M/S Aadhar Products Pvt. Ltd vs M/S Lotus Organic Care
2022 Latest Caselaw 13231 Raj

HIGH COURT OF JUDICATURE FOR RAJASTHAN AT JODHPUR S.B. Civil Misc. Appeal No. 3417/2018

M/s Aadhar Products Pvt. Ltd., F-264, F-264A, RIICO Industrial Area, Gudli, Tehsil Mavli, District Udaipur Through Its Authorized Representative Navneet Laddna S/o Shri Ramesh Chandra Laddha, Aged About 24 Years Working As General Manager (Finance And Accounts), M/s Aadhar Products Pvt. Ltd., F-264, F- 264A, Riico Industrial Area, Gudli, Tehsil Mavli, District Udaipur.

----Appellant Versus

1. M/s Lotus Organic Care, Plot No. F-419, RIICO Growth Centre, Bhilwara Through Its Proprietor Shri Harish Dadhich S/o Shri Govind Lal Dadhich C/o M/s Lotus Organic Care, Plot No. F-419, Riico Growth Centre, Bhilwara.

2. Harish Dadhich S/o Shri Govind Lal Dadhich, Proprietor M/s Lotus Organic Care, Plot No. F-419, RIICO Growth Centre, Bhilwara.

                                                                   ----Respondents


For Appellant             :     Mr. M.S. Singhvi, Sr. Adv. &
                                Dr. Ashok Soni Sr. Adv. Assisted by
                                Mr. Hemant Dutt
For Respondents           :     Mr. Vineet Dave
                                Mr. Divyanshu Choudhary


     HON'BLE DR. JUSTICE PUSHPENDRA SINGH BHATI
                                 Judgment
Reserved on 03/11/2022
Pronounced on 10/11/2022

1. This Criminal Appeal has been preferred under Order 43 Rule

1 (r) C.P.C. with the following reliefs:-

"It is, therefore, most respectfully prayed on behalf of the appellant/plaintiff that the present Civil Misc. Appeal may kindly be allowed and the impugned order dated 6.10.2018 passed by the learned Additional District Judge No.1, Udaipur Camp Mavli may kindly be set aside and the application for Temporary Injunction filed by the appellant/plaintiff may kindly be allowed and pending final hearing and disposal of the suit respondents/defendants

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may be restrained from selling heir product washing powder by the name of "Delite" and in the similar packaging/pouch as that of the appellant/plaintiff.

Any other appropriate order or direction which this Hon'ble Court deems fit and proper in the facts and circumstances of the present case may kindly be granted in favour of the appellant/plaintiff."

2. Brief facts of the case as placed before this Court by Mr.M.S.

Singhvi and Dr. Ashok Soni, learned Senior Counsel assisted by

Mr.Hemant Dutt, appearing on behalf of the appellant, are as

follows:

2.1 The appellant is a Company registered under the Indian

Companies Act, 1956 and is engaged in the manufacturing and

marketing of various detergents products, bath soaps, soap sticks,

bleaching and laundry products. It is manufacturing the washing

powder in the name and style of "Decide" since 03.03.2006.

2.2 The appellant got its product "Decide" registered under the

Trade Marks Act, 1999 and the Copyright Act, 1957 in accordance

with which, it has acquired the exclusive right of using this trade

mark, design, colour combination, artistic work, etc. being its

owner.

2.3 The appellant began using the trade mark "Decide" since

03.03.2006 and at the time, no other product of a similar mark

was available in the market. The washing powder "Decide" has

garnered a goodwill and a reputation in the market.

2.4 The respondent/defendant M/s. Lotus Organic Care and its

proprietor Mr. Harish Dadhich started the production and sale of

its product, washing/detergent powder "Delite", and on

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19.06.2012, the appellant served a legal notice to Mr. Harish

Dadhich to stop the manufacturing and sale of washing powder in

the name of 'Delite' with immediate effect.

2.5 On 11.05.2013, an FIR, bearing No. 132/2013, was lodged

at Police Station, Dabok, Udaipur against the respondent no. 2 for

the offences under Sections 420 and 482 IPC, Section 65 of the

Copyright Act and Section 103 of the Trade Marks Act. The

respondent No. 2-Shri Harish Dadhich was carrying on the

business of M/s. Lotus Organic Care (which at the time was M/s.

