Gujarat High Court
Iconic Ip Interests Llc vs M/S Shiv Textiles on 9 May, 2025
Author: Sunita Agarwal
Bench: Sunita Agarwal
NEUTRAL CITATION
C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025
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Reserved On : 12/02/2025
Pronounced On : 09/05/2025
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/SPECIAL CIVIL APPLICATION NO. 1543 of 2025
FOR APPROVAL AND SIGNATURE:
HONOURABLE THE CHIEF JUSTICE MRS. JUSTICE SUNITA AGARWAL
and
HONOURABLE MR. JUSTICE PRANAV TRIVEDI
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Approved for Reporting Yes No
✔
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ICONIC IP INTERESTS LLC
Versus
M/S SHIV TEXTILES
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Appearance:
MR. ANSHIN DESAI, SR. ADV. WITH MR.BHASH H MANKAD(6258) for the
Petitioner(s) No. 1
KAMAL J UPADHYAYA(7469) for the Respondent(s) No. 1
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CORAM:HONOURABLE THE CHIEF JUSTICE MRS. JUSTICE
SUNITA AGARWAL
and
HONOURABLE MR. JUSTICE PRANAV TRIVEDI
CAV JUDGMENT
(PER : HONOURABLE MR. JUSTICE PRANAV TRIVEDI)
1. By way of present petition, the petitioner seeks to challenge legality and proprietary, validity and correctness of the order dated 22.11.2024 Page 1 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined (hereinafter referred to as 'the impugned order') passed by 2nd Additional District Judge, Bhavnagar (hereinafter referred to as 'the learned Court') below Exh-13 in Commercial Trade Mark Suit No. 1 of 2023.
2. Brief facts leading to filing of the present writ petition is that the petitioner is a limited liability corporation incorporated under the laws of the State of Delaware, United States of America (USA) and, inter alia, engaged in the business of licensing intellectual property rights to businesses and collecting royalties from such businesses. The petitioner is a subsidiary of Highlander Partners L.P., a Dallas, U.S.A based private investment firm, which is the owner of the "JOLLY RANCHER" mark and also its variations.
3. It is the case of the petitioner that initially the mark "JOLLY RANCHER" and its variations in relation to Confectionery and other products were granted to Page 2 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined Huhtamaki Finance B.V. which, inter alia, granted rights of the mark Hershey Chocolate & Confectionery Corporation. There was a licence agreement between Huhtamaki Finance B.V and Hershey Chocolate & Confectionery Corporation , which has resulted into Hershey Chocolate & Confectionery Corporation being granted an exclusive licencee to use the mark "JOLLY RANCHER" and its variations in relation to goods and/ or services world wide, including in India. In furtherance, Huhtamaki Finance B.V. transferred all rights, title and interest in the "JOLLY RANCHER "
mark and its variations to the present writ petitioner. Owing to this transfer, the petitioner became licensor in the licence agreement with Hershey Chocolate & Confectionery Corporation for the mark "JOLLY RANCHER", which continued and subsists till date. Therefore, the petitioner is the proprietor of valid and subsisting trade-mark Page 3 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined registration for the petitioner "JOLLY RANCHER"
mark in India, which is initially in Class 15.
4. It is the case of the petitioner that they have been using "JOLLY RANCHER" mark in more than forty variants of confectionery and candy products, as well as merchandise, such as ready-made clothing, footwear, cosmetics, lip balms and fashion accessories; pillows, breakfast cereal, soft drinks all over the world, including in India. It was the case of the petitioner that they first learnt about the mark "JOLLY RANGER LEGWEAR", which was used by M/ s. Shiv Textiles (hereinafter referred to as 'the respondent') in March, 2023. Such mark was discovered during the routine search of the records of the Trade Marks Registry. On a further inquiry, it was found that the respondent's registration for the "JOLLY RANGER LEGWEAR " device mark under the provisions of Trade Mark Act, 1999 (hereinafter referred to as 'the Act') was done by the respondent and it had obtained registration No. 4075126, Page 4 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined covering jeans / pants in Class 25 of the Act. The registration was dated 2.2.2019 and was obtained on the basis of use claim from January 1, 2019. Immediately on coming to know about respondent's registration for device mark "JOLLY RANGER LEGWEAR", the petitioner initiated investigation which lead to sending a legal notice on 28.4.2023 to the respondent putting them on notice of the petitioner's right in the petitioner's "JOLLY RANCHER" marks and further demanding, inter alia, that the respondent cease from using the mark "JOLLY RANGER".
