Madras High Court
Bibin John vs Lifestyle International Private ... on 14 October, 2024
Author: R.Suresh Kumar
Bench: R.Suresh Kumar
O.S.A.No.127 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
CORAM:
DATED : 14.10.2024
THE HONOURABLE MR.JUSTICE R.SURESH KUMAR
and
THE HONOURABLE MR.JUSTICE C.SARAVANAN
O.S.A.No.127 of 2024
and C.M.P.No.22267 of 2024
Bibin John ... Appellant
vs.
Lifestyle International Private Limited
Express Avenue, 49, 50L, Block No.9,
Triplicane Village, Whites Road,
Mylapore, Chennai 600 014
Represented by its Authorized Signatory
A.Shyam Ravindhar ... Respondent
PRAYER: This Civil Miscellaneous Appeal is filed under Section 13(1)
of the Commercial Courts Act, 2015 r/w Order 36 Rule 9 of O.S.Rules, to
set aside the Judgment dated 21.06.2024 and vacate the order of
injunction passed by the learned Judge in O.A.No.9 of 2024 in
C.S.(Comm.Div.)No.2 of 2024 on the file of this Court.
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O.S.A.No.127 of 2024
For Appellant : M/s.M.S.Bharathi
For Respondent : Mr.Arun C.Mohan
JUDGMENT
(Judgment of the Court was delivered by C.SARAVANAN,J.) The respondent in O.A.No.9/2024 before the Commercial Division of this Court in C.S.(Comm.Div) No.2 of 2024 is before this Court. The impugned common order passed on 21.06.2024 disposing of O.A.Nos.9 & 10 of 2024 in C.S.(Comm.Div) No.2 of 2024.
2. The respondent herein has filed the above suit for the following relief :-
a. Permanent injunction restraining the Defendant, by themselves, their partners/proprietors, heirs, legal representatives, successors-in-business, assigns, servants, agents, distributors, representatives or any of them from in any manner infringing the Plaintiff's registered trademarks MELANGE' by use of deceptively similar trademark or any other deceptively 2/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 similar mark in any manner whatsoever.
b. Permanent injunction restraining the Defendant, by themselves, their partners/proprietors, heirs, legal representatives, successors-in-business, assigns, servants, agents, distributors, representatives or any of them from enabling others to pass off the Defendants' establishment as and for the Plaintiff's by use of deceptively similar mark and artistic work MELANGE or any other deceptively similar mark or artistic work whatsoever;
c. Directing the Defendants to render account of profits made by use of deceptively similar trademark and artistic work "MELANGE", and pass decree in favour of the Plaintiff for the amounts of profits thus found to have been made by the Defendants after the latter have rendered accounts.
d. Direct the Defendant to transfer the domain name www.melangedesigningstudio.com which is identical and/or deceptively similar to our trademark 'melange' and to remove the word 'melange' from Defendant's Facebook page and Instagram page and other online platforms.
e. Direct the defendant to remove all signage/s, photographs, pictures, images, and or any other content that contains the word "MELANGE" or any mark which is deceptively similar to the Plaintiff trademark from all platforms including e-commerce / online portals including social media platforms and any mobile applications, if any.
f. the Defendants be ordered to surrender to the 3/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 Plaintiff for destruction of all goods viz., labels, cartons, dyes, blocks, sereen prints, advertisement materials, packing materials and other goods containing the trade mark/trade name/label or any other mark similar or identical or deceptively similar to Plaintiff's registered trade mark/trade name/label MELANGE;
g. The defendant be ordered to pay to the plaintiff a sum of Rs. 10,00,000/- (Rupees Ten Lakhs only) as damages for committing acts of infringement of trademark;
h. for costs of the suit;
3. In the said suit, the respondent had also filed O.A.Nos.9 & 10 of 2024 for infringement of passing off the registered Trade Mark “Melange” registered in the name of the respondent in Classes 24, 25 are detailed below:-
Sl.No. Class Name of the Class T.M.Registra Label No. -tion Certificate No. 1 24 Textiles and textiles 1328377 goods, bed and table covers 2 25 Garments and 1328378 Clothing including ready made clothing, sports wear, children 4/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 Sl.No. Class Name of the Class T.M.Registra Label No. -tion Certificate No. clothing including underwear babies napkins, boddy linen, clothing, footwear and headgear 3 35 Advertising, business 1328379 management, business administration and office functions and retail business 4 99 Goods and service as 3191599 annexed
4. By the impugned order, the learned Single Judge has come to a conclusion that prima facie there is no case made out for infringement of the Trade Mark “Melange” by the appellant herein. However, the learned Single Judge has concluded that the respondent has made out a case for grant of interim injunction as prayed for in O.A.No.9 of 2024, pending disposal of the suit. O.A.No.9 of 2024 was filed for an order of interim injunction against alleged passing off by the appellant by advertising its products through its website in You-tube Channel. 5/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024
5. The impugned order is challenged primarily on the ground that the appellant is not having show rooms in Chennai. It is submitted that in the show rooms in Eranakulam, appellant sells only unstitched dress material i.e. bridal wear and that it has been in existence since 2017 and has also registered Trade Mark bearing TM.No.3587429 in Class 40 claiming user since July 2017. It is therefore argued that Lower Court ought not have allowed O.A.No.9 of 2024 as this Court has no jurisdiction for passing off. The learned counsel for the appellant drew attention to Section 134 (1)& (2) of the Trade Marks Act, 1999. They read as under :-
Trade Marks Act, 1999 134(1)No suit - 134(2)
(a). .. For the purpose of clauses (a)
(b) ... and (b) of sub-section (1), a "
(c) for passing off arising out of District Court having the use by the defendant of jurisdiction" shall, any trade mark which is notwithstanding anything identical with or deceptively contained in the Code of Civil similar to the plaintiff's trade Procedure, 1908 ( 5 of 1908) mark, whether registered or or any other law for the time unregistered, shall be being in force, include a instituted in any Court District Court within the local inferior to a District Court limits of whose jurisdiction, at having jurisdiction to try the the time of the institution of suit the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such 6/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation – For the purposes of sub-section (2), " person"
includes the registered
proprietor and the registered
user.