Lotus Organ Corporation, situated at 185, Mewar Industrial Area,

Udaipur). On 12.05.2013, the complete machinery of the said

proprietorship was seized by the concerned police authorities.

Subsequently, respondent no. 2 shifted his place of business from

Udaipur to Bhilwara and carried on the same business under the

name and style of 'M/s. Lotus Organic Care'.

2.6 On 10.04.2018, the appellant came to know that

respondents restarted production of the washing/detergent

powder "Delite" from Bhilwara, as a consequence of which the

appellant filed a suit for permanent injunction in the Court of

District Judge, Udaipur. The respondent filed an application under

Order 7 Rule 11 CPC on 11.05.2018, which was rejected by the

learned trial Court on 07.07.2018. The respondent then filed a

Revision, titled S.B. Civil Revision No. 102/2018, before this

Hon'ble Court challenging the aforesaid order of the learned Trial

Court, dated 07.07.2018, which came to be dismissed by this

Hon'ble Court vide judgment dated 18.07.2018.

                                           (4 of 27)                      [CMA-3417/2018]


2.7    The learned trial Court vide the impugned order dated

06.10.2018 rejected the application for temporary injunction filed

by the appellant, with the reasoning that the prayer made in the

Civil Suit as well as in the application for temporary injunction was

similar. The said order dated 06.10.2018 is under challenge in the

present appeal preferred by the applicant/appellant.

2.8 During the pendency of the appeal, the Search Certificate

dated 10.10.2018 (Annex.R/5) was issued in favour of the

respondent and based on the Search Certificate, the Copyright

Registration Certificate dated 29.11.2018 (Annex.R/4) was issued.

The said Search Certificate was challenged by the appellant before

the Registrar of Trade Marks and the matter was referred to the

Deputy Registrar of Trade Marks and the said authority after

hearing the representatives of both the parties passed the order

dated 25.09.2019 (Annex.A/1) and the search certificate dated

10.10.2018 based on which the Copyright Registration Certificate

was issued, was accordingly cancelled.

3. The appellant assails the order impugned, dated 06.10.2018,

passed by the learned Court below on the following grounds:-

3.1 Despite a prima facie case of infringement having been made

out, the learned Trial Court erred grossly in denying the grant of a

temporary injunction in favour of the appellant.

3.2 In the matters of infringement of trade mark and copyright,

in application for temporary injunction, even though the

temporary injunction prayed for amounts to grant of final relief,

the same can be granted, where a prima facie case is made out.

(5 of 27) [CMA-3417/2018]

3.3 There was no delay in instituting the suit for injunction by

the appellant, and that the mere pendency of appeal would not

affect the right of the appellant, for consideration of grant of

temporary injunction, as the appellant is facing continuous and

irreparable injury.

3.4 The balance of convenience lies in favour of the appellant. It

is an admitted fact that the appellant is registered under the Trade

Marks Act as well as the Copyrights Act, whereas the respondent-

Company is not.

4. Learned Senior Counsel fortified the above made

submissions, by placing reliance on the following judgments:-

4.1 Drawing this Court's attention to the judgments rendered by

the Hon'ble Apex Court in the cases of N.R. Dongre and Ors. v.

Whirlpool Corpn. and Anr. (1996) 5 SCC 714, Tube

Investments of India Ltd. v. Trade Industries, Rajasthan

(1997) 6 SCC 35, and Laxmikant V. Patel Vs. Chetanbhai

Shah and Anr. 2002 (3) SCC 65, it was submitted that although

a temporary injunction has been prayed for, which may amount to

final relief, the same may be granted, where a prima facie case of

infringement is found to be made out.

4.2 It was further submitted that even in cases wherein the

learned Trial Court and the Hon'ble High Court did not grant a

temporary injunction, the Hon'ble Apex Court, looking into the

factual matrix of the case, granted the prayer of temporary

(6 of 27) [CMA-3417/2018]

injunction. In this regard, reliance was placed upon the judgments

rendered by the Hon'ble Apex Court in the cases of Ruston &

Hornsby Ltd. v. The Zamindara Engineering Co. (1969) 2

SCC 727, Parle Products (P) Ltd. Vs. J.P. & Company,

Mysore 1972(1) SCC 618, and Heinz Italia & Anr. vs. Dabur

India Ltd.(2007) 6 SCC 1. It was also submitted that the said

judgments were placed before the learned Trial Court for

consideration, yet the learned Court below faltered in denying the

grant of a temporary injunction, merely observing that the

circumstances and facts of the present case are different.

