Allahabad High Court
Pradeep Jain And Another vs Shri Swadesh Kumar Jain And Others on 29 April, 2011
Author: Prakash Krishna
Bench: Prakash Krishna
HIGH COURT OF JUDICATURE AT ALLAHABAD A.F.R Reserved/Court No. - 27 Case :- FIRST APPEAL FROM ORDER No. - 3377 of 2008 Petitioner :- Pradeep Jain And Another Respondent :- Shri Swadesh Kumar Jain And Others Petitioner Counsel :- M.K. Gupta,Amit Daga Respondent Counsel :- Ved Mani Sharma Hon'ble Prakash Krishna,J.
1. The above appeal filed under Order 43 Rule 1(r) of the CPC by the defendants arises out of Original Suit No. 6 of 2008 and is directed against the order dated 1.11.2008 passed by the District Judge, Ghaziabad whereby he has allowed the application 6-C for temporary injunction restraining the defendants-appellants herein from passing off the Shikanji Powder, Shikanji Drink etc. under the trade mark of the plaintiffs namely 'Jain Shikanji' or 'Jain Shikanji Masala'.
2. The defendants have further been restrained from using, advertising, licensing directly or indirectly any trade name or the trade mark which the plaintiffs are using or which is deceptively/confusing similar or identical to 'Jain Shikanji', 'Jain Shikanji Masala' and 'Jain Shikanji Restaurant' etc. till the pendency of the suit.
3. The background facts may be noted in brief;
4. The plaintiffs and the defendants belonged to same family. Original Suit No. 6 of 2008 has been filed by the respondents herein on the allegations that their father Parmatma Sharan Jain was carrying on the business of selling 'Jain Shikanji' and 'Shikanji Powder' more than three decades under the name and style of "Jain Shikanji" near Police Station Modi Nagar District Ghaziabad. The compound of 'Shikanji' was formulated by him (father of the plaintiffs) and with the passage of time it became very popular and acquired a brand name and shikanji drink sold under the trade name of 'Jain Shikanji' gained immense popularity and good will. The said Trade Mark became distinctive of Shri Parmatma Sharan Jain and his sons (Plaintiffs). Shri Parmatma Sharan Jain expired in the year 1991 and the business was inherited by his five sons, the plaintiffs who are continuing to do the said business. The defendants Shri Pradeep Jain, his wife Smt. Beena Jain are the first cousin, and wife of cousin of the plaintiffs. Pradeep Jain was never associated with the plaintiffs or with their shikanji business. Recently they have opened 'Jain Shikanji Restaurant' at Keshav Garden, Kadrabad, Modinagar at a distance of approximately 500 meters from the plaintiffs' shop and have started selling Shikanji under the trade name of 'Jain Shikanji' unauthorisedly. Thus, they are infringing and passing off the trade mark of the plaintiffs and thus causing irreparable loss and injury to them.
5. It was further stated that the plaintiffs are also the registered proprietors of trade mark 'Jain Shikanji' in India since the year 1998, registered in class 16, being registration no. 820925.
6. Along with the plaint, an application on similar allegations for grant of temporary injunction restraining the defendants from selling 'Jain Shikanji' or using 'Jain Shikanji' on the products sold by them was filed.
7. In reply, it was stated that Late Banarsi Das Jain was the grand father of the plaintiffs and the defendant no. 1, who started the business of Shikanji, used the name 'Jain' in the year 1937. He carried on the said business along with his sons namely Parmatma Sharan Jain (father of the plaintiffs) Amar Nath Jain, (the father of the defendant no.1). On 15.4.1999, a notice was given by the plaintiffs complaining that defendants have no right to do the business in the name of 'Jain Shikanji', which on 21.4.1999, was replied, refuting the plaintiff's' claim. Thereafter no action was taken on the said notice by the plaintiffs. With the passage of time, the defendants' business flourished and they opened a Branch at Modinagar in the year 2008 which became an eyesore for the plaintiffs. The plaintiffs and the defendants both have applied for registration before the authority concerned of trade mark 'Jain Shikanji' which is pending consideration. The defendants application for registration is earlier in point of time.
8. It was further pleaded that the defendants are carrying on the business since the year 1999 openly, continuously with full knowledge of the plaintiffs and as such no case for grant of any temporary injunction order has been made out.
