Calcutta High Court
Super Smelters Limited & Ors vs Srmb Srijan Private Limited on 18 December, 2019
Equivalent citations: AIR 2021 (NOC) 135 (CAL.), AIRONLINE 2019 CAL 839
Author: Soumen Sen
Bench: Soumen Sen
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IN THE HIGH COURT AT CALCUTTA
Civil Appellate Jurisdiction
ORIGINAL SIDE
Present:
The Hon'ble Justice Soumen Sen
And
The Hon'ble Justice Saugata Bhattacharyya
G.A. No. 2422 of 2019
A.P.O.T. No. 131 of 2019
With
C.S. No. 192 of 2019
Super Smelters Limited & Ors.
vs.
SRMB Srijan Private Limited
For the Appellant : Mr. Soumendra Nath Mookherjee, Sr. Adv.,
Mr. Sayantan Basu, Adv.,
Mr. Rudraman Bhattacharyya, Adv.,
Mr. Sourojit Dasgupta, Adv.,
Mr. Victor Dutta, Adv.,
For the Respondent : Mr. Ratnanko Banerjee, Sr. Adv.,
Mr. Debnath Ghosh, Adv.,
Ms. Adreeka Pandey, Adv.,
Mr. Sudhakar Prasad, Adv.,
Ms. Debasmita Goppy, Adv.,
Hearing concluded on : 10.12.2019
Judgment on : 18.12.2019
Soumen Sen, J.:-
1. This appeal is directed against an order dated September 30,
2019 passed in a passing off action initiated by filing an application, being
G.A. No. 1 (earlier 2422) of 2019 in C.S. No. 192 of 2019.
2. The said order is an ad-interim order passed after hearing both
sides.
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Summary of facts
3. The facts of this appeal so far as relevant are as follows:
I. The respondent, SRMB Srijan Pvt. Ltd., is a company carrying
on the business of manufacturing, selling and distributing TMT bars,
wires, grills etc. since 2001. The respondent manufactures certain
concrete-reinforcing TMT bars, which have a distinct surface-pattern
with the letter 'X' embossed at regular intervals over the entire surface
and length of the TMT bars. Each bar has two series of 'X' rib patterns
embossed diametrically opposite to each other. On one side of the
series, the brand name 'SRMB' is embossed in a regular style at the 'X'
intervals, and tensile strength and grade of iron, i.e. Fe 415, Fe 500 etc.
is also embossed. The TMT bars of the respondent are of 8mm to 50mm
in diameter.
II. The respondent had applied for design registration in respect of
the 'X' ribbed marks on its TMT bars, and had secured the same on
April 4, 2003, with the said mark bearing Design No. 191774. However,
the said Design No. 191774 was later sought to be cancelled at the
behest of Tribeni Industries Pvt. Ltd. before the Designs Office, and by
an order dated February 3, 2010 the said design was cancelled due to
prior publication. Post such an order, the respondent filed an
application before the Trade Marks Registry on February 8, 2016
bearing no. 3406258 for registration of the same 'X' ribbed pattern on
its TMT bars. This application is still pending. An objection has been
raised by the Registrar of Trade Marks by a letter a dated December 27,
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2016 doubting the registrability of the said mark under Section 3(a) of
the Trade Marks Act, 1999 due it consisting exclusively of the shape of
the goods which results from the nature of the goods themselves.
III. The appellants are also in the business of manufacturing, selling
and distributing TMT bars. The appellants manufacture and trade in
what is called the 'Super Shakti' TMT bar which has a 'double Y' ribbed
pattern. The appellants claim to have been manufacturing and selling
TMT bars with the said pattern since 2016, before that they had been
using an elliptical helix pattern on their TMT bars. The appellants had
applied for registration of a line drawing of the 'double Y' ribbed pattern
in respect of TMT rods, bars and angles on December 31, 2016 under
application no. 3447330 in Class 6 and obtained registration of the
same, with Registration Certificate for the appellants' trade mark being
issued on June 22, 2017. The respondent has filed an application,
being ORA/41/2018/TM/KOL, for rectification of the said trade mark
registration of the appellants before the Intellectual Property Appellate
Board
Proceedings before the Learned Single Judge
4. The respondent instituted a suit, being C.S. No. 192 of 2019,
before the learned Single Judge of this High Court claiming infringement of
its unregistered mark, i.e. the 'X' ribbed pattern on its TMT bars, on the
basis of prior user. The respondent, in the suit, filed an interlocutory
application, being G.A. No. of 2019, before the learned Single Judge of the
Court, inter alia, praying for the following reliefs:
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'(a)A decree for permanent injunction restraining the Defendants, its assigns,
directors, partners, employees, agents and others acting on its behalf from
manufacturing, marketing, selling products including TMT bars and rods by applying
pattern of X ribs mark/pattern/get up/trade dress upon or in relation to the TMT bars
and rods as depicted in Annexure "A" or any other colourable imitation of the same
including the one which is depicted in Annexure " H" to the plaint or any other TMT
bar containing similar pattern depicted on the TMT bars ;
(b) Decree of permanent injunction restraining the Defendants from advertising in any
manner any product including TMT Bars and rods by applying pattern of X ribs upon
or in relation to TMT Bars and rods as depicted in Annexure "H" in print form or
online which may create misrepresentation and lead to passing off the Defendants
goods as that of the Plaintiff.
(c)A decree for obliteration and destruction of all the offending goods, dies, packaging,
hoardings, placards, promotional material, advertisement, stationery, signs, signage of
the Defendants' goods bearing the mark contained in Annexure "H";
(d) Enquiry into the loss and damage suffered by the Plaintiff and upon loss being
ascertained a decree be passed therein. (sic)'
5. Before the learned Single Judge, the respondent alleged that the
appellants were in the same trade and had been using a mark deceptively
similar to the mark of the respondent. The mark of the respondent was yet
to be registered. In the meantime, in view of recent use of the deceptively
similar mark by the appellant, the respondent initiated an action in passing
off for infringement of its unregistered mark. The advertisement expenses
and the annual turnover of the respondent were disclosed in paragraphs 7, 8
and 9 of the application, being G.A. No. 1 of 2019, filed by the respondent
before the learned Single Judge.
6. The appellants contended that in view of cancellation of the
registered design of the respondent, a suit for infringement of the alleged
mark of the respondent, which is solely based on its claim on the surface
pattern of the product, cannot succeed and is liable to be dismissed. The
appellants contended that there was no distinctiveness in the mark of the
respondent which could distinguish its product from other known products
of the same class.
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7. The learned Single Judge, upon consideration of the materials
on record and the arguments presented to him, passed an ad-interim order
dated September 30, 2019 upon notice to the appellants. The learned Single
Judge noted that passing off is an actionable wrong in which a person
passes off his goods as the goods of another. The common law remedy of
passing off to protect the unregistered trade mark is invoked to safeguard
the business interest, goodwill and reputation associated with such
distinctive mark that is used by a particular trader or manufacturer. The
learned Single Judge identified the issue to be whether the respondent is
entitled to use the 'X' ribbed mark on its TMT bars as a trade mark or as a
source identifier when the respondent previously used the same mark as a
design after obtaining its now-cancelled registration under the Designs Act.
The learned Single Judge held that the respondent's suit for injunction in an
action for passing off was maintainable since the registration of the
respondent's 'X' ribbed mark under the Designs Act was cancelled in 2010.
So, before registration and after cancellation of such registration, the
respondent had been using the said mark as its unregistered trade mark,
this made the suit for injunction in an action for passing off maintainable. In
so holding, the learned Single Judge distinguished the point of law laid down
by the Full Bench of the Delhi High Court in Mohan Lal v. Sona Paint &
Hardwares, A.I.R. 2013 Del. 143 : 2013 (55) P.T.C. 61 at paragraph 134.
8. Thereafter, placing reliance on the judgment of the Division
Bench of the Delhi High Court in M/s. Crocs, Inc. U.S.A. v. M/s. Bata &
Ors., RFA (OS) (COMM) 22/2019 & CM APP No. 22655/2019 & other
connected matters, which considered the rulings of the same High Court in
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the Mohan Lal case (supra) and in Carlsberg Breweries v. Som
Distelleries, A.I.R. 2019 Del. 23: (2019) 256 D.L.T. 1, the learned Single
Judge held that a passing off action is not limited or restricted to the trade
mark use alone but includes the overall get up or trade dress. The learned
Single Judge also stated that the Carlsberg case (supra) did not explicitly or
impliedly overrule the Full Bench in Mohan Lal (supra) with regard to the
issue of whether a passing of action was maintainable in respect of a design.
Therefore, the learned Single Judge concluded that, as a matter of law,
previous registration of the said mark as a design under the Designs Act,
which was cancelled in 2010, did not disentitle the respondent to bring an
action for infringement of the mark on the ground of passing off. The learned
Single Judge persuaded himself that the respondent was able to make out a
strong prima facie case for going to trial and passed an ad-interim order of
injunction. In view of the fact that the 'double Y' ribbed mark/pattern/get up
of the TMT bar of the appellants was ex facie identical and/or deceptively
similar to the respondent's 'X' rib mark/trade dress/pattern, the learned
Single Judge restrained the appellants from manufacturing, distributing,
marketing and/or selling TMT bars with the said pattern embossed thereon
for the period of two weeks after the vacation of this Court or until further
order, whichever is earlier. This interim order has been extended by us till
the disposal of this appeal.
