Orissa High Court
M/S. Devi Krupa Soft Drinks vs M/S. Jogeswar Beverages on 10 September, 2025
Author: Sanjeeb K Panigrahi
Bench: Sanjeeb K Panigrahi
Signature Not Verified
Digitally Signed
Signed by: BHABAGRAHI JHANKAR
Reason: Authentication
Location: ORISSA HIGH COURT, CUTTACK
Date: 16-Sep-2025 16:57:44
IN THE HIGH COURT OF ORISSA AT CUTTACK
FAO No.33 of 2025
(An appeal under Order 43, Rule 1 (r) of the Code of Civil Procedure.)
M/s. Devi Krupa Soft Drinks, .... Appellant (s)
Ganjam
-versus-
M/s. Jogeswar Beverages .... Respondent (s)
Advocates appeared in the case through Hybrid Mode:
For Appellant (s) : Mr. Avijit Pal, Adv.
For Respondent (s) : Mr. Bharat Jalli, Adv.
CORAM:
DR. JUSTICE SANJEEB K PANIGRAHI
DATE OF HEARING:-18.08.2025
DATE OF JUDGMENT:-10.09.2025
Dr. Sanjeeb K Panigrahi, J.
1. The Appellant, in the present appeal, is challenging the order dated
11.12.2024 passed by the learned District Judge, Ganjam, Berhampur in
I.A. No. 04 of 2024 arising out of C.S. No. 01 of 2024.
I. FACTUAL MATRIX OF THE CASE:
2. The brief facts of the case are as follows:
(i) The Appellant is a proprietorship concern engaged in the business of
manufacturing, merchandising, and trading in lemon juice and allied
products, including beverages, lemonade, soft drinks, concentrates,
fruit-based drinks, syrups, and aerated and carbonated water.
Location: ORISSA HIGH COURT, CUTTACK
(ii) The Appellant, as plaintiff before the learned District Judge,
instituted C.S. No. 01 of 2024 under Section 134 of the Trade Marks
Act, 1999, seeking reliefs for infringement of its registered trademark
and trade name. In the said suit, the plaintiff prayed for permanent
injunction against the defendant from using the impugned mark, for
delivery of all infringing goods, for rendition of accounts and profits
wrongfully earned by the defendant, for damages, and for such
further reliefs as the plaintiff was entitled to.
(iii) Along with the said suit, the plaintiff filed I.A. No. 04 of 2024 under
Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil
Procedure, 1908, Section 135 of the Trade Marks Act, 1999, and
Section 22 of the Designs Act, 2000, seeking a temporary injunction.
The prayer was to restrain the defendant from using the trade name
or label "GUPTAS BIT NIMMA SODA SALT," or any other name
incorporating the expressions "DK BIT," "LEMON & SALT SODA,"
or the vertical placement of the word "BIT" in white font over black
background with the tilted expression "LEMON & SALT SODA" in
yellow font with black outline over a white background, whether
singly or in combination with other expressions, in a manner
calculated to deceive or suggest association with the plaintiff's goods.
The injunction was also sought against use of the registered bottle
design of the plaintiff until disposal of the suit.
(iv) The defendant entered appearance before the trial court and filed a
written statement in the suit. While no counter-affidavit was filed to
the application under Order XXXIX Rules 1 and 2 CPC, the defendant
Location: ORISSA HIGH COURT, CUTTACK
placed reliance upon its registration of the label "BIT" under
Trademark Certificate No. 3319131, registered as Trade Mark No.
5708035 dated 03.12.2022 in Class 35 of the NICE Classification.
(v) Upon hearing, the learned District Judge, Ganjam, Berhampur, by
order dated 11.12.2024, rejected I.A. No. 04 of 2024.
(vi) Being aggrieved by the said order, the Appellant has preferred the
present appeal challenging the legality and propriety of the rejection
of its application for temporary injunction.
