Madras High Court
Naga Limited vs Mr.Cherukuri Gopi Chand on 16 July, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1728
C.S.(Comm.Div.) No.92 of 2025
and A.No.2583 of 2025
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 16.07.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
A.No. 2583 of 2025 in
C.S.(Comm.Div.) No.92 of 2025
and O.A.No.344 of 2025 and A.No.1777 of 2025
A.No.2583 of 2025
Naga Limited
No.1, Anna Pillai Street,
Chennai, Tamil Nadu, India, 600 001. ... Applicant
vs.
Mr.Cherukuri Gopi Chand,
Trading as ANAGANAGA
Plot Nos. 53, 54, 55, Sy. No. 286,
Puppalaguda, Gachibowli,
Gachibowli Police Station,
Rangareddy, 500089, Telangana, India. ... Respondent
Prayer: Application is filed under Order XIV Rule 8 of the Original Side
Rules Read With Order XIIIA of the C.P.C. as amended by the Commercial
Courts Act, 2015, to summarily dismiss the present suit
C.S.(Comm.Div)No.92 of 2025.
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C.S.(Comm.Div.) No.92 of 2025
and A.No.2583 of 2025
For Applicant : Mr.R.Sathish Kumar
For Respondent : Mr.Ramesh Ganapathy
C.S.(Comm.Div.) No.92 of 2025
Mr.Cherukuri Gopi Chand,
Trading as ANAGANAGA
Plot Nos. 53, 54, 55, Sy. No. 286,
Puppalaguda, Gachibowli, Gachibowli Police Station,
Rangareddy, 500089, Telangana, India. ... Plaintiff
-vs-
Naga Limited
No.1, Anna Pillai Street,
Chennai, Tamil Nadu, India, 600 001. ... Defendant
Prayer: Plaint is filed under Order VII Rule 1 of the C.P.C. Read With Order
IV Rule 1 of the Original Side Rules and Sections 134 & 142 of the Trade
Marks Act, 1999, praying to grant a judgment and decree on the following
terms:-
a). A declaration that the Plaintiff's marks "ANAGANAGA" and its
variants are dissimilar to the Defendant's mark "NAGA" and that the
Plaintiff's use of the mark is not in violation of the defendants purported
rights;
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C.S.(Comm.Div.) No.92 of 2025
and A.No.2583 of 2025
b) a declaration that the threats issued by the defendants by way of
any legal proceedings in judicial/quasi-judicial/other authorities against the
plaintiff's use and/or registration of the trademark "ANAGANAGA" and its
variants, are groundless, unjustifiable, and such use by the plaintiff is not in
violation of the defendants purported rights;
c) a permanent injunction restraining the defendants, their directors,
men, servants, agents, distributors, stockists, dealers or any one claiming
through or under them from in any manner either directly or indirectly,
interfering with the plaintiff's use of the trademarks "ANAGANAGA" and
its variants by issuing letters, circulars, notices, advertisements or otherwise
which are unjustifiable, malafide and groundless or in any other manner
whatsoever;
d) the defendant be ordered to pay to the plaintiff a sum of
Rs.5,00,000/- as liquidated damages on account of the interference with the
Plaintiff's business by issuing groundless and unjustifiable threats thereby
causing loss to the reputation, goodwill, business, and image of the plaintiff;
e) for the costs of the suit.
For Plaintiff : Mr.Ramesh Ganapathy
For Defendant : Mr.R.Sathish Kumar
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C.S.(Comm.Div.) No.92 of 2025
and A.No.2583 of 2025
JUDGMENT
In a suit filed under Sections 134 & 142 of the Trade Marks Act, 1999 (the TM Act) seeking remedies in relation to the alleged threats issued by the defendant regarding the use of the trade mark ANAGANAGA by the plaintiff, the defendant has filed an application to dismiss the suit by way of a summary judgment.
