Calcutta High Court (Appellete Side)
Dhunseri Tea & Industries Limited vs Dhunsiri Plantation Private Limited on 16 May, 2008
Author: Bhaskar Bhattacharya
Bench: Bhaskar Bhattacharya
Form No. J(2)
IN THE HIGH COURT AT CALCUTTA
Appellate/Revisional/Civil Jurisdiction
Present:
The Hon'ble Mr. Justice Bhaskar Bhattacharya
And
The Hon'ble Mr. Justice Rudrendra Nath Banerjee
F.M.A. No. 338 of 2008
With
CAN 1268 of 2008
Dhunseri Tea & Industries Limited
Versus
Dhunsiri Plantation Private Limited
For the Appellant/Petitioner: Mr Pratap Chatterjee,
Mr Ranjan Bachawat,
Mr Gautam Banerjee.
For the Respondent/Opposite Party: Mr Dhruba Ghosh,
Mr Sukanta Paul.
Heard on: 12.05.2008.
Judgment on: 16th May, 2008.
Bhaskar Bhattacharya, J.:
This first miscellaneous appeal is at the instance of a plaintiff in a suit for declaration and permanent injunction and is directed against Order No.2 dated 19th December, 2007 passed by the learned District Judge, Alipore, District - 24- Parganas (South), in Title Suit No.2138 of 2007, thereby refusing the prayer for ad interim injunction after issuing a notice to show-cause why the prayer of the appellant for temporary injunction should not be granted.
Being dissatisfied, the plaintiff has come up with the present first miscellaneous appeal.
The appellant before us filed the aforesaid suit in the Court of the learned District Judge, 24-Parganas (South), thereby praying for the following relief:
"(a) A decree of declaration that the plaintiff is exclusively entitled to use the said trademark "DHUNSERI" in respect of tea and/or allied products to the exclusion of others including the defendant;
(b) A decree of declaration that the trademark "DHUNSERI" of the plaintiff has attained the status of "Well-Known Trademark" within the meaning of Section 2(zg) of The Trade Marks Act, 1999;
(c) A decree in preliminary form for accounts of all profits made by the defendant by way of manufacturing tea under the impugned trademark "DHANSIRI" as part of corporate name of the defendant and/or otherwise;
(d) A decree of permanent injunction restraining the defendant, their servants, agents and assigns and each of them from in any way infringing or causing, enabling others to infringe the registered trademark "DHUNSERI"
of the plaintiff by way of using the impugned trademark "DHANSIRI" or any Trademark which so nearly resembles the same as to be calculated to deceive and induce the people to believe that the product of defendant originates from the plaintiff or is connected thereto by manufacturing and/or processing and/or cultivation and/or marketing tea and/or any other product and/or goods under the name "DHANSIRI" or any other any corporate name containing a word/trademark which is either identical with or deceptively similar to the plaintiff's trademark "DHUNSERI";
(e) A decree of permanent injunction restraining the defendants, their servants, agents and assigns and each of them from in any way passing off or causing, enabling others to pass off its tea and/or allied products as that of the plaintiff by way of using the impugned corporate name "Dhansiri Plantations Private Limited" or any corporate name containing a word/trademark which is either identical with or deceptively similar to the trademark "DHUNSERI" of the plaintiff and/or by using the impugned trademark "DHANSIRI";
(f) A decree of permanent injunction restraining the defendants, their servants, agents and assigns and each of them from in any way passing off or causing, enabling others to pass off its tea and/or allied products as that of the plaintiff by way of using the impugned trademark "DHANSIRI" or any Trademark which so nearly resembles the same as to be calculated to deceive and induce the people to believe that the product of defendant originates from the plaintiff or is connected with the plaintiff;
(g) A decree of permanent injunction restraining the defendants, their servants, agents and assigns and each of them from in any way selling or offering for sale or marketing or distributing or advertising tea and/or allied products under the impugned corporate name "Dhansiri Plantations Private Limited" or any corporate name containing a word/trademark which is either identical with or deceptively similar to the trademark "DHUNSERI" of the plaintiff and/or by using the impugned trademark "DHANSIRI";
(h) A decree of permanent injunction restraining the defendants, their servants, agents and assigns and each of them from in any way selling or offering for sale or marketing or advertising tea and/or allied products under the impugned trademark "DHANSIRI" or any other trademark either identical with or deceptively similar to the trademark "DHUNSERI" of the plaintiff;
(i) A decree of Rs.5,000/- as provisional damage, in the alternative a decree for an enquiry to ascertain the entire amount of loss and damage suffered by the plaintiff by virtue of defendant's manufacturing tea under the impugned trademark "DHANSIRI" as part of corporate name of the defendant and/or otherwise;
(j) Receiver;
(k) Injunction;
(l) Attachment;
(m) Costs."