9. The trial court/the District Judge considered the respective submissions of the counsel for the parties and held that the trade mark 'Jain Shikanji' is registered since 1998 in class 16. The said class relates to registration of trade mark for letter pad, fax, visiting cards holdings and other stationary goods. In other words the said trade mark registered under the Trade Marks Act does not relate to cold drink I.e the product known as 'Jain Shikanji'. It was further found that the plaintiffs are carrying on the business for a considerable period of time and their products have acquired a reputation and they have prima facie case, balance of convenience and would suffer irreparable loss and injury if the injunction prayed for is not granted to them. The order therefore, under appeal granting temporary injunction was passed on the ground of passing off.
10. Heard Shri M.K.Gupta, learned counsel for the appellants and Shri Ravi Kant learned senior counsel for the respondents.
11. The learned counsel for the appellants submits that indisputably, a notice dated 15.4.1999 objecting the action of the defendants of selling the soft drinks under the name and style of 'Jain Shikanji' was given by the plaintiffs. In the said notice, it was set out that the notice giver is the owner of registered Trade Mark No. 820925 of selling 'Jain Shikanji', Modi Nagar. Noticee was asked not to use the said Trade Mark. No action was taken on the basis of the said notice. The present suit was filed after lapse of considerable period of time in the year 2008 therefore, on the ground of delay, the plaintiffs' are not entitled to get any temporary injunction order. Even otherwise also on merits, the plaintiffs have failed to prove and establish the three ingredients namely prima facie case, balance of convenience and irreparable loss which are essential for the grant of temporary injunction. Late Banarsi Das Jain, the grand father of the parties had started the business along with his sons and the said business being ancestral business, the defendants are very much entitled to sell the product in the name & style of 'Jain Shikanji'. The registration no. 820925 under the Trade Marks Act is not in respect of the drink, 'Jain Shikanji' therefore, is of no avail to the plaintiffs, submits the learned counsel for the appellants.
12. In reply, the learned counsel for the respondents submits that there is no iota of evidence on record to show that Late Banarsi Das Jain, the grand father of the parties started the said business in his life time. On their own showing, the defendants have started the business in the year 1998 at Ghaziabad. Thereafter, the defendant no.1 in the year 2008 opened a shop at Modinagar, at a short distance of plaintiff's shop. The plaintiffs have acquired a goodwill and the defendants are using deceptive similar trade marks. The plaintiffs have gained the immense popularity and acquired a goodwill with regard to product known as 'Jain Shikanji' and the defendants by supplying the product as 'Jain Shikanji' are illegally trying to reap up the good will of the plaintiffs with the intention of confusing the customers. Alternatively, the findings recorded by the Trial Judge are based on appreciation of evidence and as such, unless any perversity is shown therein, the appellate Court should slow in interfering with such matter.
13. Considered the respective submissions of the counsel for the parties.
14. Broadly, the following two questions fall for determination in the appeal:
i)Whether the court below was justified in granting temporary injunction order in favour of the plaintiffs.
ii) Whether the delay in filling the suit would dis entitle, the plaintiffs to get the temporary injunction order.
15. Taking the first point first, it is desirable at this stage to notice the pleadings of the parties in this regard in brief:
16. The plaintiffs came out with the case that there father Late Parmatma Sharan Jain was carrying on the business of manufacturing and selling the product in question known as 'Jain Shikanji' for the last three decades and after his death, the plaintiffs are carrying out the same business at Modinagar. The above facts find place in paragraph 1 of the plaint.
17. In reply, the appellants by making a general denial have denied the contents of paragraph 1 of the plaint. There is no specific denial. However, in the other paragraphs, it has been pleaded by them that the name of 'Jain Shikanji was first adopted in the year 1937 by the grand father namely late Banarsi Das Jain. This is the state of affairs of the pleadings of the parties.
18. It may be noted that the fact that the plaintiffs' father has been carrying on the business for the last three decades and after his death it is the plaintiffs who are carrying out the said business and selling the product under the name & style of 'Jain Shikanji' has not been denied.
19. The second important aspect of the case is that the defendants have not denied the averments made in paragraph 1 of the plaint to the effect that " The masala of the Shikanji was formulated by Shri Parmatma Sharan Jain and the same became very popular over a period of time."
