Bombay High Court
Anand Gopal Patel vs Marico Limited on 23 July, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
5-ial-18214-2024.doc
jsn
Digitally signed
by JITENDRA
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
JITENDRA SHANKAR
SHANKAR NIJASURE
NIJASURE Date:
2024.08.06
18:19:51 +0530
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.18214 OF 2024
IN
COMM IPR SUIT (L) NO.7489 OF 2024
Anand Gopal Patel & Anr. ...Applicant /
Defendants
In the matter between
Marico Ltd. ...Plaintiff
Versus
Anand Gopal Patel and Anr. ...Defendants
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Hiren Kamod, Niyati Davawala, Nishad Nadkarni, Khusbhoo
Jhunjhunwala, Aasif Navodia, Jaanvi Chopra, Rakshita Singh, i/b.
Niyati Davawala and Anil Shete for the Plaintiff.
Virendra Kumar Rai for the Applicant in IA (L) No.18214 of 2024 and
Defendant in COM IPR Suit.
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CORAM : R.I. CHAGLA J.
DATE : 23RD JULY, 2024.
ORDER :
1. By this Interim Application, the Applicants / Defendants has sought recall of the exparte ad-interim Order dated 8th March, 2024. Further, relief is sought to allow the Applicants / Defendants to sell the stock available in the godown / shop to recover the loss caused due to exparte ad-interim Order dated 8th March, 2024. 1/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 :::
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2. The Applicants / Defendants have alleged that there has been wilful suppression by the Plaintiff in that the Plaintiff has not disclosed prior notices, which have been sent by the Plaintiff through its then Advocate in prior year 2015-2016 and by which notices, the Plaintiff was aware of the Defendants impugned product and that inspite of which the Plaintiff in the Plaint filed in the present Suit has stated that it came to know about the Defendants products PRINCE and PANERI in the last week of February, 2024.
3. The Applicants have further stated that the answering Defendants are in existence from the last more than 15 years and the Plaintiff is knowing about answering Defendants products from last 9-10 years and not from February, 2024. It is submitted that the Plaintiff has not approached this Court with clean hands and is not entitled to any relief claim in the Suit as well as the Interim Application taken out by the Plaintiff which Interim Application deserves to be dismissed with exemplary costs.
4. The Applicants have in the present Interim Application also made submissions on merits of the main Interim Application filed by the Plaintiff which this Court at present is not required to go into and will be gone into at the hearing of the main Interim 2/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc Application filed by the Plaintiffs in the present Suit.
5. The Applicants have sought to place reliance upon the legal notices issued by the Plaintiff on 15th April, 2015; 2nd December, 2015;000000 26th December, 2015; 19th July, 2016 and 16th November, 2016 in order to contend that the Plaintiff was well aware of the impugned products and infact had attached images of the Defendants impugned products. The Applicants have also relied upon the tax invoices issued by them in order to contend that they were selling the impugned products PRINCE and PANERI in Mumbai since 2008-2009. In this context they have relied upon tax invoices issued by the answering Defendants' proprietorship namely M/s. Raja Products, Mumbai from 19th March, 2009 to 12th March, 2024 for both the impugned products. These are annexed at Exhibit B to the Interim Application.
6. The Applicants have also placed reliance upon the approval obtained by them in respect of the impugned products by one Vijayalakshmi Analytical Laboratory, approved by Government of India and pursuant to which one Certificate of Analysis was issued to the Applicants on 20th September, 2009 which has been annexed at Exhibit C to the Written Submissions.
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7. The Applicants have also placed reliance upon the copyright registration obtained by them being Registration No. A- 113921/2015 dated 10th August, 2015 wherein blue colour and circle symbol with word PANERI and coconut tree is registered. The Applicants have contended that the Plaintiff's copyright registration certificate for PARACHUTE was issued on 5th July, 2023 after 8 years of the Applicants aforementioned registration.