The case made out by the appellant may be summed up thus:
(1) The petitioner, the DHUNSERI TEA & INDUSTRIES LIMITED, is an existing company within the meaning of the Companies Act, 1956. The petitioner was incorporated on 11th May, 1916 under the Companies Act, 1913, and is carrying on business, inter alia, at Dhunseri House, 4A, Woodburn Park, P.S. Bhawanipore, Kolkata - 700 020, within the jurisdiction of the Trial Court.
(2) The petitioner is a Company of high repute carrying on an old and established business of manufacturing and marketing, inter alia, tea since the year 1916. The petitioner was originally incorporated under the name DHUNSERI TEA COMPANY LIMITED, which was changed to DHUNSERI TEA & INDUSTRIES LIMITED, with effect from 16th June, 1970. (3) The principal trademark of the petitioner under which their goods are marketed and sold is and has been "DHUNSERI". The said mark "DHUNSERI" has been in use in respect of the sale of tea since the inception of the petitioner from the year 1916.
(4) Apart from the principal trademark "DHUNSERI", the goods manufactured by the petitioner were/are also sold under various other marks, the word "DHUNSERI" being the essential part of each of them.
(5) Because of the high, stringent and non-compromising standards of quality applied by the petitioner in the manufacture of its goods, those sold under the trademark "DHUNSERI" became extremely popular and in high demand in India within a very short period of time. The sales figures of the petitioner for the period of 1990-91 to 2006-2007 are as follows:
Year Sales figures
(Rs. In Lac)
1990-91 679.80
1991-92 (April to March) 1085.82
1992 (April to December) 1167.68
1993 (January to December) 2072.67
1994 (January to December) 2198.80
1995 (January to December) 2283.55
1996 (January to December) 2670.12
1997 (January to December) 5306.81
1998-99 (January to March) 9036.62
1999-2000 6674.40
2000-2001 6315.61
2001-2002 5999.83
2002-2003 5572.80
2003-2004 5122.87
2004-2005 5941.67
2005-2006 5744.22
2006-2007 6681.26
(6) Apart from the long, continuous and extensive use of the trademark "DHUNSERI", the said trademark has also been popularised through the extensive advertisement, promotion and marketing and for such purposes, not only huge sum of money but also considerable time and effort have been spent. The advertisement and promotional expenses of the petitioner for the period of 1997 to 2006-2007 are as follows:
Year ADVERTISEMENT &
PROMOTIONAL EXPENSES
(Rs. In Lac)
1997 (from January to December 108.51
1998-99 (from January to March) 185.27
1999-2000 141.98
2000-2001 94.97
2001-02 50.99
2002-03 52.51
2003-04 88.54
2004-05 79.13
2005-06 73.45
2006-2007 58.44
Further, the activities and achievements of the petitioner have attracted the attention of the media and therefore, various reports and/or articles concerning the petitioner appear frequently in the newspaper and other print media.
(7) In view of long and continuous use since the year 1916 and the extensive advertisement, promotion and marketing, the trademark "DHUNSERI" has become exclusively associated with the petitioner and the members of trade and/or general public associate the mark "DHUNSERI" with the petitioner and none else.