6. A reading of clause (c) to sub-section (1) to Section 134 of the Trade Marks Act, 1999, makes it clear that for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit. The exception for a suit for infringement of registered trade mark to institute a suit within the jurisdiction of the Court where the plaintiff resides, is not available for a suit for passing off.
7. The learned counsel for the respondent on the other hand, would submit that the order is well reasoned and requires no interference.
8. We are of the view that even if the respondent had made out a 7/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 prima facie case on merits while granting interim injunction, the Court below ought to have also considered, balance of convenience and the irreparable injury that may be caused to the respondent if no interim order was passed. The balance of convenience has not been examined by the Court while allowing O.A.No.9 of 2024 .
9. That apart having come to a prima facie conclusion that no case is made out for infringement while dismissing O.A.No.10 of 2024, the question of granting interim relief for passing off cannot be countenanced particularly when the show room, the appellant is not within the jurisdiction of this Court in view of Section 134(2) of the Trade Marks Act, 1999. There are also evidence to show that the appellant was using the e-commerce portal for sale of the merchandise. Therefore, we are inclined to vacate the interim order passed by the learned Single Judge .
10. Since the dispute is a commercial dispute and the parties have already completed the pleadings, we would request the Commercial Court to dispose C.S.(Comm.Div.) No.2 of 2024, as expeditiously as 8/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 possible, in accordance with time lines required to be drawn under the provisions of the Commercial Courts Act, 2015.
11. With the above observations, we allow the present Original Side Appeal. No costs. Consequently, connected miscellaneous petition is closed.
(R.S.K.J.,) (C.S.N.J.,)
14.10.2024
Index : yes/No
Internet : yes/No
Neutral Citation : Yes/No
Speaking : Non-speaking Order
kkd
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O.S.A.No.127 of 2024
R.SURESH KUMAR, J.
AND
C.SARAVANAN,J.
kkd
O.S.A.No.127 of 2024
14.10.2024
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https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024 IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 16.09.2025 CORAM THE HONOURABLE MR.JUSTICE R.SURESH KUMAR and THE HONOURABLE MR.JUSTICE C.SARAVANAN O.S.A.(CAD).No.127 of 2024 and CMP.No.22267 of 2024 Bibin John ... Appellant
-Vs-
Lifestyle International Private Limited, Express Avenue, 49, 50L, Block No.9, Triplicane Village, Whites Road, Mylapore, Chennai 600 014 Represented by its Authorized Signatory A.Shyam Ravindhar ... Respondent For Appellant : M/s.M.S.Bharathi For Respondent : Mr.Arun C.Mohan JUDGMENT (Judgment of the Court was made by C.SARAVANAN, J.) The matter has been listed today under the caption “For Being Mentioned” at the instance of the learned counsel for the appellant. 11/13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 07/10/2025 08:46:34 pm ) O.S.A.No.127 of 2024
2. We are informed that the order of this Court dated 14.10.2024 has already been appealed before the Hon’ble Supreme Court in SLP.(C).Diary No.19647 of 2025 filed on 14.04.2025 and that the aforesaid case is at an advanced stage of hearing. It is noticed in paragraph 10 of the order, we have also requested the Commercial Court to dispose of the suit as expeditiously as possible. Despite the order dated 14.10.2024, the parties are not proceeding with the trial.
3. We find no reason to entertain this Original Side Appeal any further. Hence, no further orders are required.
(R.S.K., J.) (C.S.N., J.)
16.09.2025
NCC : Yes / No
Index : Yes / No
Speaking Order : Yes / No
kak
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O.S.A.No.127 of 2024
R.SURESH KUMAR, J.
and
C.SARAVANAN, J.
kak
O.S.A.(CAD).No.127 of 2024
and
CMP.No.22267 of 2024
16.09.2025
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