Rajasthan High Court - Jodhpur
M/S Aadhar Products Pvt. Ltd vs M/S Lotus Organic Care on 10 November, 2022
Author: Pushpendra Singh Bhati
Bench: Pushpendra Singh Bhati
HIGH COURT OF JUDICATURE FOR RAJASTHAN AT
JODHPUR
S.B. Civil Misc. Appeal No. 3417/2018
M/s Aadhar Products Pvt. Ltd., F-264, F-264A, RIICO Industrial
Area, Gudli, Tehsil Mavli, District Udaipur Through Its Authorized
Representative Navneet Laddna S/o Shri Ramesh Chandra
Laddha, Aged About 24 Years Working As General Manager
(Finance And Accounts), M/s Aadhar Products Pvt. Ltd., F-264, F-
264A, Riico Industrial Area, Gudli, Tehsil Mavli, District Udaipur.
----Appellant
Versus
1. M/s Lotus Organic Care, Plot No. F-419, RIICO Growth
Centre, Bhilwara Through Its Proprietor Shri Harish
Dadhich S/o Shri Govind Lal Dadhich C/o M/s Lotus
Organic Care, Plot No. F-419, Riico Growth Centre,
Bhilwara.
2. Harish Dadhich S/o Shri Govind Lal Dadhich, Proprietor
M/s Lotus Organic Care, Plot No. F-419, RIICO Growth
Centre, Bhilwara.
----Respondents
For Appellant : Mr. M.S. Singhvi, Sr. Adv. &
Dr. Ashok Soni Sr. Adv. Assisted by
Mr. Hemant Dutt
For Respondents : Mr. Vineet Dave
Mr. Divyanshu Choudhary
HON'BLE DR. JUSTICE PUSHPENDRA SINGH BHATI
Judgment Reserved on 03/11/2022 Pronounced on 10/11/2022
1. This Criminal Appeal has been preferred under Order 43 Rule 1 (r) C.P.C. with the following reliefs:-
"It is, therefore, most respectfully prayed on behalf of the appellant/plaintiff that the present Civil Misc. Appeal may kindly be allowed and the impugned order dated 6.10.2018 passed by the learned Additional District Judge No.1, Udaipur Camp Mavli may kindly be set aside and the application for Temporary Injunction filed by the appellant/plaintiff may kindly be allowed and pending final hearing and disposal of the suit respondents/defendants (Downloaded on 11/11/2022 at 08:45:35 PM) (2 of 27) [CMA-3417/2018] may be restrained from selling heir product washing powder by the name of "Delite" and in the similar packaging/pouch as that of the appellant/plaintiff.
Any other appropriate order or direction which this Hon'ble Court deems fit and proper in the facts and circumstances of the present case may kindly be granted in favour of the appellant/plaintiff."
2. Brief facts of the case as placed before this Court by Mr.M.S. Singhvi and Dr. Ashok Soni, learned Senior Counsel assisted by Mr.Hemant Dutt, appearing on behalf of the appellant, are as follows:
2.1 The appellant is a Company registered under the Indian Companies Act, 1956 and is engaged in the manufacturing and marketing of various detergents products, bath soaps, soap sticks, bleaching and laundry products. It is manufacturing the washing powder in the name and style of "Decide" since 03.03.2006. 2.2 The appellant got its product "Decide" registered under the Trade Marks Act, 1999 and the Copyright Act, 1957 in accordance with which, it has acquired the exclusive right of using this trade mark, design, colour combination, artistic work, etc. being its owner.
2.3 The appellant began using the trade mark "Decide" since 03.03.2006 and at the time, no other product of a similar mark was available in the market. The washing powder "Decide" has garnered a goodwill and a reputation in the market. 2.4 The respondent/defendant M/s. Lotus Organic Care and its proprietor Mr. Harish Dadhich started the production and sale of its product, washing/detergent powder "Delite", and on (Downloaded on 11/11/2022 at 08:45:35 PM) (3 of 27) [CMA-3417/2018] 19.06.2012, the appellant served a legal notice to Mr. Harish Dadhich to stop the manufacturing and sale of washing powder in the name of 'Delite' with immediate effect.