4.3 It was also submitted that in the case wherein infringement

is found to be prima facie made out, an order of injunction must

follow. Reliance was placed upon the judgment rendered by the

Hon'ble Apex Court in the case of Midas Hygiene Industries

(P) Ltd. v. Sudhir Bhatia & Ors. (2004) 3 SCC 90. It was

further submitted that the learned trial Court has committed

serious error in holding that on the basis of material produced on

behalf of the appellant, regarding the pouches of the product, no

final opinion can be expressed.

4.4 Contending the arguments advanced on behalf of the

respondents, that instead of grant / non grant of temporary

injunction, the concerned Court ought to decide the main suit in

(7 of 27) [CMA-3417/2018]

an expeditious manner, and relying upon the judgments rendered

by the Hon'ble Supreme Court, in the cases of Bajaj Auto Ltd.

Vs. TVS Motors Co. Ltd. (2009) 9 SCC 797 and Shree

Vardhman Rice and General Mills vs. Amar Singh

Chawalwala (2009) 10 SCC 257, it was submitted such an

interpretation would be incorrect, and reliance in this regard was

also placed upon the judgments rendered by the Hon'ble Apex

Court in the cases of Corn Products Refining Co. Vs. Shangrila

Food Products Ltd AIR 1960 Supreme Court 142, Ramdev

Food Products Pvt. Ltd. Vs. Arvind Bhai Ram Bhai Patel &

Ors. (2006) 8 SCC 726, and Renaissance Hotel Holdings Inc.

Vs. B. Vijaya Sai and Ors.(2022) 5 SCC 1.

4.5 It was further submitted that the appellant is manufacturing its

product in the name and style of 'Decide' washing powder since

03.03.2006 and is a prior user in the market than the respondents

and that looking into the ratio decidendi laid down in the judgment

rendered by the Hon'ble Apex Court in the case of Neon

Laboratories Ltd. Vs. Medical Technologies Ltd. & Ors. (2016)

2 SCC 672, an order of injunction against the respondents ought to

be passed.

                                              (8 of 27)                  [CMA-3417/2018]


Relevant      portion     of     Neon       Laboratories             Ltd.    Vs.    Medical

Technologies Ltd. (supra), as highlighted before this Court by

learned Senior Counsel, is reproduced hereunder:-

"Since we are confronted with the legal propriety of a

temporary injunction, we must abjure from going into minute

details and refrain from discussing the case threadbare, in order to

preclude rendering the suit itself an exercise in futility and the

decision therein a foregone conclusion. All that we would say in the

present appeal is that since the respondent-plaintiffs have alleged,

and have prima facie supported with proof, that they had already

been using their trade mark well before the attempted user of an

identical or closely similar trade mark by the appellant-defendant,

the former would be entitled to a temporary injunction, in light of

the abovementioned "first in the market" test."

4.6 The Court's attention was also drawn to the

judgments/orders passed by this Hon'ble Court wherein temporary

injunctions were granted; M/s Rathi Irrigation Pvt. Ltd. Vs.

M/s Aaram Plastics Pvt. Ltd.2014 (2) WLN 62 (Raj.), M/s

Pandit Kulfi and Cafe Vs. M/s Pandit Kulfi 2015 (4) WLC

(Raj) 328, M/s Maheshwari Tea Company Pvt. Ltd. Vs. Vijay

Agencies 2016 (2) WLC (Raj) UC 92, Rameshchandra

Paliwal vs. Sima & Company S.B. Civil Misc. Appeal No.

1286/2016 and M/s Chetandas Rajkumar Batra vs. Gulshan

Enterprises 2018 (4) WLN 8 (Raj.).

(9 of 27) [CMA-3417/2018]

4.7 Learned Senior Counsel also drew the attention of this Court

to the order passed by the Hon'ble High Court of Delhi, in the case

of Levi Strauss & Co. Vs. Bansal Texfab Private Limited CS

(Comm) 142/2021 decided on 25.3.2021.

