Gujarat High Court
Gujarat Tea Depot Company vs Savaliya Tea Packers Pvt Ltd on 22 December, 2022
Author: A. P. Thaker
Bench: A. P. Thaker
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 9 of 2022
With
CIVIL APPLICATION (FOR INJUCTION) NO. 1 of 2022
In R/APPEAL FROM ORDER NO. 9 of 2022
FOR APPROVAL AND SIGNATURE:
HONOURABLE DR. JUSTICE A. P. THAKER Sd/-
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1 Whether Reporters of Local Papers may be allowed No
to see the judgment ?
2 To be referred to the Reporter or not ? Yes
3 Whether their Lordships wish to see the fair copy No
of the judgment ?
4 Whether this case involves a substantial question No
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
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GUJARAT TEA DEPOT COMPANY
Versus
SAVALIYA TEA PACKERS PVT LTD
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Appearance:
MR KAMAL TRIVEDI, LEARNED SENIOR COUNSEL ASSISTED BY MR YJ
TRIVEDI(948) AND MR CHIRAG BHATT, ADVOCATE for the Appellant(s)
No. 1,2
MS POOJA ACHARYA, MR ZAHID SHAIKH, MS DRUTI MEHTA, MR
JAYENDRA MODI, MR NILESH NAYAK ADVOCATES FOR DR RAJESH H
ACHARYA(2233) for the Respondent(s) No. 1
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CORAM:HONOURABLE DR. JUSTICE A. P. THAKER
Date : 22/12/2022
CAV JUDGMENT
1. The present Appeal From Order under Order 43 Rule 1(r) of the Code of Civil Procedure, is preferred by the Page 1 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 original plaintiffs, being aggrieved and dissatisfied by the order dated 06.12.2021 passed by the learned Chamber Judge, Court no.28, City Civil Court, Ahmedabad, below exhibit 6 and 7 whereby the application for interim injunction filed by the plaintiff appellant came to be rejected.
2. The appellants are the original plaintiffs whereas the respondents are original defendants before the Trial Court. For the brevity and convenience, the parties are referred to in this order as per the character assigned to them before the Trial Court i.e. plaintiff and defendant.
3. The brief facts giving rise to the present appeal are as under:-
3.1. That both the plaintiffs are engaged in the business of tea. The plaintiff no.1 is a registered proprietor and registered copyright holder of the labels in question and is in the business of tea since about 100 years. That the plaintiff no.2 is licensed user of plaintiff no.1 and plaintiff no.2 has authorized Mr.Ashvin Joshi (Full time Director of plaintiff no.2) to take legal action against the infringers.
3.2. That the plaintiff no.2 has a turnover of over Rs.1200 crores sale and huge advertisement expenses which establishes goodwill and reputation of the plaintiffs. That the trademark/ label/package "WAGH BAKRI" along with Page 2 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 different and distinct colour, scheme, get up and arrangement is used, referred or shown or advertised, and thereby the traders, consumers and the general public identify, recognize and believe that it is coming from the source of the plaintiffs and none else.
3.3. The plaintiffs have also referred to various trademarks and also copyrighted and labels and has stated that the labels are protected under the Copyright Act 1957, throughout the lifetime of the author and then 60 years from the year in which the author died.
3.4. It is contended that the plaintiff is the first adopter, user and registered proprietor of the trademarks/ labels and copyright of thereof and hence, the plaintiff has exclusive right to use the same in view of the provisions of Section 28 of the Trade Marks Act, 1999. The defendant is not registered proprietor of the trademark/ label, nor is the copyright holder of the artistic work of the label in dispute. That the defendant is subsequent adoptor of the trademark/ label in question. As per the settled principles, only prior adoptor and user is entitled to use the trademark/ label.
3.5. That the defendant pilfered colour scheme, get up and arrangement of the registered labels of the plaintiffs for identical business after MOU being executed by the defendant for not using the identical and / or deceptively label to that of the plaintiffs for the identical product in Page 3 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 the course of the trade.
3.6. It is contended that when the plaintiffs came to know about using the label (produced at Annexure D1) by the defendant, the plaintiff issued a first legal notice dated 10.07.2020 for infringement of trademarks, copyright and passing off action. That thereafter, the defendant has in his letter dated 21.07.2020 stated that he had started selling the product under the old label only after 01.06.2020 and thereby they had undertaken to cease and desist from using the said label.
3.7. That after aforesiad letter the defendant has executed MOU with the plaintiffs wherein the defendant has admitted and accepted the exclusive statutory rights of the plaintiffs in respect of trademarks/labels and has also undertaken that he shall not use identical and/or deceptively label to that of the plaintiffs.
3.8. That after the MOU, the defendant has applied for registration of new label (disputed label at annexure-D) which is also identical and/or deceptively similar to that of the plaintiffs' suit labels. Therefore, the plaintiffs have issued another legal notice to the defendant. That the defendant has replied the said legal notice and filed caveat before the Trial Court.
3.9. That the defendant has infringed the statutory and common law rights of the plaintiffs by way of using Page 4 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 identical and/or deceptively similar label in the business of identical goods i.e. tea after executing an MOU with the plaintiffs and thereby dishonesty of the defendant is revealed to grab the consistent goodwill and reputation of the plaintiffs.
3.10. On the aforesaid basis, the plaintiffs have filed the suit for infringement of trademark, infringement of copyright and passing off with damages and accounts of profit along with the plain, the plaintiff has also filed an application for interim injunction. The said application came to be rejected by the Trial Court.
4. Being aggrieved by the said order of the Trial Court, the original plaintiffs have preferred this appeal on following grounds:-
A) That the Trial Judge has not appreciated the following facts in respect of findings regarding plaint is not signed by plaintiff no.1:
* That the suit was filed by plaintiff no.1 (registered proprietor) and plaintiff no.2 (licensee of plaintiff no.1) together against the defendant.
* That as per the terms of the said licence agreement, the plaintiff no.2 can file a suit with and on behalf of plaintiff no.1.Page 5 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 * That Plaintiff no.2, being company, has authorized Mr. Ashvin Joshi, a whole time director of the plaintiff no.2 to file a present suit. Mr. Ashvin Joshi has signed the pleadings (plaint and injunction application) on behalf of plaintiff no.2 and plaintiff no.1 as per the licence agreement.
* That the Trial Judge has not considered above mentioned facts and concluded that no signature has been made on behalf of plaintiff no.1. Even for the sake of argument, if such finding of Trial Court is considered true, not signing of plaint by plaintiff no. 1 is merely irregularities and not illegalities and it is not fatal for granting injunction in favour of the plaintiffs and against the defendant.
* That at the stage of deciding injunction application, Ld. Trial judge ought not to have gone into the Irregularities like the plaint and injunction application are not signed by the plaintiff no. 1. The Ld. Trial Judge has not judicially applied his mind in this regard and thereby has committed grave error of law and facts.
B) That the learned Trial Judge erroneously observed in Para no.41.2 of the impugned order that, "This Court is of the view that, merely by entering into agreement between plaintiffs, plaintiff no.2 can automatically not acquire status of registered user." I submit that there is Page 6 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 no such case on the part of the plaintiffs for the status of registered user or for being registered user. In fact, the agreement itself says for permitted user and nor for registered user.
C) That learned Trial judge has not properly interpreted the terms of License agreement between the plaintiff no.1 and plaintiff no.2 to the suit.
D) That learned Trial judge has wrongly interpreted the case of the plaintiffs concluding that the plaintiffs have no right over singular colour 'saffron'. In fact that is not the case of the plaintiffs, neither is it pleaded nor argued by the plaintiffs. The case of the plaintiffs is for imitation of colour scheme, get up and arrangement of the labels by the defendant and thereby the defendant has infringed the statutory and common law rights of the plaintiffs which has not been Considered by the Trial Court.
E) That learned Trial Court has committed an error by not considering that the defendant has admitted and accepted the exclusive rights of the plaintiffs in writing in clause no1 of MOU. The defendant has estopped from taking contrary defence than that of the same. Hence, the issue of estoppel has not been considered by the Trial Court.Page 7 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 F) That learned Trial Judge has ignored the issue of dishonesty on the part of the defendant.
I. The trail court has ignored the fact that the claim of user made by the defendant in trademark application is since 01/11/2017 and the defendant has produced the invoices dated 30/5/2017, 5/5/2017, 15/6/2017 and 19/6/2017 which are prior to the date of use claimed by the defendant for the impugned label as mentioned herein in above. Hence, such false and fabricated documents and dishonesty on the part of the defendant have not been considered by the Ld. Trial Judge, which ought to have been considered by the Trial Court for equitable relief and balance of convenience.
II. That the Trial Judge has ignored the terms of MOU between the plaintiffs and the defendant.
III. In fact, in MOU, the defendant has made statement in the form of undertaking stated that he shall not use identical and/or deceptively similar trademark/label to that of the plaintiff as mentioned in clause nos. 3 (a) and
(b) of MOU. The Trial Court has ignored the provisions of Sections 2 (d), 2(J), 17, 40, 48, 54 of the Copyright Act 1957.
IV. The Trial Court also ignored the provisions of Section 2(1)(H), 2 (1)(M), 2 (1)(zb), 10 28, 29(1), (2), (3), (6) and Page 8 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 (7) as well as Section 31 and 135 of the Trademark Act.
V. That the learned Trail Judge has failed to appreciate the settled principle of law that the similarities of the two rival labels are required to be considered and not dissimilarities of them and therefore, the dissimilarities mentioned in the tabular form in para no.22 of the impugned order are erroneous on the part of the Ld. Trial Court. That learned Trial Judge has ignored the provisions of Copyright Act, 1957.
VI. That the learned Trial Judge has ignored that the defendant has made substantial and material reproduction of the colour scheme, get up and arrangement of the label of the plaintiffs knowingly and intentionally.
VII. In fact no finding is given by the learned Trial Judge for infringement of copyright.
5. The learned Trial Court has ignored the issue of passing off and has not considered the facts that the plaintiff is the prior user of the trademark/ label involved in the case and the fact that no explanation was offered by the defendant that why he has adopted such identical and deceptively similar label which causes confusion and deception among the public at large.
Page 9 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 5.1. That the Trial Court has not considered the goodwill and reputation of the plaintiff and the misrepresentation made by the defendant by using identical and/ or deceptively similar label in the course of trade for identical goods i.e. tea.
5.2. That the Trial Court has wrongly interpreted Rule no.37 of the Contract Act.
5.3. The Trial Court has also failed to consider the facts that the plaintiff has prima facie case as well as balance of convenience in their favour and irreparable loss likely to be caused to the plaintiff.
6. The defendant has filed reply on affidavit wherein he has contended that the learned Trial Court has properly considered the pleadings of the parties and has properly appreciated the facts and law points and has properly passed the impugned order rejecting the interim injunction application. It is also submitted that he has not committed any breach of MOU and the label which he is using is not identical one with the plaintiff and different one. He has denied the contention raised by the plaintiff appellant in his memo of appeal. He has also contended that the plaintiff was not signed by the plaintiff no.1 who is the registered owner and the plaintiff is only signed by the plaintiff no.2 who is the licensee and he has no authority. He has also contended that the Trial Court has rightly considered these facts Page 10 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 while deciding the application of interim injunction. He has also contended that even from the license agreement entered into between the plaintiff nos.1 and 2 clearly shows that the impugned trademark as well as copyright in subject is not even license to plaintiff no.2.
