Gujarat High Court
Nirmalkumar Maheshkumar Shah vs Santosh Kailashprasad Shah on 16 February, 2024
Author: Nirzar S. Desai
Bench: Nirzar S. Desai
NEUTRAL CITATION
C/AO/135/2023 ORDER DATED: 16/02/2024
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 135 of 2023
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NIRMALKUMAR MAHESHKUMAR SHAH
Versus
SANTOSH KAILASHPRASAD SHAH
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Appearance:
PRANAV D THAKKAR(8501) for the Appellant(s) No. 1
VIJAYKUMAR B LIMBACHIYA(8763) for the Appellant(s)
No. 1
KAMAL J UPADHYAYA(7469) for the Respondent(s) No. 1
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CORAM:HONOURABLE MR. JUSTICE NIRZAR S. DESAI
Date : 16/02/2024
ORAL ORDER
1. By way of this Appeal from Order, the appellant has challenged the order dated 15.4.2023 passed by the learned 3rd Additional District Judge, Kheda at Nadiad dated 15.4.2023 in Trade Mark Suit No.1 of 2021.
2. By the impugned order the interim application below Exh.5 preferred by the present respondent
- original plaintiff was partly allowed and the prayers sought by the original plaintiff in Exh.5 application from A to D were granted. The Page 1 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined relief granted by the Trial Court from the prayer A to D reads as under :-
"A. Till the pendency and final disposal of the suit, the defendant, their family, successors, servants, agents, dealers, stockiest and distributors be restrained by an order of ad-interim and temporary injunction from manufacturing, marketing, advertising and selling and/or offer for sale their products and/or services under the impugned mark OLD ASLI BIHARI SAMOSA in any manner and/or any other trademark which may be similar to the plaintiff's trademark BIHARI SAMOSA CENTRE.
B. The defendant, their family, successors, servants, agents, dealers, stockiest and distributors be restrained till final hearing and disposal of the suit from providing their goods/products/services under the mark OLD ASSLI BIHARI SAMOSA and/or such other mark being identically, phonetically and/or confusingly and/or deceptively similar to the plaintiff's trademark BIHARI SAMOSA CENTRE and be further restrained from committing the act of passing off the plaintiff's products and services under the impugned Trademark ad may further be restrained from claiming any rights, titles or interest in the said Trademark OLD ASLI BIHARI SAMOSA in any manner.
C. The Hon'ble Court may further be pleased to restrain the defendant from causing interference and obstruction in any way, interfering with the sale, marketing, offer for sale in any manner, which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally Page 2 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined awarded by this Hon'ble court to the Plaintiff.
D. For ad-interim and interim relief of prayer (C), this Hon'ble Court be pleased to appoint the Court Receiver or such other person as this Hon'ble Court may deem fit and proper, with all powers under Order XL of the Code of Civil Procedure, 1908, to forcibly enter/visit any premises of the defendant at any time of the day or night, on any day, including on Sundays and holidays, without prior notice, with police help, if so required, ad for that purpose to break open any lock or latch or door and to search, collect, seize, destroy, erase and/or store any goods, stationery, letterheads, signage, reprographic material, packing, signboard, hoaardings, labels and/or other material for advertising, selling or marketing any goods and/or other material featuring or bearing the trademark OLD ASLI BIHARI SAMOSA."
3. Heard learned advocate Mr. Vijaykumar B. Limbachiya appearing for the appellant - Original Defendant and learned advocate Mr. Kamal J. Upadhyaya appearing for the respondent
- Original Plaintiff.
4. Brief facts during rise to the filing of the present Appeal from Order can be stated as under
:-
5. The case of the plaintiff before the trial is as Page 3 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined under :-
5.2 The plaintiff is the sole proprietorship concern, inter alia engaged in the business of preparing, marketing and selling of ready to eat samosa, dahi vada and other fast food items under the trademark Bihari Samosa Centre, since very long. Since 1968, father of the plaintiff namely Kailashprasad Kishanlal Shah migrated from Bihar to Gujarat and started selling bihari style samosa and due to unique taste of samosa and bihari language Mr. Kailashprasad's customers stated recognizing him as Bihari Samosa Wala. In the year 1980, the father of the plaintiff shifted his samosa stall from Santram Chowk to Malai Talav and starded earning huge goodwill and reputation under the trademark Bihari Samosa Centre. The business stated growing and therefore, the brothers also joined the business of father and they came to know about the trade secretes of how to prepare samosa and other fast food. As the business grew Page 4 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined by way of mutual understanding between brothers, they also started selling samosa under the trademark of Bihari Samosa Centre in different area and locality of the State. Upon death of Kailashprasad in the year 2019, son of Kailashprasad continued the business. In the meantime, the plaintiff had filed a trademark application on 19.4.2014, claiming its uses since 5.5.1972. However, due to the oversight of the agent of the plaintiff, the aforesaid trademark was refused by the Registry of Trademark Registration and therefore, the plaintiff has preferred an application once again on 1.2.2021, claiming the above trademark of Bihari Samosa Centre.