2.5 On 11.05.2013, an FIR, bearing No. 132/2013, was lodged at Police Station, Dabok, Udaipur against the respondent no. 2 for the offences under Sections 420 and 482 IPC, Section 65 of the Copyright Act and Section 103 of the Trade Marks Act. The respondent No. 2-Shri Harish Dadhich was carrying on the business of M/s. Lotus Organic Care (which at the time was M/s.
Lotus Organ Corporation, situated at 185, Mewar Industrial Area, Udaipur). On 12.05.2013, the complete machinery of the said proprietorship was seized by the concerned police authorities. Subsequently, respondent no. 2 shifted his place of business from Udaipur to Bhilwara and carried on the same business under the name and style of 'M/s. Lotus Organic Care'.
2.6 On 10.04.2018, the appellant came to know that respondents restarted production of the washing/detergent powder "Delite" from Bhilwara, as a consequence of which the appellant filed a suit for permanent injunction in the Court of District Judge, Udaipur. The respondent filed an application under Order 7 Rule 11 CPC on 11.05.2018, which was rejected by the learned trial Court on 07.07.2018. The respondent then filed a Revision, titled S.B. Civil Revision No. 102/2018, before this Hon'ble Court challenging the aforesaid order of the learned Trial Court, dated 07.07.2018, which came to be dismissed by this Hon'ble Court vide judgment dated 18.07.2018. (Downloaded on 11/11/2022 at 08:45:35 PM)
(4 of 27) [CMA-3417/2018] 2.7 The learned trial Court vide the impugned order dated
06.10.2018 rejected the application for temporary injunction filed by the appellant, with the reasoning that the prayer made in the Civil Suit as well as in the application for temporary injunction was similar. The said order dated 06.10.2018 is under challenge in the present appeal preferred by the applicant/appellant. 2.8 During the pendency of the appeal, the Search Certificate dated 10.10.2018 (Annex.R/5) was issued in favour of the respondent and based on the Search Certificate, the Copyright Registration Certificate dated 29.11.2018 (Annex.R/4) was issued. The said Search Certificate was challenged by the appellant before the Registrar of Trade Marks and the matter was referred to the Deputy Registrar of Trade Marks and the said authority after hearing the representatives of both the parties passed the order dated 25.09.2019 (Annex.A/1) and the search certificate dated 10.10.2018 based on which the Copyright Registration Certificate was issued, was accordingly cancelled.
3. The appellant assails the order impugned, dated 06.10.2018, passed by the learned Court below on the following grounds:-
3.1 Despite a prima facie case of infringement having been made out, the learned Trial Court erred grossly in denying the grant of a temporary injunction in favour of the appellant. 3.2 In the matters of infringement of trade mark and copyright, in application for temporary injunction, even though the temporary injunction prayed for amounts to grant of final relief, the same can be granted, where a prima facie case is made out. (Downloaded on 11/11/2022 at 08:45:35 PM)
(5 of 27) [CMA-3417/2018] 3.3 There was no delay in instituting the suit for injunction by the appellant, and that the mere pendency of appeal would not affect the right of the appellant, for consideration of grant of temporary injunction, as the appellant is facing continuous and irreparable injury.
3.4 The balance of convenience lies in favour of the appellant. It is an admitted fact that the appellant is registered under the Trade Marks Act as well as the Copyrights Act, whereas the respondent-
Company is not.
4. Learned Senior Counsel fortified the above made submissions, by placing reliance on the following judgments:-
4.1 Drawing this Court's attention to the judgments rendered by the Hon'ble Apex Court in the cases of N.R. Dongre and Ors. v.
Whirlpool Corpn. and Anr. (1996) 5 SCC 714, Tube Investments of India Ltd. v. Trade Industries, Rajasthan (1997) 6 SCC 35, and Laxmikant V. Patel Vs. Chetanbhai Shah and Anr. 2002 (3) SCC 65, it was submitted that although a temporary injunction has been prayed for, which may amount to final relief, the same may be granted, where a prima facie case of infringement is found to be made out.