6.1. It is also contended that plaintiff has filed the present suit entirely based on the comparison of plaintiffs and the respondents label by pointing out the similarities of saffron/ orange colour and device of cup and saucer. It is submitted by the defendant respondent that generally for the packaging of food purpose, commonly accepted background colour by public at large is saffron/ orange colour. It is also contended that more particularly tea product is having absolute saffron/ orange colour and therefore it is common for the tea marketeer to develop packaging style in saffron/ orange colour. It is also contended that the plaintiff has no right to claim monopoly over the device of cup and saucer. It is also contended that as per the trademark application of the appellants, the essential and prominent part of the entire device is WAGH BAKRI only.
6.2. It is also contended that the label of appellants and respondents are different. He has also contended that he has duly complied with the MOU and has not made any breach. It is also contended that false and misleading facts have been narrated by the plaintiff as the plaintiffs are claimed user since the year 1925 before the Page 11 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 trademark registry. The application for copyright it is clear that respective labels were created in the year 2013 and 2018 only and therefore the user claim mentioned by the plaintiff before the trademark registry is contrary to the date of actual creation of the respective labels. It is prayed by the defendant respondent to dismiss the present appeal from order.
7. Heard learned senior counsel Mr.Kamal Trivedi assisted by Mr.Y.J.Trivedi and Mr.Chirag Bhatt advocate for the appellants plaintiffs and learned advocate Ms.Pooja Acharya, Mr.Zahid Shaikh, Ms. Druti Mehta, Mr.Jayendra Modi and Mr.Nilesh Nayak for Dr.Rajesh Acharya for the respondent.
8. Learned senior counsel Mr.Kamal Trivedi for the petitioner has vehemently reiterated the grounds stated in the memo of petition. Learned senior counsel has submitted that the plaintiffs have filed the suit for infringement of trademark as well as breach of copyright and for passing off action as the defendant has tried to use the copyright which pertains to get up and colour combination of the label of the plaintiff. He has submitted that the plaintiff no.1 is a registered owner of the trademark whereas plaintiff no.2 is a licensee thereof. Learned senior counsel Mr.Trivedi has also submitted that due to inadvertent, the signature of plaintiff no.1 was not made on the plaint and therefore that can be considered irregularity but it cannot be Page 12 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 treated as illegality. Mr.Trivedi has submitted that this irregularity can be rectified at any time and accordingly the plaintiff has move the trial Court for necessary permission to sing the plaint and such permission has now been granted and therefore now there is no such irregularity. He has submitted that however the Trial Court has considered this aspect of not signing of the plaint on behalf of plaintiff as vital point in deciding the interim injunction application and on that ground it has rejected the prayer of interim injunction.
8.1. Learned senior counsel Mr.Trivedi has also submitted that earlier the defendant has tried to use the trademark of the plaintiff and at that time the plaintiff had received notice thereupon there was execution of MOU between the parties and the defendants have agreed not to use the trademark or any label of the plaintiff for his tea business in any manner. Learned senior counsel has also submitted that however, now the defendant has tried to adopt deceptively similar label and trademark of the plaintiff on its tea goods which is clearly breach of condition of MOU. Learned senior counsel Mr.Trivedi has also referred to the provisions contained in Section2 (M), 2(Z)(B) as well as Section 28 and 53 of the Trademark Act. He has also stated that the plaintiff has specifically pleaded in his plaint regarding the goodwill and reputation acquired by the plaintiff due to its label and trademark. He has also submitted that the plaintiff is using the said label and trademark since decade and Page 13 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 has acquired goodwill and reputation over it. Learned senior counsel Mr.Trivedi has also vehemently submitted that while passing the impugned order, the Trial Court has ignored the well settled principles of law and also the order of this Court passed in Appeal from Order No.2 of 2021. According to learned senior counsel Mr.Trivedi the finding of the Trial Court is perverse one and arbitrary one and does not consider the pleadings as well as the documentary evidence produced on record. Learned senior counsel has submitted that contrary to the observations made by the Trial Court in its impugned order, according to him when admittedly the plaintiff is a registered owner, the trademark and label and the plaintiff no.2 is the exclusive license holder thereof, the defendant cannot, in the breach of conditions of MOU, make or adopt deceptively similar label or trademark for his goods, i.e. tea which is the same as that of the plaintiff. Learned senior counsel Mr.Trivedi has also submitted that the impugned order of the Trial Court is perverse and therefore it needs to be set aside and injunction needs to be issued against the defendant.
8.2. Learned senior counsel Mr.Trivedi has also submitted that the learned Trial Court has also not considered the provisions of the Copyright Act. He has also submitted that under the Copyright Act, the plaintiff no.2 has every right of initiating action against the wrong doer and even under the provisions of the Trademark Act, the Page 14 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 plaintiff no.2 could initiate passing off action against the wrong doer. Therefore, according to learned senior counsel Mr.Trivedi, the observation of the Trial Court regarding not signing of the plaint on behalf of plaintiff no.1 is not sustainable in the eyes of law. However, he has also submitted that during the pendency of this Appeal From Order, now signature has been made as per the permission of the Trial Court on 21.02.2022 and the defect is cured. Learned senior counsel has submitted that this order of the Trial Court granting permission has not been challenged.
8.3. Learned senior counsel Mr.Kamal Trivedi while relying upon the following decisions has prayed to allow the present Appeal from Order and to grant injunction against the defendant.
(i) Vimal Dairy Limited Vs. Gujarat Tea Depot Company reported in 2021 (2) GLH (2) 500, in para 157, it is observed as under:-
"157. It is also true, as per this authority, that use of single colour of the plaintiff, did not qualify single colour to be trademark but in the present case, in addition to colour, there are so many similarities such as;
(a) The tag line of both the trademarks start with "PREMIUM". The tagline for "VIMAL" is Page 15 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 "PREMIUM CTC LEAF TEA" while that of "WAGH BAKRI" is "PREMIUM LEAF TEA" which is likely to confuse the public at large.
(b) The cup and plate used as a shape for the trademark are deceptively similar with white colour and similar shape of green leaves placed on the plate.
(c) The logo of VIMAL is placed in oval shaped circle with a reddish background and that of a WAGH BAKRI's logo is also similar to it with a reddish background.
(d) The background of the logo for VIMAL uses same colour that of WAGH BAKRI which is likely to create confusion among the public at large.
Therefore, in the opinion of this Court, prima facie, it drives as "copied" and hence the facts and circumstances are different and not helpful to the Appellant / Original Plaintiff."
(ii) Pam Pharmaceuticals Vs. Richardson Vicks Incorporation reported in 2001 (1) GLR 125, in para 22, 37 to 39, 50, it is observed as under:-
"22. With regard to maintainability of suit by plaintiff No. 2, it has been submitted by Sr, Advocate Shri Nanavati that plaintiff No. 2 is a licensee and plaintiff No. 1 is a registered owner or proprietor of the mark, and therefore, it cannot be Page 16 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 said that the suit has not been filed by the registered proprietor of the mark 'VICKS'. This is in reply to the submission made by learned Advocate Shri R. R. Shah that suit was not maintainable in view of the fact that plaintiff No. 2 is only a licensee.
37. Learned Advocate Shri Shah has made several super-technical submissions with regard to signing of the plaint, carrying out of the amendment and signing of certain documents only by one of the plaintiffs. I consider these arguments and submissions to be of super-technical nature. It is a well settled legal position that as far as possible, no proceeding in a Court of Law should be allowed to be defeated on mere technicalities because all rules of procedure are intended to advance justice and not to defeat it. The Hon'ble Supreme Court has observed in case of Sangram Singh v. Election Tribunal, Kotah, AIR 1955 SC 425 that -
"Now a code of procedure must be regarded as such. It is 'procedure', something designed to facilitate justice and further its ends : not a penal enactment for punishment and penalties; not a thing designed to trip people up. ... ... ..."
38. The above-referred well established legal position clearly reveals that the Court has to give Page 17 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 more importance to the substance and not to the procedural law while administering justice. Signing here or there with or without permission of the Court in the matter of amending the plaint or in the matter of signing application are all procedural aspects. Everywhere, at least one of the plaintiffs has signed. The question with regard to legal right of the person signing the plaint on behalf of the plaintiffs cannot be entertained at such an interlocutory stage. It is not in dispute that the signatory to the plaint was authorised by the plaintiffs to file the suit. The objection is to the effect that the fine details to be mentioned in the plaint were not stated in the resolution whereby the signatory to the plaint namely Mr. Deepak Acharya was empowered to file the suit.
39. It appears that the defendants want to put much reliance on the technicalities. One has to look at the substance in the case rather than going to such super-technical details at an interlocutory stage. In the circumstances, I do not think it proper to entertain the objections with regard to signatures of the plaintiffs etc. at this interlocutory stage.
50. In the instant case, the plaintiffs have satisfied the Court that there is a prima facie case in favour of the plaintiffs. The balance of convenience is also Page 18 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 in favour of the plaintiffs, and as stated hereinabove, the product is a medicinal product, and therefore, it would be also in the interest of the consumers, if the defendants are restrained from manufacturing the product which is deceptively similar to the one which is manufactured and sold by the plaintiffs. In the instant case, the position of the plaintiffs is surely superior to that of the defendants, and therefore, one can have no hesitation in saying that the balance of convenience is definitely in favour of the plaintiffs. When the defendants knowingly manufacture a product under trade name 'VICAS' having get up similar to that of 'VICKS' manufactured by the plaintiffs, the Court should not hesitate in grant of injunction in favour of the plaintiffs so as to prevent damage being caused to the plaintiffs. Moreover, looking to the principles laid down by the Hon'ble Supreme Court in the case of N. R. Dongre v. Whirlpool Corporation, 1996 (5) SCC 714, the trial Court has rightly protected the plaintiffs by granting the injunction in their favour and I do not see any reason to interfere with the impugned interlocutory order passed by the trial Court, and therefore, the appeal is dismissed with no order as to costs."
(iii) Election Officer Vs. Parbhatbhai Savabhai Patel and Ors. reported in (2020) 3 GLR 2227, in para Page 19 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 nos.32 to 36, it is observed as under:-
"32.Opponent No.16 - Madhu Nirupaben Natvarlal - Party-in-Person has submitted that the Application is not signed by the Applicant but it is signed by the learned Advocate for the Applicant. This is not permissible in law. Therefore Application is not required to be entertained.
33.On perusing the Application more particularly, page 19 and 20, it is true that the Application is signed by learned Advocate Mr. Sahil M. Shah. The same is duly affirmed before the Executive Magistrate, Palanpur. The Affidavit is duly sworn by Sandip J. Sagale (I.A.S.), Returning Officer, 2- Banaskantha Parliamentary Constituency & Collector, Banaskantha on page 19 and 20 of the Application which reads thus:
"AFFIDAVIT I, Sandip J. Sagale (I.A.S.), Returning Officer, 2-Banaskantha Parliamentary Constituency & Collector, Banaskantha having address at Collector Office, Banaskantha-Palanpur, Indian Inhabitant, aged about 45 years, do hereby on solemn affirmation state that what is stated in Para-1 to 6 are statement of facts true to my knowledge, Paragraph 7 contains prayers and rest contains submissions which are true to my belief and information received, which I believed to be true.