II. SUBMISSIONS ON BEHALF OF THE APPELLANT:
3. Learned counsel for the Appellant earnestly made the following
submissions in support of his contentions:
(i) The Appellant submitted that the impugned order dated 11.12.2024 is
contrary to law and the materials on record. It was contended that I.A.
No. 04 of 2024 seeking temporary injunction ought to have been
allowed, as the Appellant had established a clear prima facie case of
infringement. The Appellant asserted that unless restrained, the
Respondent would continue to use the mark "GUPTAS BIT NIMMA
SODA SALT" and deceptively similar expressions such as "DK BIT"
and "LEMON & SALT SODA," along with the distinctive trade dress
and bottle design of the Appellant, thereby causing confusion and
irreparable injury to the business of the present Petitioner.
(ii) The Appellant contended that the rival marks are phonetically, visually,
conceptually, and structurally similar, and that the Respondent has
copied the Appellant's trade dress and bottle design to ride on its
goodwill. The Appellant submitted that Section 29 of the Trade Marks
Location: ORISSA HIGH COURT, CUTTACK
Act, 1999 deems such use as infringement and, under sub-section (3),
presumes likelihood of confusion. It was urged that the learned District
Judge failed to apply this statutory mandate.
(iii) The Appellant relied upon Heinz Italia v. Dabur India Ltd1 wherein the
Supreme Court has held that where reputation is established and the
defendant's mark is deceptively similar, injunction must follow. The
Appellant asserted that dishonest adoption, even in passing off,
warrants immediate restraint.
(iv) The Appellant further relied on Renaissance Hotel Holdings Inc. v. B.
Vijaya Sai2, wherein the Supreme Court clarified that in cases of
identical marks used for identical goods, likelihood of confusion is
presumed under Section 29(2)(c) read with Section 29(3), and injunction
must follow without proof of actual confusion.
(v) The Appellant contended that the Respondent's reliance on its
registration of the label "BIT" under Class 35 is misconceived. The
Appellant submitted that its marks are registered in Class 32 covering
beverages, whereas Class 35 relates only to business and advertising
services. The Appellant asserted that use of the expression "BIT" for
beverages by the Respondent amounts to infringement of its registered
mark under Class 32.
(vi) The Appellant further submitted that the Respondent's mark "GUPTAS
BIT NIMMA SODA SALT" is itself unregistered, and its use constitutes
infringement of the Appellant's registered trademark under Section
29(2) of the Trade Marks Act, 1999.
(2007) 6 SCC 1.
(2022) 5 SCC 1.
Location: ORISSA HIGH COURT, CUTTACK
(vii) The Appellant lastly contended that the learned District Judge
overlooked the plea of piracy under Section 22(2)(b) of the Designs Act,
2000, despite specific pleadings to that effect.
III. SUBMISSIONS ON BEHALF OF THE RESPONDENT:
4. The Learned Counsel for the Respondent earnestly made the following
submissions in support of his contentions:
(i) The allegations made by the Appellant are false and without basis, and
no infringement of the Appellant's trademark has ever been committed.
The Respondent is the registered proprietor of the mark "BIT" and is
lawfully entitled to use it. The Appellant has failed to establish the
essential requirements for grant of temporary injunction, and the
application under Order XXXIX Rules 1 and 2 CPC was rightly
dismissed by the District Judge, Ganjam, Berhampur in I.A. No. 04 of
2024 arising out of C.S. No. 01 of 2024.
IV. FINDINGS OF THE DISTRICT JUDGE, GANJAM, BERHAMPUR:
5. The learned District Judge, Ganjam, Berhampur, upon hearing the
parties and perusing the pleadings and materials on record, considered
I.A. No. 04 of 2024 filed under Order XXXIX Rules 1 and 2 read with
Section 151 of the Code of Civil Procedure, 1908 and Section 135 of the
Trade Marks Act, 1999 in C.S. No. 01 of 2024.
