd.

11. 2020 (83) PTC 358 (Del) - Mittal Electronics Vs. Sujata Home Appliances (P) Ltd & Ors.

12. 2004 (28) PTC 59 (Bom) - Ayushakti Ayurved (P) Ltd & Ors Vs. Hindustan Lever Ltd.

13. 2014 (60) PTC 246 (Bom) - Brihan Karan Sugar Syndicate (P) Ltd Vs. Lokranjan Breweries (P) Ltd.

14. 2004 (4) CTC 334 - Maya Appliances (P) Ltd Vs Pigeon Appliances (P) Ltd."

14. Placing reliance on the judgment of the Hon'ble

Apex Court in the case of Wander Limited and Others vs.

Antox India Pvt. Ltd., he would submit to this Court that the

claim made by the plaintiff is uncertain in the light of the

documents and materials placed by the defendant and

therefore, learned Judge has meticulously weighed the balance

of convenience and having taken note of the fact that

defendant is selling cookers since 2004, was justified in

rejecting the interim application. Reiterating the principles in

the above cited judgment, he would contend that Court must

weigh one need against another and determine where the

balance of convenience lies. He would further contend that

prima facie rebuttal material placed by defendant would

indicate that defendant is already into business much prior to

2004 and even if for the sake of arguments as held by the

learned Judge that defendant is selling cookers since 2004,

the plaintiff is not entitled for interim injunction and if, at this

juncture, any injunction order is passed, that would cause

immense financial loss and hardship to the defendant for

which defendant cannot be adequately compensated.

15. Heard learned counsel appearing for the appellant

and learned counsel appearing for the respondent. Perused

the judgment under challenge and also judgments cited by

both the counsel.

16. The plaintiff claims to be a sole proprietary concern

carrying established business of all kinds of household and

kitchen appliances. The plaintiff also specifically claims that

he has adopted distinctive trademark 'preeti' since 1990. The

plaintiff's grievance before the Trial Court is that defendant is

also engaged in business of all types of domestic utensils and

is using trademark 'preethi'. The plaintiff wants to harp on the

pleadings of defendant in the earlier suit filed by the defendant

bearing O.S.No.5321/2020. Plaintiff claims that defendant has

admitted in unequivocal terms in the above said suit that

there is similarity in regard to goods and therefore, the

trademark used by defendant is deceptive which would lead to

confusion and deception in the market. Plaintiff is seeking

interim injunction on the premise that he has exclusive

copyright in the artwork/label containing the said mark and

therefore, he is entitled to use/publish the work/label and at

the same time, restrain any person, firm or company from

reproducing artwork/label containing the said mark in

substantial and material form.

17. The plaintiff has laid a foundation that his firm has

been using the said mark as a prior adopter continuously and

uninterrupted in the open market since 1990 and has

therefore, acquired reputation and goodwill in the mind of

public at large and the trademark 'preeti' is prominently

displayed on the goods which is well known mark owned by

the plaintiff firm. On these set of pleadings, the plaintiff firm

asserts and claims that he has also acquired common law right

and therefore, is entitled to injunct any rival firm who has

indulged in passing off the goods by using the impugned

identical and deceptively similar mark 'preeti'. It is in this

background, interim injunction is sought by contending that if

interim injunction is not granted, plaintiff firm will suffer great

irreparable loss, harm and injury which cannot be

compensated in terms of money.

18. Though defendant contends that he has been using

the trademark 'preethi' since 1998, however, the rebuttal

prima facie material indicates that the said trademark is

adopted since 2004. Therefore, the material placed on record

by defendant prima facie indicates that defendant is into the

business of selling home appliances and he has been selling

home appliances since 2004. If defendant is into business

since 2004, the apprehension of plaintiff that the deceptive

trademark adopted by defendant would cause irreparable loss,

at this juncture, cannot be considered. The rebuttal prima

facie material also indicates that the application submitted by

the plaintiff firm is strongly objected by one more firm namely

Maya Appliances Pvt. Ltd., who were also using the trademark

'preethi' and they are into sale of home appliances and the

said firm claims that they are the market leader in the sector

since 1978. The said firm has also attributed serious

allegations against the present plaintiff firm alleging that the

plaintiff's trademark is calculated to cause deceive and

confusion in the mind of the public and gain unfair advantage.

The plaintiff even in the present appeal at ground No.5(iv) has

admitted that his trademark application No.749147 is ordered

as abandoned. However, plaintiff claims that trademark

application is erroneously ordered as abandoned.