4.2 It was further submitted that even in cases wherein the learned Trial Court and the Hon'ble High Court did not grant a temporary injunction, the Hon'ble Apex Court, looking into the factual matrix of the case, granted the prayer of temporary (Downloaded on 11/11/2022 at 08:45:35 PM) (6 of 27) [CMA-3417/2018] injunction. In this regard, reliance was placed upon the judgments rendered by the Hon'ble Apex Court in the cases of Ruston & Hornsby Ltd. v. The Zamindara Engineering Co. (1969) 2 SCC 727, Parle Products (P) Ltd. Vs. J.P. & Company, Mysore 1972(1) SCC 618, and Heinz Italia & Anr. vs. Dabur India Ltd.(2007) 6 SCC 1. It was also submitted that the said judgments were placed before the learned Trial Court for consideration, yet the learned Court below faltered in denying the grant of a temporary injunction, merely observing that the circumstances and facts of the present case are different. 4.3 It was also submitted that in the case wherein infringement is found to be prima facie made out, an order of injunction must follow. Reliance was placed upon the judgment rendered by the Hon'ble Apex Court in the case of Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia & Ors. (2004) 3 SCC 90. It was further submitted that the learned trial Court has committed serious error in holding that on the basis of material produced on behalf of the appellant, regarding the pouches of the product, no final opinion can be expressed.
4.4 Contending the arguments advanced on behalf of the respondents, that instead of grant / non grant of temporary injunction, the concerned Court ought to decide the main suit in (Downloaded on 11/11/2022 at 08:45:35 PM) (7 of 27) [CMA-3417/2018] an expeditious manner, and relying upon the judgments rendered by the Hon'ble Supreme Court, in the cases of Bajaj Auto Ltd. Vs. TVS Motors Co. Ltd. (2009) 9 SCC 797 and Shree Vardhman Rice and General Mills vs. Amar Singh Chawalwala (2009) 10 SCC 257, it was submitted such an interpretation would be incorrect, and reliance in this regard was also placed upon the judgments rendered by the Hon'ble Apex Court in the cases of Corn Products Refining Co. Vs. Shangrila Food Products Ltd AIR 1960 Supreme Court 142, Ramdev Food Products Pvt. Ltd. Vs. Arvind Bhai Ram Bhai Patel & Ors. (2006) 8 SCC 726, and Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai and Ors.(2022) 5 SCC 1.
4.5 It was further submitted that the appellant is manufacturing its product in the name and style of 'Decide' washing powder since 03.03.2006 and is a prior user in the market than the respondents and that looking into the ratio decidendi laid down in the judgment rendered by the Hon'ble Apex Court in the case of Neon Laboratories Ltd. Vs. Medical Technologies Ltd. & Ors. (2016) 2 SCC 672, an order of injunction against the respondents ought to be passed.
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Relevant portion of Neon Laboratories Ltd. Vs. Medical
Technologies Ltd. (supra), as highlighted before this Court by learned Senior Counsel, is reproduced hereunder:-
"Since we are confronted with the legal propriety of a temporary injunction, we must abjure from going into minute details and refrain from discussing the case threadbare, in order to preclude rendering the suit itself an exercise in futility and the decision therein a foregone conclusion. All that we would say in the present appeal is that since the respondent-plaintiffs have alleged, and have prima facie supported with proof, that they had already been using their trade mark well before the attempted user of an identical or closely similar trade mark by the appellant-defendant, the former would be entitled to a temporary injunction, in light of the abovementioned "first in the market" test."
4.6 The Court's attention was also drawn to the judgments/orders passed by this Hon'ble Court wherein temporary injunctions were granted; M/s Rathi Irrigation Pvt. Ltd. Vs. M/s Aaram Plastics Pvt. Ltd.2014 (2) WLN 62 (Raj.), M/s Pandit Kulfi and Cafe Vs. M/s Pandit Kulfi 2015 (4) WLC (Raj) 328, M/s Maheshwari Tea Company Pvt. Ltd. Vs. Vijay Agencies 2016 (2) WLC (Raj) UC 92, Rameshchandra Paliwal vs. Sima & Company S.B. Civil Misc. Appeal No. 1286/2016 and M/s Chetandas Rajkumar Batra vs. Gulshan Enterprises 2018 (4) WLN 8 (Raj.).