20. Thirdly, It has also not been denied that the plaintiffs' are carrying on the business of selling 'Jain Shikanji' at Kadrabad, Modinagar.
21. As against above, the case of the defendant- appellants in the written statement is that the name of 'Jain Shikanji' was first adopted in the year 1937 by grandfather namely late Banarsi Das Jain. There is no averment in the written statement anywhere, at least none was shown to me during the course of the argument, that after death of Late Banarsi Das Jain, the father of the defendant no. 1 or anybody in his family carried on the said business. On the contrary, the case of the defendants in the written statement is that in the year 1999 a shop was opened at Hindon River, Ghaziabad and thereafter its branch was open at Mohalla Kadrabad in the Month of May 2008. The sum and substance of the written statement is that the defendants are using the name 'Jain Shikanji' since the year 1999 at Ghaziabad and they have legal, vested and hereditary rights. They are openly extensively and continuously using the said name since the year 1999.
22. On the pleadings as they stand today, the following facts emerges:
The plaintiffs are carrying on the business since before the start of the business of the defendants and according to the plaintiffs at least for the last three decades at the time of filing of the suit. .
The composition and formula of 'Jain Shikanji' was devised by their father Late Parmatma Sharan jain.
It is admitted case of the parties that the plaintiffs are selling the product in the name of 'Jain Shikanji' since before the commencement of the business of the defendants at Ghaziabad.
According to the defendants they have started the business at Hindon River, Ghaziabad in the year 1999 and they have legal, vested and hereditary rights in the name of 'Jain Shikanji as according to them the said name was formulated by the grand father of defendant no.1 Late Banarsi Das Jain.
The defendants opened a new shop at Modi Nagar in the month of May 2008 which is less than 500 meters away from the already established shop of the plaintiffs.
A notice dated 15.4.1999 was given by the plaintiffs to the defendant no. 1 asking him not to sell the product as 'Jain Shikanji' in view of the fact that 'Jain Shikanji' is a registered trade mark under Trade Mark and Merchandise Act 1958 being registration no. 820925. The said notice by denying the facts, as set out in the notice was replied by the registered letter dated 21.4.1999.
23. Coming to the evidence, the defendants have not produced any evidence to show that Late Banarsi Das Jain ever carried on the said business in the year 1937 along with his two sons, Late Partama Sharan Jain and Amar Nath Jain, the father of the plaintiffs and the father of the defendant no. 1 respectively.
24. During the course of the argument, a query put by the Court as to when Banarsi Das Jain expired. Shri M.K.Gupta, learned counsel for the appellants on the instructions stated that he died in the year 1974. Further, he was asked to show from the pleadings that the said business was carried on, if at all it was established by Late Banarsi Das Jain , after his death by the defendants or by the father of defendant no.1. He very fairly accepts that there is no such pleading. Besides the pleading, at this stage, there is no iota of evidence to show that Late Banarsi Das Jain ever carried on the business of selling 'Jain Shikanji' as averred by the defendants or that any such business was being carried on.
25. There is no dispute on the point that the plaintiffs has been carrying on the business since the life time of their father for the last three decades (vide paragraph-1 of the plaint). This being so, prima facie it is established that the plaintiffs are carrying on the business and selling the soft drink under the trade name of 'Jain Shikanji' since before; at least for the last thirty years.
26. The argument of the learned counsel for the appellants that the plaintiffs are taking different stands at different stages with regard to the year of the commencement of the business, has no merit. He submits that in the application for registration of trade mark, it has been shown that the plaintiffs are in business of 'Jain Shikanji' since the year 1932. A reference of his oral deposition recorded after the passing off the order under appeal was made to show that the plaintiffs witness is not very sure with regard to the exact date of the commencement of the business. Be that as it may, for the present purposes, the plaint allegations that the plaintiffs father has been carrying on the business for the last three decades is not disputed. The statement of the plaintiff referred by the learned counsel for the appellants is not of much assistance at this stage for the reasons more than one. Firstly, the said statement was admittedly not before the trial court while passing the order under appeal. Secondly, the statement of the witness, has to be read as a whole and cannot be read in isolation, beyond the context. Inability to state specific date of the commencement of the plaintiffs business by his witness at this distance of time is of little consequence. Thirdly, the copy of the said statement has been filed along with an affidavit without there being an application for taking the same as an additional evidence in the appeal.
