Gujarat High Court
Jivraj Tea Limited vs Dayalji Vanravan Kotecha on 23 December, 2022
Author: A. P. Thaker
Bench: A. P. Thaker
C/AO/145/2019 ORDER DATED: 23/12/2022
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 145 of 2019
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2019
In R/APPEAL FROM ORDER NO. 145 of 2019
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JIVRAJ TEA LIMITED
Versus
DAYALJI VANRAVAN KOTECHA
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Appearance:
MR YJ TRIVEDI(948) for the Appellant(s) No. 1
MR AKSHAY A VAKIL(5473) for the Respondent(s) No. 1
NOTICE SERVED for the Respondent(s) No. 2
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CORAM:HONOURABLE DR. JUSTICE A. P. THAKER
Date : 23/12/2022
ORAL ORDER
1. Being aggrieved by the order dated 12.2.2019 passed below Exhs-5 and 10 in Trade Mark Suit No. 8 of 2018 by the 10th Additional District Judge, Surat, the original plaintiff has preferred the present Appeal from Order under Order 43 Rule 1(r) of the Code of Civil Procedure.
2. The appellant is the original plaintiff and respondents are the original defendants. For the brevity and convenience, the parties are referred to in this order, as per their status before the trail Court.
3. The plaintiff has filed the suit for injunction and Account of profits against infringement and passing Page 1 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 off in respect of the trademark of the plaintiff by the defendants. It is the case of the plaintiff that plaintiff's trademark JIVRAJ-9 more particularly numbering 9 of the plaintiff has acquired distinct and high reputation and goodwill and the plaintiff is having statutory protection by various registered trademarks. That the defendants recently adopted the mark containing the words '9' despite of the sufficient knowledge that the plaintiff is in market since around 1970 with the mark and device of number '9'. That, the defendant has adopted DOUBLE HAATHI PREMIUM TEA NO.9 and thereby substantially highlighting the numerical 9 on front fascia and backfascia of the label which is identical to one of the essential features of the plaintiff's registered trademark and thereby committed infringement of trademark of the plaintiff. That by misuse of identical and / or deceptively similar trademark, the defendant is committing act of infringement and passing off. On the aforesaid basis, the plaintiff filed the aforesaid Suit. Along with the plaint, the plaintiff has moved an application for interim injunction.
4. The defendant has resisted the same and has also filed an application under Order 7 Rule 11. The defendant has contended that the label of the Page 2 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 defendant is entirely different that of plaintiff and the entire colour scheme and the mark and other materials placed in the label are different from that of the plaintiff's label. It is also contended that merely use of number 9 cannot be protected and is not a subject matter of separate registration and, therefore, the plaintiff cannot claim exclusive right over the number 9. It is also contended that the trademark of the plaintiff is registered subject to the restriction provided under the Trade Marks Act, 1999. It is also contended that as there is no iota of similarity between the trademark of the plaintiff and the defendants, the suit of the plaintiff is liable to be rejected.
4.1 It is further contended that the plaintiff is selling Tea under the label of "JIVRAJ-9", while the defendant is selling its Tea under the label of "DOUBLE HAATHI"
Tea. It is contended that, however, under the said label, Premium Tea No.9 has been mentioned over which the plaintiff has objection. According to the defendant, the Section 9 of the Trade Marks Act bars the registration of the non-distinctive trademark and as such No.9 is not the subject matter - registration of the trademark. It is prayed by the defendant to reject the interim injunction application. The defendant has also filed an application under Order 7 Page 3 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 Rule 11 for rejection of the plaint on the ground that the plaint does not disclose cause of action which is exhibited at Exh-10.
5. The learned trial Court has heard both the applications i.e. application at Exh-5 for interim injunction as filed by the plaintiff and application at Exh-10 for rejection of the plaint, as filed by the defendants. The learned trial Court has rejected both the applications. Against the rejection of prayer for interim injunction, the application at Exh-5, the plaintiff has preferred the present Appeal from Order.
6. Heard learned advocate Mr. Chirag Bhatt with learned advocate Anay Amin for learned advocate Mr. Y.J. Trivedi for the plaintiff-appellant and learned advocate Mr. Akshay Vakil for the respondent No.1- defendant No.1. Though served, none has appeared for respondent/defendant No.2.