8. Mr. Virendra Rai the learned Counsel appearing for the Applicants has submitted that the exparte ad-interim Order having been obtained by the Plaintiff on suppression and by misleading the Court needs to be vacated. He has placed reliance upon the decision of the Division Bench of this Court Kewal Ashokbhai Vasoya and Anr. Vs. Suarabhakti Goods Pvt. Ltd.1 which had in turn relied upon the earlier decision passed by one of the members of the Division Bench in Rizwana Abdul Aziz Farooqui and Ors. Vs. Limra Realty and Ors. 2 where the Court has culled out certain principles of law relating to the applications moved without notice, specifically the need for a fair disclosure of material particulars in the Plaint or the application for ad-interim relief without notice. The Division Bench in Kewal Vasoya 1 Comm Appeal (L) No.31992 of 2022 dated 7th October, 2022. 2 Interim Application (L) No.14556 of 2021 dated 3rd August, 2021. 4/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 :::
5-ial-18214-2024.doc & Anr. (Supra) has also placed reliance upon Sun Pharmaceutical Industries Ltd. Vs. Emil Pharmaceutical Industries Pvt. Ltd. and Anr. 3, where the principles that appear to the bench are material in application for interim relief without notice and duty that falls on the Applicant in making such application has been laid down. He has in particular relied upon paragraphs 6 to 21 and 22 of the said decision. He has submitted where a party has knowingly made a false or misleading statement in relation to a material particular and the injunction was granted without notice to the opposite party, the Court shall vacate the injunction and this has been been provided in Order XXXIX Rule 4 of the Code of Civil Procedure, 1908.
9. Mr. Virendra Rai has also placed reliance upon the order passed by the Division Bench of the Delhi High Court in Dabur India Ltd Vs. Emami Limited4 wherein the Division Bench has observed in paragraphs 8, 9 and 11 that where there are contentious issues raised, the ends of justice warrant the learned Single Judge affording an opportunity to the Appellant / Defendant to oppose the application for grant of ad-interim injunction by placing all relevant material on the record. The Division Bench in that case had 3 Interim Application (L) No.10937 of 2021 in Com IPR Suit No.10928 of 2021 dated 7th June, 2021.
4 FAO (OS) (COMM) 171 of 2023 dated 21st August, 2023. 5/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 :::
5-ial-18214-2024.doc remanded the matter to the Single Judge for consideration of the ad- interim injunction application afresh and after affording an opportunity to the Appellant / Defendant to file a reply in opposition.
10. The learned Counsel appearing for the Applicants / Defendants has also placed reliance upon the decision in Wander Ltd and Anr. Vs. Antox India P. Ltd. 5 wherein the Supreme Court has considered that usually the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the Plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The principles for grant of interlocutory injunction have been laid down in the said decision. It has been held that the interlocutory remedy is both temporary and discretionary.
11. Mr. Virendra Rai has also placed reliance upon the decision of the Delhi High Court in Silvermaple Healthcare Services Pvt. Ltd. and Ors. Vs. Dr. Ajay Dubey and Ors. 6, wherein the learned Single Judge has placed reliance upon the aforementioned decision in Wander Ltd. (Supra) and Dabur India Ltd. (Supra) and has held 5 1990(2)ARBLR399(SC) 6 CS (COMM) 570 OF 2023, IA Nos.15595 &15596 OF 2023 dated 24th August, 2023.
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5-ial-18214-2024.doc that where the Defendants are using the impugned mark before the plaintiff instituted the suit, then, in all but, possibly, the most exceptional cases, the decision in Dabur (Supra) would obligate the Court to extend, to the defendant, an opportunity to submit a written response to the prayer for interlocutory relief, before proceeding to pass orders.
12. Mr. Virendra Rai submitted that the Suit filed by the Plaintiff is an abuse of process of law and that the Applicants / Defendants have been using the impugned marks for over a period of 15 years and which was to the knowledge of the Plaintiff and not disclosed. Accordingly, the relief sought for be granted by vacating the ex-parte ad-interim Order.
13. Mr. Hiren Kamod, the learned Counsel appearing for the Plaintiff has submitted that the Defendants application fails to make out a case for recall of order as there is no suppression by the Plaintiff as alleged by the Applicants / Defendants. All the correspondence and particularly notice dated 15th April, 2015 issued by the Plaintiff's attorneys were at the same time when the opposition proceedings were instituted in 2015 and which proceedings have been disclosed in the Plaint. Mr. Kamod has 7/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc submitted that in an application for vacation of an exparte ad-interim Order under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, the Defendants' burden to establish or make out a case for recall of the Order is very high and this has not been made out in the present case. He has referred to the fact that the Defendants had sought to rely upon material which had been pleaded / disclosed in the Plaint to seek a recall which demonstrates that there is no suppression. The Defendants have relied on the Plaint and exhibits therein to allege suppression.
14. Mr. Kamod has submitted that the present Application is silent as to the provision of law under which it has been filed apart from the fact that it fails to even fulfill the basic requirement of law when it comes to applying for recall of the Order.