27. In Zila Parishad, Budaun and others versus Brahma Rishi Sharma 1970 (68) ALJ (F.B) 5 of this Court, it has held that the legality and validity of an order passed by the court below on the injunction application has to be judged on the basis of the material on record which was before the trial court. If parties want to rely upon certain other evidence, recourse to Order 41 Rule 27 CPC should be taken.
28. For the sake of convenience paragraph 18 of the above judgment is reproduced below:
"18. Re. Question 2: Ordinarily an appellant is confined to the evidence already on record prepared by the lower court. It is open to him to request the appellate court to admit fresh evidence under Order 41, Rule 27, C.P.C. Where permission is granted and fresh evidence is admitted under the aforesaid provision, the appellant can rely on that evidence as well. Learned counsel for the appellants has not been able to cite any authority to show that an appellant as of right, can rely on fresh or additional evidence in appeal from an ex parte order passed under Order 39, Rule 1, C.P.C."
29. Now, the plea of that Late Banarsi Das Jain started the business may be considered.
30. Noticeably, the defendant no. 1 in his reply dated 21.4.1999 to the legal notice dated 15.4.1999 has not set out the plea relating to grandfather's business. This fact weighs heavily against them.
31. There being no such plea or as a matter of fact, any evidence that after the death of Banarsi Das Jain in the year 1974, the family business continued, and there being no denial of fact that the defendants are in the business at least for the last three decades since the life time of their father, in my considered view, the findings recorded by the trial court holding that a prima facie case for grant of temporary injunction has been made out, calls for no interference. The other findings with regard to balance of convenience and irreparable loss also have been rightly recorded by the court below in favour of the plaintiffs, therefore.
32. It will not be out of place to mention here that the aforestated suit has been instituted on two grounds firstly for breach of trade mark and secondly for passing off their goods by the defendants as if it had been manufactured by the plaintiffs.
33. The trial court so far as infringement of trade mark is concerned has held against the plaintiffs on the finding that the trade mark which is registered under the Trade Marks and Merchandise Act is with regard to 'Jain Shikanji' under class 16 which is meant for letter pads, visiting cards holdings and other stationery goods. A copy of the registration certificate of the said trade mark has been annexed along with the counter affidavit. It would show that the trade mark is registered in favour of the plaintiffs trading as 'Jain Shikanji' near Police Station, Modi Nagar(U.P) Manufacturers and Merchants. The Court below took the view that the registration of the said trade mark is not with respect to the product namely soft drink sold as 'Jain Shikanji'. On that premises the finding was returned against the plaintiffs. There being no cross appeal or objection against the said finding, it has attained finality.
34. Now, it is desirable to consider, what "passing off" means and how it has been dealt with in authoritative judicial pronouncement.
"In Earl Jowitt's Dictionary of English Law "Passing off" has been described thus: 'The wrong committed by a person who sells goods or carries on business etc, under such a name, mark, description or otherwise in such a manner as to mislead the public into believing that the goods or business, etc, is that of another person. The latter person has a right of action in damages or for an account, and for an injunction to restrain the defendant for the future."
36. The Apex Court in Wander Ltd. And another versus Antox India P.Ltd. 1990 (Supp) SCC 727 has held as follows:
"An infringement action is available where there is violation of specific property right acquired under and recognised by the statute. In a passing-off action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a mis representation made by a trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader. Speaking of the legal clarification of this form of action, Lord Diplock said:-
"Unfair trading as a wrong actionable at the suit of other traders who thereby suffer loss of business or goodwill may take a variety of forms, to some of which separate labels have become attached in English law. Conspiracy to injure a person in his trade or business is one, slander of goods another, but most protean is that which is generally and nowadays, perhaps misleadingly, described as 'passing-off". The form that unfair trading takes will alter with the ways in which trade is carried on and business reputation and goodwill acquired. Emerson's maker of the better mousetrap if secluded in his house built in the woods would today be unlikely to find a path beaten to his door in the absence of a costly advertising campaign to acquaint the public with the excellence of his ware."