5. Learned Senior Counsel for the appellant thus submitted that

that not only is the trade mark and copyright of the appellant

imitated, thereby infringed by the respondents, but also, the same

is being done with a dishonest intention to sell their product to

encash upon the goodwill and repute of the appellant's product.

6. Learned Senior Counsel for the appellant, in light of the

above made submissions and the case laws cited alongside them,

prayed that the impugned order, dated 06.10.2018, be quashed

and set aside, and an order of injunction may be passed in favour

of the appellant.

7. On the other hand, Mr. Vineet Dave and Mr. Divyanshu

Choudhary, learned counsel appearing on behalf of the

respondents, vehemently opposed the submissions made on

behalf of the appellant and submitted that the learned Court below

has rightly passed the impugned order, looking into the overall

facts and circumstances of the present case, the evidences placed

on record and the case-laws produced before it.

(10 of 27) [CMA-3417/2018]

8. Learned counsel for the respondents submitted that on a

perusal of the impugned order, it is clear that the learned Court

below while rejecting the application preferred by the appellant

praying for temporary injunction, considered all the relevant

aspects and the materials on record, and thus, the same does not

any interference by this Court.

9. Learned counsel for the respondents contended the seizure

of the complete machinery of the respondent no. 2-Shri Dadhich's

proprietorship by the concerned police authorities, and submitted

that the same was illegal.

10. Learned counsel for the respondents further submitted that

once the Court of first instance has made due application of mind,

with regard to grant or refusal of the relief of temporary

injunction, judicial review ought not to be made, owing to the

mere fact that on a de novo consideration of the matter, it is

possible that a different view than the one as taken by the learned

Court below is possible. And that, such review may be made only

when the conclusion arrived at by the learned Court below is

palpably perverse, which is not the case in the matter at hand.

Reliance was placed upon the judgments rendered by the Hon'ble

Apex Court in the cases of Wander Ltd. and Anr. v. Antox

India P. Ltd. (1990 Supp SCC 727), Skyline Education

(11 of 27) [CMA-3417/2018]

Institute (India) Private Limited v. S.L. Vaswani and Anr.,

(2010) (2) SCC 142 and special emphasis was placed upon the

judgment rendered by a Coordinate Bench of this Hon'ble Court in

the case of Bombay Plaster Industries (M/s.) v. M/s

Jagdamba Plaster, AIR 2018 Raj. 57.

11. Learned Counsel for the respondents further submitted that

the appellant has approached this Court with unclean hands, along

with an unjustified delay and having suppressed certain relevant

materials, and therefore does not deserve the indulgence of this

Court. As per learned counsel, the appellant has already filed

opposition in the registration proceedings of the respondent-

company's application, which is pending since March, 2014. And

that therefore, the appellant's averment that only on 10.04.2018

did it come to their knowledge that the respondent was infringing

upon their intellectual property rights, is completely false and

concocted.

11.1 It was further submitted that the appellant only began using

the trademark registered in its favour in the year 2016, and that

there is nothing on record to substantiate the averment that the

appellant was using the trademark, being the instant label of the

washing powder product, since 03.03.2006. It was also submitted

that it is a settled position of law that the prior user's right will

(12 of 27) [CMA-3417/2018]

override those of a subsequent user, even though the subsequent

user has been accorded the registration of its trademark. In this

regard, reliance was placed upon the judgment rendered by the

Hon'ble Apex Court in the case of Neon Laboratories Limited

(supra).

11.2 Reliance was also placed upon the judgments rendered in the

cases of Toyota Jidosha Kabushiki Kaisha v. Prius Auto

Industries and Ors. (2018) 2 SCC 1, Make My Trip (India)

Limited v. Orbit Corporate Leisure Travels (I) Private

Limited 2017 SCC Online Del 12172 and Paramount

Surgimed Limited v. Paramount Bed India Private Limited

and Ors. 2017 (241) DLT 319, and M/s. Nushar Engineering

Works Jodhpur v. M/s Santosh Traders, Jaipur 2013 (3)

WLC 584.