15. Mr. Kamod has submitted that the absence of suppression in the Plaint is evident from the Defendants' Advocates' responses to the letters issued by the Plaintiff requesting inspection of documents which the Defendants allege to have been suppressed by the Plaintiff as pleaded in its application. The Defendants in response have refused to grant inspection stating that everything that the Defendants seek to rely upon already forms a part of the Plaint. 8/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 :::
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16. Mr. Kamod has submitted that the Defendants are placing reliance upon the Advocates Notices issued in the year 2015 - 2016 as well as the tax invoices which have been issued from 2009 to 2024. These documents are a part of the trademark opposition proceedings between the parties which proceedings have been referred to in the Plaint as well as in the exparte ad-interim order of which vacation has been sought. He has submitted that the Defendants argument proceeds on the basis that in view of the pending opposition proceedings between the Plaintiff and Defendant No.1, in respect of the Defendants' application bearing No.2401837 in Class 29, no exparte order ought to have been passed and that Court should have waited for the Registrar of Trademarks to decide the opposition proceedings. He has submitted that it is settled position that the pendency of opposition proceedings cannot prevent the Court from considering the Plaintiff's Interim Application which seeks relief against use of the impugned mark / label / /trade dress/ bottles as set out in the Plaint in respect of impugned products being sold in the market by the Defendants. This relief is entirely different in comparison to those sought in the opposition proceedings and which reliefs the Registrar of Trademarks could never have been in a position to grant. The opposition proceedings can only decide 9/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc whether the Defendants could get registration of the impugned mark. The Registrar of Trade Marks has no power to grant any injunction against 'use' of the impugned mark. He has submitted that the Defendants contention is not only absurd, it is also devoid of any legal or factual foundation and requires to be disregarded.
17. Mr. Kamod has submitted that the Defendants have alleged that the Plaintiff's date of knowledge as regards the Defendants trademark application or the date of filing of opposition proceedings i.e. 26th February 2015 ought to be deemed as the Plaintiff's knowledge of the presence of actual impugned product of the Defendants; and therefore, the Plaintiff has made an incorrect statement in the Plaint about its date of knowledge of the actual impugned products being in or about February 2024. He has submitted that this can never be the case as "knowledge of adoption of an application" made by a party to register a mark or any opposition thereto, cannot be deemed to be knowledge of the presence of actual impugned products in the market bearing the said mark. There is a difference between coming across the Defendants' trademark application and coming across the Defendants' goods bearing the impugned mark. He has placed reliance upon the Skol 10/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc Breweries Limited v. Jagpin Breweries Limited 7 and in particular paragraphs 8 and 9 of the said decision. He has submitted that the Plaintiff's opposition to the Defendants application cannot therefore be deemed to be knowledge of actual impugned products of the Defendants. In any event and without prejudice to the other contentions of the Plaintiff, it is submitted that the device mark (black & white) applied for registration by the Defendants is not what is being used by the Defendants on the impugned products set out in the Plaint.
18. Mr. Kamod has submitted that the Advocates invoices which have been relied upon by the Plaintiff had been annexed by the Defendants before the Trademark Registry and it is therefore absurd for the Defendants to contend that the Plaintiff's investigation agencies had bought the Defendants' products in 2016. He has submitted that the invoices are disputed and, in any event, do not evince the use of the label marks in question and only indicate the word mark which is not the bone of contention in the present suit. He has submitted that the Defendants have placed reliance upon the invoice at page 362 of the Plaint, to contend that the Plaintiff has 7 Notice of Motion No. 92 of 2012 in Suit No. 56 of 2012 11/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc suppressed the fact that the Defendants are allegedly using the mark PANERI since long or since 2016. He has submitted that the said invoices has been annexed to the Plaint by the Plaintiff (thereby nipping the argument of suppression at its bud). He has submitted that the Plaintiff in the Plaint has specifically pleaded that despite coming across the Defendants impugned trade mark application, it never came across the actual products in the market bearing the Defendants trade mark.
19. Mr. Kamod has submitted that the Plaintiff in its legal notices including legal notice dated 15th April, 2015 in the opposition proceedings had in no uncertain terms indicated to the Defendants of its objection to the use of infringing labels which were referred in the correspondence; that the Defendants were agreeable to change the label which had been objected to; that the Defendants had proposed though not commenced use of a revised label; that the Plaintiff refused to allow such revised label since it continued to be infringing the Plaintiff's rights. The correspondence exchanged between Plaintiff and Defendants in 2015 - 2016 only show that the Defendants knowingly adopted and have thereafter now dishonestly used an infringing mark and they therefore cannot claim any 12/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc equities. He has submitted that the letter / notice dated 15th April, 2015 is a 'without prejudice' correspondence and was issued only with a view to explore an amicable resolution to the opposition proceedings already disclosed by the Plaintiff.