2. Mr.R.Sathish Kumar, learned counsel, advanced arguments on behalf of the applicant/defendant and Mr.Ramesh Ganapathy, learned counsel, advanced arguments on behalf of the respondent/plaintiff.
3. The arguments of Mr.R.Sathish Kumar may be summarised as under:
(i) The suit is founded entirely on the notices of opposition filed by the defendant in relation to three trade mark applications of the plaintiff.
Section 142 of the TM Act only applies to the threat of an action or proceeding for infringement of a registered trade mark or some other like proceedings. By lodging notices of opposition, legal proceedings are in 4/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 initiated and such proceedings cannot be construed as as a threat of proceedings falling within the scope of sub-section (1) of Section 142 of the TM Act. In support of this contention, learned counsel relied on the judgment of the Delhi High Court in Chartered Institute of Taxation v. Institute of Chartered Tax Advisers of India Limited, 2019 SCC OnLine Del 11952, particularly paragraphs 3 to 6, 15 & 16 thereof.
(ii) The plaintiff has not adduced evidence of commercial use either in this suit or in the opposition proceedings. The documents filed by the plaintiff are in the form of an invoice for designing the trade mark, brokerage fee for sourcing and securing an immovable property for the plaintiff and evidence of making payment for purchase of domain names. In the absence of evidence of commercial use, the defendant did not see any necessity to institute a suit for infringement.
(iii) The defendant has registrations of the trade mark "NAGA" in multiple classes, including Class 43, which pertains to the restaurant business. The applications filed by the plaintiff for registration relate to similar services. Therefore, the proceedings before the Registrar of Trade Marks do not constitute an abuse of process.
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(iv) In view of the nature of reliefs claimed, the plaintiff has no real prospect of succeeding in the suit. Therefore, the defendant is entitled to dismissal of the suit by way of summary judgment.
4. The contentions of Mr.Ramesh Ganapathy may be summarised as under:
(i) In the notices of opposition, the defendant has threatened that the use of the mark "ANAGANAGA" by the plaintiff constitutes infringement of the defendant's registered trade mark. The defendant has also threatened to initiate proceedings under Sections 102 and 103 of the TM Act. These statements in the notices of opposition qualify as threats within the scope of Section 142(1) of the TM Act.
(ii) The expression "or otherwise" in sub-section (1) of Section 142 of the TM Act should be construed widely as embracing statements made in the notices of opposition. The judgment of the Delhi High Court in Sidharth Wheels Private Limited v. Bedrock Limited and another, 1987 SCC OnLine Del 365 (Sidharth Wheels), was relied on to contend that the expression "or 6/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 otherwise" should not be construed ejusdem generis with the preceding words, i.e. circulars, advertisements.
(iii) The defendant does not carry on identical or even similar business and does not apply the mark NAGA in relation to similar goods or services. Therefore, the opposition proceedings constitutes an abuse of process.
(iv) By taking advantage of the fact that opposition proceedings under Section 21 of the TM Act may be instituted by “any person”, the defendant has filed proceedings although the defendant does not have registrations in the relevant classes. The judgment of the Bombay High Court in Dhaval Diyora v. Union of India and others, 2021 (4) Mh. Law Journal 282, particularly paragraphs 33 to 35, was relied upon to support the contention that interference by this Court is warranted when opposition proceedings are initiated by abusing the process of law.