11.3 It was further submitted that in the case of Chandra Bhan

Dembla Trading, Delhi v. Bharat Sewing Machine Co.

Bikaner 1981 SCC Online Del 311, the Hon'ble High Court of

Delhi refused the grant of injunction on the ground that the

plaintiffs therein concealed the facts of the notice sent to the

defendants and of the criminal proceedings initiated about 6 years

prior.

(13 of 27) [CMA-3417/2018]

12. Learned counsel for the respondents also submitted that a

change in the name and address of the manufacturing unit of the

sole proprietor Firm has no bearing on the suit, as the suit is

against the use of the trademark, and not the party. In this

regard, reliance was placed upon the judgments rendered by the

Hon'ble Apex Court in the cases of Arm Group Enterprises Ltd.

v. Waldorf Restaurant and Ors., 2003 (6) SCC 423 and

Ashok Transport Agency v. Awadhesh Kumar and Anr. 1998

(5) SCC 567, and the judgment rendered by the Hon'ble High

Court of Delhi in the case of Miraj Marketing Corporation v.

Vishaka Engineering and Anr. 2004 (115) DLT 471.

13. Learned Counsel for the respondents further submitted that it

is a settled position of law that the comparison of the label/device

mark is to be done as a whole, and that it cannot be dissected to

claim separate rights on the part not separately registered.

14. Learned Counsel for the respondents also submitted that if a

party chooses to use a generic/descriptive and/or

laudatory/ordinary/common words, it must be realised that

protection for the exclusive use of the same cannot be given.

Furthermore, it was contended that the word "Decide" being a

generic word, while "Delite" is a coined/inventive word which

bears no visual or phonetic similarity to "Decide". Reliance in this

(14 of 27) [CMA-3417/2018]

regard was placed upon Bombay Plaster Industries (M/s.)

(supra), Ritkia Vegetable Oil Pvt. Ltd. v. Deepak Vegpro

Pvt. Ltd. 2020 (3) RLW 2077, Rhizome Distilleries P. Ltd. &

Ors. v. Pernod Ricard S.A. France & Ors. (2010) 166 DLT 12

(DB) and Registrar of Trademarks v. Ashok Chandra Rakhit

Ltd. 1955 (2) SCR 252.

15. Learned counsel for the respondents further submitted that

the comparison of color cannot prove distinctiveness, and that the

use of a single colour cannot be treated as inherently distinctive as

to prima facie castigate the respondent for commercial dishonesty.

Reliance in this regard was placed upon the case of Bombay

Plaster Industries (supra).

16. Learned Counsel for the respondents also drew the attention

of this Court to the judgments rendered in the cases of

Rameshchandra Paliwal vs. Sima & Company, 2017(2) WLN

354 (Raj.), M/s. Bindal Toys v/s M/s. Gemini Toys AIR

1996 Del 161 and Britannia Industries v. ITC & Ors. 2021

(86) PTC 618.

17. Learned counsel for the respondents further submitted that

the prejudice that would be caused to a defendant in a suit for

temporary injunction must also be taken into consideration.

(15 of 27) [CMA-3417/2018]

Reliance in this regard was placed upon the judgment rendered in

the case of Ramdev Food Products Pvt. Ltd. (Supra).

18. Learned Counsel for the respondents also submitted that at

the present stage, the Court can take a prima facie view as to the

validity of the registered trademark on the basis of the averments

in written statements. In this regard, learned counsel drew the

attention of this Court to the judgments rendered in the cases of

Marico v. Agro Tech Foods Ltd. 2010 SCC Online Del 1673

and Pathanjali Ayurved Ltd. Represented by its Director and

Another v. Arudra Engineers Private Limited Represented

by its Managing Partner R. Natraj 2021 (85) PTC 523 (DB)

(Madras High Court).

19. Learned counsel for the respondents thus prayed for the

appeal to be finally decided, owing to the fact that a decision upon

the temporary injunction alone would not meet the ends of justice,

and that in cases, like the instant case, where several contentious

issues are involved, matters relating to trademarks, copyrights

and patents ought to be decided expeditiously and finally, instead

of merely granting or refusing to grant injunction. In this regard,

reliance was placed upon the judgments rendered in the cases of

Bajaj Auto Ltd. v. TVS Motor Company Ltd. 2009 (9) SCC

797, M/s. Shree Vardhaman Rice & General Mills v. M/s.