Solemnly affirmed at Palanpur on this 18 day of November 2019."
34.The Hon'ble Court in case of Pam Pharmaceuticals v. Richardson Vicks Inc. & Ors. reported in 2001 (1) GLR 125 has observed in paragraph 37, 38 as under:
Page 20 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 "37. Learned Advocate Shri Shah has made several super- technical submissions with regard to signing of the plaint, carrying out of the amendment and signing of certain documents only by one of the plaintiffs. I consider these arguments and submissions to be of super-technical nature. It is a well settled legal position that as far as possible, no proceeding in a Court of Law should be allowed to be defeated on mere technicalities because all rules of procedure are intended to advance justice and not to defeat it. The Hon'ble Supreme Court has observed in case of Sangram Singh v. Election Tribunal, Kotah, AIR 1955 SC 425 that -
"Now a code of procedure must be regarded as such. It is 'procedure', something designed to facilitate justice and further its C/EA/2/2020 ORDER ends : not a penal enactment for punishment and penalties; not a thing designed to trip people up. ... ... ..."
38. The above-referred well established legal position clearly reveals that the Court has to give more importance to the substance and not to the procedural law while administering justice. Signing here or there with or without permission of the Court in the matter of amending the plaint or in the matter of signing application are all procedural aspects. Everywhere, at least one of the plaintiffs has signed."
35.The Hon'ble Apex Court in a judgment in case of United Bank of India v. Naresh Kumar and Ors. reported in AIR 1997 SC 3 has observed in paragraph 8, 9 and 10 as under:
"8. In this appeal, therefore, the only question Page 21 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 which arises for consideration is whether the plaint was duly signed and verified by a competent person.
9. In cases like the present where suits are instituted or defended on behalf of a public corporation, public interest should not be permitted to be defeated on a mere technicality. Procedural defects which do not go to the root of the matter should not be permitted to defeat a just cause. There is sufficient power in the Courts, under the Code of Civil Procedure, to ensure that injustice is not done to any party who has a just case. As far as possible a substantive right should not be allowed to be defeated on account of a procedural irregularity which is curable.
10. It cannot be disputed that a company like the appellant can sue and be sued in its own name. Under Order 6 Rule 14 of the Code of Civil Procedure a pleading is required to be signed by the party and its pleader, if any. As a company is a juristic entity it is obvious that some person has to sign the pleadings on behalf of the company. Order 29 Rule 1 of the Code of Civil Procedure, therefore, provides that in a suit by against a corporation the Secretary or any Director or other Principal officer of the corporation who is able to depose to the facts of the case might sign and verify on behalf of the company. Reading Order 6 Rule 14 together with Order 29 Rule 1 of the Code of Civil Procedure it would appear that even in the absence of any formal letter of C/EA/2/2020 ORDER authority or power of attorney having been executed a person referred to in Rule 1 of Order 29 can, by virtue of the office which he holds, sign and verify the pleadings on behalf of the corporation. In addition thereto and de hors Order 29 Rule 1 of the Page 22 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 Code of Civil Procedure, as a company is a juristic entity, it can duly authorise any person to sign the plaint or the written statement on its behalf and this would be regarded as sufficient compliance with the provisions of Order 6 Rule 14 of the Code of Civil Procedure. A person may be expressly authorised to sign the pleadings on behalf of the company, for example by the Board of Directors passing a resolution to that effect or by a power of attorney being executed in favour of any individual. In absence thereof and in cases where pleadings have been signed by one of it's officers a Corporation can ratify the said action of it's officer in signing the pleadings. Such ratification can be express or implied. The Court can, on the basis of the evidence on record, and after taking all the circumstances of the case, specially with regard to the conduct of the trial, come to the conclusion that the corporation had ratified the act of signing of the pleading by it's officer.
36.Considering the fact that the Application is not signed by the Applicant but contents are duly affirmed by the Applicant. Thus the Applicant has endorsed the contents made in the Application. At the most non- signing the Application can be said to be a procedural irregularity but not an illegality. Therefore, merely that the Applicant has not signed the Application cannot be a ground for rejection of the Application.
(E-III) No court fee stamp on affidavit:"
(iv) United Bank Of India Vs. Naresh Kumar And Others reported in (1996) 6 SCC 660, in para nos. 9 and 12, it is observed as under:-Page 23 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 "9. In cases like the present where suits are instituted or defended on behalf of a public corporation, public interest should not be permitted to be defeated on a mere technicality. Procedural defects which do not go to the root of the matter should not be permitted to defeat a just cause. There is sufficient power in the Courts, under the Code of Civil Procedure, to ensure that injustice is not done to any party who has a just case. As far as possible a substantive right should not be allowed to be defeated on account of a procedural irregularity which is curable.
12. The Courts below having come to a conclusion that money had been taken by respondent no.1 and that respondent no.2 and husband of respondent no.3 had stood as guarantors and that the claim of the appellant was justified it will be a travesty of justice if the appellant is to be non suited for a technical reason which does not go to the root of the matter. The suit did not suffer from any jurisdictional infirmity and the only defect which was alleged on behalf of the respondents was one which was curable."
(v) Sangram Singh Vs. Election Tribunal, Kotak Bhure lal Baya reported in AIR 1955 SC 425, in para 16 has observed as under:-
"16. Now a code of procedure must be regarded as such. It is procedure, something designed to facilitate justice and further its ends: not a penal enactment for punishment and penalties; not a thing designed to trip people up. Too technical a Page 24 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 construction of sections that leaves no room for reasonable elasticity of inter-pretation should therefore be guarded against (provided always that justice is done to both sides) lest the very means designed for the furtherance of justice be used to frustrate it."
(vi) T.V.Venugopal Vs. Ushodaya Enterprises Limited And Another reported in (2011) 4 SCC 85, in para nos.5 and 92 has observed as under:-
"5. The respondent company, who was engaged in the business of publishing a newspaper in Telugu entitled as `Eenadu', served a cease and desist notice on the appellant which was replied by the appellant on 8.3.1995. The respondent company in the year 1999 filed a suit for infringement of copyrights and passing-off trade mark in the Court of Second Additional Chief Judge, City Civil Court, Hyderabad. The respondent company therein claimed that they have been in the business of publishing a newspaper, broadcasting, financing and developing a film city. It was contended by the respondent company that the use of the word `Eenadu' by the appellant amounted to infringement of their copyright and passing-off in trade mark. According to the respondent company, the business of the appellant and the respondent company was different and there is no commonality or casual connection between the two businesses.
92. On consideration of the totality of facts and Page 25 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 circumstances of the case, we clearly arrive at the following findings and conclusions :
a) The respondent company's mark `Eenadu' has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company's products and services are correlated, identified and associated with the word `Eenadu' in the entire State of Andhra Pradesh.
`Eenadu' means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark `Eenadu';
b) The adoption of the words `Eenadu' is ex facie fraudulent and mala fide from the very inception. By adopting the mark `Eenadu' in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company;
c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the court on the dishonest, illegal and clandestine conduct of the appellant;
d) Permitting the appellant to sell his product with the mark `Eenadu' in the State of Andhra Pradesh would definitely create confusion in the minds of the consumers because the appellant is selling Agarbathies marked `Eenadu' as to be designed or calculated to lead purchasers to believe that its product Agarbathies are in fact the products of the respondent company. In other words, the appellant wants to ride on the reputation and goodwill of the respondent company. In such a situation, it is the bounden Page 26 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 duty and obligation of the court not only to protect the goodwill and reputation of the respondent company but also to protect the interest of the consumers;
e) Permitting the appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the appellant to practise fraud on the consumers;
f) Permitting the appellant to carry on his business in the name of `Eenadu' in the State of Andhra Pradesh would lead to eroding extra- ordinary reputation and goodwill acquired by the respondent company over a passage of time;
g) Appellant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the appellant.
h) Permitting the appellant to sell his product with the mark `Eenadu' would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary rights vested with the respondent company.
i) Honesty and fair play ought to be the basis of the policies in the world of trade and business."
(vii) M/S Hindustan Pencils Private Limited Vs. M/S. India Stationery Products Co. & Another, ILR Page 27 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 (1989) 1 (DELHI) 115, in para no.29 has held as under:-
"(29) If an action is taken by the registered owner and no interim interim injunction is granted, the effect is that goods bearing the infringing mark or spurious goods would continue to be sold in the market. After a number of years when the case is finally disposed of, after trial, and the plaintiff succeeds and gets a permanent injunction then, possibly, the plaintiff may also be compensated by his being awarded damages or an account of profits.
In that sense the non-grant of the interim injunction would not, ultimately, prejudice the plaintiff for he may be compensated with payment of money but during this period when the defendant is allowed to continue to infringe the intellectual property it is the consumer or the purchaser who alone suffers and who ultimately cannot be compensated. Therefore, in order to curb the menace of manufacture, production and sale of spurious goods and the blatant violation of intellectual property it will be proper for the court to take into consideration the interest of the general public. In this regard reference may usefully be made to the following observations of Mccarthy at page 346, para 30.21 which deals with the protection Page 28 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 of third parties:
"SOME courts also consider the necessity of protecting third parties. In trademark infringement cases, "third parties" means the buying public. If the equities are closely balanced, the right of the public not to be deceived or confused may turn the scales in favor of a preliminary injunction".
It would appear to be difficult to accept that relief of temporary injunction should not be granted, because of the delay on the part of the plaintiff, even though the court feels, at that point of time, that ultimately permanent injunction will have to be granted."
(viii) Su-Kam Power Systems Ltd. Vs. Kunwar Sachdev and Another reported in (2019) SCC Online Del 10774, in para nos. 4, 75, 76 and 82 has observed as under:-
"4. Learned senior counsel for the plaintiff submitted that the defendant No.1 had made numerous admissions that the plaintiff was the rightful owner, proprietor and user of the Su-Kam Marks in respect of goods covered under Class 9 of the Trade Marks Act, 1999 and such admissions supersede any and all issues, including those disputed by the defendants. He pointed out the following instances wherein the defendant No.1 had represented the plaintiff to be the owner of the Page 29 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 Su- Kam Marks:-
a. The plaintiff had secured registrations for the Su-Kam Marks in Class 9 and had been continuously and extensively using them since 1998, without any objection from defendant No.1.
b. The defendant No.1 had represented to the public/independent third parties that the plaintiff was the owner of the Su-Kam Marks in Class 9 of the Trade Marks Act, 1999. The defendant No.1 while entering into a Share Purchase-cum-Share Subscription Agreement with Reliance India Power Fund on 31st March, 2006, had identified the plaintiff as the registered owner of the Su-Kam Marks.
c. A suit was filed in 2015 for infringement of the Su-Kam marks by the plaintiff, claiming itself to be the owner of the mark, when the defendant No.1 was the Managing Director of the plaintiff company and held more than eighty per cent of its shares; therefore, the suit had been filed under the aegis of defendant No.1.
d. The defendant No.1 had relied upon a brand valuation report dated 03rd March, 2015 undertaken by Ernst & Young wherein the plaintiff had been identified as the owner of the Su-Kam Marks, when he submitted his bid for the plaintiff company during the ongoing insolvency proceedings.