20. Mr. Kamod has submitted that alleged copyright registration certificate relied upon in the present Application has been denied by the Plaintiff. It is submitted that the said certificate does not assist the Defendants in any manner whatsoever. It is submitted that it is not possible for the Plaintiff to be aware of the said purported certificate, even by way of reasonable efforts and diligence, given that the records of the Copyright Office are not publicly available. He has submitted that it is settled law that Plaintiff is required to disclose what it can discover with reasonable efforts and in any event, the Defendants have not alleged that the said certificate has been suppressed by the Plaintiff.
21. Mr. Kamod has submitted that it appears from the alleged certificate annexed by the Defendants to the Application that the copyright registration certificate was dishonestly and clandestinely made by the Defendants on 15 April 2015, i.e., after the 13/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc Plaintiff filed the trademark opposition dated 26 February 2015 in respect of the Defendants application bearing no. 2401837, i.e., after being put to notice of the rights and objections of the Plaintiff by way of the said opposition. Further, a perusal of the copyright certificate would demonstrate that the application mentions that the said label was 'unpublished' i.e., not put to use as on the date of its application. Mr. Kamod has submitted that the Plaintiff reserves its rights to evaluate and initiate appropriate action against the said alleged registration.
22. Mr. Kamod has submitted that the Defendants have failed to make out any suppression or material suppression on the part of the Plaintiff, much less knowingly. The Plaintiff has disclosed all material that could have been obtained by it on a best-efforts basis and there arises no ground for recall or non-continuation, much less vacation of the Order passed by this Court.
23. Mr. Kamod has made submission on the allegations in the Interim Application of the Defendants that extension of the said exparte ad-interim Order being fraudulent. This has not been addressed on behalf of the Defendants in arguments and does not 14/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc form part of the written submissions. In any event I do not find any merit in such allegation as the exparte ad-interim order and the extension thereof has been granted in accordance with law.
24. The prayer in the Interim Application has sought recall of the said ex-parte ad-interim Order on account of the alleged losses or on account of alleged age, health and physical condition of the Defendant No. 1 which can never form the basis for recall of the said Order.
25. In so far as the Plaintiff's contention that the Defendants are in contempt of this Court's exparte ad-interim order, that will be considered independent of the present Application.
26. Having considered the rival submissions, the Interim Application has not mentioned under which provision of law it has been filed. However, since it seeks vacation of the said exparte ad- interim order, it is only relevant to consider whether it is properly filed under Order XXIX Rule 4 of the Code of Civil Procedure, 1908.
27. Under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 an exparte ad-interim Order may be discharged and / or set aside on an application made by a party dissatisfied by 15/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc the order, provided that in an application for temporary injunction or an Affidavit supporting it a party has made false and misleading statements in relation to a material particular and the injunction was granted without giving notice to the opposite party.
28. The Applicants / Defendants have relied upon legal notices / correspondence exchanged between the parties in 2015- 2016 and tax invoices issued from the Defendants' proprietorship namely M/s. Raja Products, Mumbai from 19th March, 2009 to 12th March, 2024 for both the impugned products PRINCE and PANERI. This is in support of the Defendants contention that the Plaintiff has willfully suppressed this material and misstated in the Plaint that the Plaintiff had knowledge of the Defendants' impugned product in the last week of February, 2024.
29. Having perused the Plaint, it is evident that the material which is being relied upon by the Applicants is material which formed part of the opposition proceedings between the Plaintiff and Defendant No.1 with respect to the Defendants trademark application bearing No.2401837 in Class 29. The said opposition proceedings have been expressly referred to in the Plaint. Further, the Plaint has annexed the opposition proceedings including the Affidavit in 16/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc Evidence of the Applicants which had been filed and exhibits forming part thereof. The correspondence as well as tax invoices form part of the said Affidavit filed in the opposition proceedings. Thus, there has been no suppression of this material in the Plaint.