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(9 of 27) [CMA-3417/2018] 4.7 Learned Senior Counsel also drew the attention of this Court to the order passed by the Hon'ble High Court of Delhi, in the case of Levi Strauss & Co. Vs. Bansal Texfab Private Limited CS (Comm) 142/2021 decided on 25.3.2021.
5. Learned Senior Counsel for the appellant thus submitted that that not only is the trade mark and copyright of the appellant imitated, thereby infringed by the respondents, but also, the same is being done with a dishonest intention to sell their product to encash upon the goodwill and repute of the appellant's product.
6. Learned Senior Counsel for the appellant, in light of the above made submissions and the case laws cited alongside them, prayed that the impugned order, dated 06.10.2018, be quashed and set aside, and an order of injunction may be passed in favour of the appellant.
7. On the other hand, Mr. Vineet Dave and Mr. Divyanshu Choudhary, learned counsel appearing on behalf of the respondents, vehemently opposed the submissions made on behalf of the appellant and submitted that the learned Court below has rightly passed the impugned order, looking into the overall facts and circumstances of the present case, the evidences placed on record and the case-laws produced before it. (Downloaded on 11/11/2022 at 08:45:35 PM)
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8. Learned counsel for the respondents submitted that on a perusal of the impugned order, it is clear that the learned Court below while rejecting the application preferred by the appellant praying for temporary injunction, considered all the relevant aspects and the materials on record, and thus, the same does not any interference by this Court.
9. Learned counsel for the respondents contended the seizure of the complete machinery of the respondent no. 2-Shri Dadhich's proprietorship by the concerned police authorities, and submitted that the same was illegal.
10. Learned counsel for the respondents further submitted that once the Court of first instance has made due application of mind, with regard to grant or refusal of the relief of temporary injunction, judicial review ought not to be made, owing to the mere fact that on a de novo consideration of the matter, it is possible that a different view than the one as taken by the learned Court below is possible. And that, such review may be made only when the conclusion arrived at by the learned Court below is palpably perverse, which is not the case in the matter at hand. Reliance was placed upon the judgments rendered by the Hon'ble Apex Court in the cases of Wander Ltd. and Anr. v. Antox India P. Ltd. (1990 Supp SCC 727), Skyline Education (Downloaded on 11/11/2022 at 08:45:35 PM) (11 of 27) [CMA-3417/2018] Institute (India) Private Limited v. S.L. Vaswani and Anr., (2010) (2) SCC 142 and special emphasis was placed upon the judgment rendered by a Coordinate Bench of this Hon'ble Court in the case of Bombay Plaster Industries (M/s.) v. M/s Jagdamba Plaster, AIR 2018 Raj. 57.
11. Learned Counsel for the respondents further submitted that the appellant has approached this Court with unclean hands, along with an unjustified delay and having suppressed certain relevant materials, and therefore does not deserve the indulgence of this Court. As per learned counsel, the appellant has already filed opposition in the registration proceedings of the respondent- company's application, which is pending since March, 2014. And that therefore, the appellant's averment that only on 10.04.2018 did it come to their knowledge that the respondent was infringing upon their intellectual property rights, is completely false and concocted.
11.1 It was further submitted that the appellant only began using the trademark registered in its favour in the year 2016, and that there is nothing on record to substantiate the averment that the appellant was using the trademark, being the instant label of the washing powder product, since 03.03.2006. It was also submitted that it is a settled position of law that the prior user's right will (Downloaded on 11/11/2022 at 08:45:35 PM) (12 of 27) [CMA-3417/2018] override those of a subsequent user, even though the subsequent user has been accorded the registration of its trademark. In this regard, reliance was placed upon the judgment rendered by the Hon'ble Apex Court in the case of Neon Laboratories Limited (supra).