75. This Court is also of the opinion that defendant no.1 is estopped from leading evidence of his title to the SU-KAM marks in respect of Class 9, in view Page 30 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 of his representations to the plaintiff and the world at large that the plaintiff is the exclusive owner, on which plaintiff had relied by expanding its business and by spending money on advertisements and promoting its business under the impugned mark.
76. In fact, just seven days before the Deed of Assignment plaintiff applied for registration of mark (i.e. on 09th March, 2006) and just fifteen days after, defendant no.1 held out to plaintiff and Reliance India Power Fund (i.e. on 31st March, 2006) that the company was the owner of the trade mark in question. Though the Share Subscription Cum Shareholders Agreement gives status of trademarks and registrations in an annexure being Exhibit H as on 27th February, 2006, yet the covenant in the said Agreement dated 31st March, 2006 clearly stipulates that all products and names listed in Exhibit H are owned and held by the plaintiff company and ―All rights to Intellectual Property are owned exclusively by the Company (Plaintiff), free and clear of any encumbrances, and no other person has any right or interest in or license to use or right to license others to use any of them.
82. Consequently, defendant no.1 is estopped from contending that he is the owner of SU-KAM marks in respect of Class 9 of the Trade Marks Act, 1999.
BETWEEN 16TH MARCH, 2006 (I.E. DATE OF EXECUTION OF DEED OF ASSIGNMENT) AND 09TH JULY 2018 (I.E. WHEN THE DEFENDANT NO.1 SUBMITTED THE DEED OF ASSIGNMENT TO THE INTERIM RESOLUTION PROFESSIONAL), THERE WAS NO ASSERTION BY DEFENDANT NO.1 THAT PLAINTIFF IS NOT THE OWNER OF THE SU-KAM MARK IN CLASS Page 31 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022
9. ACCORDINGLY, THE PRESENT SUIT IS WITHIN LIMITATION."
(ix) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. reported in (2001) 5 SCC 73, in para nos.18 and 20 has observed as under:-
"18. We are unable to agree with the aforesaid observations in Dyechems case (supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd.s case (supra), Corn Products Refining Companys case (supra), Amritdhara Pharmacys case (supra), Durga Dutt Sharmas case (supra), Hoffmann-La Roche & Co. Ltd.s case (supra). Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechems case (supra) sought to examine the difference in the two marks Piknic and Picnic. It applied three tests, they being 1) is there any special aspect of the common feature which has been copied ? 2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar and
3) whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ?. In examining the marks, keeping the aforesaid Page 32 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded that the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK.
20. Lastly, in Dyechems case (supra), it was observed in para 54 as under:
"As to scope of a buyer being deceived, in a passing-off action, the following principles have to be borne in mind. Lord Romer, L.J. has said in Payton & Co. Vs. Snelling, Lampard & Co. (1900) 17 RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant customer that the courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiffs goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. (See the cases quoted in N.S. Thread & Co. Vs. Chadwick & Bros. AIR 1948 Mad 481 which was a passing-off action.) In Schweppes Case (1905) 22 RPC 601 (HL) Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived."Page 33 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 These observations appear to us to be contrary to the decision of this Court in Amritdharas case (supra) where it was observed that the products will be purchased by both villagers and townfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dyechems case (supra) does not, in our opinion, lay down correct law and we hold accordingly."
(x) In Appeal From Order No.181 OF 2019 in case of Krishna Corporation Through Partner Nileshbhai R. Patel Vs. Patel Amishaben Sanjaybhai vide order dated 27.01.2020 in para nos.1, 2.2, 3 and 7 has observed as under:-
"1. Order dated 07.05.2019 rendered by learned Chamber Judge, City Civil & Sessions Court, Court No.26, Ahmedabad below Exh. 6-7 in Civil Suit No. 400 of 2019 declining the relief in respect of the passing off action is sought to be assailed in this appeal from order under Order 43 of the Code of Civil Procedure, 1908 ( for short 'C.P.C').
2.2 Deceptive similarity cannot be judged with exactitudeness. It all depends upon the class of customers. The customer is not expected to carry Page 34 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 with him the mark he is interested in. He is also not expected to go with photogenic memory and remember exact mark, its colour combination design or get up. Deception would occur when the cursory look at the mark, colour combination and design leads the customer to believe that the product is the same which he wanted to buy. The mark in issue concerns Supari ( bete-nut), scented supari, mouth freshners, mukhwas (seeds and supari). User of such consumables may be even an illiterate person and he would be easily deceived by deceptive colour combination and design or mark.
3. By now it is settled legal position that even if the two products are different, the action of passing off goods be maintainable on the basis of deceptive similarities in the label, colour combination, design, etc. Therefore notwithstanding the registration of the mark having been sought by the opponent in a different class i.e 29 than the class sought by appellant i.e 31 the case for passing off is made out.
7. It is misconceived for the opponent to rely upon Parakh Vanijya Private Limited vs. Baroma Agro Product and others ( Civil Appeal No. 6642 of 2018). In the said case Apex Court was not concerned with the action of passing off.
For the foregoing reasons, the impugned order is not sustained and the same is quashed and set aside. Appeal from order is allowed.
The opponents are restrained from the use of the disputed mark with the colour combination get Page 35 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 up they claim to be using thus far.
It will be open for the opponents to pray for expeditious hearing of the suit.
Needless to say that the suit will be decided on merits without being influenced by the observations made herein."
(xi) Parle Products (P) Ltd. Vs. J.P. And Co. Mysore reported in (1972) 1 SCC 618, in para nos. 2 to 5, 9 and 10 has observed as under:-
"2. The facts are as follows. The plaintiffs- appellants before us are manufacturers of biscuits and confectionery and are owners of certain registered trade marks. One of them is the word "Gluco" used on their half pound biscuit packets. Another registered trade mark of theirs is a wrapper with its color scheme, general set up and entire collocation of words registered under the Trade Marks Act 1940 as No. 9184 of 7th December, 1942. This wrapper is used in connection with the sale of their biscuits known as "Parle's Gluco Biscuits" printed on the wrapper. The wrapper is of buff color and depicts a farm yard with a girl in the centre carrying a pail of water and cows and hens around her on the background of a farmyard house and trees. The plaintiffs claim that they have been selling their biscuits on an extensive scale for many years past under the said trade mark which acquired great reputation and goodwill among. the members of the public. They claimed to have discovered in March 1961 that the defendants were manufacturing, selling and offering for sale Page 36 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 biscuits in a wrapper which according to them was deceptively similar to their registered trade mark. The plaintiffs assert that this act of the defendant constitutes an infringement of their trade mark rights. As in spite of lawyer's notice the defendants persisted in manufacturing, selling and using the wrappers complained of with regard to their biscuits, the plaintiffs filed the suit claiming injunction as already mentioned.
3. The defendants pleaded ignorance of the registration of the trade marks claimed by the plaintiffs. They denied that the wrapper used by them in connection with the sale of their biscu its was deceptively similar to the plaintiffs' trade marks as alleged or that they had in any way infringed the trade mark rights of the plaintiffs. They pleaded further that there was a good deal of difference in the design of their wrapper from that of the plaintiffs and relied on certain features of their design which were said to be quite dissimilar to those of the plaintiffs' wrapper inasmuch as the defendant's wrapper contained the picture of a girl supporting with one band a bundle of hay on her head and carrying a sickle and a bundle of food in the other, the cow-, and hens being unlike those of the plaintiffs' wrappers. There was also said to be difference in the design of the buildings on the two wrappers and the words printed on the two wrappers were distinct and separate.
4. The trial court meticulously examined the features found on the two wrappers and the packets of biscuits produced before it and took the view that there were greater points of dissimilarity than of similarity between the two and as such it was unlikely that the defendants, goods could be passed off as and for the goods of the plaintiffs.Page 37 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 After pointing out the distinguishing features of the wrappers, the trial court concluded that there was no chance of a seller committing fraud on a customer and an ordinary purchaser would certainly refuse to purchase the defendants' goods if he was offered them as and for the plaintiffs' goods. Accordingly the trial court held that the plaintiffs had failed to establish their case.
5. Although the High Court held that in such a case it was not necessary for the plaintiffs to adduce evidence that any particular individual had been deceived by the defendants' wrapper and it was undeniable that the general get up of the two wrappers was more or less similar, it went on to observe that the court had to bear in mind that it was dealing with packets of biscuits which were generally used by people of the upper classes, and a purchaser desirous of getting a packet of Parle biscuits would go and ask for the same as such, in which case there could be no scope for deception; again the plaintiffs could have no cause for grievance if a purchaser was content to buy any biscuits which were offered to him by the shopkeeper. The High Court also took the view that there were several' distinguishing features between the two wrappers and these could be noticed even from a distance. According to the High Court, the similarity in the two wrappers lay in the facts that both were partly yellow and partly white in color and both bore the design of a girl and some birds. "But" the High Court said "there the similarity ends. The lady in the wrapper used by the plaintiff company has a pot on her hand while, the lady in the wrapper used by the defendant has a hay- bundle on her head. In fact, they are not identical in features. In the defendants' wrapper we have got a cow and in the Page 38 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 plaintiffs' wrapper we have got two calves. The upper portion of the defendants wrapper is not similar to that of the ,Plaintiffs' wrapper." The High Court went on to comment:
"it is true that in a passing off action, one is not to look to minor details but must take into consideration the broad features. Even if we take the broad features of the two wrappers into consideration, we do not think that they are similar. At any rate, they are not so similar as to deceive an ordinary purchaser of biscuits."
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 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 color 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 "Gluco Biscuits"
in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of Page 39 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 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 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.
10. It was argued before us that as both the trial court and the High Court had come to the same conclusion namely, that the defendants, wrapper was not deceptively similar to the plaintiffs', the finding is one of fact which should not be disturbed by this Court. Normally, no doubt this Court does not disturb a concurrent finding of fact. But where, as here, we find that,, the finding was arrived at not on proper consideration of the law on the subject it is our duty to set the same aside on appeal."
(xii) Appeal From Order 116 of 2015 in case of Gujarat Tea Depot Company Vs. Bhagaram Krupaji Ganchi dated 04.08.2015.
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(xiii) N.Ranga Rao & Sons Vs. Anil Garg & Ors reported in (2005) SCC Online Del 1293, in para nos. 10, 17 and 71 has observed as under:-
"10. The get-up and colour scheme of this range of LIA is stated to be distinctive and the packaging cartons are of different colours depending on each colour conjuring associations with the concerned fragrance. Despite this, there is a uniformity in the scheme of the base consisting of pastel shade softening to whitish towards the centre of the box where the logo / trademark of LIA is printed. The LIA trademark is written in sloping font at slightly upward angle with a line underscoring the word 'LIA'. The text regarding the name of fragrance, the brand-name of the product and the general effect and the fragrance is printed below the LIA logo. A motif of the plant / location associated with the fragrance is printed above the LIA logo. Small semi-circular and ribbon banners containing text are also printed on the cartons and on the side of the cartons, the brand-name is printed in Devnagiri, Tamil, Kannada, Telugu and Malayalam scripts. In view thereof, it is stated that the labels are extremely attractive and eye-catching and have gained enormous reputation in the market. The impact is composite consisting of the brand-name LIA, the colour scheme of the cartons and the various shades used for each fragrance, the labeling, the design lay-out as well as the unique price range, as such the plaintiff claims to own all the common law rights in the LIA brand-name and all the various products in the said range. The art work in lay-out plan of the cartons are stated to have been designed by professionals for the plaintiff firm and the rights are stated to vest in the Page 41 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 plaintiff under Section 17 of The Copyright Act, 1957.