(8) Apart from the common law proprietary rights as subsisting in the said trademark "DHUNSERI", the petitioner has diligently sought statutory protection for the said trademark, as also other trademarks each having the word "DHUNSERI" as its essential part, in India by applying for and seeking trademark registrations in respect of the said trademarks in various classes. Most of the said applications for registrations of the trademark "DHUNSERI" in various classes have already been granted. A list of such registrations are as follows:
MARK APPLICANT REGN REGN CL- GOODS STATUS
NO. DT. ASS
MARK APPLICANT REGN REGN CL- GOODS STATUS
NO. DT. ASS
DHUN DHURSERI 695890 29-Jan- 30 TEA FOR SALE IN REGISTERED
SERI TEA & INDIA & FOR
(word INDUSTRIES 96 EXPORT
per-se) LIMITED
DHUN DHURSERI 703357 27-Mar- 30 COFFEE, COCOA, REGISTERED
SERI TEA & SUGAR, RICE,
(word per- INDUSTRIES 96 TAPIOCA, SAGO,
se)
LIMITED ARTIFICIAL
COFFEE, FLOUR
& PREPARATIONS
MADE FROM
CEREALS,
BREAD, PASTRY,
&
CONFECTIONER,
ICES, HONEY,
TREACLE, YEAST,
BAKING POWDER,
SALT, MUSTARD,
VINEGAR,
SAUCES (EXCEPT
SALAD
DRESSINGS),
SPICES, ICE
DHUN DHURSERI 703358 27-Mar- 29 MEAT, FISH, REGISTERED
SERI TEA & POULTRY &
(word INDUSTRIES 96 GAMES, MEAT
per-se) LIMITED EXTRACTS,
PRESERVED,
DRIED &
COOKED FRUITS
& VEGETABLES,
JELLIES, JAMES,
EGGS, MILK &
MILK PRODUCTS,
EDIBLE OILS &
FATS, SALAD
DRESSINGS,
PRESERVES.
DHUN DHURSERI 703359 27-Mar- 30 TEA FOR SALE IN REGISTERED.
SERI TEA & INDIA & FOR
GOLD INDUSTRIES EXPORT
MARK APPLICANT REGN REGN CL- GOODS STATUS
NO. DT. ASS
(word LIMITED 96
per-se)
DHUN DHURSERI 123838 18-Sep- 42 PROVIDING OF REGISTERED.
SERI TEA & FOOD & DRINK,
(word INDUSTRIES 9 03 TEMPORARY
per-se) LIMITED ACCOMMODATIO
N, MEDICAL,
HYGIENIC &
BEAUTY CARE,
VETERINARY &
AGRICULTURAL
SERVICES, LEGAL
SERVICES,
SCIENTIFIC &
INDUSTRIAL
RESEARCH,
COMPUTER
PROGRAMMING.
(9) The trademark "DHUNSERI" of the petitioner has become so popular in the course of trade that many unscrupulous traders have tried to utilize the huge goodwill accrued to the said trademark of the petitioner by using trademarks which are identical/deceptively similar to the said registered trademark "DHUNSERI" of the petitioner and thereby infringing the same and trying to pass off their goods as that of the petitioner. The petitioner has been extremely vigilant in this regard and has issued Caution Notices and Cease & Desist notices to such unscrupulous traders. Each of the said unscrupulous traders accepted the exclusive ownership of the petitioner in respect of the trademark "DHUNSERI" and stopped using marks, which are deceptively similar to the petitioner's said trademark "DHUNSERI". On one occasion, the petitioner had to file a complaint before the Registrar of Companies against one of such unscrupulous traders using the word "DHUNSERI" as part of its corporate name. In the said proceedings the Regional Director (Northern Region), Department of Company Affairs, Kanpur was pleased to direct the said trader to delete the word "DHUNSERI" from its corporate name by his order dated 10th September, 2004.