5. The reliefs claimed in the suit are as under:
“a). A declaration that the Plaintiff's marks "ANAGANAGA" and its variants are dissimilar to the 7/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 Defendant's mark "NAGA" and that the Plaintiff's use of the mark is not in violation of the defendants purported rights;
b) a declaration that the threats issued by the defendants by way of any legal proceedings in judicial/quasi-judicial/other authorities against the plaintiff's use and/or registration of the trademark "ANAGANAGA" and its variants, are groundless, unjustifiable, and such use by the plaintiff is not in violation of the defendants purported rights;
c) a permanent injunction restraining the defendants, their directors, men, servants, agents, distributors, stockists, dealers or any one claiming through or under them from in any manner either directly or indirectly, interfering with the plaintiff's use of the trademarks "ANAGANAGA" and its variants by issuing letters, circulars, notices, advertisements or otherwise which are unjustifiable, malafide and groundless or in any other manner whatsoever;
d) the defendant be ordered to pay to the plaintiff a sum of Rs.5,00,000/- as liquidated damages on account of the interference with the Plaintiff's business by issuing groundless and unjustifiable threats thereby causing loss 8/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 to the reputation, goodwill, business, and image of the plaintiff;
e) for the costs of the suit.”
6. An application for summary judgment is required to be decided on the grounds contained in Rule 3 of Order XIIIA of the Code of Civil Procedure, 1908, as applicable to commercial disputes. Rule 3 is as under:
“3. Grounds for summary judgment The Court may give a summary judgment against a plaintiff or defendant on a claim if it considers that--
(a) the plaintiff has no real prospect of succeeding on the claim or the defendant has no real prospect of successfully defending the claim, as the case may be; and
(b) there is no other compelling reason why the claim should not be disposed of before recording of oral evidence.”
7. In Godaddy.com LLC and others v. Puravankara Projects Limited, 2022 (91) PTC 440 (Mad), I formulated the following principles for the adjudication of an application for summary judgment: 9/22
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(i) The applicant should discharge the burden of establishing that the counter party has no real prospect of succeeding on the claim, including a part thereof, or successfully defending the claim, or a part thereof, as the case may be. The adjective 'real' is used to indicate that such prospect is not 'illusory', 'theoretical or statistical' or 'imaginary' or 'fanciful'.
(ii) Rule 6 of Order XIII-A confers wide latitude on the court to pass a range of orders in an application for summary judgment either on the whole or part of the claim. The types of order specified in Rule 6 are illustrative and not exhaustive.
(iii) If the Court concludes that the counter party could probably succeed, as regards the whole of the claim, the application is liable to be dismissed. If the court considers the success of the counter party probable as regards a part of the claim, or, in respect of some of the reliefs claimed, but not the remainder, the application may be considered as regards the remainder.10/22
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(iv) If the court concludes that it is really possible but not probable that the counter party could succeed, a conditional order may be passed. Although Rule 7 of Order XIII-A uses the word 'possible', it does not mean statistical or theoretical possibility but real possibility.
(v) Once the applicant satisfies the requirement of clause (a) of Rule 3 of Order XIII-A, it becomes necessary for the court to consider whether there is any other compelling reason to direct parties to record oral evidence. Since the conjunction 'and' is used between clauses 'a' and 'b' of Rule 3, the requirements should be construed as cumulative.
(vi) The obligations imposed by Rules 4 and 5 on the parties to plead their respective cases and produce all material evidence in relation thereto does not shift the burden of proof. Instead, it is a procedural device to enable the court to meaningfully consider whether the whole or part of the suit claim may be disposed of summarily.
(vii) The scope of Order XIII-A is wider than Order XII, Rule 6 CPC, which is triggered only on the basis of admissions. It is also far wider than Order VII Rule 11 CPC because the court goes well beyond the plaint and 11/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 examines all the evidence placed before it. However, such application is maintainable in the limited window after summons' are served but before issues are framed.
(viii) In the ultimate analysis, Order XIII-A facilitates fulfilment of two salient but often undervalued objectives of a fair and just dispute resolution system, namely, expeditious disposal and equitable and proportionate allocation of the limited resources of the public court system. It represents a paradigm shift from a blinkered trial-is-the-only-method approach to the adjudication of civil suits to a more balanced approach, which preserves the trial process wherever appropriate and necessary.”