11.2 Reliance was also placed upon the judgments rendered in the cases of Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries and Ors. (2018) 2 SCC 1, Make My Trip (India) Limited v. Orbit Corporate Leisure Travels (I) Private Limited 2017 SCC Online Del 12172 and Paramount Surgimed Limited v. Paramount Bed India Private Limited and Ors. 2017 (241) DLT 319, and M/s. Nushar Engineering Works Jodhpur v. M/s Santosh Traders, Jaipur 2013 (3) WLC 584.
11.3 It was further submitted that in the case of Chandra Bhan Dembla Trading, Delhi v. Bharat Sewing Machine Co. Bikaner 1981 SCC Online Del 311, the Hon'ble High Court of Delhi refused the grant of injunction on the ground that the plaintiffs therein concealed the facts of the notice sent to the defendants and of the criminal proceedings initiated about 6 years prior.
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12. Learned counsel for the respondents also submitted that a change in the name and address of the manufacturing unit of the sole proprietor Firm has no bearing on the suit, as the suit is against the use of the trademark, and not the party. In this regard, reliance was placed upon the judgments rendered by the Hon'ble Apex Court in the cases of Arm Group Enterprises Ltd. v. Waldorf Restaurant and Ors., 2003 (6) SCC 423 and Ashok Transport Agency v. Awadhesh Kumar and Anr. 1998 (5) SCC 567, and the judgment rendered by the Hon'ble High Court of Delhi in the case of Miraj Marketing Corporation v. Vishaka Engineering and Anr. 2004 (115) DLT 471.
13. Learned Counsel for the respondents further submitted that it is a settled position of law that the comparison of the label/device mark is to be done as a whole, and that it cannot be dissected to claim separate rights on the part not separately registered.
14. Learned Counsel for the respondents also submitted that if a party chooses to use a generic/descriptive and/or laudatory/ordinary/common words, it must be realised that protection for the exclusive use of the same cannot be given. Furthermore, it was contended that the word "Decide" being a generic word, while "Delite" is a coined/inventive word which bears no visual or phonetic similarity to "Decide". Reliance in this (Downloaded on 11/11/2022 at 08:45:35 PM) (14 of 27) [CMA-3417/2018] regard was placed upon Bombay Plaster Industries (M/s.) (supra), Ritkia Vegetable Oil Pvt. Ltd. v. Deepak Vegpro Pvt. Ltd. 2020 (3) RLW 2077, Rhizome Distilleries P. Ltd. & Ors. v. Pernod Ricard S.A. France & Ors. (2010) 166 DLT 12 (DB) and Registrar of Trademarks v. Ashok Chandra Rakhit Ltd. 1955 (2) SCR 252.
15. Learned counsel for the respondents further submitted that the comparison of color cannot prove distinctiveness, and that the use of a single colour cannot be treated as inherently distinctive as to prima facie castigate the respondent for commercial dishonesty. Reliance in this regard was placed upon the case of Bombay Plaster Industries (supra).
16. Learned Counsel for the respondents also drew the attention of this Court to the judgments rendered in the cases of Rameshchandra Paliwal vs. Sima & Company, 2017(2) WLN 354 (Raj.), M/s. Bindal Toys v/s M/s. Gemini Toys AIR 1996 Del 161 and Britannia Industries v. ITC & Ors. 2021 (86) PTC 618.
17. Learned counsel for the respondents further submitted that the prejudice that would be caused to a defendant in a suit for temporary injunction must also be taken into consideration. (Downloaded on 11/11/2022 at 08:45:35 PM)
(15 of 27) [CMA-3417/2018] Reliance in this regard was placed upon the judgment rendered in the case of Ramdev Food Products Pvt. Ltd. (Supra).