Submissions of the Parties in Appeal
9. Mr. S. N. Mookherjee, the learned Senior Counsel appearing on
behalf of the appellant, submits that, in addition to the grounds that are
before the learned Single Judge opposing the prayer for injunction, the
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appellant is entitled to take the plea of Section 9(3)(b) of the Trade Marks
Act, 1999 as it involves a pure question of law. Mr. Mookherjee argues that
Section 9(3)(b) of the Trade Marks Act, 1999 has clearly stated that if the
mark proposed to be registered is of purely technical function then the
Registrar shall refuse to register the said mark as a trade mark. In support
of his submission, Mr. Mookherjee has placed reliance on the judgment of
the Grand Chamber of the Court of Justice of the European Union (C.J.E.U.)
in the case of Lego Juris A/S v OHIM & Anr. (Case C-48/09 P) at
paragraphs 3, 20, 21, 38-62 and the judgment of the General Court of the
C.J.E.U. in the case of Rubik's Brand Ltd. v EUIPO (Case T-601/17) at
paragraphs 42-51 and 90-95. According to Mr. Mookherjee, the respondent's
mark is of a purely technical function. Mr. Mookherjee draws our attention
to a news report in yourstory.com dated November 28, 2010, where it is
stated that:
"SRMB 500+ SR has high ductile properties that prevent the collapse of reinforced
structures. They are extremely resilient in nature, as a result of which they can
sustain greater amount of stress without failure. In addition, these bars also have very
high and uniform elongation and to a large extent can sustain deformation without
necking and thus resist ultimate failure of the structure.
Features of SRMB 500+ SR TMT Bars at a glance:
1. Superior ductility - minimum 15% higher than Yield Stress.
2. Superior corrosion resistance - helps to preserve and enhance life of the
structures.
3. Superior tensile strength -helps to save 17% steel compared to normal Fe 415
TMT bars
4. Superior bounding - innovative 'X' pattern ribs provide superior bounding
between concrete and steel bar due to its high Ar. Value.
5. Superior resistance to sustain stress without failure - prevents buildings from
collapsing."
Mr. Mookherjee also draws our attention to an advertisement in the
Guardian newspaper, where the respondent claims that its TMT bars, i.e.:
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"SRMB 500+ Rebars have X shaped Ribs which binds the steel with concrete better
ensuring greater safety of your construction."
Mr. Mookherjee has strenuously argued that this advertisement has been
recognised as evidencing the functional nature of the respondent's pattern
by a learned Single Judge of this Hon'ble Court in SRMB Srijan Pvt. Ltd. v.
Tribeni Industries Pvt. Ltd., G.A. No. 2275 of 2015 in A.I.D. No. 4 of
2010, and that this was the additional reason for which the learned Single
Judge affirmed the order of the Assistant Controller of Design cancelling the
respondent's design registration on its 'X' ribbed mark and dismissed the
appeal by the judgement and order dated July 8, 2011.
10. Mr. Mookherjee submits that comparison of the novelty
statement in the design application filed by the respondent and the
application for grant of registration of its mark before the Trade Marks
Registrar would clearly show that the basis of both the applications is the
same, namely, the distinctiveness in the surface pattern of the product in
question. Significantly, the respondent did not file any application
contemporaneously for registration of its mark under the Trade Marks Act as
the respondent was unsure about the registrability of the said mark, and
had deliberately and consciously applied for registration of its product under
the Designs Act, in the process, the respondent has abandoned its right to
register its mark under the Trade Marks Act. The respondent knew that the
registration under the Designs Act could at best remain alive and valid for a
period of 15 years from the date of application of the registration of the
designs and, now, the respondent has lost its right by virtue of an order
passed by the Assistant Controller of Designs on February 3, 2010 revoking
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the design on the ground of prior publication, the same effect cannot be
achieved, now, under the Trade Marks Act by claiming distinctiveness of the
product.
11. Mr. Mookherjee submits that it would be extremely inequitable
at this stage if the respondent is allowed to have the benefit of the action in
passing off having regard to the aforesaid facts. He argues that had there
been no revocation under the Design Act, the respondent at the best could
have continued to enjoy a monopoly over the design for a period of 15 years
and not thereafter. No action for passing off on the basis of the registered
design after expiry of its statutory validity period could be maintainable
under the Trade Marks Act by treating the said design as a mark under the
Trade Marks Act. Mr. Mookherjee submits that, although the Designs Act
and Trade Marks Act are independent statutes, there are certain nexuses
between the two statutes: a prohibition contained in one statute has to be
given effect to while interpreting the other statute. The order of injunction at
this stage in the passing off action would defeat the legislative intent of the
Designs Act since the legislative intent is that a trade mark cannot be a
design. The features of a shape, configuration, pattern, ornament, or
composition of lines or colours ceases to be a trade mark on registration
being granted to the same as a design. Mr. Mookherjee contends that the
respondent having elected to apply for registration of the surface pattern of
its product under the Designs Act, 2000, has abandoned, surrendered and
waived all its rights under the Trade Marks Act, 1999. In support of the
aforesaid contentions, Mr. Mookherjee has placed reliance on the Statement
of Objects and Reasons of the Designs Act, Section 2(d) and 5 of the said
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Act, the minority judgment of Manmohan Singh, J. in the Full Bench
decision of the Delhi High Court in Mohan Lal v. Sona Paint &
Hardwares, (2013) 199 D.L.T. 740 (F.B.) at paragraphs 1, 2, 30-32, 34-35,
38, 43-44, 46, 49, 53, 59-60, 63-64, 73, 113-116,131-134 and the judgment
of Rajiv Sahai Endlaw, J. of the Delhi High Court in Dart Industries Inc. &
Ors. v. Vijay Kumar Bansal & Ors., CS (COMM) 837/2016,
MANU/DE/3231/2019 at paragraphs 13 and 26.
12. Per contra, Mr. Ratnanko Banerjee, learned Senior Counsel for
the respondent, submits that though the argument of Mr. Mookherjee is
potentially pristine in theory, the argument fails in the present scenario. Mr.
Banerjee argues that the appellants have advertised their TMT bar pattern,
which they have registered as a trade mark in 2016, as having functional
qualities like that of the respondent's TMT bars. So, the appellants cannot
allege that the respondent's mark cannot be registered on the ground of
functionality. Besides, this argument, learned Senior Counsel submits, was
not made in the court below, and, therefore, Mr. Mookherjee is estopped
from making it here, in this regard, Mr. Banerjee has placed reliance on the
judgement of the Division Bench of the Delhi High Court in India Hotels v.
Jiva Institute, 2008 (37) P.T.C. 468 (Del.).
13. Furthermore, according to Mr. Banerjee, Section 9(3)(b) of the
Trade Marks Act, 1999, makes clear that only if the sole and exclusive
purpose of the shape of a good is to achieve a technical purpose, only then is
that shape barred from registration as a trade mark under the Trade Marks
Act. And while the cylindrical shape of the TMT bar here certainly achieves
an exclusively technical purpose, the pattern on it, for which the respondent
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has applied for trade mark, does not exclusively do so and it does fulfil the
function of a unique identifier. Mr. Banerjee distinguishes the Lego Juris
judgment (supra) cited by Mr. Mookherjee and places reliance on: (1) the
judgment of the Delhi High Court in Apollo Tyres Ltd. v. Pioneer Trading
Corporation & Anr., 2017 (72) P.T.C. 253 (Del.) at paragraphs 100-102,
(2) the English High Court (Chancery Division) judgment in Cow (P.B.) &
Coy. Ld. v Cannon Rubber Manufacturers Ld. [1959] 9 R.P.C. 240, and
the judgments of the U.S. Court of Appeals (Federal Circuit) in (3) Avia
Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F. 2d (Fed. Cir. 1988)
: 7 U.S.P.Q. 2d 1548 and (4) Rosco, Inc. v. Mirror Lite Co., 304 F. 3d
1373 (Fed. Cir. 2002).
14. Mr. Banerjee also submits that on the question of designs, the
fact that the design registration has been cancelled means that one has to
put that aside and assess whether there is a trade mark here and if there is
an infringement of the trade mark or passing off here. Besides, he argues
that a passing off action is not limited or restricted to the trade mark use
alone and includes the overall get up or trade dress. The learned Senior
Counsel in this connection has placed reliance on (1) the majority judgment
of the Full Bench of Delhi High Court in Mohan Lal v. Sona Paint &
Hardwares, 2013 (55) P.T.C. 61 (Del.) (F.B.) at paragraphs 20.2, 21-22, (2)
the judgment of the Full Bench of the Delhi High Court in Carlsberg v. Som
Distilleries, A.I.R. 2019 Del. 23 (F.B.) : (2019) 256 D.L.T. 1 (F.B.) at
paragraphs 41, 43-44, 45 and 48, and (3) the judgment of the Division
Bench of the Delhi High Court in M/s. Crocs, Inc. U.S.A. v. M/s. Bata &
Ors., RFA (OS) (COMM) 22/2019 & CM APP No. 22655/2019 & other
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connected matters at paragraphs 20, 21, 22-24. Mr. Banerjee also
distinguishes the learned Single Judge's judgment in Dart Industries
(supra) cited by Mr. Mookherjee and contends that, in the said case, the
judgment merely reiterates the ratio in Crocs (supra). Mr. Banerjee submits
that as the prior user of the mark the respondent is entitled to protection
under trade marks law and is entitled to injunction once it is established
that the marks of the prior and later user are the same, which they are in
this case. In this regard, Mr. Banerjee has placed reliance on the judgment
of the Hon'ble Supreme Court in Satyam Infoway Ltd. v. Siffynet
Solutions (P.) Ltd., (2004) 6 S.C.C. 145 at paragraph 13 and the judgment
of the Division Bench of this Hon'ble Court in Amar Nath Chakroborty v.