30. The Applicants have also relied upon the copyright registration certificate which had been obtained by the Defendants on 10th August, 2015 with regard to their impugned product PANERI wherein the blue colour and circle symbol with word PANERI and coconut tree is registered. I find much merit in the submission on behalf of the Plaintiff that it is not possible for Plaintiff to be aware of the copyright registration certificate, even by way of reasonable efforts and diligence, given that the records of the Copyright Office are not publicly available. It is settled law that Plaintiff is only required to disclose what it can discover with reasonable efforts and in any event, the Defendants are not alleging suppression of the copyright registration certification. Further, in the opposition proceedings, the Defendants did not disclose anything in respect of the alleged copyright registration application having been filed by them. Another fact which requires consideration is that after the Plaintiff had filed the trade mark opposition on 26th February, 2015, 17/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc the Defendants had obtained the alleged copyright registration certificate on 15th April, 2015. The Defendants were put to notice of the rights and objections of the Plaintiff by way of the said opposition. Further, in the copyright registration certificate it is stated the label was 'unpublished' i.e., not put to use as on the date of its application. This infact would go against the Defendants contention that they were using the impugned label much prior thereto.
31. Thus, in my considered view, there has been no suppression on the part of the Plaintiff and the Plaintiff has infact disclosed all material that could have been obtained by it on a best- efforts basis and hence there is no ground for recall or non- continuation of the exparte ad-interim order.
32. The decision relied upon by the Applicants / Defendants viz. Kewal Ashokbhai Vasoya and Anr. (Supra) to contend that the grant of exparte reliefs is bad in law and impermissible, is a misplaced and misleading reliance upon the said decision. The said decision does not bar or prohibit the grant of exparte reliefs. It merely lays down the principles to be kept in mind while considering an application for grant of exparte relief, which is an exception carved out under the statute to the general rule of "giving notice". In 18/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc my view, the Plaintiff has satisfied all the requirements in their application for grant of exparte ad-interim relief by making reasonable disclosure of material facts on best effort basis. In KLF Nirmal Private Industries Ltd. Vs. Marico Ltd. 8, this Court has held that the Defendants are required to produce positive evidence of the Plaintiff having knowledge of the Defendants impugned products prior to the date claimed by the Plaintiff in order to establish its allegations of any suppression of prior knowledge. This the Defendants in my view have failed to produce.
33. I further find that the Defendants reliance on Dabur India Ltd. (Supra) is a misplaced reliance. The said decision is based upon the facts before that Court and which facts are entirely different from the facts in the present case. Further, the subsequent decision of the Division Bench of the Delhi High Court in Hulm Entertainment Pvt. Ltd. & Ors. Vs. SBN Gaming Network Private Ltd. & Ors 9. at paragraphs 2, 5 to 7 has held that Dabur India Ltd. (Supra) cannot possibly be construed as interdicting the Court from considering the grant of ad-interim exparte reliefs, if circumstances of that particular case so warrant. The Division Bench has held that the conclusion of 8 IA (L) No.26759 of 2023 in COMIP Suit (L) No.22293 of 2023 dated 20th December, 2023.
9 FAO (Comm.) 209 of 2023 dated 11th October, 2023. 19/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 :::
5-ial-18214-2024.doc the learned Single Judge which was under Appeal viz. that Dabur India (Ltd.) bids Courts to avoid passing of an ad-interim order prior to the Defendant being afforded an opportunity is clearly incorrect. The Court in Dabur India Ltd.(Supra) neither propounds such a rule nor does it enunciate such a standard as observed by the learned Single Judge. The learned Single Judge appears to have erred in understanding Dabur India Ltd. (Supra) enunciating a rule that injunction must be refused if it be found that the infringing products are in the market for some time.
34. Further, Defendants have relied upon Silvermaple Healthcare Services Pvt. Ltd. and Ors. (Supra) to demonstrate that the alleged principles of Dabur India Ltd (Supra) have been followed by the Delhi High Court in other matters is a misplaced and misreading reliance. It is settled law that the Courts are not precluded from granting ex-parte ad-interim relief order, particularly where the circumstances of the case so warrant.
35. In my considered view, the facts and circumstances in the present case clearly warrant grant of exparte ad-interim relief. Given the fact that there has been no suppression much less deliberate suppression of any material particular, the pre-requisites of Order 20/21 ::: Uploaded on - 06/08/2024 ::: Downloaded on - 07/08/2024 20:29:21 ::: 5-ial-18214-2024.doc XXXIX Rule 4 of the Code of Civil Procedure, 1908 have clearly not been met.
36. Thus, there is no case made out by the Applicants / Defendants for the recall of the exparte ad-interim Order dated 8th March, 2024 and accordingly, the Interim Application (L) No.18214 od 2024 is rejected and disposed of accordingly. There shall be no order as to costs.
37. The earlier ad-interim order shall continue to operate till further orders.
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