7. Learned advocate for the appellant- plaintiff has vehemently submitted the same facts which are narrated in the memo of appeal as well as pleadings of the parties before the trial Court. He has submitted that plaintiff is a registered owner of the trademark which includes numerical 9 for its Tea products. He has submitted that "No. 9" is separately registered in the name of the plaintiff. He has referred to the list Page 4 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 enumerated in Para-26 of the Memo of Petition in this regard. He has also referred to the application moved by the plaintiff for registration of numerical 9 as trademark and has submitted that numerical 9 is also registered trademark of the plaintiff. While referring to the Section 28, 29 and 135 of the Trade Marks Act, learned advocate has submitted that the plaintiff being registered owner of the trademark, which includes numerical 9, is entitled to protect it and initiate action for infringement and passing off thereof against the wrong doer. He has also submitted that admittedly, defendant has used numerical 9 in his label / trademark, the defendant has committed breach of the provisions of the Trade Marks Act and, therefore, the plaintiff is entitled to interim injunction against the defendants. He has submitted that there is no disclaimer by the plaintiff qua "No.9". He has submitted that the learned trial Court has not considered the facts and circumstances of the case and has also lost sight of the legal principle applicable in respect of the infringement action and passing off action. He has submitted that the trial Court has also not considered the decisions relied upon by the plaintiff properly and has ignored the same. He has submitted that the impugned order of the trial Court rejecting the prayer for ad-interim injunction is arbitrary, perverse and capricious one Page 5 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 and, therefore, this Court, as an Appellate Court, though having limited jurisdiction, has power to set it aside and grant interim injunction in favour of the plaintiff and against the defendant. He has prayed to allow the present Appeal from Order. He has relied upon the following decisions in support of his submissions:
1. Pidilite Industries Ltd. V. Poma - Ex Products, reported in 2017 (72) PTC (Bom);
2. Laxmikant V. Patel v. Chetanbhai Shah, reported in 2002 (3) SCC 65;
3. Parle Products P. Ltd. V. J.P. & Co. Mysore, reported in AIR 1972 SC 1359;
4. Taw Manufacturing Coy. Ltd. V. Notek Engineering Coy. Ltd. & Another, reported in 1951 (13) RPC 271;
5. Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya, reported in PTC (Suppl) (1) 153 (Del) (DB);
6. Hindustan Lever Ltd. V. Nirma Pvt. Ltd., reported in AIR 1992 Bom 195;Page 6 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022
C/AO/145/2019 ORDER DATED: 23/12/2022
7. Order dated 16.6.2010 passed by this Court in Appeal from Order No. 155 of 2010 in the case of Ashani Products Pvt. Ltd. V. Jivraj Tea Ltd.,
8. Skol Breweries Ltd. V. Som Distilleries and Breweries Ltd. & Anr., reported in 2012 (49) PTC 23 (Bom);
9. Skol Breweries Ltd. V. Fortune Alcobrew Pvt. Ltd and Ors, reported in 2012 (50) 413 Bombay;
10. Order dated 4.8.2015 passed by this Court in Appeal from Order No. 116 of 2015 in the case of Gujarat Tea Depot and Another v. Bhagram Krupaji Ghanchi;
11. Vikram Stores and Anr. V. S.N. Perfumerry Works and Another, reported in 2009 (39) PTC 91 (Guj);
12. M/s. Bengal Waterproof Ltd. V. M/s.Bombay Waterproof Manufacturing Company and Another, reported in AIR 1997 SC 1398;
13. Shaw Wallace and Company Ltd. And Anr. V. Superior Industries Ltd., reported in 2003 (27) PTC 63 (Delhi)
14. SABMiller India Ltd. V. Jagpin Breweries Ltd., reported in 2014 (58) 556 (Bom) Page 7 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022
15. Hindustan Pencils Ltd. V. Dharampal Jain & Sons, reported in 2005 (118) DLT 44;
16. M/s. Anglo-Dutch Paint, Colour & Varnish Works Pvt. Ltd. V. M/s. India Trading House, reported in AIR 77 Delhi 41;
17. Badli Ram Sharma, Proprietor A.B.S.Bidi Company v. Mangalore Ganesh Bidi Works, reported in 2010 (43) PTC 103 (All);
18. Shaw Wallace & Co. Ltd and Anr. V. Mohan Rocky Spring Water Breweries Ltd., reported in 2006 (33) PTC 180 (Bom)
19. Judgment dated 2.7.2012 passed by DelhiHigh Court in IA No. 6255 /2012 in CS (OS) No. 906/2012, in the case of Dabur India Ltd. V . Shree Baidyanath Ayurveda Bhavan Pvt. Ltd.;
20. Needle Industries (India) Pvt. Ltd. V. Virmual Praveen Kumar reported 2020 (81) PTC 379 (Del);
21. Judgment dated 1.3.2021 passed by this Court in AO No. 2/2021, in the case of Vimal Dairy Ltd. V. Gujarat Tea Depot Comany Ltd.,
22. Hindustan Pencils Pvt. Ltd. V. India Stationeries Page 8 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 Products Company and Anr., reported in 1989 (9) PTC 61 (Del);
23. Hindustan Lever Ltd. V. Bombay Soda Factor, reported in AIR 1964 Mysore 173;