(10) On or about the year 1995, the petitioner came to know that one Kamlesh Tea Company having its office at Main Bazar, Sumerpur, P.S.- Sumerpur, PIN Code No.306902, State of Rajasthan, was trading in tea under, inter alia, the trademark "DHANJIRI" which was deceptively similar to the registered trademark "DHUNSERI" of the petitioner. The petitioner immediately filed a suit against such infringement of its trademark before the selfsame Court being Title Suit No.93 of 1995 and prayed for, inter alia, injunction against the use of the trademark "DHANJIRI" in respect of trading in tea by the said Kamlesh Tea Company. Upon hearing the submission of the learned advocate appearing on behalf of the petitioner, learned Court was pleased to grant an order of injunction restraining the said Kamlesh Tea Company from, inter alia, using the impugned trademark "DHANJIRI" in respect of trading of tea. Due to excellent quality of product, long user and extensive publicity and promotion the trademark "DHUNSERI" has acquired enormous reputation and goodwill amongst the trade and public in India and has become a Well-known Trademark in India within the meaning of Section 2(zg) of the Trademarks Act, 1999.
The trade and public in India associate the mark "DHUNSERI" only with the petitioner and none else.
(11) On or about May, 2007 the petitioner came to know that one M/s. Mother International Private Limited of 1738, Nai Basti Chawk, S.P. Mukherjee Marg, Delhi - 110 006 was trading tea under label/packaging which contains the words "A House of: Dhanshree Tea Plantation, Regd. Office:
Titabar, Assam, India" implying thereby that the said M/s. Mother International Private Limited were manufacturing tea under the name of the said Dhanshree Tea Plantation. The word "DHANSHREE" being deceptively similar rather almost identical to the registered trademark "DHUNSERI" of the petitioner, the petitioner, through its advocate, Khaitan & Co., forthwith issued a legal notice to the said M/s. Mother International Private Limited demanding, inter alia, that the said M/s. Mother International Private Limited immediately should stop using the word/mark "DHANSHREE" in respect of manufacturing and marketing tea and/or allied products.
(12) In reply to the said letter the said M/s. Mother International Private Limited, by the letter dated 19th May, 2007 from their advocate Manchanda & Associates, intimated that the word/mark "DHANSHREE"
was not used by them, but one of their associate companies was carrying on business of tea under the name and style of Dhansiri Plantations Private Limited of Purana Titabari, Guwahati, Assam. (13) The word/mark "DHANSIRI" being deceptively similar with, rather almost identical to, the trademark "DHUNSERI" of the petitioner and as such the petitioner lodged a complaint under Section 20 and Section 22 of The Companies Act, 1956 (as amended) before the Regional Director, Company Affairs at Shillong praying, inter alia, for an order directing the respondent to change its corporate name by deletion therefrom the word/mark "DHANSIRI". The said proceeding is pending. The respondent, wilfully and deliberately, had been using the mark "DHANSIRI" as part of its corporate name in respect of manufacturing and marketing tea only to bring about a family resemblance with the products and business of the petitioner. The impugned trademark "DHANSIRI" used by the respondent is deceptively similar, rather almost identical, to trademark "DHUNSERI" of the petitioner and thereby amounting to infringement of the said registered trademark "DHUNSERI" of the petitioner as also passing off its products as that of the petitioner. The mark "DHUNSERI" is exclusively associated with the petitioner for about 100 years in such a manner any use of the said trademark or any deceptively similar version thereof by the respondent in respect of tea would inevitably give rise to confusion and deception in the minds of the members of public and the trade. (14) The adoption of the trademark "DHANSIRI" by the respondent is wrongful, illegal, and fraudulent as the same is deceptively similar to the petitioner's Well-known Trademark "DHUNSERI". Such act on the part of the respondent is dishonest and motivated and an attempt to deceive and confuse the public into believing that the respondent's goods and/or business is related to or otherwise associated with the petitioner. (15) The petitioner is the prior adopter and/or user of the mark "DHUNSERI" in respect of the same goods as that the respondent and the respondent has no valid reason and/or justification to adopt the impugned trademark "DHANSIRI". The respondent was well aware of the use, goodwill, and reputation of the trademark "DHUNSERI" of the petitioner at the time of adoption of the impugned trademark. It is evident that the mark "DHANSIRI" has been adopted in bad faith.