37. In Laxmikant v.Patel V/s Chetanbhai Shah and another, (2002) 3 SCC 65: 2002 (24) PTC 1 (SC) their Lordships of the Supreme Court have held that while considering a prayer for grant of a ad interim injunction in a passing off action, the Court ought to remember that a person who sell his goods or delivers or goodwill which becomes the property of the user entitled to protection by the courts. Initiating sale of goods or services in the same name or by imitating that name may cause injury to the business of one who has property in that name. Honesty and fair play, observed the court, ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. The following passage from the decision is in this regard instructive:
"A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
38. In Cadila Health Care Ltd. Versus Cadila Pharmaceuticals Ltd. AIR 2001 SC 1592, the following observations have been made:
"The decisions of the Supreme Court in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. To take a view, based on English cases that "Where common marks are included in the rival trade marks, dissimilarity in essential features in devices and composite marks are more important than some similarity is not proper. The view expressed in 2000 AIR SCW 2172: AIR 2000 SC 2114: 2000 CLC 1338 that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different is clearly contrary to the binding precedent of the Supreme Court in Amritdhara, AIR 1969 SC 449 and in Durga Dutt Sharma's case, AIR 1965 SC 980."
39. It is not necessary to burden this judgment with the other cases relied upon by the learned counsel for the respondent specially in view of the latest decision of the Apex Court in T.V.Venugopal versus Ushodaya Enterprises Ltd. & Another JT 2011 (3) SC 225 wherein it has reviewed and considered almost all its earlier judgments including those referred to above. It has been held that every mark with a reputation cannot be determined as a well-known mark as reputation by itself does not escalate the mark into the position of well-known mark. The reputation of a mark can be restricted to a particular territory, to a particular category of goods or services, to a particular category of population, to a particular linguistic section of public etc.
40. In R.K.Products versus Kothari Products Ltd. 2005(31) PTC Alld.393 Alld. A Division Bench of this Court held that where a person is carrying on business of manufacturing and sale of pan masala under the name & style of "Pan Parag", "Pan Parag Gutka" "Pan Parag Mawa" for the last 30 years and the name of the company Kothari is closely associated with its these products, use of Kothari by the defendants and it upheld injunction order granted by the trial court.
41. Having regard as to what has been made said above, the opening of new shop by the defendant-appellants at the vicinity of the plaintiffs' established shop and using the same mark i.e "Jain Shikanji" etc. amounts misleading the customers as if they are purchasing the goods of the plaintiffs. Prima facie the opening of the shop by the defendants shows that there was dishonest intention on their part in passing off goods and as such the injunction order was rightly granted.
42. The other limb of the arguments of the appellant is that the parties belonged to the same family and therefore, their case stand on a different footing then where a trade mark is used by a stranger or a 3rd party.
43. The said argument is not at all impressive and is liable to be rejected, in view of the fact that the plaintiffs are in the business since decades prior to the commencement of the business of the defendants.
44. Being in business for the last three decades, the plaintiffs have loyal customer base and has built up a reputation in their 'soft drink' , known as 'Jain Shikanji' amongst the public of Modinagar at least. . The defendants have been passing off their goods as if it was manufactured by the plaintiffs. This would certainly cause a irreparable loss and injury to the plaintiffs.
45. It was pointed out that on 16.5.2008 it is the defendants who have filed application for registration of trade mark 'Jain Shikanji' before the registering authority under the Trade Mark and Merchandise Act. The application by the defendants is subsequent i.e 26.5.2008. It was admitted by the learned counsel for both the parties that the matter is pending before the registering authority and no party thus can derive any advantage at this stage of the litigation.
46. It will not be out of place to mention here that the learned counsel for the respondents referred certain documentary evidence which were produced before the Court below, in the shape of plaintiffs advertisement and newspaper report, trade mark registration certificate of the plaintiffs for 'Jain Shikanji' and 'Jain Shikanji Masala', showing registration with various authorities such as in Food License under U.P Food Adulteration Rules 1976, in license from Nagar Palika certificate, report of the Chartered Accountant certifying the turnover of the product by sale for the years 2004-2005 to 2007-2008 in respect of M/s 'Jain Shikanji', certificate ISO 9001: 2000 etc. to show that they are in business of selling Soda Shikanji, Cold Drink and other items for a considerable period of time at Kadrabad, Modinagar. News item published in daily newspaper "Rashtriya Sahara' states that 'Jain Shikanji' is in service of the customers at Modinagar for the last 60 years.