8. Per contra, learned advocate Mr. Vakil for the defendant No.1 has vehemently submitted that the plaintiff has raised the use of numerical 9. Learned advocate has, while referring to the Para-2.6 of the Appeal Memo, has submitted that except No.3, all others are label marks. He has submitted that this fact was not made in the plaint and the said issue was not in the trial Court. He has also submitted that there is no pleadings in respect of numerical 9 being becoming registered trademark of the Plaintiff. He has submitted that the present appeal, new facts have been introduced by the plaintiff, which were not available to the trial Court and, therefore, the matter may be remanded back to the trial Court.
8.1 He has also submitted that the marks which are enumerated in the Memo of Appeal are all label marks. He has also submitted that the entire trademarks need to be read as a whole. He has also submitted that the trademarks containing various materials would be subject to the conditions enumerated in Section 17 of the Trade Marks Act. He Page 9 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 has also submitted that there cannot be pick & chose of numerical 9 from other parts of the label marks. He has submitted that Suit itself is not maintainable under Section 17 of the Act.
8.2 He has further submitted that the right of the registered trademark owner as provided under Section 28 and 29 of the Act is subject to the provisions of Section 30 of the Trade Marks Act. According to him, Section 30 puts limits on the rights of the registered trademark owner. He has submitted that by mere using "No.9" by the defendant with its products, does not likely to create confusion. He has submitted that numerical 9 is used for the purpose of grading only and not as a trademark.
8.3 He has also submitted that in an action for passing off, there must be prior establishment of reputation and goodwill. He has submitted that unless and until it is proved that the goods of the concerned person has acquired reputation and goodwill in the market, no passing off action could be initiated. He has also submitted that in the present case, there is no prima- facie evidence in this regard. He has submitted that there is no separate trademark in the form of numerical 9. He has submitted that the plaintiff's entire trademark is "Jivraj" with 9. He has also submitted that the nature of right claimed by the Page 10 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 plaintiff is unclear. He has submitted that the learned trial Court has taken into consideration all the aspects and materials placed before it and has properly passed the impugned order rejecting the interim injunction application. He has submitted that being a discretionary order, passed by the trial Court, this Court as an Appellate Court, has limited jurisdiction to interfere with the same. He has submitted that unless and until it is shown that the order of the trial Court is arbitrary, perverse or capricious one, the appellate Court cannot interfere with the same even if second view of the matter is possible. He has prayed to dismiss the present Appeal from Order.
8.4 Regarding the decisions relied on by the plaintiff's side, learned advocate Mr. Vakil has submitted that the facts of those case are different from the present one and, therefore, those decisions are not applicable to the present matter. He has relied upon the following decisions:
1. Skyline Education Institute (Pvt.) Ltd. V. S.L. Vaswani and Another, reported in AIR 2010 SC 3221;
9. In rejoinder, learned advocate for the plaintiff has submitted that the trail Court has already taken on Page 11 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 record all the documents produced in this matter and the defendant has not raised any objection thereof. He has submitted that the injunction was sought in respect of all label enumerated in Para-2.6 of the Appeal Memo. He has also submitted that use of Number 9 is protected by various orders and there is only disclaimer condition in label mark. He has submitted that the other labels have no such disclaimer or conditions. He has also submitted that the creator of Number 9 is the plaintiff and plaintiff is the owner thereof. He has submitted that the defendant has not offered any reasons as to why "No. 9" is used by the defendant on his products. He has submitted that the learned Trial Court has not considered the documentary evidence on record and has committed mistake of law and, therefore, the impugned order of the trial Court is arbitrary, perverse and capricious. He has submitted that, therefore, this Court has jurisdiction to interfere with the same. He has further relied upon the following decisions:
1) Pidilite Industries Ltd. V. S.M. Associates and Others, reported in 2004 (28) 193 (Bom);
10. It is well settled principles of law that in an Appeal against exercise of 'discretion' by the Court of first Page 12 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 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 appellant 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. In the case of Wander Ltd. V. Antox India P. Ltd, (Supra) wherein it has been adumbrated that the Appellate Court ought not to "re-assess the material and seek to reach a conclusion different from the one reached by the Court below if the one reached by that 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. 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 Page 13 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 different view, may not justify interference with the trial Court's exercise of discretion".