(16) The respondent has adopted the impugned mark "DHANSIRI" in bad faith so that the products could be passed off as the products of the petitioner and the respondent could trade upon and benefit from the reputation and goodwill attached to the registered trademark of the petitioner. (17) There is no doubt that the respondent in order to take unfair advantage and to utilize the goodwill and reputation accrued to the said Well-known Trademark, over nearly 100 years, has adopted the impugned trademark, consisting of all the essential features of the petitioner's registered trademark "DHUNSERI" and are using the same as part of its corporate name.
(18) The respondent has no valid reason and/or justification whatsoever to adopt and use a trademark, which is deceptively similar to the said Trademark "DHUNSERI" of the petitioner, as they have no connection with the petitioner or their business. The respondent purported to adopt and use the impugned trademark just to cause confusion and deception in the trade and public and make them believe that its business and products originates or is otherwise connected with the petitioner and that the respondent is a subsidiary/associate company of the petitioner or is otherwise connected thereto.
(19) The said trademark "DHUNSERI" is used in connection with its products and business since the past about 100 years. The use by the respondent of a deceptively similar trademark is wrongful, dishonest, mala fide and solely with the motive of infringing the registered trademark of the petitioner and passing off the products and business of the respondent as and for those of the petitioner. The respondent with full knowledge of the goodwill and reputation of the said trademark of the petitioner dishonestly and wrongfully adopted and started using the deceptively similar trademark only to defraud and deceive the members of public and thereby passing off their products as products of the petitioner and make wrongful gain.
(20) The respondent is carrying on the same business of manufacturing and marketing tea under the impugned Trademark and the use of the impugned trademark by the respondent would result in an injurious association of the respondent with the petitioner. The goodwill of the petitioner in their products, which they have acquired over nearly 100 years, would be at stake because of the wrongful and illegal use of the impugned trademark by the respondent.
(21) The respondent is not entitled to use the impugned trademark "DHANSIRI" in connection with tea as the same resembles with the petitioner's registered trademark "DHUNSERI". The adoption of the impugned trademark "DHANSIRI" by the respondent for carrying on its business of manufacturing and marketing tea is wholly illegal and mala fide.
(22) The respondent is denying and/or interested to deny the right of the petitioner to exclusively use its said trademark "DHUNSERI" in respect of tea and/or allied goods and their exists no standard for ascertaining the actual damage caused or likely to be caused by such invasion and compensation by money would not afford adequate relief. Injunction is also necessary to prevent multiplicity of judicial proceedings. (23) The product of the petitioner is sensitive in nature being an item of human consumption, which needs to be produced as per required standards. The respondent's products do not comply with the requisite standards and could lead to major health hazard amongst the common public who will use the products of the respondent thinking that they are using the products of the petitioner thereby causing irreparable loss and prejudice to hard-earned goodwill of the petitioner over its registered Well-known Trademark "DHUNSERI".
(24) The respondent invaded and/or threatens to invade the right of the petitioner to exclusively use the said Trademark "DHUNSERI" in respect of tea and/or allied products.
On the selfsame allegation as made in the plaint, the appellant filed an application for temporary injunction annexing all relevant documents in support of its allegations thereby praying for the following relief:
"(i) Injunction restraining the respondent, their servants, agents and assigns and each of them from in any way infringing or causing, enabling others to infringe the registered trademark "DHUNSERI" of the petitioner by way of using the impugned trademark "DHANSIRI" or any other Trademark which so nearly resembles the petitioner's trademark as to be calculated to deceive and induce the people to believe that the product of the respondent originates from the petitioner or is connected thereto by manufacturing and/or processing and/or cultivation and/or marketing tea and/or any other product and/or goods under the name "DHANSIRI"
or any other corporate name containing a word/trademark which is either identical with or deceptively similar to the petitioner's trademark "DHUNSERI".