5.2 It is the case of the plaintiff before the trial Court that the defendant is also engaged in the business of preparing, marketing and selling of samosa under an identically trademark of Old Asli Bihari Samosa and thereby he is deliberately cheating the public at large Page 5 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined by passing off their goods/services as that of the plaintiff.
6. Therefore, being aggrieved by the aforesaid action of the defendants, Trademark Suit No.1 of 2021 was preferred by the original plaintiff -
respondent herein.
7. Upon issuance of notice, the defendant - present appellant had appeared before the trial Court and took a stand that the father of the defendant and father of the plaintiff happens to be cousin brothers and they were selling the samosa jointly. It was the father of the defendant who had expertise in the preparation of samosa and father of the plaintiff was only looking after accounts. It is also case of the defendant that the defendant's father was the original person who was preparing, making and selling the samosa and in fact it was his shop which was established in the year 1972 and therefore, the suit preferred by the plaintiff is misconceived and therefore, the same was Page 6 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined required to be dismissed.
8. In the aforesaid suit, application Exh.5 was preferred by the plaintiff wherein multiple prayers were prayed but only the prayers which are granted by way of an interim order dated 15.4.2023 is reproduced herein above.
9. Heard learned advocate Mr. Vijay Limbachiya appearing for the appellant who made only one legal submission and submitted that while considering the application for injunction at Exh.5 stage, the trial Court was required to consider three parameters namely prima-facie case, balance of convenience and irreparable loss. However, in the instance case, though the trial Court has considered the case on merit, there are no clear findings about prima-facie case, balance of convenience or irreparable loss.
10. Learned advocate Mr. Vijay Limbachiya further submitted that the trial Court has also overlooked the vital aspect of suppression of Page 7 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined material fact that the present plaintiff and defendant happens to be cousin brothers and they started business of samosa jointly and hence, it is a family dispute.
11. Learned advocate Mr. Vijay Limbachiya relied upon two judgments, one in case of Brajendra Versus Kashibai reported in 1945 The Indian Law Reports Vol. XXIV Page No. 656 and submitted that temporary injunction can only be grated where award of compensation and damages will not be a full and complete remedy to the person applying for the same.
12. Learned advocate Mr. Vijay Limbachiya submitted that in the instant case the order restraining the present appellant was uncalled for and the petitioner's grievance if the petitioner succeeds in the suit ultimately could have been redressed by awarding necessary compensation.
13. Learned advocate Mr. Vijay Limbachiya thereafter relied upon a judgment of Delhi High Page 8 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined Court in case of Shri Ram Education Trust Versus SRF Foundation and Another reported in 2016 SCC Online Delhi 472 and submitted that this being a family business considering the fact that the father of the plaintiff and defendant were cousins, both the parties had right to carry on same business using the same name. Except above submissions, no other submissions were made by learned advocate Mr. Vijay Limbachiya.
14. On the other hand, learned advocate Mr. Kamal Upadhyay appearing for the present respondent - original plaintiff while defending the order under challenge submitted that the aforesaid order has been passed by considering the merit of the matter. He submitted that while passing the impugned order, the learned trial Court has taken into consideration the documentary evidence like photocopy of the certificate given by Nadiad Nagar Palika at Mark 3/1 as well as the case of the plaintiff was considered on the basis of relevant documents such as photographs of establishment of shop, Page 9 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined handwritten notes of father of the plaintiff as well as establishment of the shop at Ahmedabad. He further submitted that the trial Court has considered that the plaintiff had been able to prove that he is in lawful possession, that the plaintiff is using the aforesaid trademark of Bihari Samosa Wala Centre. He further pointed out from the observation made in paragraph No.9 of the impugned judgment that the appellant is factually incorrect while stating that the trial Court has not considered the vital aspects of prima-facie case and balance of convenience as there is clear observation about the same in paragraph No.9 of the judgment and therefore, the impugned order is rightly passed.
15. Further, learned advocate Mr. Upadhyay pointed out from the document produced by the present appellant himself which were part of pleadings before the trial Court that while making an application for registration through advocate, the defendant had categorically stated Page 10 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined in its forwarding letter to the application dated 15.4.2023 that applicant is using mark "OLD ASLI BIHARI SAMOSA" from APPLICATION DATE and because of long use and quality products it acquired a goodwill.