18. Learned Counsel for the respondents also submitted that at the present stage, the Court can take a prima facie view as to the validity of the registered trademark on the basis of the averments in written statements. In this regard, learned counsel drew the attention of this Court to the judgments rendered in the cases of Marico v. Agro Tech Foods Ltd. 2010 SCC Online Del 1673 and Pathanjali Ayurved Ltd. Represented by its Director and Another v. Arudra Engineers Private Limited Represented by its Managing Partner R. Natraj 2021 (85) PTC 523 (DB) (Madras High Court).
19. Learned counsel for the respondents thus prayed for the appeal to be finally decided, owing to the fact that a decision upon the temporary injunction alone would not meet the ends of justice, and that in cases, like the instant case, where several contentious issues are involved, matters relating to trademarks, copyrights and patents ought to be decided expeditiously and finally, instead of merely granting or refusing to grant injunction. In this regard, reliance was placed upon the judgments rendered in the cases of Bajaj Auto Ltd. v. TVS Motor Company Ltd. 2009 (9) SCC 797, M/s. Shree Vardhaman Rice & General Mills v. M/s. (Downloaded on 11/11/2022 at 08:45:35 PM)
(16 of 27) [CMA-3417/2018] Amar Singh Chawalwala 2009 (10) SCC 257 and Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. & Ors. 2001 (5) SCC 95.
20. In rejoinder arguments, learned Senior Counsel for the appellant submitted that certain new facts have been introduced by the learned counsel for the respondents, which were not part of the pleadings before the learned Court below, and thus, sought to counter the submissions made on behalf of the respondents, in that regard.
20.1 It was further submitted that the appellant has in fact been using its registered trademark, since 03.03.2006. And that, to this effect, learned Senior Counsel relied upon certain newspaper clippings, bearing dates 12.12.2010 and 02.01.2011, which reflect that the trademark and copyright of the appellant's product, "Decide" was in fact being actively used by the appellant to advertise its product in the newspaper 'Dainik Bhaskar'. And that, the same was registered with user date 03.03.2006 vide Application no. 2017862.
20.2 It was also submitted that there are about 24 labels of the appellant's company which utilises the trademark and copyright accorded to the appellant by the concerned authorities for "Decide".
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21. Heard learned counsel for both parties as well as perused the record of the case and the catena of judgments cited at the Bar.
22. At the outset, this Court, looking to the reliefs prayed for in the instant appeal, deems it fit to restrict itself solely to the averments and contentions made only with regard to the grant of temporary injunction.
23. This Court, on a perusal of the judgments cited at the bar, finds that the law with respect to the grant/refusal of a temporary injunction is clear, and deems it appropriate to make the following observations regarding the same, before delving into the facts and circumstances surrounding the instant appeal. 23.1 In Wander Ltd. and Anr. (supra), the Hon'ble Apex Court observed that the prayer for grant of an injunction, when the existence of a legal right, as asserted by the plaintiff(s) and its alleged violation are uncertain and contested, at such a stage, the interests of the contesting parties ought to be weighed against each other, and the Court must ascertain towards which party do the scales tilt, and where does the balance of convenience lie. Furthermore, it was observed that an injunction is both temporary and discretionary, granted to preserve the status quo. It was also observed that the appellate Court shall not substitute the view taken by the Court of the first instance, if it is a reasonably (Downloaded on 11/11/2022 at 08:45:35 PM) (18 of 27) [CMA-3417/2018] possible view, and interfere only when it is proven that the exercise of such discretion was arbitrary, capricious or perverse or where the Court ignored the settled principles of law regulating the grant or refusal of injunctions. In the said case, the Hon'ble Apex Court directed the Hon'ble High Court to decide the matter expeditiously, with a request that the same be disposed within a period of six months from date of order.
23.2 A similar request was made by the Hon'ble Apex Court to the Hon'ble High Court of Delhi, in the case of Shree Vardhaman Rice and General Mills (supra) for an expeditious disposal of the main suit within a period of three months from the date of the order.