Dutta Bucket Industries & Ors., 2005 (2) C.H.N. 278 at paragraph 13.
15. Mr. Banerjee submits that the learned Single Judge exercised
his discretion after arriving at a finding that the respondent was able to
make out a strong prima facie case and that the balance of convenience was
in its favour. This view of the learned Single Judge is a possible view on the
facts pleaded and is based on an exercise of discretion after reasonable
consideration of both facts and law and, so, it should not be interfered with,
since it is not suffering from perversity, arbitrariness, or the like. The
learned Senior Counsel submits that in an intra-court appeal a court in its
appellate jurisdiction must not substitute the exercise of discretion by a
court exercising its powers in the first instance on the sole ground that the
appellate court would have arrived at a different conclusion if it were in the
position of the first court. In support of these submissions, the learned
Senior Counsel has placed reliance, first, on the judgement of the Division
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Bench of this Hon'ble Court in Cello Plast v. L.A. Opala R.G. Ltd. & Ors,
2018 SCC OnLine Cal 2475 affirming the ad-interim order passed by a
learned Single Judge in La Opala R.G. Ltd. v. Cello Plast and Ors., (2018)
4 Cal. L.T. 553 and, second, the judgment of the Hon'ble Supreme Court in
Wander Ltd. & Anr. v. Antox India (P.) Ltd., 1990 (Supp.) S.C.C. 727.
Finally, the learned Senior Counsel also states that the balance of
convenience lies in favour of the respondent and the mere fact of the
interlocutory order disrupting the appellant's business could not be a
ground that would deter the court from granting the ad-interim relief to the
respondent. In support of such contention, the learned Senior Counsel has
placed reliance on Satyam Infoway (supra) at paragraph 33.
16. Mr. S. N. Mookherjee, learned Senior Counsel for the appellants,
in his reply to the arguments of Mr. Ratnanko Banerjee, has put forth four
propositions: First, that by making an application for design registration the
respondent had submitted itself to the designs regime to the exclusion of the
trade marks regime. Second, that the test of whether the article sought to be
registered was barred by Section 9(3)(b) turned on whether it was primarily
dictated by considerations of functionality and not that the article had a
mere functional aspect to it. Otherwise all trade marks/designs would be
functional simply because they had a functional element to them. This test,
Mr. Mookherjee submits, is satisfied by the respondent's product. Third, Mr.
Mookherjee states that he places reliance on the minority judgment in
Mohan Lal (supra) as persuasive authority for the first proposition. Fourth,
that Section 9(3)(b) places an absolute bar on the registration of a trade
mark in the public interest, and as it is in statute, so it is in the common
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law. For this point, Mr. Mookherjee places reliance on a judgment of the
Canadian Supreme Court in Kirkbi A.G. & Lego Canada Inc. v Ritvik
Holdings [2005] 3 S.C.R. 302. This judgment, Mr. Mookherjee argues,
states that functionality bars the recognition of both registered and
unregistered trade marks to prevent the subsistence of a monopoly over an
article with a purely technical function from being monopolised outside the
statutory regime.
17. Mr. Mookherjee distinguishes Apollo Tyres (supra) by stating
that considerations of functionality did not dictate the tread pattern of the
tyres that were the subject-matter of the action therein, instead the said
tread patterns only incidentally fulfilled a function. He uses the rounded oval
shape of a single-malt glass as an example to submit that while this oval
shape gives the said glass a function of intensifying the flavours and smells
of the whiskey poured into it, the primary point of the oval shape is to appeal
to the eye. And it is analogous reasoning which dictates the outcome in
Apollo Tyres (supra). Mr. Mookherjee then goes on to state that, admittedly,
in Cow (supra) the product in question had a ribbed surface to prevent
scalding. But he goes on to ask whether the purpose of the ribbing was to
appeal to the eye or to have a primarily functional purpose. He says that it
was not the latter and that the functional aspect of the design in question
was only incidental. Finally, Mr. Mookherjee draws our attention to the fact
that registration of the respondent's whole product has been sought. He
submits that the interlocking of the appellant's lines is wider than the
interlocking of the 'X' ribs in the respondent's product. He also states that
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the interlocking of these lines has been recognised by the Bureau of Indian
Standards as giving greater interlocking with concrete.
Discussion of the Law and the Issues
18. From an examination of the facts and the arguments on the law,
it would appear that the following issues arise in this appeal:
First, whether the respondent's 'X' ribbed mark is capable of being
recognised as a trade mark in a common law action of passing off due
to it allegedly having a technical function.
Second, whether the respondent's application for design registration of
the 'X' ribbed mark on its goods, which has since been cancelled in
2010 due to prior publication, precludes it from claiming that the said
mark is a trade mark.
Third, if the first two issues are resolved in the affirmative, whether the
learned Single Judge was right in the exercise of his discretion whilst
passing the impugned ad-interim order against the appellants.
The First Issue
19. Before we dive head first into the first issue, a brief discussion of
what really makes something a trade mark or a design would be apposite.
Section 2(m) of the Trade Marks Act, 1999 gives us an inclusive definition of
'mark'. A 'mark' includes, inter alia, the shape of a good. Section 2(zb) of the
Trade Marks Act defines a 'trade mark' as a mark capable of being
represented graphically and capable of distinguishing the goods and services
of a trader from those of others. Section 2(zb) includes the shape of a good
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within the definition of a trade mark along with the packaging of the goods
and a combination of colours. So, it is beyond controversy that a trade mark
includes the shape of goods. In fact, the Act, in Section 2(zb), has
incorporated the phrase 'shape of goods' from the definition of mark in
Section 2(m) of the same Act. A trade mark, simply put, establishes the
connection of a trader with his trade. The function of a trade mark is to give
an indication to the purchaser or to the prospective purchaser as to the
identity of the manufacturer or quality of the goods. A trade mark includes
both a registered and unregistered mark. The Act gives separate kinds of
relief to the proprietor of a registered and an unregistered mark. The owner
of the unregistered mark enjoys the common law rights that the owner of the
mark was enjoying under the Trade and Merchandise Marks Act, 1958. Even
before the 1958 Act, the common law right in respect of an unregistered
trade mark was recognised and accepted. However, the right to claim a trade
mark on the shape of good is not unqualified. Section 9(3)(b) of the Trade
Marks Act, 1999 creates an absolute ground for refusal of registration of a
mark as a trade mark if it consists exclusively of the shape of goods which is
necessary to obtain a technical result. This means that the shape of the good
should have something extra or have distinctiveness in and of itself to
qualify for registration as a trade mark under the 1999 Act whilst not being
purely functional in nature. The shape of goods may also be considered for
registration under Section 2(d) of the Designs Act provided the finished
article appeals to the eye and is judged solely by the eye and is not merely a
mechanical device or a functional device. A design in order to be registrable
under the Designs Act, 2000 must be some conception or suggestion as to
shape, configuration, pattern and must be capable of being applied to an
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article in such a way that the article to which it has been applied shall show
to the eye the particular shape, configuration, pattern, or ornament the
conception or suggestion of which constitutes the design: Pugh v Riley
Cycle Co. [1912] 1 Ch. 613.
20. The most significant recent authority on the functionality
principle in Section 9(3)(b) of the Trade Marks Act and Section 2(d) of the
Designs Act is Apollo Tyres Ltd. v. Pioneer Trading Corporation, (2017)
D.L.T. 488 : 2017 (72) P.T.C. 253 (Del.). In this case, the plaintiff had, in
essence, sought to restrain the defendant from using the tread pattern of the
plaintiff's tyres, which the plaintiff claimed to be its property. The defendant,
placing reliance on the plaintiff's averment's in its plaint before the court,
argued that the tread pattern of the plaintiff's tyres were
functional/utilitarian in nature since they provided better grip on the road
and stability to the vehicle during movement and, therefore, they could not
be considered to be a trade mark. The learned Single Judge of the Delhi High
Court (at paragraphs 86-87) rejected this argument after he satisfied himself
that on a reading of the averments of the plaint as a whole there was a
distinction between a 'tread' and a 'tread pattern'. He stated that while the
plaintiff claimed, in its plaint, that a 'tread pattern' was one of the most
important factors used to identify the tyre manufacturer, it also stated that a
'tread' served a purely functional purpose. Therefore, the learned Single
Judge held that the tread pattern was capable of recognition as a trade mark
even though the tread itself was not. The learned Single Judge arrived at this
conclusion in the following words (at paragraph 87):-
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'87........No party can claim propriety over the technique/practice of providing treads
in a tyre, since treads are functional, i.e. they afford the necessary grip between the
tyre and the ground during movement of the vehicle to keep it substantially stable. No
party can claim proprietary over the technique/practice of a plurality of ribs,
separated by grooves, which create the tread on the tyre. However that does not mean
that the unique pattern of the tread adopted by a particular manufacturer, which
constitutes its unique design and shape, would not be entitled to protection as a design
- if it is registered, and also as a trademark - if the tread pattern has been exploited as
a trademark, i.e. a source identifier. What is functional in a tyre are the "treads" and
the "tread pattern".' (emphasis added)
21. In coming to this conclusion, the learned Single Judge in Apollo
Tyres (supra) placed reliance on the judgment of the English High Court
(Chancery Division) in Cow (P.B.) & Coy Ld. v Cannon Rubber
Manufacturers Ld. [1959] 9 R.P.C. 240. In this case, which was an action
for the infringement of a registered design, the defendants, inter alia, argued
that the diagonal ribbing on surface of the hot water bottles sold by the
plaintiff could nullify the registration of the shape of the plaintiff's hot water
bottle as a design on the ground that it fulfilled the technical function of
radiating heat to prevent discomfort or scalding, as had been advertised by
the plaintiffs themselves. Lloyd-Jones J. dismissed this argument stating (at
p. 245):
" One answer to this argument is that it fails to note the difference between the
provision of ribbing of some kind, and the choice of a diagonal direction for its
employment, for the evidence amply established that heat radiation without
discomfort or risk owes nothing to the direction in which the ribbing is disposed.