8. In light of the reliefs claimed in the suit, the question that arises for consideration is whether the plaintiff has a reasonable prospect of succeeding on the suit claim. It is common ground between the parties that the cause of action for the suit is the lodging of notices of opposition by the defendant in relation to three trade mark applications of the plaintiff. As noticed above, learned counsel for the plaintiff contends that the expression “or otherwise” in Section 142(1) of the TM Act takes within its fold 12/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 statements made in the notices of opposition. Therefore, this is the first aspect that warrants close attention.
9. Section 142 of the TM Act is as under:
“142. Groundless threats of legal proceedings:
“(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if 13/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
(3) Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in any Court inferior to a District Court. ” The expression “or otherwise” is preceded by the words “circulars, advertisements”. By relying on the judgment in Sidharth Wheels, learned counsel for the plaintiff contends that the expression “or otherwise” should not be construed ejusdem generis with the words preceding it. In Sidharth Wheels, the Court considered the question whether the expression “or otherwise” should be confined to publications or communications made available to the public. The contention to that effect was advanced on the basis that the provision is intended to protect against libellous threats. This contention was negatived and it was concluded that the expression “or 14/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 otherwise” is intended to provide a remedy in respect of all forms or modes of communication of the threat to the plaintiff, and not merely those placed in the public domain. I concur fully with the said conclusion. The question that follows is whether statements made in the notices of opposition qualify as threats within the meaning of Section 142(1) of the TM Act. I turn my attention to this aspect next.
10. The object and, indeed, scope of Section 142 is evident from the text of sub-sections (1) and (2) thereof. Sub-section (1) enables the defendant in an action under this provision to satisfy the Court that the trade mark is registered and that the relevant acts of the plaintiff constitute or would, if done, constitute acts of infringement. If the defendant were to succeed in such endeavour, the plaintiff would not be entitled to relief. Sub- section (2) thereof provides that proceedings under sub-section (1) would become inapplicable once the defendant in such suit files a suit for infringement. The conclusion that follows is that the provision only protects an aggrieved plaintiff against unjustified or baseless threats to initiate proceedings for infringement or the like.
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11. The record shows and the admitted position is that the notices of opposition contain assertions that the use of the trade mark “ANAGANAGA” by the plaintiff constitutes infringement of the defendant's trade mark NAGA. There is also a statement that the defendant would initiate criminal proceedings under Sections 102 & 103 of the TM Act. Under Section 21 of the TM Act, “any person” is entitled to lodge a notice of opposition in the manner specified in the statute and the rules framed thereunder. Such opposition proceedings are required to be determined by the Registrar of Trade Marks in accordance with the statute and, undoubtedly, qualify as legal proceedings. It is needless to say that the applicant concerned, such as the plaintiff herein, is entitled to defend the opposition by filing a counter statement and by adducing evidence in support of the application and against the opposition. As a matter of fact, the plaintiff has filed counter statements, in each opposition, and has also submitted evidence in support of the applications.
12. It is also open to the plaintiff, in course of prosecuting the applications and defending himself against the oppositions, to assert that the 16/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 opposition proceedings constitute an abuse of process. All these aspects would be required to be examined and determined by the Registrar of Trade Marks in accordance with law, i.e. the authority adjudicating such proceedings and not by any other authority (save in the context of a statutory appeal or proceedings invoking jurisdiction under Article 226 or 227 of the Constitution against the proceedings before the Registrar of Trade Marks). Put differently, every tribunal or court dealing with a legal proceeding has the exclusive jurisdiction to assess the pleadings in such proceeding, including by determining whether such pleadings are: false and/or constitute an unjustified and baseless threat; relevant; scandalous; and the like.
13. Although the expression “or otherwise” in Section 142(1) covers all forms or modes of communication of a baseless or unjustified threat of initiation of infringement or like proceedings, statements made by a party, such as the defendant herein, in pleadings in legal proceedings cannot be construed as threats for purposes of initiating such proceedings. As a corollary, they do not fall within the scope of Section 142(1). While such 17/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 proceedings are pending, as stated earlier, the adjudicating authority would be the sole judge of pleadings in such proceedings. In case the plaintiff were to succeed in the applications, it would, however, be open to the plaintiff to initiate proceedings before a jurisdictional civil court in relation to alleged malicious prosecution of the opposition proceedings. For obvious reasons, any proceeding for malicious prosecution would require as a necessary, albeit not sufficient, pre-condition, success in the opposition proceedings by the plaintiff herein.