23.3 The judgment rendered in Wander Ltd. and Anr. (supra) was upheld by the Hon'ble Apex Court in the case of Skyline Education Institute (India) Private Limited (supra) with the following observation:
"... once the court of first instance exercises its discretion to grant or refuse to grant relief of temporary injunction and the said exercise of discretion is based upon objective consideration of the material placed before the court and is supported by cogent reasons, the appellate court will be loath to interfere simply because on a de novo consideration of the matter it is possible for the appellate (Downloaded on 11/11/2022 at 08:45:35 PM) (19 of 27) [CMA-3417/2018] court to form a different opinion on the issues of prima facie case, balance of convenience, irreparable injury and equity."
23.4 Similarly reasoned judgments were also passed in the cases of Ramdev Food Products (P) Ltd. (supra) and in the case of Neon Laboratories Limited (supra).
23.5 Wander Ltd. and Anr. (supra) was also kept into consideration by the Hon'ble Apex Court in the case of N.R. Dongre and Ors. (supra), wherein the Hon'ble Apex Court looking into the facts and circumstances, did not interfere with the injunction already granted by the Single Bench, which was subsequently upheld by the Division Bench of the Hon'ble High Court of Delhi.
23.6 In Bombay Plaster Industries (M/s.) (supra), wherein two orders refusing the grant of temporary injunction were assailed, the Coordinate Bench of this Hon'ble Court, with regard to an exercise of its appellate jurisdiction observed thus:-
"... the Court is not to proceed with such matters as if they were akin to regular first appeals but as appeals on principle, and that indisputably, the grant or refusal of interlocutory injunction is within the discretion of the Court of first instance and appellate Court's power to interfere with the said discretion is very limited and circumscribed. The future anticipated loss, if any, is not forthcoming from the material available on record and can only be finally (Downloaded on 11/11/2022 at 08:45:35 PM) (20 of 27) [CMA-3417/2018] adjudicated after full-fledged trial of the suit, as rightly observed by the learned trial Court."
23.7 In the case of Toyota Jidosha Kabushiki Kaisa (supra), the Hon'ble Apex Court observed that if the goodwill or reputation in the particular jurisdiction is not established by the plaintiff, no other issue would need any further examination to determine the extent of the plaintiff's right in the action of passing-off. Similarly, in the case of Laxmikant v. Patel (supra), while analysing whether a case of infringement would be made out, it was observed as under:-
"8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
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13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well- settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)"
23.8 On parameters for the grant of an injunction were laid down in the case of Neon Laboratories Limited (supra), which are as follows:-
"6. Before granting an ad interim injunction, the Court in seisin of the litigation has to address its attention to the existence or otherwise of three aspects-
a) whether a prima facie case in favour of the applicant has been established; (Downloaded on 11/11/2022 at 08:45:35 PM)
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b) whether the balance of convenience lies in favour of the applicant; and
c) whether irreparable loss or damage will visit the applicant in the event injunctory relief is declined.
We shall cogitate on the first factor first-is the law favourable to the applicant.
10. Section 47 of the Act is in the same vein and statutory strain inasmuch as it postulates the possibility of a registered mark being taken off the register on an application being made by any aggrieved person, inter alia, on the ground that for a continuous period of five years and three months from the date on which the trademark was registered, there was no bona fide use thereof. In the case in hand, prima facie, it appears that for over five years after a registration application was made by the Defendant- Appellant, the mark was not used. Facially, the Act does not permit the hoarding of or appropriation without utilization of a trademark; nay the Defendant-Appellant has allowed or acquiesced in the user of the Plaintiff-Respondents for several years. The legislative intent behind this Section was to ordain that an applicant of a trademark does not have a permanent right by virtue of its application alone. Such a right is lost if it is not exercised within a reasonable time." 23.9 In the case of Parle Products (P) Ltd. (supra), the Hon'ble Apex Court, observed the following, while analysing whether one mark would be deceptively similar to another:-
"9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to (Downloaded on 11/11/2022 at 08:45:35 PM) (23 of 27) [CMA-3417/2018] find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Glucose Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary, to refer to the decisions referred to at the Bar as in our view each case will have to be judged on its own (Downloaded on 11/11/2022 at 08:45:35 PM) (24 of 27) [CMA-3417/2018] features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it."