19. Therefore, in the background of the rival

contentions raised by the plaintiff in the plaint and the same

being countered by the defendant in the written statement as

well as objection to the application file under Order XXXIX

Rules 1 and 2 of CPC, this Court is of the view that while

considering an application, especially in an action for goodwill

and reputation as regards the trademark, the Courts must

consider the entirety of the matter in issue on the basis of

fairness, justice and has to adopt commonsense in relation to

whole issue of fact and law relevant to the present case on

hand. Since it is not in dispute that the trademark of plaintiff

is not registered and it is a case of passing-off action at

common law, the plaintiff has to prove not only similarity but

also that defendant is deceptively passing off his goods as that

of plaintiff and there is bound to be confusion in the minds of

customers and a risk of damage. Therefore, the interim

injunction sought by the plaintiff has to be decided only on the

basis of undisputed facts and the prima facie material placed

on record which can legitimately be taken into account at the

interlocutory stage.

20. As per the plaintiff's version and the prima facie

material clearly indicates that defendant's business is not a

new venture as compared to that of plaintiff. Therefore, I am

of the view that balance would not tilt in favour of plaintiff as

claimed. The discretionary relief of interim injunction in such

cases has to be invoked where plaintiff is able to demonstrate

that defendant company is yet to commence its business and

thereby use deceptive name identical to that of plaintiff in

business and trade circles which is likely to and in all

probability create an impression of a connection with plaintiff

firm. Such an eventuality is missing in the present case on

hand.

21. This Court has absolutely no cavil to the proposition

laid down in the judgments cited by the learned counsel

appearing for the plaintiff. In the judgment rendered by the

Division Bench of Delhi High Court in the case of Century

Traders vs. Roshan Lal Duggar & Co., it has been laid

down that trader who adopts distinctive mark is entitled for

protection if he is able to prima facie show that the trademark

used is prior in point of time. The Division Bench has also laid

down that registration of mark is irrelevant in passing off

action and there is no need to look into proof of actual damage

or fraud. In the judgment cited in the case of Wockhardt

Limited vs. Torrent Pharmaceuticals Limited, the Apex

Court held that if plaintiff is able to prima facie prove prior

user, the prerequisite for the action of passing off stands

prima faciely established and therefore, injunction has to be

granted in such cases. Similar view is also found in the case

of Neon Laboratories Ltd. vs. Medical Technologies Ltd.

The Apex Court in the case of Heinz Italia vs. Dabur India

Limited has held that mere delay in bringing the matter to

Court cannot deny interim injunction in favour of plaintiff.

Similar view was also taken in the case of Dhariwal

Industries Ltd. vs. M.S.S. Food Products. The judgment

rendered by this Court in the case of Sushil Vasudev vs.

Kwality Frozen Foods Pvt. Ltd. has laid down that prior

user is required to be given protection and in a case of passing

off, all that is required to be established at the stage of

granting interim injunction is that defendant has used

trademark in a manner so as to deceive the plaintiff's

customer. The Apex Court in the case of Midas Hygiene

Industries Pvt. Ltd. vs. Sudhir Bhatia has held that if

adoption of mark by defendant is dishonest, an injunction

needs to follow. The plaintiff has placed heavy reliance on the

judgment in the case of State of Punjab vs. Dhanjit Singh

Sandhu.

22. Referring to the earlier pleadings in the suit filed by

defendant, the plaintiff has claimed that defendant cannot

approbate and reprobate and cannot retract from his stand

which was taken in the earlier suit. The judgments cited

supra would not come to the aid of the appellant/plaintiff in

the present case on hand. The learned Judge who has

rejected the application has also taken judicial note of all the

significant details. What really goes against the plaintiff in the

present case on hand is that the defendant has been using the

impugned trademark 'preethi' since 2004. Therefore, the

principles laid down by Apex Court in the case of Wander

Limited and Others vs. Antox India Pvt. Ltd., would

squarely apply to the present case on hand.

23. Even if plaintiff has succeeded in making out a

prima facie case of prior user as held in the preceding

paragraphs, defendant is also into the business of selling

home appliances since 2004 and the present suit is filed in

2021. Therefore, the question as to whether the plaintiff's

trademark is protected and he has an exclusive right and

whether the action of defendant by using the impugned

trademark has been infringed and is also guilty of passing off

the goods of plaintiff is a matter of trial. The Court is also

required to determine the claim of plaintiff in the light of the

application submitted by the plaintiff for registration of his

trademark being abandoned. All these disputed questions of

facts are to be adjudicated only by way of full fledged trial.

24. Though registration is immaterial in the case of

passing off and the criteria for granting an injunction is the

prior user of trademark by the parties, having regard to the

peculiar facts and circumstances of the case, this Court is of

the view that the Trial Court having exercised judicial

discretion was justified in declining to grant interim injunction.

Having examined the prima facie material and bearing in mind

the scope of enquiry under Order XLIII Rule 1(r) of CPC, I do

not find any valid grounds to interfere with the order passed

by the Trial Court. The plaintiff has not been able to

demonstrate that the order under challenge suffers from

perversity. Therefore, no contrary view can be taken by this

Court and the order under challenge passed by the Court

below does not warrant any interference at the hands of this

Court.

Accordingly, the appeal is dismissed.

Sd/-

JUDGE CA