(ii) Injunction restraining the respondents, their servants, agents and assigns and each of them from in any way passing off or causing, enabling others to pass off its tea and/or allied products as that of the petitioner by way of using the impugned corporate name "Dhansiri Plantations Private Limited" or any corporate name containing a word/trademark which is either identical with or deceptively similar to the trademark "DHUNSERI" of the petitioner and/or by using the impugned trademark "DHANSIRI".
(iii) Injunction restraining the respondents, their servants, agents and assigns and each of them from in any way passing off or causing, enabling others to pass off its tea and/or allied products as that of the petitioner by way of using the impugned trademark "DHANSIRI" or any Trademark which so nearly resembles the same as to be calculated to deceive and induce the people to believe that the product of respondent originates from the petitioner or is connected with the petitioner.
(iv) Injunction restraining the respondents, their servants, agents and assigns and each of them from in any way selling or offering for sale or marketing or distributing or advertising tea and/or allied products under the impugned corporate name "Dhansiri Plantations Private Limited" or any corporate name containing a word/trademark which is either identical with or deceptively similar to the trademark "DHUNSERI" of the petitioner and/or by using the impugned trademark "DHANSIRI".
(v) Injunction restraining the respondents, their servants, agents and assigns and each of them from in any way selling or offering for sale or marketing or advertising tea and/or allied products under the impugned trademark "DHANSIRI" or any other trademark either identical with or deceptively similar to the trademark "DHUNSERI" of the petitioner.
(vi) Ad interim orders in terms of prayers (i) to (v) above;
(vii) Costs of and incidental to this application be paid by the respondents;
(viii) Such other order or orders, which this learned Court may deem fit and proper."
As indicated above, the learned Trial Judge by the order impugned herein issued notice to show-cause upon the respondent why the prayer of the appellant should not be granted but refused to grant ad interim order of injunction.
Being dissatisfied, the plaintiff has come up with the present first miscellaneous appeal.
Since, this appeal has been preferred against the refusal of ad interim order of injunction and the main application for temporary injunction is pending before the learned Trial Judge, we have decided to restrict our scrutiny only to the averments made in the plaint and in the application for injunction and we have, at the time of hearing, not taken into consideration any of the defences of the respondent.
The only question that arises for determination before us is whether on the basis of the averments made in the plaint and in the application for injunction along with its Annexures, it was a fit case for grant of ad interim order of injunction.
After haring the learned counsel for the parties and after going through the materials on record we find that the appellant has registered trademark of "DHUNSERI" for the purpose of tea and other various allied articles as it appears from the various documents annexed to the application for temporary injunction.
It further appears that the appellant complained to the respondent alleging violation of their aforesaid trademark and also the alleged illegal passing off against the respondent threatening to take legal action.
The respondent, as it appears from their answer annexed to the application for injunction, admitted that they are using the word "DHANSIRI" and claimed that the meaning of the word "DHUNSERI" is different from the word "DHANSIRI" used by them. It further alleged that the name of "DHANSIRI" was well within their right, which was registered with the Registrar of the Companies since 1997, which is phonetically and structurally different from the impugned name "DHUNSERI" of the appellant and there was no question of any confusion.
After hearing the learned counsel for the parties and after going through the materials on record we find that the scope of investigation in an action for infringement of registered trademark varies a lot from the one for passing off. As pointed out by a Bench consisting of three Judges of the Apex Court in the case of Durga Dutta Sharma vs. N. P. Laboratories reported in A.I.R. 1965 SC 980, in the former type of cases, once it is established that the essential features of the trademark of the plaintiff has been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the 'added matter' is sufficient to distinguish his goods from those of the plaintiffs.
In the case before us, the action is one for both infringement of registered trademark and passing off. Keeping in view the above quoted principles laid down in the case of Durga Dutta Sharma (supra), we are of the view that the plaintiff has definitely made out a strong prima facie case to have an ad interim order of injunction based on averments made in the plant and in the application for injunction including the various documents annexed to the application for injunction.