11. In view of the above settled principles of law, power of this Court, as an Appellate Court, to interfere with the order passed by the trial Court is very limited and only in exceptional circumstances, the Appellate Court can interfere with the discretionary order passed by the trial Court. The Appellate Court cannot re-evaluate the entire evidence and arrive at a conclusion contrary to the conclusion arrived at by the trial Court. However, in case where the order passed by the trial Court is found to be invalid, illegal, arbitrary, perverse or contrary to the settled principles of law, the Appellate Court has all powers to interfere with the same. Considering the above principles of law, this Court has only to see as to whether the trial Court has committed any error in passing the impugned order. It has also to see whether the main basic principles of law namely, prima-facie case, balance of convenience and irreparable loss are satisfied or not in passing the order.
12. Keeping in mind the aforesaid principles of law along with the submissions made on behalf of both the sides, coupled with the pleadings of the parties and Page 14 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 material placed on record and the decisions cited at bar, it appears that there is no dispute regarding the fact that both the parties are dealing with the same Food Products. It is also an admitted fact that the class of the consumer and the market of the goods are the same.
13. It appears from the record that plaintiff-appellant has made additional averment in his memo of appeal, which were not pleaded before the trial Court. Not only that, but the plaintiff has produced additional documentary evidence in this Appeal, which were not produced before the trial Court at the time of hearing of the interim injunction application. Therefore, it clearly appears that the trial Court had no occasion to offer its observation or to consider the same. Under these circumstances, when the plaintiff is now relying upon additional pleadings and additional documents to substantiate his right to get interim injunction against the defendant, there is no any prior decision on those pleadings and additional documents of the trial Court. In the considered opinion of this Court, if the additional pleadings and additional documents as produced by the plaintiff in this Appeal are discarded, then it might affect the rights of the plaintiff. At the same time, if additional pleadings and additional documents as produced by Page 15 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 the plaintiff in this Appeal are considered as it is, then, any observation in respect thereof would be without any reasoning or observation of the trial Court who has no opportunity to deal with such additional pleadings and documents. Therefore, the submissions made by the learned advocate Mr. Vakil for the defendant No.1 that the matter be remanded back to the trial Court to decide afresh on the aspects of granting or refusing the interim injunction application at Exh-5, is just and proper, in the facts and circumstances of the present case. At the same time, this Court thinks it fit not to express any prima- facie opinion regarding the submissions made by both the sides on merits and on legal aspects.
14. In view of the above, the present matter is required to be remanded back to the learned trial Court to decide the interim injunction application Exh-5 afresh by taking into consideration all the factors, including pleadings and the additional documents. Therefore, at this stage the impugned order passed by the learned trial Court below Exh-5 needs to be set-aside.
15. In view of the above, if the following order is passed, it will meet the ends of justice:
The impugned order dated 12.2.2019 passed below Exh-5 in Trade Mark Suit No. 8 of 2018 by the Page 16 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022 C/AO/145/2019 ORDER DATED: 23/12/2022 10th Additional District Judge, Surat rejecting the interim injunction application is hereby set-aside. The trial Court is hereby directed to decide Exh-5, after affording opportunity of being heard to both the sides and after taking into account all the factors including pleadings as well as additional documents as produced by the parties, afresh. The learned trial Court is also directed to complete such exercise within a period of eight weeks from the date of receipt of copy of this order. Parties are directed to cooperate with the trial Court for earlier disposal of Exh-5, as above.
No order as to costs.
Civil Application stands disposed of accordingly.
(DR. A. P. THAKER, J) SAJ GEORGE Page 17 of 17 Downloaded on : Sat Dec 24 04:48:55 IST 2022