But even if any limitation introduced by the direction of the ribbing in the registered
design be disregarded, the argument is no less fallacious, for it was not established in
evidence that the provision of spacing members formed in the bottle faces during
manufacture of such dimensions and so located as to secure the required effect must
necessarily be in the form of ribs. This cannot be predicated a priori, for I can see no
reason why a construction such as is commonly employed for conserving soap tablets,
wherein a plurality of closely positioned distance pieces project from a rubber or like
platform, could not be adapted for the purpose."
22. From both these cases it would be readily apparent that the bar
of functionality, when considered under Section 9(3)(b), operates not to
19
prohibit the recognition of the shape of good or product as a trade mark
merely because the shape of the good or product in question is capable of
producing a technical result or merely because the shape of the good or
product in question has a functional or utilitarian value/utilitarian
application. This understanding of the law may be reinforced and expanded
upon by quoting the seminal statement of the law by Aldous L.J. in the
English Court of Appeal case of Philips Electronics N.V. v Remington
Consumers Product Ltd. [1999] R.P.C. 809 at p. 830:
The subsection [in our case subsection 3(b) of Section 9 of the Trade Marks Act, 1999]
must be construed so that its ambit coincides with its purpose. That purpose is to
exclude from registration shapes which are merely functional in the sense that they are
motivated by and are the result of technical considerations. Those are the types of
shapes which come from manufacture of patentable inventions. It is those types of
shapes which should not be monopolised for an unlimited period by reason of trade
mark registration, thereby stifling competition. Registrable trade marks are those which
have some characteristic which is capable of and does denote origin.
In my judgment the restriction upon registration imposed by the words "which is
necessary to obtain a technical result" is not overcome by establishing that there are
other shapes which can obtain the same technical result. All that has to be shown is
that the essential features of the shape are attributable only to the technical result. It
is in that sense that the shape is necessary to obtain the technical result.' (emphasis
added)
The judgment of Aldous L.J., which was also referred to in Apollo Tyres
(supra), explains the corollary of what is stated above, i.e. that if and only if
it is established that the shape of a good is one that achieves no other result
than a technical result, then it cannot be registered as a trade mark. In
other words, if, beyond simply having a functional application or achieving a
technical result, the shape of a good is such that it solely and exclusively
achieves a technical/utilitarian/functional result, then it shall not be
registered as a trade mark pursuant to Section 9(3)(b) Trade Marks Act, 1999.
Now, it must be noted that the judgment of Aldous L.J. quoted here differs
from the statement of the law by Lloyd-Jones J. in Cow (supra) quoted above
20
in one crucial aspect. Lloyd-Jones J. rejected the functionality argument due
to the fact that "it was not established in evidence that the provision of
spacing members formed in the bottle faces during manufacture of such
dimensions and so located as to secure the required effect must necessarily be
in the form of ribs" (emphasis added). In other words, he emphasised that the
test of whether the shape of a good sought to be recognised as a trade
mark/design achieves an exclusively technical result or not requires us to
ask if there are other shapes which can achieve the same result or not. But
Aldous L.J.'s statement of the law emphasises that this need not be gone
into. Aldous L.J. phrases the functionality test much more straightforwardly
by saying that all that needs to be established is that "the essential features
of the shape are attributable only to the technical result." (emphasis added)
23. It must be stated here that the position of the Delhi High Court
in Apollo Tyres (supra) even if it cites Philips (supra) is at variance with the
interpretation of the law laid down by Aldous L.J. The learned Single Judge
in Apollo Tyres (supra) states (at paragraph 93) that:
"93......if the same function can be achieved through numerous
different forms of tread patterns, then the defence of functionality must
fail. It was essential to the defendant to, at least prima facie, establish
that the tread pattern of the plaintiff was the only mode/option, or one of
the only few options, which was possible to achieve the functional
requirements of the tyre." (emphasis added)
An analysis of the words used here would clearly reveal that the position of
the learned Single Judge of the Delhi High Court here requires that for the
bar of functionality to operate against the recognition of a shape either as a
trade mark or as a design, we need to establish that the shape as such is the
only one (or one of the few) capable of achieving the alleged technical result.
21
It is respectfully stated that this statement of the law is incorrect. To return
to first principles: Section 9(3)(b) of the Trade Marks Act, 1999 states quite
clearly that
"(3) A mark shall not be registered if it consists exclusively of--
......
(b) the shape of goods which is necessary to obtain a technical result;" (emphasis
added)
The word "exclusively" clearly indicates that the bars contemplated by this
subsection of the Trade Marks Act to the registration of the trade mark will
operate if and only if it is established that those bars have been fulfilled. The
second bar when read with the introductory line is clear in stating that the
shape of a good shall not be registered as a mark if and only if it is
established that the shape of the good is necessary to obtain a technical
result. What is clearly missing in this reading of subsection 3(b) is a
stipulation that the shape of a good that exclusively fulfils a technical
function must be such that that technical function can be achieved by any
other shape as well. And there is a logical reason for why this extra
requirement that has been read into the statute by the learned Single judge
in Apollo Tyres (supra) is not found here. To establish that 'A' necessarily
achieves result 'B', we need only establish that without 'A', result 'B' would
not be possible. To use that operation of logic in interpreting Section 9(3)(b),
to establish that the shape of a good necessarily achieves a given technical
result, we need only establish that without the shape in question the given
technical result would not be achieved. What we need not do is investigate
whether other shapes could achieve the given technical result to establish
that the shape in question necessarily achieves the given technical result.
22
24. The meaning of this narrower phrasing of the test by Aldous L.J.
may be expounded upon by examining the American case law on this issue.
A most recent American case on this issue is Sport Dimension, Inc. v.
Coleman Co., 820 F. 3d 1316 (Fed. Cir. 2016). In this case, Sport
Dimension filed a declaratory judgment action in the Central District of
California requesting judgment that it did not infringe the design patent
claimed by Coleman on the design of the latter's personal floatation devices
and that the said design patent was invalid. The District Court ruled in
favour of the Sport Dimension. Coleman appealed to the Circuit Court of
Appeals of the Federal Circuit on the ground, inter alia, that the District
Court was in error in holding that Coleman's design patent was functional
and not ornamental because certain parts of it were functional in nature.
The Circuit Court of Appeals vacated the judgment of the District Court. In
doing so, it adumbrated upon the law, (at pp. 1320-1321) as it had
developed in the U.S. through the ages, which is reproduced hereinbelow:-
'Of course, a design patent cannot claim a purely functional design--a design patent is
invalid if its overall appearance is "dictated by" its function. Id. at 668. But as long as
the design is not primarily functional, "the design claim is not invalid, even if certain
elements have functional purposes." Ethicon Endo-Surgery, 796 F.3d
1333 (citing Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94
(Fed.Cir.2010)). That is because a design patent's claim protects an article of
manufacture, which "necessarily serves a utilitarian purpose." L.A. Gear, Inc. v. Thom
McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.Cir.1993). So a design may contain both
functional and ornamental elements, even though the scope of a design patent claim
"must be limited to the ornamental aspects of the design." Ethicon Endo-Surgery, 796
F.3d 1333. "Where a design contains both functional and non-functional elements,
the scope of the claim must be construed in order to identify the non-functional
aspects of the design as shown in the patent." OddzOn Prods., 122 F.3d 1405 .
In OddzOn, for example, we considered a design patent on a rocket-shaped football
and endorsed the district court's construction that distinguished between functional
and ornamental aspects of the design. The design patent disclosed a football with a
large tail fin that added stability for the ball in flight. Id. at 1406. The fins also
produced an "overall 'rocket-like' appearance of the design." Id. at 1405. We agreed
with the district court's finding that the fins were functional. Nevertheless, we
approved of the court's construction that took the fins into account. We praised the
court for "carefully not[ing] the ornamental features that produced the overall 'rocket-
like' appearance ... [and] properly limit[ing] the scope of the patent to its overall
23
ornamental visual impression, rather than to the broader general design concept of a
rocket-like tossing bah." Id.