Although, it is contended by Mr Ghosh, the learned advocate appearing on behalf of the respondent that the spelling of two names differs, we are not at all impressed by such submission. At this stage, it will not be out of place to mention the observations of the Supreme Court in the case of Cadila Health Care Limited vs. Cadila Pharmaceuticals Limited reported in 2001 PTC 300 (SC) that in a country like India where there is no single common language, a large percentage of population are illiterate and a small fraction know English, in dealing with a case of this nature, the Court should not lose sight of the fact that the purchasers may have absolutely no knowledge of English language or of the language in which the trademark is written or to whom different words with slight difference in spelling may sound phonetically the same.
By applying the aforesaid principles to the case in hand, we are of the view that the purchasers of the goods of the appellant may be misled by the word "DHANSIRI" as the same is deceptively similar to that of the registered mark of the plaintiff and the same is likely to deceive or cause confusion in relation to the goods in respect of which it is registered.
Mr Ghosh, in this connection, placed strong reliance upon the decision of the Supreme Court in the case of Uniply Industries Ltd. vs. Unicorn Plywood Pvt. Ltd reported in A.I.R. 2001 SC 2083 in support of his contention that even on the basis of the averments made in the application for temporary injunction we should not pass any order of injunction at this stage. In the said case of Uniply Industries Ltd. (supra), the Supreme Court was dealing with a case where in a combined claim of passing off and infringement of trademark, there was common field of activity between the two contesting parties and at the same time, the goods and the trademarks sought to be used by them were identical. The question that had fallen for decision at the stage of disposal of the application for injunction was as to who was the prior user but the answer was not clear from the advertisements made by the respondents, the invoices and the letters of dealers. Both the parties, in that case, had applied for the registration of their respective trade under Section 21(3) of the Trade and Merchandise Marks Act, 1958. In such a case, it was held that the grant of temporary injunction either in favour of or against the appellant was not appropriate and the proceedings in the suit should be conducted after the Registrar investigated into the respective right of the parties under Section 12(3) of the Act. We fail to appreciate how the said decision can be of any help to the respondent in the facts of the present case.
We, therefore, find that the plaintiff has made out a very strong prima facie case to go for trial. Once a very strong prima facie case has been made out, the balance of convenience and inconvenience is in this type of a case in favour of granting the prayer of ad interim injunction, otherwise, the plaintiff shall suffer irreparable loss and injury. (See: Laxmikant V. Patel vs. Chetanbhai Shah & Anr. reported in (2002) 3 SCC 65). The learned Trial Judge, as it appears from the order impugned, did not consider the aforesaid aspects of the matter and ignored the well-settled principles which are required to be followed while considering a case of grant of ad interim injunction in this type of a matter. We, accordingly, set aside the order impugned on the abovementioned ground.
We, consequently, pass an ad interim order of injunction in terms of prayer (iii), (iv) and (v) of the application for temporary injunction filed in the Trial Court, as quoted above, till the disposal of the application for temporary injunction or till four weeks from today whichever is earlier.
The respondent is directed to file written objection to the application for temporary injunction within a week form today, reply if any, be given within a week thereafter. The learned Trial Judge is directed to dispose of the application for injunction within four weeks from today.
We make it clear that the learned Trial Judge should not, at the time of disposal of the application for temporary injunction, be influenced by the fact that we have granted an ad interim order of injunction, as the scope of grant of ad interim order of injunction is different from that of the disposal of the application for injunction on contested basis. Moreover, we have, at this stage, not taken into consideration the defence of the respondent and we have proceeded strictly on the basis of the pleadings of the plaintiff and the document relied upon him. Therefore, the learned Trial Judge is free to vary this interim order if he is satisfied from the materials that would be placed before him that the plaintiff is not really entitled to get an order of injunction.
If for any reason beyond the control of the learned Trial Judge, the injunction application cannot be disposed of within four weeks from today, he will reconsider the prayer for extension of the ad interim order after giving an opportunity of hearing to the respondent in support of its defence that would be taken in the meantime.
The appeal is, thus, allowed to the extent indicate above. In the facts and circumstances, there will be, however, no order as to costs.
(Bhaskar Bhattacharya, J.) I agree.
(Rudrendra Nath Banerjee, J.)