17. The plaintiff has also referred to the fact that the name DIA is not co-incidental since the defendants are trading under the name and style 'Divya Inscense (India) Pvt. Ltd.', thus, the word 'DIVYA' as such could have been chosen and the word 'DIA' is stated to have been chosen solely due to its visual and phonetic similarity to the plaintiffs LIA mark. The plaintiff claims that the test of unsuspecting consumer with average intelligence and imperfect recollection must be applied and if the said test is applied, the consumer is bound to be deceived. The get-up of the two products is stated to be identical and the product is being sold at the unusual rate of Rs. 15/- for 35 sticks in the same fashion as the plaintiff's product.
71. The parameters laid down for such comparison have been set out in judgment of the Apex Court in Parle Products (P) Ltd.'s case (supra) for deciding whether one mark is deceptively similar to another, the broad and essential features of the two have to be considered. They are not to be placed side by side to find out differences in the designs and it would suffice if the mark bears an overall similarity to the mark. As pithily observed, an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes. However, this principle would not apply to mere colours. Colours are after all only certain hues."
(xiv) Cadbury India Ltd. & Ors Vs. Neeraj Food Products, ILR (2007) II Delhi 1065.
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(xv) Automatic Electric Ltd. Vs. R.K.Dhawan & Anr, 1999 SCC OnLine Del 27.
(xvi) Essel Packaging Ltd. Vs. Sridhar Narra & Anr., 2002 SCC OnLine Del 631.
(xvii) The Indian Hotels Company Ltd. And Ors. Vs. Jiva Institute of Vedic Science and Culture, 2008 (37) PTC 468 (Del).
(xviii) Pankaj Goel Vs. Dabur India Ltd., 2008 SCC OnLine Del 1744.
(xix) Ruston and Hornby Ltd. Vs. Zamindara Engineering Co., AIR 1970 SC 1649.
(xx) Vikram Stores Vs. S.N.Pefumery Works, 2008 (2) GLR 1255.
(xxi) Laxmikant V. Patel Vs. Chetanbhai Shah And Another, (2002) 3 SCC 65, in para no. 17 has observed as under:-
"17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefor except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely Page 43 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below 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 courts exercise of discretion [(see Wander Ltd. v. Antox India P.Ltd : 1990 (Supp) SCC 727 and N.R. Dongre v. Whirpool Corporation and another:
(1996) 5 SCC 714)]. However, the present one is a case falling within the well accepted exceptions.
Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
Page 44 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 (xxii) Copy of the judgment dated 11.09.2021 passed by the 9th Additional District and Sessions Judge, Ahmedabad (Rural) at Mirzapur in Trademark Suit No.15 of 2021.
9. Learned advocate Ms.Pooja Acharya for the respondent has submitted that there is dispute regarding the "Label marks", one belongs to the plaintiff and one to that of the defendant. She has submitted that the plaintiff has sought for relief of infringement action and damages of passing off action as well as under the Copyright Act. She has submitted that remedy of infringement of trademark is available only to the registered owner. She has submitted that in the present case, the plaint is signed only by plaintiff no.2 who is not registered owner of the trademark but only a permitted user. While referring to the trademark Wagh Bakri and label thereof, she has submitted that the word Wagh Bakri is trademark and label is not trademark of the plaintiff. She has also submitted that there is no trademark over colour saffron. She has submitted that colour orange is generic in terms.
9.1. She has also submitted that the plaintiff has not been signed by the plaintiff no.1 and in absence thereof the plaintiff no.2 being a permitted user cannot claim any right for passing of infringement action. She has also submitted that there is no document that the plaintiff Page 45 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 no.2 is a registered user of the of a particular mark. While referring to the license user document, she has submitted that it is a non-exclusive license and mark the label was never assigned to the plaintiff no.2.
9.2. While referring to the copyright registration certificate, page no.139 and 140 dated 10.07.2020, especially column no.3, 4 and 5, she has submitted that there is no specific mention of any specific colour. She has also submitted that there is averment regarding actual user claim of the same in a plaint.
9.3. She has submitted that the respondent adopted two labels in the year 2017 and thereafter, MOU was signed. She has submitted that the defendant has abide by the terms and conditions of the MOU and has not committed any breach thereof.
9.4. Learned advocate Ms.Pooja Acharya while referring to the various invoices of the advertisement produced in the matter, has submitted that the annexure C filed with the appeal does not belong to the present device and the advertisement also does not pertain to the disputed trademark labels. She has also submitted that the sales figures are pertaining to the trademark of Wagh Bakri and not for the label thereof. She has also submitted that the colour and label marks are not the trademark of the plaintiff. She has submitted that "colour" was never part of trademark or copyright of the plaintiff. She has also Page 46 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 referred to various provisions of the trademark and has submitted that even under Section 10 of the Trademark Act, there is limitations prescribed as to the colour. Inviting the attention of the Court to both the labels, she has submitted that both the labels are different and the disputed label has not been used by the plaintiff. She has also submitted that presence of cup and saucer are device used in every tea produce, therefore there is no any trademark or copyright for cup and saucer. She has also stated that the respondent has distinctively adopted the placement of kettle in the packaging which is prominently placed in the device of the respondent and due to that label there is no chance of confusion in the minds of the public at large. She has also stated that even for the sake of argument, similarities are considered, every features included in the label of the appellant and respondent are different. While referring to the various other products, she has submitted that for different food items, different colours and packaging are being used generally. She has demonstrated for example as chilli powder, wherein every producer is using red colour. She has submitted that colours are used as per the products and accordingly the colour of labels would be as per the food items.
9.5. She has submitted that the defendant is trading in the product of tea under the trade name "Panchratna" along with its various devices since the November 2017. She has stated that thereafter the defendant has developed Page 47 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 the device of cup, saucer with a leaf of mint and a background colour combination of orange which was earlier label of the defendant. She has submitted that however, after having knowledge that the plaintiff has raised an issue regarding the use of the mark "Panchratna" with device of cup, saucer and the orange background, the defendant has decided to avoid the litigation and he has again started using the trademark "Panchratna" with device inclusive of kettle, cup and saucer in the orange background. She has submitted that the artistic work adopted by the defendant is owned by the defendant and it has acquired great popularity and significant presence in market and recognition in the public at large. She has submitted that the defendant has applied for registration of trademark "Panchratna" with device of cup, saucer and kettle dated 30.08.2020 by claiming user since 01.11.2017 which is pending at the advance stage.
9.6. She has also submitted that the plaintiffs are trying to monopolize the orange/ saffron colour of its label and thereby trying to restrain the defendant by using said colour. She has submitted that the plaintiff has no right to claim monopoly over saffron/ orange colour.
9.7. She has reiterated the contention raised is the reply filed by the defendant in this appeal from order. She has submitted that the Trial Court has properly appreciated the pleadings and the material placed on record and has Page 48 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 rightly passed the impugned order rejecting the interim injunction application to the plaintiff. She has submitted that the impugned order is sustainable in the eyes of law and this Court may not interfere with such discretionary order passed by the Trial Court. She has prayed to dismiss the present appeal from order. Regarding the various decisions relied upon by the plaintiff she has submitted that those decisions are not applicable to the facts of the present case. She has relied upon the following decisions in support of her submissions:-
(i) Himalaya Drug Co. Pvt. Ltd Vs. Arya Aushadhi Pharmaceutical Works reported in 1999 (19) PTC 444 (DB), has observed in para nos.4, 5, 6, 7, 8 as under:-
"4. Before embarking on an appraisal of evidence on record it becomes necessary to refer to some relevant provisions of the Trade & Merchandise Marks Act, 1958 to know the requirements for filing such a suit. Section 2(q)(r)(s) defines "registered proprietor," "registered Trade Mark"
and "registered user" respectively. "Registered proprietor" is a person who is entered in a register as a proprietor of the Trade Mark. "Registered Trade Mark" is a Trade Mark which is actually entered on the register. "Registered user" means a person who is for the time being registered Under Section 49. Section 48 of the Act deals with the registered users and Section 49 with the procedure for obtaining such registration by the registered users. It envisages that both registered proprietor and registered user shall make a joint application Page 49 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 to the Registrar in writing and in prescribed manner for such registration.
5. Chapter IV of the Act deals with effect of registration and Section 28 thereunder postulates that such registration shall give the registered proprietor of the Trade Mark exclusive right to the use of such Trade Mark and to obtain relief in respect of infringement of the Trade Mark in the manner provided by this Act. Section 52 makes an exception to this and permits the registered user of the Trade Mark also to take proceedings to prevent infringement of such Trade Mark on satisfying the requirements laid down therein. The relevant section which assumes crucial importance in the matter is extracted hereunder:--
"A bare perusal of the provision would show that the registered user of the Trade Mark shall be entitled to call upon the proprietor of such Trade Mark to take proceedings to prevent infringement thereof and if such registered proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant."
6. Going by the relevant provisions of the Act, it is firstly proprietor of a Trade Mark who can maintain a suit for infringement of such Trade Mark. The registered user could also do it but only after registered proprietor would neglect it or refuse it within three months from the date of having been called upon to do so. The prerequisite was that the suit could be maintained only by registered proprietor or registered user. An Page 50 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 unregistered user, was disqualified from filing the suit. In the present case there is no clue in the plaint that appellant had approached the proprietor for preventing the alleged infringement and it was on his failure to do so within the time prescribed that it was constrained to launch the suit. That apart, there is nothing to show on record that appellant company had sought registration of the Trade Mark in question in accordance with the provisions of Section 49 or that it was so registered. It had not produced any certificate or extract of entry from the relevant register in support to show that it was a registered user. All it harped on was that it had assumed the status of registered user by virtue of registered user agreements executed by the proprietor of the Trade Mark. The trial Court also appears to have misunderstood the requirement to return a finding which makes an interesting reading and deserves to be quoted hereunder:--
"It is thus, proved that Himalaya Drug Co. permitted the use of the said Trade Marks to the plaintiff by the agreement of the registered users dated 29-6-1971 and 9-6- 1972. The said agreement of registered users have been registered with the Registrar of Trade Marks and plaintiff's name is registered as users of the said Trade Marks of Himalaya Drug Co. in the records of the Registrar of Trade Marks."
7. It is not known how the trial Court had recorded this finding without any supporting material on record to suggest that appellant had applied for registration as registered user of the Trade Mark or for that matter the user agreements executed between the proprietor and the company had Page 51 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 clothed it with any such status. The trial Court had manifestly fallen in error in doing so without any evidence on record. Its finding was thus rightly characterised perverse by the First Appellate Court.
8. There is no dispute that only registered proprietor of the Trade Mark or a registered user of the Trade Mark could launch proceedings to prevent its infringement. If the user was not registered he could not maintain a suit Under Section 51. Thus we hold that appellant's suit was rightly dismissed by the Appellate Court because the company had failed to prove that it was a registered user and that trial Court had returned a finding in this regard without any evidence on record. We accordingly affirm the impugned judgment of the First Appellate Court to dismiss this appeal. Appeal dismissed."