We followed a similar line of analysis in Richardson, 597 F.3d 1293 -94. The case
concerned a multi-function tool described in the patent as "compris[ing] several
elements that are driven purely by utility," including a hammer, crowbar, and stud
climbing tool. Id. at 1294. Those elements--i.e., the hammer's flat head, the crowbar's
elongated shape, and the stud climbing tool's jawlike shape--were well known in the
art, and their basic design was dictated by their respective functional
purposes. Id. But there were nevertheless ornamental aspects of the design of those
elements. The district court had explained that the claim "protect[ed] the ornamental
aspects of Richardson's design, which include, among other things, the standard
shape of the hammer-head, the diamond-shaped flare of the crow-bar and the top of
the jaw, the rounded neck, the orientation of the crowbar relative to the head of the
tool, and the plain, undecorated handle." Richardson v. Stanley Works, Inc., 610
F.Supp.2d 1046, 1050 (D.Ariz.2009), aff'd, 597 F.3d 1288. Our court agreed with the
district court's approach that limited the claim to these ornamental aspects of the
otherwise functional elements. Richardson, 597 F.3d 1293 -94. Under this
construction, the claim in Richardson did not protect the functional aspects of the
design. Rather, the court's construction properly ensured that the claim provided
protection, albeit narrow, over those aspects of the tool that were ornamental.
In Ethicon Endo-Surgery, we construed a design patent on a surgical instrument. We
explained that the open trigger, torque knob, and activation button of the instrument
were functional. Ethicon Endo-Surgery, Inc., 796 F.3d 1334. And we construed the
claim to eliminate the functional aspects of the design but to permit coverage of the
ornamental aspects of the design. In rejecting the district court's claim construction, we
disagreed with its conclusion that the claim had no scope. Id. While we agreed that
certain elements of the device were functional, their functionality did not preclude those
elements from having protectable ornamentation. We explained that, "although the
Design Patents do not protect the general design concept of an open trigger, torque
knob, and activation button in a particular configuration, they nevertheless have some
scope--the particular ornamental designs of those underlying elements." Id.
In OddzOn, Richardson, and Ethicon, we construed design patent claims so as to
assist a finder of fact in distinguishing between functional and ornamental features.
But in no case did we entirely eliminate a structural element from the claimed
ornamental design, even though that element also served a functional purpose."
(emphasis added)
This distinction drawn by the American authorities, as discussed in the
judgment quoted above, between the functional and ornamental aspects of a
design illuminate the implications of the statement of Aldous L.J. in Philips
(supra). The authorities here indicate that in evaluating whether the given
shape of a good can be protected as a design/trade mark we must
distinguish the functional and the ornamental aspects of the shape in
question. The fact that a shape has certain functional aspects to it does not
automatically mean that the shape in question cannot be protected under
24
trade mark/design law because it may very well have certain ornamental
aspects to it or such aspects to it that are capable of distinguishing the
shape as a trade mark, and to ignore them would be contrary the very point
of trade mark/design law. Phrasing this point differently and synthesising
this point with the statement of Aldous L.J., we can say that for the shape of
a good to be purely or only functional and therefore incapable of protection
as a trade mark, it is not sufficient that the shape have certain aspects which
achieve a technical result, rather what is required is that the shape, as a
whole, performs a function only. If a shape has both functional and non-
functional features then the non-functional features are capable of protection
under trade mark/designs law. This has acknowledged by this Hon'ble Court
in the context of designs law in International Cycle v. The Controller of
Patents and Designs, 2019 (3) C.H.N. 256 at paragraphs 22-23:
'22.......a design which has functional attributes cannot be registered under the
Designs Act. This is the essence of Section 2(d) of the Designs Act. The protection
under the Designs Act is granted only to those designs which may have an aesthetic
value or otherwise appeal to the eye. There may be, however, cases where the design
while fulfilling the test of being appealing to the eye, is also functional. (Mohan Lal vs.
Sona Paint & Hardwares, AIR 2013 Del 143: 2013 (55) PTC 61 (Del) and Microlube
Indian Limted vs. Rakesh Kumar, 2013 (55) PTC 61 (Del) (FB) at p. 75)
23. In Kestos Ltd. vs. Kempat Ltd., (1936) 53 RPC 139, the Court observed that "a
mere mechanical device is a shape in which all the features are dictated solely by the
function or functions which the article has to perform". In AMP Incorporated vs Utilux
Propietary P. Ltd., (1972) RPC 103, the House of Lords approved the above statement
of the law in Kestos (supra). The House of Lords held that "dictated solely by function"
meant "attributable to or caused or prompted by function". The House of Lords further
held that where a design would perform a particular function, but the designer had
also added some features of shape that appealed to the eye and was additional to or
supplementary to the function the design could be registered. In other words, where a
designer sets out to produce an article that would perform a particular function, but
where in producing it he has added or applied some features of shape that are
additional to or supplementary to what is functionally needed, with the result that in the
finished article there are some features that appeal to the eye, there may be a design
which is registrable within the statutory definition. (Amp vs. Utilux, (1972) RPC 103 at
p. 113)' (emphasis added)
25
25. A brilliant example of a case where a shape was not recognised
as a trade mark because it only had a functional aspect to it which was not
separable from the non-functional aspects of the shape is Lego Juris A/S v
OHIM & Anr. (Case C-48/09 P) (See also: Kemtron Properties Pty. Ltd. &
Anr. v Jimmy's Co. Ltd. [1979] F.S.R. 86 (High Court of Hong Kong)). In
this case, the issue was whether the shape of the famous bricks made by the
toymaker Lego, with the characteristic studs that helped the bricks to join
together, was capable of being recognised as a trade mark. The Grand
Chamber of the Court of Justice of the European Union held that they were
not capable of being recognised so under Article 7(1)(e)(ii) of Regulation
No 40/94, which is pari materia with Section 9(3)(b) of the Trade Marks Act.
In arriving at this conclusion, the Court reasoned as follows (at paragraphs
48, 52, 58 and 72):-
"48. ......by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation
No 40/94 to signs which consist 'exclusively' of the shape of goods which is
'necessary' to obtain a technical result, the legislature duly took into account that any
shape of goods is, to a certain extent, functional and that it would therefore be
inappropriate to refuse to register a shape of goods as a trade mark solely on the
ground that it has functional characteristics. By the terms 'exclusively' and
'necessary', that provision I - 8459 LEGO JURIS v OHIM ensures that solely shapes of
goods which only incorporate a technical solution, and whose registration as a trade
mark would therefore actually impede the use of that technical solution by other
undertakings, are not to be registered...........
52.......In addition, since that interpretation implies that the ground for refusal under
Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential
characteristics of the sign are functional, it ensures that such a sign cannot be refused
registration as a trade mark under that provision if the shape of the goods at issue
incorporates a major non-functional element, such as a decorative or imaginative
element which plays an important role in the shape...........
58......Those considerations are moreover reflected in paragraphs 81 and 83 of Philips,
which state that the existence of other shapes which could achieve the same technical
result does not in itself preclude application of the ground for refusal set out in the
second indent of Article 3(1)(e) of Directive 89/104, whose wording corresponds to that
of Article 7(1)(e)(ii) of Regulation No 40/94...........
72. In the present case, the Grand Board of Appeal found, at paragraph 62 of the
contested decision, that the most important element of the sign composed of the Lego
brick consists in the two rows of studs on the upper surface of that brick. In its
examination of the analysis carried out by the Cancellation Division, the Board placed
particular emphasis on the inclusion of that element in Kirkbi's prior patents. As a
26
result of that examination, it was found that that element is necessary to obtain the
intended technical result of the product in question, that is to say, the assembly of toy
bricks. In addition, as is apparent from paragraphs 54 and 55 of the contested decision,
the Grand Board of Appeal found that, with the sole exception of its colour, all the other
elements of the sign constituted by that brick are also functional." (emphasis added)
Apart from reinforcing and re-emphasising the statements of law made by
the American and English courts, this case gives us a positive example of
when the law will bar the recognition of a trade mark on the ground of
functionality. It tells us very clearly that only when the main purpose of a
shape is to achieve a technical result will it be barred from being recognised
as a trade mark even if it has distinctive features. We can contrast this
judgment with Apollo Tyres (supra), which also made reference to this case.
In Apollo Tyres (supra), the tread patterns did have a functional aspect to
them, but those functional aspects were not the dominant feature of the
tread patterns, rather the dominant functional aspect resided in the treads
themselves and not in the manner or pattern in which those treads were
arranged. In this case, however, the pattern of the studs on the bricks had
one singular point, i.e. to join the bricks together. There was simply no
difference between the pattern of the studs and the studs themselves.
26. An excellent exposition of the policy underpinnings of the
prohibition on trade mark recognition on the ground of functionality is found
in the judgment of Smit J. in the High Court of South Africa -- (Transvaal
Provincial Division) in Triomed (Proprietary) Ltd. v Beecham Group Plc,
[2001] F.S.R. 34 at paragraphs 69-71:
"69. The exclusion provided for in section 10(5) has its genesis in the principle which
pervades trade mark law that a balance should be preserved between the protection of
the right of a manufacturer or merchant to identify his goods and distinguish them
from those manufactured or sold by others and the recognition of the general right of
free competition, including the right to copy. [See: Cointreau et cie SA v. Pagan
27
International 1991 (4) SA 706 (A) at 712E-F ; and see Premier Hangers CC v. Polyoak
(Pty) Ltd 1997 (1) SA 416 (A) at 423D-424I .)