(16 of 27) [CMA-3417/2018]

Amar Singh Chawalwala 2009 (10) SCC 257 and Uniply

Industries Ltd. v. Unicorn Plywood Pvt. Ltd. & Ors. 2001

(5) SCC 95.

20. In rejoinder arguments, learned Senior Counsel for the

appellant submitted that certain new facts have been introduced

by the learned counsel for the respondents, which were not part of

the pleadings before the learned Court below, and thus, sought to

counter the submissions made on behalf of the respondents, in

that regard.

20.1 It was further submitted that the appellant has in fact been

using its registered trademark, since 03.03.2006. And that, to this

effect, learned Senior Counsel relied upon certain newspaper

clippings, bearing dates 12.12.2010 and 02.01.2011, which reflect

that the trademark and copyright of the appellant's product,

"Decide" was in fact being actively used by the appellant to

advertise its product in the newspaper 'Dainik Bhaskar'. And that,

the same was registered with user date 03.03.2006 vide

Application no. 2017862.

20.2 It was also submitted that there are about 24 labels of the

appellant's company which utilises the trademark and copyright

accorded to the appellant by the concerned authorities for

"Decide".

(17 of 27) [CMA-3417/2018]

21. Heard learned counsel for both parties as well as perused the

record of the case and the catena of judgments cited at the Bar.

22. At the outset, this Court, looking to the reliefs prayed for in

the instant appeal, deems it fit to restrict itself solely to the

averments and contentions made only with regard to the grant of

temporary injunction.

23. This Court, on a perusal of the judgments cited at the bar,

finds that the law with respect to the grant/refusal of a temporary

injunction is clear, and deems it appropriate to make the following

observations regarding the same, before delving into the facts and

circumstances surrounding the instant appeal.

23.1 In Wander Ltd. and Anr. (supra), the Hon'ble Apex Court

observed that the prayer for grant of an injunction, when the

existence of a legal right, as asserted by the plaintiff(s) and its

alleged violation are uncertain and contested, at such a stage, the

interests of the contesting parties ought to be weighed against

each other, and the Court must ascertain towards which party do

the scales tilt, and where does the balance of convenience lie.

Furthermore, it was observed that an injunction is both temporary

and discretionary, granted to preserve the status quo. It was also

observed that the appellate Court shall not substitute the view

taken by the Court of the first instance, if it is a reasonably

(18 of 27) [CMA-3417/2018]

possible view, and interfere only when it is proven that the

exercise of such discretion was arbitrary, capricious or perverse or

where the Court ignored the settled principles of law regulating

the grant or refusal of injunctions. In the said case, the Hon'ble

Apex Court directed the Hon'ble High Court to decide the matter

expeditiously, with a request that the same be disposed within a

period of six months from date of order.

23.2 A similar request was made by the Hon'ble Apex Court to the

Hon'ble High Court of Delhi, in the case of Shree Vardhaman

Rice and General Mills (supra) for an expeditious disposal of

the main suit within a period of three months from the date of the

order.

23.3 The judgment rendered in Wander Ltd. and Anr. (supra)

was upheld by the Hon'ble Apex Court in the case of Skyline

Education Institute (India) Private Limited (supra) with the

following observation:

"... once the court of first instance exercises its

discretion to grant or refuse to grant relief of temporary

injunction and the said exercise of discretion is based upon

objective consideration of the material placed before the

court and is supported by cogent reasons, the appellate

court will be loath to interfere simply because on a de novo

consideration of the matter it is possible for the appellate

(19 of 27) [CMA-3417/2018]

court to form a different opinion on the issues of prima facie

case, balance of convenience, irreparable injury and equity."

23.4 Similarly reasoned judgments were also passed in the cases

of Ramdev Food Products (P) Ltd. (supra) and in the case of

Neon Laboratories Limited (supra).

23.5 Wander Ltd. and Anr. (supra) was also kept into

consideration by the Hon'ble Apex Court in the case of N.R.

Dongre and Ors. (supra), wherein the Hon'ble Apex Court

looking into the facts and circumstances, did not interfere with the

injunction already granted by the Single Bench, which was

subsequently upheld by the Division Bench of the Hon'ble High

Court of Delhi.