47. As against the above, the defendants/appellants could not refer any evidence oral or documentary to rebut the plaintiffs case. Nor they could produce any evidence in support of their case that Late Banarsi Das, the grand father was carrying on the business of 'Jain Shikanji' as alleged by them.
48. Taking an overall picture of the case, the findings recorded by the court below while granting the temporary injunction order on the question of prima facie case, balance of convenience and irreparable loss is perfectly valid and calls for no interference in appeal.
49. The order under appeal is a discretionary order and in the absence of any contrary material, it can be said that the discretion has been properly exercised. In such matters, an appellate court should not interfere with the discretionary order of the court below.
See Babu Ram Ashok Kumar and another versus Antrim Zila Parishad AIR 1964 Allahabad 534 (Full Bench), paragraph 9 is reproduced below:
"(9) A Court of appeal would not interfere with the exercise of discretion by the Court below, if the discretion has been exercised in good faith after giving due weight to relevant matters and without being swayed by irrelevant matters. If two views are possible on the question, then also the Court of appeal would not interfere, even though it may exercise discretion differently, were the case to come initially before it. The exercise of discretion should manifestly be wrong."
50. In N.R.Dongre versus Whirlpool Corporation 1996 PTC (16) SC, it has been held that an appellate Court hearing appeal against an order should not assess the material and reaching a different conclusion if the conclusion reached by the trial court reasonably possible.
51. The learned counsel for the appellants submits that the finding recorded by the court below on the three ingredients of grant of injunction is vitiated in as much as the order is based upon the said registration, may be considered. The said argument proceeds on wrong footing. The court below has not granted injunction order on the basis of the said registered trade mark. It has granted the injunction order after taking into consideration the relevant facts and circumstances of the case on passing off goods by the defendants as if they were manufactured by the plaintiffs. The appellants have failed to point out any its legality or perversity in the order under appeal.
52. So far as the second question is concerned, the facts relevant to it, which are not in dispute may be noted in brief;
53. It was not disputed that on 15.4.2009 when the defendants opened a shop of 'Jain Shikanji' at Hindon River, Ghaziabad, it was objected to by the plaintiffs through their notice dated 15.4.1999 and the defendant no. 1 was asked not to use the trade mark 'Jain Shikanji'. It was replied on 21.4.1999.
54. In reply, any knowledge about the plaintiffs' business of 'Jain Shikanji Masala' was denied. The tenor of the reply would show that the defendant no. 1 refused to obey the notice dated 15.4.1999. No action whatsoever was taken by the plaintiffs against the defendant no.1. The defendant no. 1 continued to carry on the business at Ghaziabad openly uninterruptedly to the knowledge of the plaintiffs, who woke up in the year 2008 when on 9.5.2008 the defendants opened a shop titled as 'Jain Shikanji Restaurant' at Keshav Garden, Modinagar. Immediately, thereafter the suit giving rise to the present appeal was filed.
55. In this factual background, the learned counsel for the appellant submits that there has been considerable delay on the part of the plaintiffs and on this fact situation, injunction which is a discretionary relief should not have been granted. In support of the above appeal, the learned counsel for the appellants referred the following decisions:
1) 1994 SCC (2) 448, Power Control Appliances Vs. Sumeet Machines Pvt. Ltd.
(2) 2006 (8) SCC (726), Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel & others (3) AIR 2008 (SC) 2291, Mandali Ranganna & Others Vs. T.Ramchandra & others (4) 2004 (4) R.A.J. 592 (Del), Bagla & Co. Vs. Bagla Cosmetics (5) 2004 (4) R.A.J. 234 Madras, Minor Kalimuthu Vs. V.K. Arumujham & others (6) 2007 (5) R.A.J. 446 (Del), M/s Yonex Kabushiki Kaisha Vs. M/s Philips International & another (7) 2009 (3) R.A.J. 56 (Bom), Parle Products Pvt. Ltd. Vs. Parley Agro Pvt. Ltd.
(8) 2009 AIR (Del) 139, Goenka Institute of Education and Research Vs. Anjani Kumar Goenka (9) 2011 (1) R.A.J. 466 (Del), Sri Atul Rawat Vs. M/s. S.B. Equipments (10) P.T.C. (Suppl.) (1) 337 (All) (D.B.), Priya Rubber and Plastic Industries and others versus Bajrangbali Industries and others.