70. This principle also finds expression in the common law principal that as a matter
of public policy features of an article dictated solely by function are not protected by
an action of passing off. [See: Agriplas (Pty) Ltd and Others v. Andrag & Sons (Pty) Ltd
1981 (4) SA 873 (C) at 882A-884H.]
71. If these principles were not applied it would be open to a single competitor or a few
competitors to monopolise all the best or most appropriate functional features for an
article and so inhibit or prevent competition. Artificial barriers to free competition are
precluded by laws relating to competition in most free market economies including
South Africa and a particular monopoly must as a matter of principle be justified in
the public interest." (sic) (emphasis added)
This exposition of the policy reasons behind the bar on functionality is
undoubtedly applicable to Indian law as well and accords well with the
discussion of the law above. It is verily because we must balance the right of
a manufacturer or trader to distinguish his goods and the right of a
manufacturer to imitate more technically-sound shapes that we must,
firstly, bar recognition of a shape as a trade mark when the shape solely
achieves a technical result, secondly, not bar recognition of a shape as a trade
mark simply because the shape has a functional aspect and, thirdly, bar
recognition of a shape as a trade mark if it has a functional aspect only to the
extent of that it has that functional aspect. One may argue that the second
and third postulations have the possibility of inhibiting competition, but as
stated by Saidman:
"Omitting consideration of utilitarian features during claim construction...will not
result in monopolization of such features, it will only result in the inability of
competitors to use substantially the same appearance as the combination of claimed
utilitarian features in their products." (Perry J. Saidman, "The Demise of The
Functionality Doctrine in Design Patent Law", 92(4) Notre Dame Law Review 1471 at
p. 1479)
27. As already stated in the South African judgment quoted above,
the bar of functionality operates both with regard to a statutory trade mark
and in relation to an unregistered trade mark, as is the case here. In a
28
judgement given by the Supreme Court in S. Syed Mohideen v. P.
Sulochana Bai, (2016) 2 S.C.C. 683, the Court has stated that the statute
only recognises the common law rights of the owner of a trade mark in these
words:
"33.....it is also a well-settled principle of law in the field of trade marks that the
registration merely recognises the rights which are already pre-existing in common law
and does not create any rights" (emphasis added)
A logical application of this statement of the law to the present question
clearly entails that the unregistered trade mark must face the same bar of
functionality as is found in statute. If the statute merely codifies and
recognises what is already existent in the common law then it follows that
the bars to the recognition of a trade mark that is spelt out in the statute
will apply to the common law as well. This point has been explicitly stated by
the Supreme Court of Canada in Kirkbi A.G. & Lego Canada Inc. v Ritvik
Holdings [2005] 3 S.C.R. 302 at paragraphs 56 and 58:
56. Kirkbi does not challenge the application of the functionality doctrine to registered
marks in this Court. It raises a different argument. It submits that the doctrine does
not apply to unregistered marks. In its view, a mark does not grant the holder
monopoly rights, but solely the right to be protected against confusion as to the
source of the product.....
58. As Sexton J.A. found for the majority of the Court of Appeal, this argument has no
basis in law. Registration does not change the nature of the mark; it grants more
effective rights against third parties. Nevertheless, registered or not, marks share
common legal attributes......Sexton J.A. rightly pointed out that the argument of
Kirkbi appears to rest on a misreading of a 19th century judgment of the House of
Lords, Singer Manufacturing Co. v. Loog. (1882), 8 app. Cas. 15, aff'g (1880), 18 Ch. D.
395 (C.A.). This judgment stands only for the proposition that an unregistered trade-
mark could be mentioned by competitors in comparative advertising, not that it failed
to create exclusive rights to the name for the purpose of distinguishing the products.
The functionality doctrine remains relevant, as the legal nature of the rights remains the
same." (emphasis added)
28. Applying the law discussed above, we need to essentially decide
whether the 'X' ribs here are more akin to a Lego brick or to a tread pattern
29
in a tyre. It would seem that they are more like the latter. The shape of the
good here that is sought to be recognised as a trade mark is the particular
pattern of ribbing on the TMT bars of the respondent. There is a difference
between the 'ribbing' on a TMT bar and the 'pattern of ribbing' on the TMT
bar. Nobody can perhaps claim a trade mark on the former for it arguably
fulfils the exclusively technical function of attaching the TMT bar to the
concrete, but the latter can be claimed as a trade mark. Nowhere is this
more apparent than in the fact that the pattern of ribbing of the respondent
was registered as a design and was not cancelled due to the principle of
functionality. In fact, the Assistant Controller of Patents and Designs
explicitly recorded in his order dated February 3, 2010 cancelling the
respondent's design registration (at p. 9) that '[t]he rod reinforcing concrete
can have many designs over the surface...and moreover the rod has an eye
appeal. The mechanical functions have been disclaimed in the disclaimer
statement. Therefore, the impugned "Rod for reinforcing Concrete" is not
fundamental form.' If the pattern of ribbing of the respondent was truly
functional then it is highly unlikely that the Designs Office would have
allowed its registration. At the very least, it would have sought to cancel the
design registration of the respondent especially when the functionality
argument had been specifically put to the Assistant Controller of Patents
and Designs. Indeed, this fact is not in itself conclusive. Registration,
whether as a trade mark or as a design, only creates a presumption that the
pattern of ribbing does not fulfil a technical function (Avia Group Int'l, Inc.
v. L.A. Gear California, Inc., 853 F. 2d (Fed. Cir. 1988) : 7 U.S.P.Q. 2d
1548) and here even the registration is not subsisting. But a further
analysis of the facts reinforces the conclusions of the Assistant Controller of
30
Patents and Designs quoted above. As already stated, the ribbing itself may
be exclusively functional, but the way in which it is wound around the TMT
bar is separable from the ribbing itself, just the way in which the treads on a
tyre are networked together is separable from the treads themselves, as held
in Apollo Tyres (supra) (See also: Sport Dimension (supra), International
Cycle (supra)). Even if the pattern of ribbing also performs some technical
function, over and above the ribbing itself, it would only be an incidental
technical function. The very source of the pattern's functionality would be
due to the way in which it wounds the ribbing around the TMT bar, so, the
functional aspect of the pattern would not be due to itself or solely because
of itself but because of the ribbing which it merely knits into a pattern. In
other words, the appellants have not been able to establish that without the
particular pattern of ribbing on the respondent's TMT bars as distinguished
from the ribbing itself, the TMT bars would not perform the alleged technical
function of attaching the TMT bars of the respondent with the concrete.
29. Now, It is true that the opposite conclusion was reached in a
decision given by a learned Single Judge of this Court dated July 8, 2011 in
SRMB Srijan Pvt. Ltd. v. Tribeni Industries Pvt. Ltd., G.A. No. 2275 of
2015 in A.I.D. No. 4 of 2010. The issue therein was whether the order of
the Designs Office dated February 3, 2010 cancelling the respondent's
design registration for its 'X' ribbed mark on the ground of prior publication
was valid or not. The learned Single Judge held that there was no novelty
and originality in the registered design of the respondent in view of prior
publication. It was only in an ancillary finding that the learned Single Judge
stated that the advertisements and the design application of the respondent
31
evidenced the functional aspect of the respondent's 'X' ribbed mark, making
it another reason to not interfere with the order of the Designs Office without
having much discussion on the functionality aspect.
30. All of that apart, indisputably, the respondent has been using
the 'X' rib mark in its TMT bars since 2001 continuously, widely and
extensively as compared to the 'double Y' rib mark of the appellant that was
adopted in the year 2016 and looks deceptively similar to the 'X' rib mark of
the respondent, as held by the learned Single Judge. This adoption of the
'double Y' mark, which closely resembles the 'X' rib mark of the respondent,
needs explanation. The appellant had been using the elliptical helix mark
and, suddenly, in 2016 they realised that the 'X' rib pattern would bring
more stability and applied for registration of the 'double Y' rib mark under
the Trade Marks Act, which almost looks like the 'X' rib mark of the
respondent. The appellants now claim that the 'X' rib pattern is essentially
functional and not registrable as a trade mark. If that be the position then
the registration of the 'double Y' rib mark as a trade mark in favour of the
appellants must be revoked, considering that the appellant has in its own
advertisements claimed that this mark achieves superior bonding with
concrete, as pointed out by Mr. Ratnanko Banerjee, learned Senior Counsel
for the respondents. All these arguments are self-defeating and are now
being raised, having realised that the 'X' rib TMT bars of the appellant has a
large market share. The goodwill and reputation of the respondent has been
built over a long period of time, which has remained unshaken till date. The
origin of the product would point towards the respondent and not the
appellants and it would be entitled to protection, as explained below.