23.6 In Bombay Plaster Industries (M/s.) (supra), wherein

two orders refusing the grant of temporary injunction were

assailed, the Coordinate Bench of this Hon'ble Court, with regard

to an exercise of its appellate jurisdiction observed thus:-

"... the Court is not to proceed with such matters as if they

were akin to regular first appeals but as appeals on

principle, and that indisputably, the grant or refusal of

interlocutory injunction is within the discretion of the Court

of first instance and appellate Court's power to interfere with

the said discretion is very limited and circumscribed.

The future anticipated loss, if any, is not forthcoming from

the material available on record and can only be finally

(20 of 27) [CMA-3417/2018]

adjudicated after full-fledged trial of the suit, as rightly

observed by the learned trial Court."

23.7 In the case of Toyota Jidosha Kabushiki Kaisa (supra),

the Hon'ble Apex Court observed that if the goodwill or reputation

in the 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. Similarly,

in the case of Laxmikant v. Patel (supra), while analysing

whether a case of infringement would be made out, it was

observed as under:-

"8. It is common in the trade and business for a trader

or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.

(21 of 27) [CMA-3417/2018]

13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well- settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)"

23.8 On parameters for the grant of an injunction were laid down

in the case of Neon Laboratories Limited (supra), which are as

follows:-

"6. Before granting an ad interim injunction, the Court

in seisin of the litigation has to address its attention to the

existence or otherwise of three aspects-

a) whether a prima facie case in favour of the

applicant has been established;

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b) whether the balance of convenience lies in

favour of the applicant; and

c) whether irreparable loss or damage will visit the

applicant in the event injunctory relief is declined.

We shall cogitate on the first factor first-is the law

favourable to the applicant.

10. Section 47 of the Act is in the same vein and

statutory strain inasmuch as it postulates the possibility of a

registered mark being taken off the register on an

application being made by any aggrieved person, inter alia,

on the ground that for a continuous period of five years and

three months from the date on which the trademark was

registered, there was no bona fide use thereof. In the case

in hand, prima facie, it appears that for over five years after

a registration application was made by the Defendant-

Appellant, the mark was not used. Facially, the Act does not

permit the hoarding of or appropriation without utilization of

a trademark; nay the Defendant-Appellant has allowed or

acquiesced in the user of the Plaintiff-Respondents for

several years. The legislative intent behind this Section was

to ordain that an applicant of a trademark does not have a

permanent right by virtue of its application alone. Such a

right is lost if it is not exercised within a reasonable time."

23.9 In the case of Parle Products (P) Ltd. (supra), the

Hon'ble Apex Court, observed the following, while analysing

whether one mark would be deceptively similar to another:-

"9. It is therefore clear that in order to come to the

conclusion whether one mark is deceptively similar to

another, the broad and essential features of the two are to

be considered. They should not be placed side by side to

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find out if there are any differences in the design and if so,

whether they are of such character as to prevent one

design from being mistaken for the other. It would be

enough if the impugned mark bears such an overall

similarity to the registered mark as would be likely to

mislead a person usually dealing with one, to accept

the other if offered to him. In this case we find that the

packets are practically of the same size, the colour scheme

of the two wrappers is almost the same; the design on both

though not identical bears such a close resemblance that

one can easily be mistaken for the other. The essential

features of both are that there is a girl with one arm raised

and carrying something in the other with a cow or cows

near her and hens or chickens in the foreground. In the

background there is a farm house with a fence. The word

"Glucose Biscuits" in one and "Glucose Biscuits" on the

other occupy a prominent place at the top with a good deal

of similarity between the two writings. Anyone in our

opinion who has a look at one of the packets to-day

may easily mistake the other if shown on another day

as being the same article which he had seen before. If

one was not careful enough to note the peculiar

features of the wrapper on the plaintiffs' goods, he

might easily mistake the defendants' wrapper for the

plaintiffs' if shown to him some time after he had

seen the plaintiffs'. After all, an ordinary purchaser is

not gifted with the powers of observation of a

Sherlock Holmes. We have therefore no doubt that

the defendants' wrapper is deceptively similar to the

plaintiffs' which was registered. We do not think it

necessary, to refer to the decisions referred to at the Bar as

in our view each case will have to be judged on its own

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features and it would be of no use to note on how many

points there was similarity and in how many others there

was absence of it."