56. It is not necessary for me to discuss the above citations in detail. These decisions lay down that in the matter of infringement of trade mark, delay is no ground to deny the relief to plaintiff. Presently, the injunction order has not been passed for infringement of trade mark. The core issue is as to how equities between the parties may be balanced.
57. Shri Ravi Kant, learned senior counsel for the plaintiffs on the other submits that it may be the plaintiffs did not feel injured or damaged earlier so long as the defendants were carrying on the business at Ghaziabad. The delay in taking action, according to him is not fatal.
58. Elaborating the arguments it was submitted that the turnover of the defendants' shop at Ghaziabad might be very negligible; which did not substantially effect the business of the plaintiffs.
59. Having given careful consideration to the respective submissions of the counsel for the parties, it cannot be said that the arguments of the appellants is without any substance. A reading of the plaint as a whole in uncertain terms would show that the immediate cause of action for filing the suit arose on the opening of the shop at Modinagar on 9.5.2008. So far as the shop at Ghaziabad is concerned, the plaintiffs had not much grievance for immediate relief by way of injunction. They felt offended much on the opening of the shop at Modinagar. The shop at Ghaziabad has been in existence since the year 1999 admittedly.
60. In this fact situation, notwithstanding the fact that the plaintiffs are prior user of 'Jain Shikanji' or they have developed and established the trade mark 'Jain Shikanji' in the market, there non action for a period of around 10 years with respect to the business carried on at Ghaziabad certainly dis entitles them to get a discretionary relief of temporary injunction in respect thereof. Grant of temporary injunction order is in discretion of Court and it is an acknowledged legal position that it should not be granted in a routine manner on mere asking of a party if the parties have approached the Court with considerable delay and can be compensated in terms of money at the time of final hearing. This being so, I find substance in the argument of the counsel for the appellants that this aspect of case relating to delay with regard to Ghaziabad shop situate at Hindon River was not properly appreciated. This part of the order therefore, needs modification.
61. The shop at Modinagar of the defendants is in close vicinity of the plaintiffs shop and was opened immediately before filing of the suit. Although it was argued but no proof was furnished that a considerable amount was spent by the defendants in the said shop at Modinagar. Therefore, the injunction order so far as it relates to Modinagar shop or any other business at Modinagar is concerned, the plaintiffs are certainly entitled to injunct the defendants from selling the product known as 'Jain Shikanji' or 'Jain Shikanji Masala'. The Court below was right in allowing the application 6-C restraining the defendants from passing off the 'Jain Shikanji Restaurant, Soft Drink etc. under the Trade Mark of palintiffs 'Jain Shikanji' or 'Jain Shikanji Masala' from the shop at Modinagar or from any other place within Modinagar. "Jain Shikanji" and "Jain Shikanji Masala" may be a popular name or brand within the local area of Modi Nagar only.
62. This Court by the order dated 25.11.2008 while granting the stay order and directing the parties to maintain statusquo, ordered the defendant-appellants to maintain their accounts with respect of sale and submit the same quarterly before the trial court till the disposal of the appeal. The learned counsel for the appellant submits that the said order has been complied with and quarterly returns of sale of 'Jain Shikanji Masala' and 'Jain Shikanji Restaurant' are being filed before the trial court.
63. It is provided that the defendants shall continue to file the accounts of sale as directed by the order dated 25.11.2008 of this Court as a condition for granting the relief in this appeal. In simple terms the defendants are required to file the return of sale of products in question of the shop at Ghaziabad.
64. It was also brought to the notice of the Court that the trial of the suit is proceeding and part of the plaintiffs evidence has been recorded. The defendants wants to examine two three witnesses. It is desirable that the suit may be disposed of expeditiously preferably within a period of six months from the date of production of filing of the certified copy of this order. Adjournment should be avoided and it shall be granted on payment of cost which shall not be in any case be less than Rs.500 per adjournment .
65. In view of above discussions, the appeal is allowed in part. The order dated 1st November 2008 of the Court below on 6-C application is modified to the extent that the said order shall remain in operation so far as in respect of business at Modi Nagar is concerned. The application for grant of temporary injunction is rejected with regard to the business of the defendants at Ghaziabad subject to the condition stipulated above I.e filing the returns.
66. In view of the divided success of the parties, no order as to costs.
Order Date:29.4.2011 IB (Prakash Krishna,J)