32
31. The mark of the proprietor in a passing off action is entitled to
ad-interim protection once the Trinity Test is established, that is, once it is
established that: (1) the marks of the prior and later user are prima facie
and ex facie the same, (2) the balance of convenience lies in the prior user's
favour, (3) there would be irreparable damage to the prior user. In
Laxmikant V. Patel v. Chetanbhai Shah, A.I.R. 2002 S.C. 275 at
paragraphs 12 and 13, the law on this issue has been summarised. The said
paragraphs read:
"12. In Oertli v. Bowman [1957 RPC 388 (CA)] (at p. 397) the gist of passing-off action
was defined by stating that it was essential to the success of any claim to passing-off
based on the use of given mark or get-up that the plaintiff should be able to show that
the disputed mark or get-up has become by user in the country distinctive of the
plaintiff's goods so that the use in relation to any goods of the kind dealt in by the
plaintiff of that mark or get-up will be understood by the trade and the public in that
country as meaning that the goods are the plaintiff's goods. It is in the nature of
acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in
relation to goods of that kind because of the plaintiff having used or made it known
that the mark or get-up has relation to his goods. Such right is invaded by anyone
using the same or some deceptively similar mark, get-up or name in relation to goods
not of plaintiff. The three elements of passing-off action are the reputation of goods,
possibility of deception and likelihood of damages to the plaintiff. In our opinion, the
same principle, which applies to trade mark, is applicable to trade name.
13. In an action for passing-off it is usual, rather essential, to seek an injunction,
temporary or ad interim. The principles for the grant of such injunction are the same as
in the case of any other action against injury complained of. The plaintiff must prove
a prima facie case, availability of balance of convenience in his favour and his suffering
an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para
16.16) passing-off cases are often cases of deliberate and intentional
misrepresentation, but it is well settled that fraud is not a necessary element of the
right of action, and the absence of an intention to deceive is not a defence, though
proof of fraudulent intention may materially assist a plaintiff in establishing
probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p.
3.06) states that the plaintiff does not have to prove actual damage in order to succeed
in an action for passing-off. Likelihood of damage is sufficient. The same learned
author states that the defendant's state of mind is wholly irrelevant to the existence of
the cause of action for passing-off (ibid, paras 4.20 and 7.15). As to how the injunction
granted by the court would shape depends on the facts and circumstances of each
case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark
or business name, the order may be an absolute injunction that he would not use or
carry on business under that name (Kerly, ibid, para 16.97)." (emphasis added)
32. In another decision of the Supreme Court in the case of Ramdev
Food Products (P.) Ltd. v. Arvindhbhai Rambhai Patel & Ors., (2006) 8
33
S.C.C. 726, the Supreme Court has observed that the test for determining
deceptive similarity in an infringement action would be the same as in the
case of a passing off action, as is the case here. The Court observed that
although the defendants might not be using the actual trademark of the
plaintiff, the get up of the defendant's goods may be so much like the
plaintiff's that a clear case of passing off could be proved. The Supreme
Court (at paragraph 51) has quoted with approval paragraph 10 of the
judgment in Lakshmikant V. Patel (supra), where it has been stated, inter
alia that:-
"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." (emphasis added)
33. The function of a trade mark is to distinguish the goods of one
person from others. As was stated by Upjohn J. in Cluett Peabody & Co.,
Inc. v McIntyre Hogg Marsh & Co. Ld. [1958] R.P.C. 335 at p. 351,
"[A] man infringes the mark of another if he seizes upon some essential feature of the
plaintiffs' mark. That essential feature may be ascertained by the eye or by the ear in
this sense, that goods bearing that mark may be likely to become known by a certain
name: See de Cordova & Others. v Vick Chemical Co. (1951), 68 R.P.C. 103 at p. 105.
Furthermore evidence is admissible to establish what is or has become an essential
feature, but evidence is not essential if the Court feels satisfied on inspection in
coming to the conclusion that some particular feature is a distinguishing feature of
the Mark allegedly infringed".
34. It is also apposite to refer to the words of Lord Cranworth L.C.,
in Seixo v Provezende (1865-66) L.R. 1 Ch. App. 192 at p. 197, where he
states:
34
"If the goods of a manufacturer have, from the mark or device he has used, become
known in the market by a particular name, I think that the adoption by a rival trader
of any mark which will cause his goods to bear the same name in the market, may be
as much a violation of the rights of that rival as the actual copy of his device." (emphasis
added)
On the question of the extent of proof required to conclude that there is
passing off, Lord Cranworth observes at p. 196 that:
"It is obvious that, in these cases, questions of considerable nicety may arise as to
whether the mark adopted by one trader is or is not the same as that previously used
by another trader complaining of its illegal use, and it is hardly necessary to say that,
in order to entitle a party to relief, it is by no means necessary that there should be
absolute identity.
What degree of resemblance is necessary from the nature of things, is a matter
incapable of definition a priori. All that courts of justice can do is to say that no trader
can adopt a trade mark so resembling that of a rival, as that ordinary purchasers,
purchasing with ordinary caution, are likely to be misled.
It would be a mistake, however, to suppose that the resemblance must be such as
would deceive persons who should see the two marks placed side by side. The rule so
restricted would be of no practical use." (emphasis added)
35. From these authorities we can surmise that the function of the
trade mark is to identify the source of the manufacturer of goods. It is the
indicia of origin. In the market, the chief value of the trade mark is its power
to stimulate sales. In law, the fundamental theory upon which the interest in
the trade mark is protected is that a trade mark identifies the goods coming
from a particular source, and that an infringing designation tends to divert
customers from that source by falsely representing that other goods come
from it. (See Ellora Industries v. Banarasi Dass Gupta, A.I.R. 1980 Del.
254) Determining whether there is false representation is not subject to
some perfectly codified standards but is subject to the broad test of whether
ordinary purchasers would be misled by the representation in question. And
if the Trinity Test is established, then a false representation may be
35
protected by an ad-interim order to ensure that till the full adjudication of
the case, the alleged false representor is not unjustly enriched.
36. A trade mark need not be registered to be protected, in fact,
passing off rights are superior to the rights conferred by registration. In this
regard reference may be made to S. Syed Mohideen (supra) where it is
stated (at paragraphs 31-32):
'31.1 Traditionally, passing off in common law is considered to be a right for
protection of goodwill in the business against misrepresentation caused in the course
of trade and for prevention of resultant damage on account of the said
misrepresentation. The three ingredients of passing off are goodwill, misrepresentation
and damage. These ingredients are considered to be classical trinity under the law of
passing off as per the speech of Lord Oliver laid down in Reckitt & Colman Products
Ltd. v. Borden Inc. [Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 WLR 491 :
(1990) 1 All ER 873 (HL)] which is more popularly known as "Jif Lemon" case wherein
Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink
Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd. [Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd., 1979 AC 731 at p. 742 : (1979) 3 WLR
68 : (1979) 2 All ER 927 (HL)] ("the Advocaat case") to three elements: (1) goodwill
owned by a trader, (2) misrepresentation, and (3) damage to goodwill. Thus, the
passing off action is essentially an action in deceit where the common law rule is that
no person is entitled to carry on his or her business on pretext that the said business
is of that of another. This Court has given its imprimatur to the above principle
in Laxmikant V. Patel v. Chetanbhai Shah [Laxmikant V. Patel v. Chetanbhai Shah,
(2002) 3 SCC 65]
31.2. The applicability of the said principle can be seen as to which proprietor has
generated the goodwill by way of use of the mark/name in the business. The use of
the mark/carrying on business under the name confers the rights in favour of the
person and generates goodwill in the market. Accordingly, the latter user of the
mark/name or in the business cannot misrepresent his business as that of business
of the prior right holder. That is the reason why essentially the prior user is
considered to be superior than that of any other rights. Consequently, the
examination of rights in common law which are based on goodwill, misrepresentation
and damage are independent to that of registered rights. The mere fact that both prior
user and subsequent user are registered proprietors are irrelevant for the purposes of
examining who generated the goodwill first in the market and whether the latter user
is causing misrepresentation in the course of trade and damaging the goodwill and
reputation of the prior right holder/former user. That is the additional reasoning that
the statutory rights must pave the way for common law rights of passing off.
32....it is also recognised principle in common law jurisdiction that passing off right is
broader remedy than that of infringement. This is due to the reason that the passing
off doctrine operates on the general principle that no person is entitled to represent
his or her business as business of other person. The said action in deceit is
maintainable for diverse reasons other than that of registered rights which are
allocated rights under the Act. The authorities of other common law jurisdictions like
England more specifically Kerly's Law of Trade Marks and Trade Names, 14th Edn.,
Thomson, Sweet & Maxwell South Asian Edition recognises the principle that where
trade mark action fails, passing off action may still succeed on the same evidence.
This has been explained by the learned author by observing the following:
36
"15-033. A claimant may fail to make out a case of infringement of a trade mark
for various reasons and may yet show that by imitating the mark claimed as a
trade mark, or otherwise, the defendant has done what is calculated to pass off
his goods as those of the claimant. A claim in 'passing off' has generally been
added as a second string to actions for infringement, and has on occasion
succeeded where the claim for infringement has failed."'
37. Applying the law to the facts, we can clearly see that the Trinity
Test required to be satisfied for the ad-interim protection of the respondent's
mark has been clearly satisfied, as found by the learned Single Judge, and
the absence of registration of the mark is no bar to it being so protected. The
learned Single Judge has satisfied himself that there is prima facie and ex
facie similarity between then mark of the prior use and the later user.