14. Whether the plaintiff would have a real prospect of succeeding in relation to any of the reliefs claimed in the plaint at paragraph 46 thereof should be examined in light of the above conclusion. At clause (a) of paragraph 46 of the plaint, the plaintiff seeks a declaration that the trade mark ANAGANAGA and its variants are dissimilar to the defendant's mark NAGA and that the plaintiff's use of the mark is not in violation of the defendant's purported rights. In the notices of opposition, the defendant has raised relative grounds of opposition, i.e. that the mark ANAGANAGA is deceptively similar to the mark NAGA. This question is required to be 18/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 determined by the Registrar of Trade Marks in pending proceedings. While such proceedings are pending, if such declaration were to be given in the suit, it would effectively impede the exercise of statutory power by the Registrar of Trade Marks. For such reason, at this juncture, there is no real prospect of the plaintiff succeeding as regards prayer (a).
15. Clause (b) of paragraph 46 of the plaint relates to a declaration that the threats issued by the defendants by way of any legal proceedings in judicial/quasi-judicial/other authorities against the plaintiff's use and/or registration of the trade mark ANAGANAGA are groundless, unjustifiable and the like. In view of the conclusion that statements made in notices of opposition do not constitute threats for purposes of Section 142(1) of the TM Act, the plaintiff has no real prospect of succeeding as regards the relief claimed in clause (b).
16. In clause (c) of paragraph 46, the plaintiff seeks a permanent injunction to restrain the defendant from interfering with the plaintiff's use of the trade mark ANAGANAGA and its variants by issuing letters, 19/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025 circulars, notices, advertisements or otherwise. The documents on record disclose that the only basis for the suit is the notices of oppositions and not any other communications. For reasons discussed above, in that factual context, there is no real prospect of the plaintiff succeeding as regards the relief claimed in clause (c) of paragraph 46.
17. The relief claimed in clause (d) by way of damages is entirely contingent on the plaintiff succeeding in the reliefs discussed above. As a corollary to the conclusion on the other reliefs, the plaintiff has no real prospect of succeeding in relation to the relief claimed in clause (d) of paragraph 46.
18. Thus, the plaintiff has no real prospect of succeeding in relation to any of the remedies claimed in the suit. As is evident from the above discussion and analysis, the questions for determination in this case are largely legal questions and there is no other compelling reason not to decide the suit summarily without going through the process of a trial. 20/22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 22/07/2025 08:39:10 pm ) C.S.(Comm.Div.) No.92 of 2025 and A.No.2583 of 2025
19. Therefore, by allowing A.No.2583 of 2025, C.S.(Comm.Div)No.92 of 2025 is dismissed by summary judgment. While the successful party would be ordinarily entitled to costs, considering that it is still possible for the plaintiff to persuade the Registrar of Trade Marks that the oppositions are lacking in merit; and that a suit filed in 2025 is being dismissed summarily in the same year, it is directed that the parties shall bear their respective costs. Consequently, O.A.No.344 of 2025 & A.No.1777 of 2025 stand closed.
16.07.2025
Index :Yes / No
Internet :Yes / No
Neutral Citation :Yes / No
Speaking/Non-speaking order: Yes/No
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C.S.(Comm.Div.) No.92 of 2025
and A.No.2583 of 2025
SENTHILKUMAR RAMAMOORTHY,J
kj
A.No. 2583 of 2025 in
C.S.(Comm.Div.) No.92 of 2025
and O.A.No.344 of 2025 and
A.No.1777 of 2025
16.07.2025
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