6. The Court recorded that the plaintiff had sought temporary injunction
restraining the defendant from using the mark "GUPTAS BIT NIMMA
SODA SALT" and other expressions alleged to be deceptively similar to
the plaintiff's registered mark "DK BIT LEMON & SALT SODA."
7. On consideration of the materials, the learned District Judge found that
the defendant was also a registered proprietor of the mark "BIT" under
Location: ORISSA HIGH COURT, CUTTACK
Trademark No. 5708035 dated 3 December 2022 in Class 35 of the NICE
Classification. It was further noticed that rectification proceedings had
been initiated against the plaintiff's registration.
8. The learned District Judge held that in the circumstances the plaintiff
ought to have approached the competent authority for cancellation of
the defendant's registration and that the issue could not be adjudicated
in an application for temporary injunction. The Court also found that
there was no sufficient material to establish that the relevant class of
consumers would be confused by the rival marks or packaging. On that
basis the Court concluded that the plaintiff had failed to make out a
prima facie case and had not established balance of convenience or
irreparable injury in its favour. The authorities relied upon by the
plaintiff were distinguished as being based on different factual
situations. Consequently, by order dated 11 December 2024, the
application for temporary injunction was dismissed, though it was
clarified that the observations made would not affect the merits of the
suit and both parties were directed to cooperate for early disposal of the
suit.
V. COURT'S REASONING AND ANALYSIS:
9. Heard learned counsel for the parties and perused the material on
record.
10. The appeal arises from an order declining interim protection in a suit
for trade mark infringement and piracy under the Designs Act, 2000.
11. The Appellant relies on registrations in Class 32 for the marks "DK BIT"
and "DK BIT LEMON & SALT SODA," together with a registered bottle
design, and asserts that the Respondent is marketing beverages under
Location: ORISSA HIGH COURT, CUTTACK
the mark "GUPTAS BIT NIMMA SODA SALT" with a presentation and
trade dress allegedly similar to that of the Appellant.
12. The principles governing the grant of temporary injunction are well
established. The Court must examine whether the plaintiff has shown a
prima facie case, whether the balance of convenience lies in its favour,
and whether denial of relief would cause irreparable injury.
13. Section 29 of the Trade Marks Act, 1999, deems the use of identical or
deceptively similar marks in relation to similar goods to constitute
infringement, and under Section 29(2)(c) read with Section 29(3), a
presumption of likelihood of confusion arises where the rival marks and
goods are identical or similar.
14. Equally relevant is the scheme of Section 124 of the Trade Marks Act,
1999, which is reproduced hereinbelow for ready reference:
"124. Stay of proceedings where the validity of registration
of the trade mark is questioned, etc.--
(1) Where in any suit for infringement of a trade mark--
(a) the defendant pleads that registration of the
plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-
section (2) of Section 30 and the plaintiff pleads the
invalidity of registration of the defendant's trade mark,
the court trying the suit (hereinafter referred to as the
court), shall,--
(i) if any proceedings for rectification of the register in
relation to the plaintiff's or defendant's trade mark are
pending before the Registrar or the High Court, stay the
suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is
satisfied that the plea regarding the invalidity of the
registration of the plaintiff's or defendant's trade mark
is prima facie tenable, raise an issue regarding the same
and adjourn the case for a period of three months from
Location: ORISSA HIGH COURT, CUTTACK
the date of the framing of the issue in order to enable the
party concerned to apply to the High Court for
rectification of the register.
(2) If the party concerned proves to the court that he has
made any such application as is referred to in clause
(b)(ii) of sub-section (1) within the time specified therein
or within such extended time as the court may for
sufficient cause allow, the trial of the suit shall stand
stayed until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has been made
within the time so specified or within such extended
time as the court may allow, the issue as to the validity
of the registration of the trade mark concerned shall be
deemed to have been abandoned and the court shall
proceed with the suit in regard to the other issues in the
case.