(ii) P.K.Sen Vs. Exxon Mobile Corporation & Anr., 2017 (69) PTC 271 (Del) [DB], in para nos.15, 16 has observed as under:-
"15. We now come to the provisions of the Trade Marks Act, 1999 which we have extracted above. It is abundantly clear that permitted use', as defined in Section 2(1)(r) of the said Act is referable to a registered user' as also to a person other than the registered proprietor' and the registered user'. Section 48(1) stipulates that, subject to Section 49 (which provides for registration as a registered user), a person other than a registered proprietor of a trade mark, may be registered as a registered user. Section 48(2) provides that the permitted use of a trade Page 52 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 mark shall be deemed to be used by the proprietor thereof and shall be deemed not to be used by a person other than the proprietor for the purposes of Section 47 (which relates to the removal from the register and imposition of limitations on the ground of, inter alia, bona fide non-user of the trade mark) or for any other purpose for which such use is material under the said Act or any other law. All that this provision indicates is that the permitted use of a trade mark by a registered user or any other person other than the registered proprietor and registered user would be deemed to be used by the proprietor of the trade mark and not by anybody else. The appellants had argued that the use of the expression ―permitted use‖ in Section 48(2) was referable only to a registered user because Section 48 was in respect of the registered users alone. We need not decide this issue and we shall proceed in this case on the assumption that the permitted use of a trade mark by a permitted user would also be deemed to be used by the proprietor thereof. In other words, the permitted use of the trade mark EXXON' by the plaintiff No.2 would be deemed to be used by the plaintiff No.1.
16. Sections 52 and 53 are extremely important for the purposes of this case. Section 52(1) provides that subject to any agreement subsisting between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor. Of course, in such eventuality, the registered proprietor has to be made a defendant. Furthermore, in such cases, the rights and obligations of such a registered user would be concurrent with those of the Page 53 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 registered proprietor. Since the plaintiff No.2 / respondent No.2 is admittedly not a registered user, Section 52(1) does not come into play insofar as it is concerned. But, what is important is that it has to be kept in mind that a registered user has been given the right to institute the proceedings for infringement in his own name as if he were the registered proprietor. Section 52(2) also deals with a case where a registered user has instituted a proceeding in his own name and does not arise for consideration in the present case. Section 53, in clear departure from Section 52, stipulates that a person referred to in Section 2(1)(r)(ii) shall have no right to institute any proceeding for any infringement. The person referred to in Section 2(1)(r)(ii) is a person other than the registered proprietor and registered user and would obviously include a permitted user'. In other words, the only persons who can bring a suit for infringement of a trade mark would be the registered proprietor himself or the registered user and certainly not a permitted user. Therefore, in our view, the submission made by the learned counsel for the appellant that the suit could not have been instituted by the respondent No.2 / plaintiff No.2 is correct."
(iii) Smithkline Beecham Plc. & Anr vs Sunil Sarmalkar & Ors, 2012 (52) PTC 418 (Del.), in para nos.7, 8 has observed as under:-
"7. So far as the fact that the trade mark PANAMAX is registered in favour of the plaintiffs is concerned, the same cannot be disputed, however mere registration of a trade Page 54 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 mark cannot confer a right unless goods have been sold under the said trade mark. The entire issue of distinctiveness qua the trade mark is necessarily with reference to sales made under a trade mark. If there are no sales there cannot be distinctiveness. A Division Bench of this Court in the judgment reported as Fedders Lloyd Corporation Ltd. & Anr. Vs. Fedders Corporation & Anr., 119 (2005) DLT 410 has observed in para 23 as under:-
"23. Though the object of the Trade Marks Act is to protect the proprietary rights of a registered trademark holder, at the same time the object is not to facilitate any monopoly of such registered trade mark holder, despite non use of the trademark by him as contemplated by the Act. A trademark has no meaning, even if it is registered, unless it is used in relation to goods and/or services. A Trademark which drops out of the use, dies when there are no goods offered for sale as there is no use of the trademark. The mark can lose its distinctiveness by non use, where non use is on the part of registered trade mark holder but not on account of external factors beyond the control of such registered trade mark holder." (underlining added)
8. A reading of the aforesaid paragraph makes it more than clear that though the object of the Trade Marks Act is to protect the proprietary rights of a registered trade mark holder, at the same time the object is not to facilitate any monopoly of such trade mark holder despite non-use of the trade mark by him. The Division Bench has clearly said that the trade mark has no meaning, even if it is registered, unless it is used in relation to goods and/or services. The Page 55 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 Division Bench has further observed that the trade mark which drops out of the use, dies when there are no goods which are offered for sale as there is no use of the trade mark. Finally, the Division Bench observed that a mark looses its distinctiveness by non-use."
(iv) Veerumal Praveen Kumar Vs. Needle Industries (India) Ltd. & Anr., 2001 (21) PTC 889 (Del)[DB], in para nos.24, 25, 29 and 30 has observed as under:-
"24. The primary aspect in our considered view which need sot be examined is the issue relating to the respondents being the registered user of the trademark and whether the allegations of non-use has any effect of the same. The counsel for the parties have taken use though the documents to show their sales. These are in the form of invoices and other materials. We find force in the submission of learned counsel for the appellant that the material placed on record shows sales only for a short period of time from 1977 to 1979. It is an admitted position that the inter - se license agreement between the two respondents did not survive after 1981, which prima facie show that there has been no sales by the respondent after 1981. Though the aspect of global reputation has been mentioned above, as the second issue, it would be pertinent to state at this stage that no material has been placed on record to substantiate this claim of global reputation. The invoices are fora limited period of time and some of the invoices relate to Hong Kong. There is also nothing on record to show any reputation of the goods of the Page 56 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 respondents in India in 1960s and 1970s, as observed by the learned Single Judge. Thus we are also unable to agree with the factual finding of the learned Single Judge that there is material on record to show that there were sales by the respondents in India prior to 1981 other than for the period 1977 to 1979.
25. In view of the aforesaid factual position what has to be considered is whether the factum of the registration of the trademark in the name of appellant is sufficient to grant relief in favor of the respondents or whether something more is required. This has to be considered in view of the submission of learned counsel for the appellant that the trademark cannot exist in vacuum and in view of their being a non-user of trademark since 1981, the respondents are not entitled to any protection.
29. Thus we find that a specific plea has been raised about non-user and in view of the termination of the inter se agreement between the respondents in 1981 there is nothing to show any sales thereafter. Even prior to that date sales have been shown only for a short period of 1-1/2 years from 1977 to 1979. No material has been placed to show transborder sales or reputation in the product.
30. We are in agreement with the view of the learned Single Judge of the Bombay High Court that if there is non-user for a long period of time then by mere registration of the mark continuing the respondents would not be entitled to any injunction. this view is further reinforced by the judgment in Imperial Group's case (supra) wherein it was held that where there is no trading to give Page 57 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 rise to a goodwill there is no interest to be protected by a trademark and such a trademark cannot exist in vacuum."
(v) Bombay Plaster Industries Vs. Jagdamba Plaster, 2018 (73) PTC 241 (Raj.), in para nos.18 and 25 has observed as under:-
"18. The pertinent question is whether the label trademark of respondent is deceptively similar to the trademark of appellant or it is an affirmative attempt to create "likelihood of confusion" among customers. There is no material placed on record by the appellant to show that label trademark of the respondent has created "likelihood of confusion". True it is that Court while adjudicating upon "likelihood of confusion" cannot outrightly discard it as fallible or unreliable but then with the advent of modern technology it suggests imposition of higher threshold upon the suitor. Therefore, I am afraid, in the backdrop of peculiar facts and circumstances of the instant case, appellant- plaintiff's claim of "passing off action" against respondent-defendant per se cannot be accepted. Furthermore, in my view, use of single colour cannot be treated as inherently distinctive so as to prima facie castigate the respondent for commercial dishonesty. The learned trial Court has made sincere endeavour to address on this aspect of the matter while recording its negative finding on prima facie case and the said finding, therefore, cannot be faulted.
25. Some of the judgments mentioned supra, relied upon by the learned counsel for the appellant to Page 58 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 articulate his submissions, were carefully gone through by me in the light of lis involved. Fully endorsing the legal proposition adumbrated therein, I feel disinclined to discuss these precedents in detail at this stage. However, in the backdrop of fact scenario of both these appeals, legal precedents are clearly distinguishable and therefore render no assistance to the cause of appellant. Vulnerability of the impugned order sought to be poised by the learned counsel for the appellant with left-handed compliments, if objectively examined, then too it is not possible to trace out any infirmity in the impugned order. Injunctory relief being equitable is surely available to an aggrieved party for protecting its legal rights and also for protecting intellectual property rights on the anvil of doctrine quia timet but not at the cost of creating monopoly in business or other fields much less jeopardizing business of others."
(vi) Brihan Maharashtra Sugar Syndicate, Nashik Vs. Meher Distilleries Pvt. Ltd. & Ors, 2006 (33) PTC 188 (Bom.), in para nos.11, 12, 13, 14, 15 has observed as under:-
"11. In my opinion, the crucial question is not whether the plaintiffs have a copyright in the label L-1 but the question is whether L-2 is a infringement of the copyright of the plaintiffs because of similarity or artistic similarity and the answer has to be in the negative. No skill or expertise is required to come to this conclusion.
The comparison and perusal of the two labels i.e. L-1 of the plaintiffs and L-2 of the defendants, is sufficient to come to these Page 59 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 conclusions. Following are the specializations in respect of L-1 :
a) background of the label is orange.
b) there is a rectangular viz. round corner border in red.
c) the word "Desi Daru" is printed in black.
d) Words "Prince Santra" are printed in white.
e) the name of the dealers is printed in white and all other printed material is in black, and perhaps there is a photograph of orange at the centre or some mark in red.
So far as label L-2 is concerned, the following are the specializations:
a) the background is orange.
b) the border is golden orange - big square.
c) Word "Desi Daru" is printed in white.
d) the name of the product is totally different. It is "No. 1 Tango Santra", it is in golden square with soft round, name appears is in orange.
e) every other thing is printed in white.
Except the background in both the labels, which is orange, there is absolutely no similarity. By no stretch of imagination it can be said that label L- 2 is the copy of label L-1. They are distinct and separate. Distinction has been pointed out by me that is in respect of each and every aspect of Page 60 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 the label excepting the background colour, and the most important thing is the name of the products are totally different with no similarity. Plaintiffs product is known as "Prince Santra"
and Defendants product is known as "No.1 Tango Santra.
12. Now use of the orange colour by defendant No.2 as a background colour on their label, cannot be said to be infringement for two reasons, the use of orange colour for the label is not an artistic creation and in all other labels which are reproduced on Exhibit 12A of other manufactures of a country liquor have used colour orange as background colour, for their labels, therefore, in the label L-2 there is no infringement even to the extent of 5%, I have intentionally reproduced Section 51 as to when the copyright is to be infringed. The case of the plaintiffs does not fall in any of the categories. If the labels of the plaintiffs and that of the defendants i.e. L-1 and L-2 had some similarities or it was misleading, if L-2 was capable of being a copy of L-1, then the plaintiff could have succeeded in proving infringement. But not even 5% is the similarity between the two labels.