The Second Issue
38. Before we seek to discuss the second issue, it must be clarified
that since the design registration of the mark in question here has been
cancelled we need not or rather must not concern ourselves with the
question of whether the registration of a mark as a design precludes its
recognition as a trade mark as well in an action of passing off. We are only
required to discuss the question of whether post cancellation of the design
registration of a trade mark on the ground of prior publication, the said
mark can be considered a trade mark or not in respect of a passing off
action. Mr. Mookherjee, learned Senior Counsel for the appellants, has
placed reliance on the dissenting judgment of Manmohan Singh, J. in
Mohan Lal v. Sona Paint & Hardwares, (2013) 199 D.L.T. 740 (F.B.).
The essence of Manmohan Singh, J.'s position is found in paragraph 63,
where he states:
"Once the objects of the Design Act, 2000 provides that the monopoly rights are for
limited period and the same should not be extended so that the public can freely use
37
the shape of the articles, the further extension of the rights under the guise of the
passing off by calling it a dual monopoly would be against the shape of the articles in
the public domain for free use after expiration. It cannot be the case that on one hand
the shape of the article is passed to public domain for free use by operation of law of
Design Act and on the other hand, the same very shape is again taken away from the
public and put into the bracket of the protection by granting monopoly rights in
perpetuity by operation of another law which is a prior law and thereby in effect the
public is debarred from using the said shape of the articles."
This issue is not covered by the majority in Mohan Lal v. Sona Paint &
Hardwares, 2013 (55) P.T.C. (Del.) (F.B.), which was, inter alia, seized of
the question of whether during the subsistence of a design registration of a
mark the said mark could be considered a trade mark (see paragraphs 19-
22.8, esp. paragraph 22). The cases that discuss this majority judgment of
Mohan Lal (supra) thereafter, i.e. Carlsberg Breweries v. Som
Distelleries, A.I.R 2019 Del. 23: (2019) 256 D.L.T. 1 at paragraph 45,
M/s. Crocs, Inc. U.S.A. v. M/s. Bata & Ors., RFA (OS) (COMM) 22/2019 &
CM APP No. 22655/2019 & other connected matters at paragraph 23
and Dart Industries Inc. & Ors. v. Vijay Kumar Bansal & Ors., CS
(COMM) 837/2016, MANU/DE/3231/2019 at paragraph 24-26 are, inter
alia, all concerned with the same issue. So, they are inapplicable to the
resolution of the present issue in this case. However, it must be noted that
in Dart Industries (supra), Rajiv Sahai Endlaw, J. does state (at paragraph
26) that:
"no action for passing off would lie with respect to what was registered as a design,
inasmuch as the plaintiffs, by seeking registration thereof as a design, are deemed to
have surrendered, abandoned, acquiesced and waived all rights to use such features
as a trade mark, whether during the pendency of the registration as a design or even
thereafter." (emphasis added)
39. It is stated that this position of Manmohan Singh, J. in Mohan
Lal (supra) and Rajiv Sahai Endlaw, J. in Dart Industries (supra) is
respectfully differed with since it is not supported by the fundamental
38
principles of the law of passing off. The position of Manmohan Singh, J.
presupposes that an article by ipso facto becoming a design cannot become a trade mark after it stops being a design because the aim of a design registration is to grant a monopoly for a limited period and not after that. But the fatal flaw with this presupposition is that rather than granting monopolies to the shape of an article, the law of passing off merely recognises the existence of a monopoly over that shape that is held by the proprietor. So, the monopoly of a design, after it comes to an end, is not, ceteris paribus, converted into the monopoly of a trade mark but only recognised as one. What Manmohan Singh, J.'s opinion does not account for is the fact that a registered design, after its expiry, may not lose its distinctiveness and end up fulfilling all the requirements of a trade mark. In that scenario, not recognising that mark as a trade mark because that would extend the design monopoly would be to conflate two things that exist completely independent of each other. If a person is able to demonstrate that his mark has attained all the requirements of trade mark in a passing off action, then to deny him the protection that the law entitles him simply because priorly the said mark was a design would defeat the purpose of trade mark law and extend not the purpose of designs law. The fear enunciated by Manmohan Singh, J. that designs will not go to the public domain as they ought to post expiry of design registration if they are recognised as trade marks may be addressed by simply pointing out that such monopolisation is restricted by the standards required to be satisfied for the recognition of a trade mark itself. These points find strong support from the case of In re Mogen David Wine Corpn., 328 F. 2d 925, where the U.S. Court of Customs and Patent Appeals states very tritely that: 39
'we can find no supportable reasons in the purposes or philosophies of patent and trademark law to support the conclusion the board bases on that distinction. In our opinion, trademark rights, or rights under the law of unfair competition, which happen to continue beyond the expiration of a design patent, do not "extend" the patent monopoly. They exist independently of it, under different law and for different reasons. The termination of either has no legal effect on the continuance of the other. When the patent monopoly ends, it ends. The trademark rights do not extend it. We know of no provision of patent law, statutory or otherwise, that guarantees to anyone an absolute right to copy the subject matter of any expired patent. Patent expiration is nothing more than the cessation of the patentee's right to exclude held under the patent law. Conversely, trademarks conceivably could end through non use during the life of a patent. We doubt it would be argued that the patent rights should also expire so as not to "extend" them.' (emphasis added)
40. While the above discussion has centred mainly on the issue of whether a shape previously registered as a design can also be a trade mark post expiry of the design registration, the discussion can mutatis mutandis apply to the context where a design has been cancelled on the ground of prior publication or the lack of novelty. The reason for this is simple and hardly differs from what has been explained above. A design previously published is incapable of registration or is liable to be cancelled under Sections 4(a)-(b) and 19(b)-(c) of the Designs Act respectively, simply because it is either already in the public domain, and/or, as on the date of application for registration, the design is not new or original. So, the cancellation of a mark as a registered design on the ground of prior publication does not imply that the mark, due to the very fact of being unoriginal and/or being in the public domain in the context of designs, is incapable of "distinguishing the goods or services of one person from those of others" under Section 2(zb) of the Trade Marks Act, 1999. Indeed, the fact of the mark being one that is already a design in the public domain and/or is unoriginal could possibly prevent it from developing distinctiveness for the purposes of its recognition and/or registration as a trade mark. But that cannot be necessarily so. For, to imply as such would be to conflate two 40 things that are legally distinct, alluded to by a learned Single Judge in this Hon'ble Court by an order dated January 30, 2019 in SRMB Srijan Pvt.
Ltd. v. Shreegopal Concrete Pvt. Ltd., G.A. No. 261 of 2019 in C.S. No. 15 of 2015. The cancellation of a design monopoly on the ground of prior publication really means that the proprietor of the design had no monopoly over its design in the first place. However, the recognition that there is no design monopoly on a mark does not mean that there can be no trade mark monopoly on the said mark. A mark can, without being original or outside the public domain in the context of designs, ceteris paribus, develop distinctiveness as the signifier of the proprietor's product. To refuse to recognise that the said mark has become monopolised by the proprietor as a trade mark merely because the mark is also a design that has been cancelled due to prior publication would offend the very purpose of trade marks law and do nothing to extend the purpose of designs law. Thus, the cancelation of a design on the ground that it has been previously published or it lacks novelty under the Designs Act would not be a ground for refusal of registration under the Trade Marks Act, 1999 or the recognition of a mark as a trade mark in a passing off action. Now, it must be noted that, as has been explained above in relation to the first issue, a design which is purely functional is not registrable under the Designs Act. So, a design which has been cancelled on that ground under Section 19(e) of the Designs Act may not be registered or recognised as a trade mark due to the principle of functionality under Section 9(3)(b) of the Trade Marks Act, 1999. This is the only nexus that the Trade Marks Act may have with the Designs Act 41
41. Applying the law to the facts here is very straightforward. The design registration of the mark here has been cancelled in 2010 on the ground of prior publication and not on the ground of functionality, so there is nothing precluding the 'X' ribs of the respondent from being recognised as a trade mark.
The Third Issue
42. It is well-settled that an appellate court would be extremely slow and cautious to interfere with the discretionary jurisdiction of the trial court with regard to the granting of an ad-interim order. The appeal court will not substitute its discretion unless the trial court has exercised jurisdiction arbitrarily, capriciously, perversely or in ignorance of settled principles of law regulating the grant or refusal of an ad-interim order of injunction. As observed in Cello Plast (supra) at paragraph 4:
"It is only when an ad interim order is passed completely without reasons or appears to be bad to the meanest mind in the sense that it is outlandish, that an Appellate Court should interfere in an intra-Court appeal"
In the instant case, the impugned order was not an ex parte ad-interim order, for the parties were heard at length. The respondent was able to make out a strong prima facie case and the balance of convenience was in favour of the respondent, since refusal to pass any such ad-interim order would result in unjust enrichment to the appellant. The appellant cannot thrive and prosper at the cost of the respondent. Hence, there is no reason for us to interfere with the impugned order.
Conclusion 42
43. Therefore, for the reasons given above, the present appeal and the application are dismissed. There shall be no order of costs. We, however, make it clear that the observations and findings in this judgment shall not influence the learned Single Judge in deciding the interlocutory application on merits after exchange of affidavits.
Urgent Photostat copies of this judgment shall be given to the parties on the usual undertakings.
(Soumen Sen, J.) I agree (Saugata Bhattacharyya, J.)