16. Learned advocate Mr. Upadhyay emphasized on the word Application Date and submitted that the aforesaid application made by the applicant's advocate itself makes it clear that the defendant had started using trademark Old Asli Bihari Samosa from the date of application i.e. 24.3.2021 and therefore, claim of the present appellant has rightly not been believed by the trial Court, as it is a clear admission on the part of present appellant that he has started using the trademark Old Asli Bihari Samosa only from 24.3.2021. Even according to learned advocate Mr. Vijay Limbachiya though the aforesaid application was made, the same has been withdrawn by the defendant at present and therefore, as on today there is no application by the defendant- present appellant pending for Page 11 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined registration of trademark.
17. Though learned advocate Mr. Vijay Limbachiya tried to justify the withdrawal of his application by stating it to be a mistake on the part of his advocate, fact remains that today, there is no application for registration of trademark of the present appellant pending before the Trademark Registry and the only application that was made by the present applicant he started using the trademark only from the date of application that is 24.3.2021.
18. By making the above submissions, learned advocate Mr. Upadhyay prayed for dismissal of present Appeal from Order.
19. I have heard learned advocates appearing for the respective parties and perused the record. On perusal of the record, I have found that the first contention of learned advocate Mr. Vijay Limbachiya that the trial Court has not considered the vital aspect of prima-facie case and balance of convenience as well as Page 12 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined irreparable loss to be misconceived, in fact there is a clear finding that prima-facie case and balance of convenience lies in favour of the original plaintiff - present defendant. Though there is no findings about the irreparable loss but considering the fact that this is a trademark suit wherein at least the plaintiff had preferred an application for registration of trademark which is pending since 2021 whereas no such application for registration of trademark is pending at present by the defendant. Therefore, today at least the petitioner's claim in respect of the aforesaid trademark still stands.
20. I have also considered the judgment cited by learned advocate Mr. Vijay Limbachiya in the judgment in case of Brajendra (Supra), wherein a view is taken that temporary injunction can only be granted where award of compensation and damages will not be a full and complete remedy. As far as the aforesaid judgment is concerned, Page 13 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined considering the fact that the question about any compensation or damages would be based on evidence and the said aspect can be considered only at the time when suit is finally adjudicated, what is under challenged is an interim application and considering the fact that today the defendant's application for registration of trademark has already been withdrawn and no application is pending before the Trademark Registry, whereas at least the petitioner succeeded in producing at least some documentary evidence and also considering the fact that the petitioner's application for registration of trademark is still pending before the registry of trademark, at this juncture, it would be premature to say anything about who can rightfully use the trademark as claimed by the respective parties but at the same time today at least there is a claim of plaintiff is pending before the trademark registry and the present appellant can always raise objection against the said claim. Its Page 14 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined altogether a separate procedure but fact remains that today there is no claim of the present appellant pending before the trademark registry. In the instant case also the plaintiff has prayed for restraining the present appellant from using the deceptively similar trademark and therefore, prima-facie I am of the view that the trial Court has not committed any error in granting relief in favour of the present plaintiff. As far as other submissions of learned advocate Mr. Vijay Limbachiya about the family dispute and therefore, right to carry on the business by the family members is concerned, at this stage, I do not wish to say anything about the aforesaid contention for the reason that suit is pending at large before the trial Court.
21. Considering the fact that during course of argument, learned advocate Mr. Vijay Limbachiya submitted that at present they are carrying on the business and the appellant has changed the name to Vihari Samosa and as the interim order Page 15 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024 NEUTRAL CITATION C/AO/135/2023 ORDER DATED: 16/02/2024 undefined has already been implemented as well as considering the fact that the impugned order is dated 15.4.2023 and which has been implemented since long, interest of justice would be served, if the trial Court is directed to hear and decide the main suit within a period of six months from today but in any case not later than 30th September, 2024, by keeping all the rights and contentions of both the parties open. Both the parties are directed to co-operate in the trial for speedy conclusion of trial and it is clarified that all the observations made by this Court as well as by the trial Court while passing the impugned order or while confirming the same are tentative in nature and the trial Court may not be influenced by those observations at the time of final adjudication of suit.
22. With the aforesaid observations, and in light of discussion made herein above, present Appeal from Order is dismissed.
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23. In view of dismissal of main appeal from order, connected civil application, if any, is also dismissed.
(NIRZAR S. DESAI,J) Pallavi Page 17 of 17 Downloaded on : Wed Feb 21 20:35:19 IST 2024