23.10 In the case of Paramount Surgimed Limited (supra), reiterating the ratio decidendi laid down in the case of Wander Ltd. and Anr. (supra), took note of the date on which the plaintiff(s) therein, had filed the opposition to the trademark application of the defendant(s) therein, and that the plaintiff(s) had knowledge of the mark of the defendant(s) through business negotiation, yet filed the suit only in the year 2017, the Hon'ble Apex Court took an adverse view to the case of the plaintiff(s). The Hon'ble Court also referred to the judgment rendered in the case of Warner Bros. Entertainment Inc. v. Harinder Kohli, 155 (2008) DLT 56, wherein it was held;
"It is the settled position both in law and in equity that a deliberate suppression of material facts, viewed singularly or coupled with blatantly false assertions, so far as the grant of equitable relief of injunction is concerned, is fatal. The plaintiffs in the instant action have attempted to lightly brush off their intentional non-disclosure by feigning oversight, contending that they had nothing to gain from the aforesaid non-disclosure. What has been lost sight of is that it is a cardinal principle of law that a person who seeks the equitable relief of injunction must come to the Court with clean hands."
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24. On a reading of all the judgments cited at the Bar, those discussed hereinabove, assist this Court in adjudicating upon the issues raised in the instant appeal, and this Court finds that the remainder of case laws have no bearing on the present case, and therefore, this Court does not deem it necessary to further analyse the same.
25. The learned court below has observed that the original suit so preferred was for injunction; the prayer clause of the injunction application was regarding issuance of decree of temporary injunction, and since in the application for temporary injunction only orders can be passed, therefore, the said prayer did not merit acceptance; this is more so when, as per the settled legal proposition of law, grant of relief as prayed for in the main suit, can be granted in the temporary injunction application, only in rare cases.
26. In the given factual matrix, the learned court below has rightly observed that owing to the contention of the appellant to the effect that it is engaged in the production of the product in question since 2006, whereas, the contention of the respondent is that they are engaged in the production and distribution of their product since 2007, and therefore, in case any like relief, as prayed for in the original suit, is granted in the temporary (Downloaded on 11/11/2022 at 08:45:35 PM) (26 of 27) [CMA-3417/2018] injunction application, the same would result in an irreparable loss to the respondent/non-applicant, more particularly, when at this stage, prima facie, the balance of convenience also lies in favour of the respondent. Further, no prima facie case of infringement of the intellectual property in question, is made out.
27. As per the settled position of law and as already discussed hereinabove, if the view taken by the Court of first instance is a reasonably possible view, interference may only be made, if it is proven that the exercise of such discretion was arbitrary, capricious or perverse or where the Court ignored the settled principles of law regulating the grant or refusal of temporary injunction; in the present case, this Court finds that the view taken by the learned Court below, at this stage, is a reasonable one.
28. It will thus be in the larger interest of justice, to direct the learned Trial Court to decide the original suit finally, in an expeditious manner, preferably within a period of six months from today, strictly in accordance with law.
29. The span of litigation in the present case, in the opinion of this Court is too long and it ought to culminate into finality at the earliest. Thus, in the interest of justice, liberty is given to both the (Downloaded on 11/11/2022 at 08:45:35 PM) (27 of 27) [CMA-3417/2018] parties to take up all their legal issues before the learned trial court at the ongoing stage.
30. Before parting with this judgment, this Court makes it clear that the observations made hereinabove, at the present stage, touching the facts and any factual finding arrived at this stage, would not come in the way of the learned trial court in arriving at a final decision at variance therewith, on trial of the issues on merit after recording the evidence.
31. As an upshot of the above discussion, this Court does not find any legal infirmity in the impugned order passed by the learned court below, so as to warrant any interference therein. However, the learned trial court is directed to decide the original suit finally, in an expeditious manner, preferably within a period of six months from today, strictly in accordance with law.
32. With the aforesaid observations and directions, the present appeal is dismissed. All pending applications stand disposed of.
(DR.PUSHPENDRA SINGH BHATI), J.
SKant/-
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