23.10 In the case of Paramount Surgimed Limited

(supra), reiterating the ratio decidendi laid down in the case of

Wander Ltd. and Anr. (supra), took note of the date on which

the plaintiff(s) therein, had filed the opposition to the trademark

application of the defendant(s) therein, and that the plaintiff(s)

had knowledge of the mark of the defendant(s) through business

negotiation, yet filed the suit only in the year 2017, the Hon'ble

Apex Court took an adverse view to the case of the plaintiff(s).

The Hon'ble Court also referred to the judgment rendered in the

case of Warner Bros. Entertainment Inc. v. Harinder Kohli,

155 (2008) DLT 56, wherein it was held;

"It is the settled position both in law and in equity that

a deliberate suppression of material facts, viewed singularly

or coupled with blatantly false assertions, so far as the grant

of equitable relief of injunction is concerned, is fatal. The

plaintiffs in the instant action have attempted to lightly

brush off their intentional non-disclosure by feigning

oversight, contending that they had nothing to gain from the

aforesaid non-disclosure. What has been lost sight of is that

it is a cardinal principle of law that a person who seeks the

equitable relief of injunction must come to the Court with

clean hands."

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24. On a reading of all the judgments cited at the Bar, those

discussed hereinabove, assist this Court in adjudicating upon the

issues raised in the instant appeal, and this Court finds that the

remainder of case laws have no bearing on the present case, and

therefore, this Court does not deem it necessary to further

analyse the same.

25. The learned court below has observed that the original suit

so preferred was for injunction; the prayer clause of the injunction

application was regarding issuance of decree of temporary

injunction, and since in the application for temporary injunction

only orders can be passed, therefore, the said prayer did not merit

acceptance; this is more so when, as per the settled legal

proposition of law, grant of relief as prayed for in the main suit,

can be granted in the temporary injunction application, only in

rare cases.

26. In the given factual matrix, the learned court below has

rightly observed that owing to the contention of the appellant to

the effect that it is engaged in the production of the product in

question since 2006, whereas, the contention of the respondent is

that they are engaged in the production and distribution of their

product since 2007, and therefore, in case any like relief, as

prayed for in the original suit, is granted in the temporary

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injunction application, the same would result in an irreparable loss

to the respondent/non-applicant, more particularly, when at this

stage, prima facie, the balance of convenience also lies in favour

of the respondent. Further, no prima facie case of infringement of

the intellectual property in question, is made out.

27. As per the settled position of law and as already discussed

hereinabove, if the view taken by the Court of first instance is a

reasonably possible view, interference may only be made, if it is

proven that the exercise of such discretion was arbitrary,

capricious or perverse or where the Court ignored the settled

principles of law regulating the grant or refusal of temporary

injunction; in the present case, this Court finds that the view

taken by the learned Court below, at this stage, is a reasonable

one.

28. It will thus be in the larger interest of justice, to direct the

learned Trial Court to decide the original suit finally, in an

expeditious manner, preferably within a period of six months from

today, strictly in accordance with law.

29. The span of litigation in the present case, in the opinion of

this Court is too long and it ought to culminate into finality at the

earliest. Thus, in the interest of justice, liberty is given to both the

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parties to take up all their legal issues before the learned trial

court at the ongoing stage.

30. Before parting with this judgment, this Court makes it clear

that the observations made hereinabove, at the present stage,

touching the facts and any factual finding arrived at this stage,

would not come in the way of the learned trial court in arriving at

a final decision at variance therewith, on trial of the issues on

merit after recording the evidence.

31. As an upshot of the above discussion, this Court does not

find any legal infirmity in the impugned order passed by the

learned court below, so as to warrant any interference therein.

However, the learned trial court is directed to decide the original

suit finally, in an expeditious manner, preferably within a period of

six months from today, strictly in accordance with law.

32. With the aforesaid observations and directions, the present

appeal is dismissed. All pending applications stand disposed of.

(DR.PUSHPENDRA SINGH BHATI), J.

SKant/-

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