13. Secondly, even if the plaintiffs have a copyright about L-1, there is absolutely no artistic work in preparing L-1. Regarding any other piece of art, there could not be only many different opinions as to whether a particular work is an artistic work or not. But regarding L- 1 it cannot be said that there is anything which can be said is an artistic work. Choosing orange as background colour in the label or putting red border cannot be called as an artistic work, no skill or specialization is required. Same is the Page 61 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 case with printing name and other material on the label. Same is the case with the label of the defendant No.2. There is absolutely nothing in the said label L-1 which can be said to be an artistic work.
14. Therefore, when after comparison of the labels L-1 and L-2, any prudent man, as is required by the Evidence Act would come to the conclusion that there is absolutely no similarity between the two and L-2 cannot be considered or taken as a copy or reproduction of L-1, then it is not at all a case of infringement of copyright of the plaintiffs. In view of this conclusion, whether the plaintiffs is the owner of the particular mark or exclusive licensee and whether the Palghar Court had jurisdiction, becomes totally insignificant.
15. Mr. Chitnis relied upon judgment of Madras High Court, as referred above, in order to show that defendants label L-2 is a copy. Wherein in paragraph 7 word "copy" is referred to as under :
"A copy is that which comes so near to the original a to suggest that original to the mind of every person seeing it."
This definition of the word "copy"
completely falsifies the case of the plaintiffs. There is no resemblance whatsoever between the two labels excepting the background colour orange. In view of this matter, the judgment of the trial court is patently wrong. The findings of the trial court on vital issues Nos. 6, 7 and 8 are perverse, these findings are set Page 62 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 aside. Issue Nos. 11, 12 and 13 are required to be held in favour of the Appellants -Defendants."
(vii) Apple Silk Mills Pvt. Ltd. Vs. Apple Sarees Pvt. Ltd., LAWS (GJH) 2017 3 406.
(viii) Judgment of Delhi High Court dated 05.04.2021 passed in IA No.12115 of 2020 in CS (COMM) 553 of 2020, in para nos.15 and 16 has observed as under:-
"15. The definitive test, whether in the case of infringement or passing off, is that of confusing or deceptive similarity. It is true that, in examining this aspect, the court is not expected to ferret out points of dissimilarity between two marks, as absolute identity between marks is rarely, if ever, encountered, except where one makes unauthorised use of the mark of another. The examination by the court is, generally, required to be directed towards assessing whether there is a deceptive extent of similarity between the marks irrespective of their individual dissimilar features. It is for this reason that courts have held that the approach should be one of emphasising the similarities, rather than the dissimilarities, between the marks.
16. Having said that, points of dissimilarity between rival marks cannot be regarded as irrelevant. They cannot be ignored. The perception, whether in the case of infringement or passing off, is to be that of a Page 63 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 person of average intelligence and imperfect recollection - not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities, and overlook dissimilarities. Section 29(1) uses the word "deceptive", whereas Section 29(2) uses the expression "cause confusion". Deception and confusion are both states of mind, of which no physically tangible evidence can ever be found. If similarities can cause deception or confusion, dissimilarities, if sufficient, can also obviate any such I.A. 12115/2020 in CS(COMM) 553/2020 & Digitally Signed By:SUNIL SINGH NEGI Signing Date:05.04.2021 11:43:31 possibility. At the end of the day, the court is required to come to an opinion as to whether a person of average intelligence and imperfect recollection is likely be deceived, or to confuse the defendants' marks (in the case of infringement) or the defendants' product (in the case of passing off) with that of the plaintiff. If, therefore, between the rival marks, the points of dissimilarity are so stark that they shade or overweigh the points of similarity, the court may legitimately arrive at a conclusion that, irrespective of the points of similarity, no possibility of confusion or deception exists."
(ix) Capital Plastic Industries Vs. Kapital Plastic Industries, 1989 (9) PTC 98 (Del) (DB).
(x) Vardhman Buildtech Pvt. Ltd And Ors. Vs. Vardhman Properties Ltd., LAWS (DLH) 2016 8 Page 64 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 142, in para nos.8 and 9 has observed as under:-
"8. On a plain reading of Section 15(1), it is evident that where a proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he is permitted to apply to register the whole and the part as separate trade marks. In the present case, the respondent is the proprietor of the label/mark which includes the words VARDHMAN PLAZAS'. The respondent is claiming exclusivity in respect of the word VARDHMAN'. It is clear that he had the option to make an application for registering the word VARDHMAN' as a separate trade mark. Assuming that he could have had the word mark registered, it is an admitted fact that the respondent made no such application. Section 17 of the said Act makes it clear when a trade mark consists of several matters, as it does in the present case, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. There is no dispute that the label/mark, taken as a whole, is the exclusive property of the respondent. The learned counsel for the appellants has no quarrel with this at all. The issue arises when the respondent claims exclusive right to a part of the label/mark and particularly to the word VARDHMAN'. Section 17(2) is a non-obstante provision [vis-à-vis sub-section(1)], which stipulates that when a trade mark contains any part which is not the subject matter of a separate application by the proprietor for registration as a trade mark or which is not separately registered by the proprietor as a Page 65 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 trade mark or contains any matter which is common to the trade or is otherwise of a non- distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. In the present case, neither has the respondent separately registered VARDHMAN' as a trade mark nor has any such application been made.
Furthermore, the word VARDHMAN' is itself of a non-distinctive character and is not only common to this trade but to several other businesses. Consequently, the registration of the label/mark which contains the words VARDHMAN PLAZAS' does not confer any exclusive right on the respondent insofar as a part of that mark, namely, VARDHMAN' is concerned.
9. We now come to Section 28 of the said Act which deals with the rights conferred by registration. It is clear that by virtue of Section 28, the registration of a trade mark, if valid, gives to the registered proprietor of the trade mark the exclusive right to the use of the mark in relation to the goods or services in respect of which the trade mark is registered and, importantly, to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. What is important to notice is that Section 28(1) begins with the words subject to the other provisions of this Act'. In other words, Section 28 would have to be read as subject to Section 17 of the said Act. Consequently, in our opinion the registration of the label/mark in favour of the respondent, which includes the words VARDHMAN PLAZAS', does not Page 66 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 confer an exclusive right on the respondent insofar as part of the mark, which has reference to the word VARDHMAN', is concerned."
(xi) Ritika Vegetable Oil Private Limited Vs. Deepak Vegpro Private Limited, LAWS (RAJ) 2019 12 93.
(xii) Skyline Education Institute (I) Private Ltd. Vs. S.L. Vaswani and Anr, 2010 (42) PTC 217 (SC).
(xiii) Jaideep Mohan Vs. HUB International Industries & Anr., 2018 (74) PTC 154 [Del]
(xiv) Matrix Telecom Pvt. Ltd. Vs. Matrix Cellular Services Pvt. Ltd., LAWS (GJH) 2011 3 15, in para no.6 has observed as under:-
"6. Before proceeding further, it is required to be noted that the present appeal is against the rejection of interim relief and the main suit is still pending. If this Court elaborately deals with the matter on merits it is likely that the same would prejudice the case of either side. Therefore, it is well settled law that this Court is not required to go into the merits of the entire matter at this stage and what is required to be seen is whether the Appellant-Plaintiff has made out a prima facie case or not for grant of interim injunction.
6.1. It is required to be noted that it is well settled law that the appellate Court may not Page 67 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 interfere with the exercise of discretion of the Court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. The appellate Court will not re-assess the material and seek to reach a conclusion different from the one reached by the Court below if the one reached by the Court was reasonably possible on the material. The appellate Court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion.
6.2. At this stage, it is required to be noted that in an action for passing off on the basis of unregistered trade mark, generally for deciding the question of deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.Page 68 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
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(d) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks."
(xv) Wander Ltd. And Another Vs. Antox India (P) Ltd., 1991 (11) PTC 1 (SC), in para no.9 has observed as under:-
"Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injucntion, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from Page 69 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."
10. Learned advocate for the respondent has also filed written submissions which has been taken on record.
11. In rejoinder, learned senior counsel Mr.Kamal Trivedi for the plaintiff has vehemently submitted that Section 53 of the Trademark Act, provides for regarding the right of permitted user and registered proprietor. He has submitted that Section 53 of the Trademark Act needs to be read with section 52 of the Trademark Act and Section 53 of the Trademark Act is not applicable as the registered proprietor of the trademark is party to the suit. He has also submitted that it is not the case of the plaintiff regarding the use of singular colour but the case of the plaintiff is of combination of different colour, get up, arrangement of articles etc. Learned senior Page 70 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 counsel Mr.Trivedi has submitted that in the present case, Subsection 2 of Section 10 of the Trademark Act would apply and not Subsection 1 of Section 10 thereof as submitted by the defendant. He has submitted that the disputed label of the defendant would be look like the same as that of the plaintiff. While referring to the documentary evidence placed in the form of paper book, he has submitted that from page no.82 to 105, user detains have been made available which is associated with the trademark. He has submitted that the defendant has not challenged the plaintiff's trademark. He has also submitted that under the Copyright Act, even exclusive licensee could maintain the suit.
11.1. Regarding the sales figures, learned senior counsel Mr.Kamal Trivedi submitted that all these averments have already made in the plaint itself. He has also submitted that the defendant has not placed on record any material to show the prior use of the disputed label prior to the year 2017. He has also submitted that the invoices placed by the plaintiff is regarding its entire business which has been relating to the trademark and label. He has also submitted that the point of dishonesty is raised for the first time. He has also submitted that the contains of the label as to be read in totality which includes overall getup, colour scheme, design and artistic work and arrangement of various constituents. He has submitted that there is no case of the plaintiff regarding the orange colour being its trademark. He has Page 71 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 submitted that the submission of the defendant that the plaintiff wants monopoly in an orange colour is not correct.
11.2. Learned senior counsel Mr.Kamal Trivedi has also submitted that there was a condition in the MOU wherein the defendant has accepted the registered trademark and copyright over the label of the plaintiff and yet he has applied for the disputed mark having same label of the plaintiff and thus, the defendant has violated the contents of the MOU dated 20.08.2020.
11.3. Regarding the contention of the defendant that the use of the trademark/ label is of 1925, while the same label has been registered for copyright in the year 2008. It is submitted by him that both the Acts, i.e. Trademark Act and Copyright Act are different and this as per Section 16 and 55 of the Trademark Act, which categorically contemplate about "associate mark" which relates back to the original trademark and therefore at the interim stage, the only aspect to be considered is as to whether the plaintiff's trademark is registered or not.
11.4. Learned senior counsel Mr.Kamal Trivedi has also submitted that in a given case, the order of the learned Trial Court is capricious one and has not taken into consideration the pleadings and the material placed on record, then in that case, the appellate Court can always interfere with the introductory order passed by the Trial Page 72 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 Court.
12. In sur-rejoinder, learned advocate Ms.Pooja Acharya has submitted that "Panchratna tea" was in business since the year 2015 and invoices were of the "Panchratna tea"
which were in use since the year 2015. She has submitted that the disputed trademark is of November 2017.
13. It is well settled that in an appeal against exercise of "discretion" by the Court of first instance, the power of appellate Court to interfere with the exercise of discretion is restrictive. Merely because, on facts, the appellate Court would have concluded differently from that of the Court below, that would not, by itself, provide justification for appellate Court to interfere. To justify interference, the appellate would have to demonstrate that the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against the exercise of discretion is an appeal on principle.