5. Pursuant to the notice issued by the petitioner, respondent gave a reply on 8.5.2023 claiming that the term "JOLLY" is common name/ term, and no person can claim exclusive rights over the world. It was the case of the respondent that they had honestly adopted the JOLLY RANGER marks in the year 2019. Resultantly, the respondent refused to comply with any of the petitioner's demand. Page 5 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025
NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined Subsequent notice was issued by the petitioner on 9.6.2023, which was replied by the respondent on 30.6.2023.
6. On 17.8.2023, the petitioner sent a letter to the respondent to amicably resolve the matter and asking to comply with the demand made by the petitioner. There was no response by the respondent to notice dated 17.8.2023. However, instead of replying to the notice of the petitioner, respondent preferred a suit before the learned District & Sessions Court, Bhavnagar, which came to be numbered as Commercial Trademark Suit No. 1 of 2023.
7. Pursuant to the suit filed by the respondent, petitioner also preferred a suit along with Hershey Company against the respondent before the Delhi High Court for permanent injunction restraining trademark infringement of its JOLLY RANCHER Page 6 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined marks by the respondent as well as for passing off of trademark, acts of trademark, acts of unfair competition, seeking damages/ rendition of accounts, delivery up and other appropriate reliefs. The suit filed before the Delhi High Court came to be numbered as CS (COMM) 870/2023. Along with the Civil Suit, the petitioner also filed a petition on 6.12.2023 before the Hon'ble Delhi High Court under Section 57 of the Act seeking cancellation of registration number 4075126 for the trademark "JOLLY RENGER LEGWEAR" Device in Class-25 given to the respondent. The petitioner further initiated proceedings for registration of petitioner's trademark application namely application No. 5970539 for registration of "JOLLY RANCHER" mark in Class-25 before the Trade Mark Registry. This application was made on 3.1.2024.
8. Subsequent to the suit being filed by the respondent, the petitioner preferred an application under the Page 7 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined provisions of Order VII Rule 11 of the Code, which was rejected by the learned Court by way of impugned order dated 22.11.2024, which has resulted into the present writ petition under Article 227 of the Constitution of India.
9. It was the case of the petitioner that the respondent has carefully obfuscated facts regarding the petitioner's "JOLLY RANCHER" marks with an intention to mislead the Court. It was the case of the petitioner that the respondent in the Civil Suit claim to be the prior adopter of the "JOLLY RANGER"
Marks than the petitioner's adoption and use of the "JOLLY RANCHER" Marks.
10. It was the case of the petitioner that respondent's registration mark "JOLLY RANGER" Marks were were only adopted in the year 2019. This adoption admittedly is subsequent to the adoption and use of petitioner's "JOLLY RANCHER" Marks, which precedes such adoption and/ or use by decades. Page 8 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025
NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined Therefore, it was the case of the petitioner that he is clearly the prior user of the petitioner's "JOLLY RANCHER" Marks. It was the case of the petitioner that respondent's registration mark "JOLLY RANGER LEGWEAR" Device Mark cannot, in any manner, interfere with the petitioner's use of "JOLLY RANCHER" Marks. The respondent was very well aware of such prior rights of the petitioner in the "JOLLY RANCHER" Marks, and despite such knowledge, knowingly and willfully the plaint is preferred by cleverly drafting to harass the petitioner and by making false and frivolous allegations. However, without considering the fact as raised by the petitioner and also the fact that the claim of the petitioner that the suit appears to be bad by law, the learned Court by way of impugned order, has rejected the application below Exh-13 in Commercial Suit No. 1 of 2023.
11. We have heard Mr. Anshin Desai, learned senior advocate assisted by Mr. Bhash Mankad and Mr. Page 9 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined Valmik Vyas, learned advocates for the petitioner and Mr. Kamal Upadhyaya, learned advocate for the respondent.