(4) The final order made in any rectification proceedings
referred to in sub-section (1) or sub-section (2) shall be
binding upon the parties and the court shall dispose of
the suit conformably to such order in so far as it relates
to the issue as to the validity of the registration of the
trade mark.
(5) The stay of a suit for the infringement of a trade mark
under this section shall not preclude the court from
making any interlocutory order (including any order
granting an injunction, directing account to be kept,
appointing a receiver or attaching any property), during
the period of the stay of the suit."
15. Sub-section (1)(b)(i) of Section 124 mandates that where rectification
proceedings in respect of the trade mark of either party are already
pending, the civil court is bound to stay the infringement suit until such
proceedings are finally decided. At the same time, sub-section (5) makes
it clear that the stay of the suit does not prevent the court from passing
Location: ORISSA HIGH COURT, CUTTACK
interlocutory orders, including orders of injunction, during the
pendency of rectification.
16. While registration of a trade mark constitutes prima facie evidence of
its validity under Section 31 of the Trade Marks Act, that presumption
is subject to the result of rectification proceedings. At the interlocutory
stage, therefore, the civil court cannot pronounce upon the validity of
the registration, which lies within the exclusive jurisdiction of the
specialised forum. Where rectification is pending, the court is confined
to assessing whether the plaintiff has made out a sufficiently strong
prima facie case for interim relief, without trenching upon the issue of
validity.
17. In the present case, it is not in dispute that the Respondent holds a
registration for the word "BIT" under Trade Mark No. 5708035 dated 3
December 2022 in Class 35. The Respondent has also initiated
rectification proceedings against the Appellant's registration, which are
pending before the Registrar of Trade Marks. The learned District Judge
rightly recorded that, in the face of such proceedings, the merits of
validity could not be gone into.
18. The learned District Judge also examined the record and concluded that
there was no sufficient material to establish that the relevant class of
consumers was likely to be confused at this stage. In the absence of a
strong prima facie case, balance of convenience and irreparable injury
could not be said to tilt in favour of the Appellant. On that reasoning,
interim injunction was declined.
19. This Court is unable to find perversity in such approach. Once
rectification has been filed and is pending, Section 124(1)(b)(i) provides
Location: ORISSA HIGH COURT, CUTTACK
that the suit be stayed until the rectification is determined. The court
retains power under Section 124(5) to grant interim relief, but the
exercise of that power is discretionary. The District Judge was entitled
to assess whether the Appellant had established a sufficiently strong
prima facie case to warrant interlocutory restraint. The conclusion that
no such case was made out which cannot be said to be irrational or
contrary to settled law.
20. The decisions relied upon by the Appellant do affirm the statutory
presumption of confusion under Section 29, but those cases were
decided where validity of registration was not in issue. Here, validity is
sub judice before the rectification forum.
21. Therefore, this Court finds no infirmity in the refusal of interim relief.
The Appellant continues to hold registrations which will be adjudicated
in rectification, and its claims in the suit remain unaffected by the
present order. The Appellant is free to press for expeditious disposal of
the rectification proceedings and for early trial thereafter.
VI. CONCLUSION:
22. For the foregoing reasons, the appeal is dismissed.
23. The order dated 11 December 2024 passed by the learned District Judge,
Ganjam, Berhampur in I.A. No. 04 of 2024 in C.S. No. 01 of 2024 calls for
no interference.
24. It is clarified that the observations herein are confined to the question of
interim relief and shall not prejudice the merits of the suit or the
outcome of rectification proceedings. The learned trial court is directed
to proceed in accordance with law upon conclusion of rectification. No
order as to costs.
Location: ORISSA HIGH COURT, CUTTACK
25. Interim order, if any, passed earlier stands vacated.
(Dr. Sanjeeb K Panigrahi)
Judge
Orissa High Court, Cuttack,
Dated the 10th Sept., 2025/-