14. Considering the aforesaid settled legal principles coupled with the submissions of both the sides and the material placed on record as well as the impugned order of the Court below refusing interlocutory injunction, it is Page 73 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 crystal clear that there is no dispute regarding the facts that both the parties deals with the same business of tea. It is also admitted facts that earlier the defendant has tried to use the same or similar label of the plaintiff whereupon legal notice was issued to the defendant and in pursuance thereof MOU came to be executed between the parties. The said MOU is binding to both the parties. It also reveals that thereafter the defendant has adopted or/ prepared new label having feature of kettle in addition to the earlier label which was objected to by the plaintiff and pursuance thereof, MOU came to be executed. It is also admitted facts that plaintiff has not filed a suit challenging the trademark "PANCHRATNA" of the defendant. The dispute is regarding the use of label having similar colour combination getup, and arrangement of artistic work. It also reveals from the impugned order of the Trial Court that the Trial Court has rejected the application on the ground that (I) the Plaint is not signed by the plaintiff no.1; (ii) plaintiff no.2 has no right to file suit for infringement of trademark as well as of copyright as there is absence of any agreement to that effect and (iii) there is no much similarity between the two labels and the plaintiff cannot claim any monopoly over the saffron/ orange colour. At the same time, the Trial Court has observed that the MOU entered into between the parties is not in any way breach the provisions of Section 27 of the Contract Act. It also appears that while passing the impugned order, the Trial Court has not considered the provisions of the Page 74 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 Copyright Act, nor considered the terms and conditions of the MOU.
15. Now, so far as the discussion regarding the non signing of the plaint on behalf of plaintiff no.1, which is agitated by the defendant and even the Trial Court has placed much emphasis on this issue, is concerned, it is now admitted position that during the pendency of this appeal, the defect has been cured by the plaintiff after obtaining necessary permission from the Trial Court. This fact is not disputed by the defendant. Therefore, this technical point of non signing of the plaint by the plaintiff no.1 and consequently no right to sue for infringement of trademark and label is available to the plaintiff no.2 pales into insignificance and does not survive.
16. It also reveals from the records that in response to the legal notice, issued by the plaintiff prior notice, the defendant has sent reply wherein he has categorically stated that its company has just started to sell products dated 01.06.2020. It also appears that thereafter the MOU has came to be executed between the parties. The said MOU contains the following terms and conditions which contains clause 3 thereof:-
"3(a) The party of the First Part cease and stop using the mark PANCHRATNA with existing label which is annexed as Annexure-"B" and undertakes not to print, Page 75 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 publish and use the same or similar or identical and/ or deceptively similar label henceforth.
(b) It is also agreed between both the parties that the party of the First Part will desist from selling, marketing and advertising their produce with the said label as per Annexure-"B" and also agreed not to print, publish and advertise any label or art work which may identical and/ or deceptively similar to the label of Wagh Bakri of the party of the Second Part, as per Annexure- "A" and thereby undertakes not to breach or infringe rights of the party of the Second Part in any way."
17. Now, both the sides have relied upon various provisions of the Trademark Act which includes, "mark", "permitted use" and "Trademark". The term mark is defined as under in Section 2(m) of the Trademark Act, 1999;
"2(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
At the same time, the term "permitted use" is defined in Section 2(r) as under:-
"2(r) "permitted use", in relation to a registered trade mark,means the use of trade mark--Page 76 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
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(i) by a registered user of the trade mark in relation to goods or services--
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) for which he is registered as registered user; and
(d) which complies with any conditions or limitations to which the registration of registered user is subject; or
(ii) by a person other than the registered proprietor and registered user in relation to goods or services--
(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) by consent of such registered proprietor in a written agreement; and
(d) which complies with any conditions or limitations to which such user is subject and to which the registration of the trade mark is subject;"
The term "Trademark" is defined in Section 2(zb) as under:-
"2(zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and:-
(i) in relation to Chapter XII (other than section Page 77 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022
107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietoror by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;"
18. Considering the aforesaid provisions of the Act, coupled with the pleadings of the parties, there is no dispute as to individual trademark i.e. Wagh Bakri and Panchratna. It also appears from the record that plaintiff no.1 has granted license to the plaintiff no.2 to use its trademark and agreement to that effect has been produced on record. Therefore, the plaintiff no.2 as a registered and permitted user can maintain suit against any person infringing the trademark.
19. Now, in the present case, considering the pleadings of the parties, the dispute is regarding the label of both the parties. According to the plaintiff the get up of its label having colour combination and arrangement of artistic work is associated with its trademark and the same is Page 78 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 registered in the copyright under the provisions of the Copyright Act. The same has been denied by the defendant and according to the defendant there cannot be any monopoly over the colour combination. The defendant has relied upon Section 10 of the Trademark Act, which reads as under:-
"Section 10. Limitation as to colour.--
(1) A trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.
(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours."
20. The provisions of Section 10 clearly indicates that a trademark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the Tribunal having to decide on the distinctive character of the Trademark. It also provides that so far as the trademark is registered without limitation of colour, it shall be deemed to be registered for all colours. Thus, when there is no limitation attached regarding colours then, the trademark would be considered to be registered for all colours.
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21. Both the sides have also relied upon Section 28 and 29 of the Trademark Act which provides as under:-
"28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
29. Infringement of registered trademarks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or Page 80 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which Page 81 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name,of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
Page 82 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
22. Now, it is admitted position that the registration of trademark provides the owner thereof the exclusive right to the use of trademark. As per Section 29 of the Trademark Act, the provision has been made regarding right to take action of infringement of registered trademark against the infringer. Both the parties have accepted this legal position. However, it is admitted facts in this case that the plaintiff is not challenging the trademark of the defendant being Panchratna. The only dispute is regarding the use of label by the defendant having similar or identical or deceptively similar colour combination getup and arrangement.
23. Now, it reveals from the material placed on record that the plaintiff has also got registered the artistic work of label under the provisions of the Copyright Act. Since, Page 83 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 the plaintiff has got copyright of the artistic work with the colour combination and getup it has every right to prevent anybody else from using the same artistic work, colour combination and getup. It is immaterial as to when the said copyright is acquired by the person concerned. At this juncture, it is worthwhile to refer provisions of Section 48, 51 and 55 of the Copyright Act which runs as follows:-
"48. The Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts therefrom, certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without further proof or production of the original.
51. Copyright in a work shall be deemed to be infringed
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act--
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or 1[(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an Page 84 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 infringement of copyright; or]
(b) when any person--
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports 2*** into India, any infringing copies of the work:
3[Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.] Explanation.-- For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy".
"55. Civil remedies for infringement of copyright.
(1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right:
Provided that if the defendant proves that at the date of the infringement he was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunction in respect of the infringement and a decree for the whole or part of the profits made by the defendant by the sale of the infringing copies as the court may in the circumstances deem reasonable.Page 85 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022
C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 (2) Where, in the case of a literary, dramatic, musical or artistic work, 1[or, subject to the provisions of sub-section (3) of section 13, a cinematograph film or sound recording, a name purporting to be that of the author, or the publisher, as the case may be, of that work, appears] on copies of the work as published, or, in the case of an artistic work, appeared on the work when it was made, the person whose name so appears or appeared shall, in any proceeding in respect of infringement of copyright in such work, be presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the infringement of copyright shall be in the discretion of the court."
24. Thus, considering the aforesaid provisions of the Copyright Act, coupled with the material placed on record, it prima facie appears that the plaintiff has acquired copyright over the colour combination, getup and arrangement of artistic work. Therefore, this right of the plaintiff needs to be protected. It is pertinent to note that the Trial Court has not considered these material aspects of the case and has swayed with the facts that plaint was not signed by the plaintiff no.1 and the plaintiff no.2 is not a permitted or registered user of the trademark and label in question. However, as observed earlier, the defect of non signing of the plaint by the plaintiff no.1 has been cured which will relate Page 86 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 back from the date of institution of the suit. Hence, the objections raised by the defendant in this regard of defect in signing of the plaint does not survive at all and therefore all the decisions relied on by the defendant on this point has no bearing on the facts of the present case.
25. It is also pertinent to note that the Trial Court has compared the two labels and has opined that there is less similarity. This is the one reason for rejection of the interim injunction application. However, it is pertinent to note that while considering these aspects, the Trial Court has not considered the terms and conditions of the MOU entered into between the parties. It is evident from the terms and conditions of the MOU which are referred to herein above that the defendant has agreed not to use the same or similar or deceptively similar label of the plaintiff on its product and packaging etc. Therefore, when there is an agreement between the parties not to use the same, or similar or deceptively similar label then merely by adding one item in the label, the defendant cannot take shelter on the pretext that his label is different from that of the plaintiff. The question of comparison of two labels would arise in a case where there is no prior agreement between the parties. When the parties consciously make any agreement of non use of same or similar label then the use of same colour combination or getup or arrangement of artistic work would be a ground for the person, whose label has been Page 87 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 used by the other party to the agreement, to get injunction against such other party. Even to give sanctity to the MOU between the parties, the other side who has tried to use same or similar label having same colour combination, getup or arrangement of artistic work, needs to be prevented from using such same or similar label on its product packaging etc.
26. Considering the aforesaid facts and circumstances of the case, it appears that the plaintiff has prima facie case in his favour and since it is a intellectual property rights, if no injunction is granted in favour of the plaintiff, then there would be irreparable loss likely to be caused to the plaintiff whereas if ultimately the plaintiff fails in suit, then necessary amount of damages can be awarded to the defendant for the loss sustained by it. Further, the balance of convenience would also be in favour of the plaintiff. Hence, considering the well settled principles of granting or refusal of interim injunction and power of the appellate Court in interfering with the discretionary order of the Trial Court, in the present case, it is crystal clear that the order of the Court below is not sustainable in the eyes of law as it has not considered the various legal provisions of the Copyright Act as well as Trademark Act and not considered the MOU and the other materials placed on record. Therefore, this Court is of the considered opinion that the impugned order of the Court below is liable to be set aside and the interim injunction as prayed for by the plaintiff is liable to be Page 88 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022 C/AO/9/2022 CAV JUDGMENT DATED: 22/12/2022 granted against the defendant.
27. In view of the above discussions, the present Appeal From Order is hereby allowed. The impugned order below exhibit 6 and 7 in Regular Civil Suit No.990 of 2021 passed on 06.12.2021 by the learned Chamber Judge, Court no.28, City Civil Court, Ahmedabad is hereby quashed and set aside. There would be interim injunction against the defendant in terms of para 88 (A) (B)(C) of the interim injunction application at exhibit 6 and 7 of the suit till the final disposal of the suit.
28. In view of the order passed in the main matter, Civil Application stands disposed of accordingly.
No order as to costs. Direct service is permitted.
Sd/-
(DR. A. P. THAKER, J) FURTHER ORDER At this stage, learned advocate for the respondent prays to stay the operation of this order for two weeks from today, the same is objected by the learned advocate appearing for the other side.
In view of the observations made by this Court in the order, the prayer made by the learned advocate for the respondent is declined. Sd/-
(DR. A. P. THAKER, J) URIL RANA Page 89 of 89 Downloaded on : Sat Dec 24 04:38:58 IST 2022