12. It was submitted by Mr. Anshin Desai, learned senior counsel for the petitioner that the impugned order is erroneous on the principles of law and also on facts. The learned Court has misinterpreted the facts and relevant laws against the petitioner. The petitioner challenges the fictitious cause of action created by the respondent solely on the basis of reading the plaint and documents on record. The learned Court has arrived at an erroneous conclusion for dismissal of application under provision of Order VII Rule 11. According to Mr. Desai the plaint is liable to be dismissed if it does not disclose the cause of action. The plaint must include some act done by the defendant i.e. the petitioner and in absence of any act, no cause of action accrue or arise. As per Mr. Desai, there is a distinct "material facts" and "particulars". The Page 10 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined material facts shows the facts which are necessary to formulate a complete cause of action. In absence of such material facts there was no cause of action and the plaint ought to have been rejected on this ground itself.
13. It was further submitted by Mr. Desai that the plaint clearly indicates that the respondent was aware about the petitioner's right in the JOLLY RANCHER Marks and failed to reveal the prior statutory rights of the petitioner, despite being made aware of these rights in the legal notices issued by the petitioner to the respondent. It was case of the petitioner that the statutory rights of the petitioner in JOLLY RANCHER Marks insofar it pertains to India, can also be verified from the online records of the Trade Mark Registry, which are publicly accessible in nature. The registration granted to the petitioner for the JOLLY RANCHER Marks act as prime facie evidence of validity as per Section 31 of the Act, and Page 11 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined thus, these registrations ought to have been revealed to the learned Court especially when the respondent is asserting prior rights in its JOLLY RANCHER Marks.
14. Mr. Desai, learned senior counsel relying on the decision of the Hon'ble Apex Court in case of Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr. reported in 2022 SCC OnLine Bom 7183, submitted that if a party which has complete knowledge of the real facts deliberately suppresses or does not expressly refers to the same, which is adverse to the party pleading it, so as to camouflage the other facts and by clever drafting and create an illusionary cause of action, the Court cannot turn a blind eye to such aspects, when such facts, which are not disclosed are otherwise apparently found/ revealed from the pleadings as well as documents attached to it. Therefore, according to Mr. Desai, learned senior counsel it was an important and crucial duty cast on Page 12 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined the court to check whether there was any material suppression of facts as averred by the petitioner in its Order VII Rule 11 application.
15. It was further submitted by Mr. Desai, learned senior counsel that learned Court has not determined whether the suit of respondent is bad in law owing to non-joinder of necessary parties to the suit. The petitioner had disclose the factum of relationship between the petitioners and Hershey Company in the legal notices sent by the petitioner to the respondent. Therefore, the respondent was aware of the fact that in absence of necessary party i.e. The Hershey Company, neither an effective decree can be passed, nor can the issues raised in the present suit be finally decided. Therefore, if necessary party is not impleaded, the suit itself is liable to be dismissed.
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16. It was further submitted by Mr. Desai that the underlying object of Order VII Rule 11 of the Code is that if in a suit, no cause of action is disclosed, the Court would not permit the plaintiff to unnecessarily protract the proceedings of the suit and it would be necessary to to put an end to the sham litigation. It is the duty of the Court to determine that a litigation which is doomed to fail, should not be allowed and used as a device to harass a person.
17. Per contra, Mr. Kamal Upadhyaya, learned advocate for the respondent has submitted that the present petitioner- original defendant has sent them notice under the provisions of the Act for infringement of the trade-mark. Further, the respondents have also applied for registration under Clause-25 of the Trade Marks Act, which has been opposed by the petitioner. Therefore, the cause of action has arisen to file the suit. It was further submitted by Mr. Upadhyaya that the cause of action arose to file the Suit on 28.4.2023 when they received the notice Page 14 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined from the petitioner and came to know that the petitioner is using trade-mark "JOLLY RANCHER' which is identically, deceptively and confusingly similar to the respondent's trade-mark "JOLLY RANGER'. Subsequent to the issuance of the notice, a reply was given to the petitioner on 8.5.2023. Another notice came to be issued on 9.6.2023 and a third notice on 17.8.2023.
18. It was further submitted by Mr. Upadhyaya that the petitioner filed a trade-mark application to claim monopoly over the trade-mark "JOLLY RANCHER"
and they are still using the mark "JOLLY RANCHER"
in respect of their goods. Therefore, the cause of action is continuous and recurring one and continue to subsist and arise afresh on day-to-day basis, till such time the defendant-petitioner will desist the use of the registered trade-mark "JOLLY RANGER'. In view of the fact that there is a cause of action to file the suit. The respondent herein namely the Page 15 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined original plaintiff is a registered proprietor of trade- mark "JOLLY RANGER" and is doing business activity within the area of Bhavnagar which is within the territorial jurisdiction of this Court and, therefore, the learned Court has the jurisdiction to entertain the suit. In wake of such submissions, it was further submitted by Mr. Upadhyaya that it is a settled position of law that while deciding application under Order 7 Rule 11 of the Code, the Hon'ble Court will look into only plaint / avermentsand the documents filed by the plaintiff along with the plaint. The arguments canvassed by the petitioner are very vague and cannot be entertained to reject the suit under order VII Rule 11 CPC.
19. Having heard the learned counsels for the parties and perused the material on record. The main crux and thrust of argument advanced by the learned Counsels appearing for both the parties is with Page 16 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined regard to the cause of action. The pertinent question, thus, would be whether the petitioner having sent a notice to the respondent asking to stop using the trade-mark, will give rise to a cause of action or if the petitioner - original defendant has filed an application for registration of a trade mark, may be deceptively similar to that of the plaintiff, when other remedies are available to the plaintiff will give rise to a cause of action to file the suit of infringement. The pleadings along with the documents along with plaint, in the instant case placed on record would clearly show that the goods in question are not distributed or manufactured by the petitioner-original plaintiff within the territorial jurisdiction of the Country. The documents appended from Page-'13' to '16' would only show that the goods of the defendants are sold at a website call 'AMAZON' (USA), which is a website originated in USA and the defendant is having a mark which is registered in USA. It is true that the Page 17 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined subsidiary Company, i.e the present defendant has applied for registration of the mark in the territorial jurisdiction of India but they are neither manufacturing nor selling their goods in the territorial jurisdiction of India. The only sale that is taking place is through a mark which is registered in USA and on a website which is registered in USA.
20. Therefore, the pertinent question would be when a customer uses such goods from a website which is registered in USA and a mark which is registered in USA, then whether such action would give rise to cause of action of filing of the suit of infringement within the territorial jurisdiction of a Court in India.
21. Strong reliance was placed on the decision of Division Bench of the Delhi High Court in the case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr., reported in 2009 SSC OnLine Delhi 3780.
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22. However, the question is intrinsically different from the fact of that case. In case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr. (Supra), the goods were manufactured in India, but were not sold or manufactured within the territorial jurisdiction of the Court where the Suit was filed. However, in the instant case, there is an international mark and an international website from which the goods are sold. For the purpose of establishing that a part of cause of action arose within the jurisdiction of the Court, In India, the plaintiff would have to show that the defendant has purposefully availed the jurisdiction of the Forum Court by entering into a commercial transaction with an internet user located within the jurisdiction of the Forum Court. It would have to be a real commercial transaction that the defendant had entered into with the website users specifically targeting the jurisdiction of the Forum Court which would result in injury or harm to the plaintiff. Page 19 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025
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23. In the instant case, the evidence produced by the plaintiff is with regard to the website which is registered in USA and selling the goods with a mark registered in USA. The respondent i.e. the original plaintiff has not been able to establish that the use of the website was with an intention to complete or conclude transaction specifically targeting the consumers base where the plaintiff's goods were stored.
24. In view of the same, there cannot be any cause of action for filing a suit for infringement by the plaintiff. Resultantly, the impugned order passed by the learned trial Court dismissing the application under Order VII Rule 11 of Code of Civil Procedure is hereby quashed and set-aside on the basis of the observations made hereinabove. It can be specifically inferred that there was no cause of action for the plaintiff to file the plaint and, therefore, the plaint is to be rejected under the Page 20 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025 NEUTRAL CITATION C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025 undefined provisions of Order VII Rule 11(a) of the Code of Civil Procedure. The writ petition stands allowed.
(SUNITA AGARWAL, CJ ) (PRANAV TRIVEDI,J) SAJ GEORGE Page 21 of 21 Uploaded by SAJ GEORGE(HC01069) on Wed May 14 2025 Downloaded on : Wed May 14 23:15:22 IST 2025