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[Cites 21, Cited by 2]

Calcutta High Court

Shree Ganesh Besan Milll And Ors vs Ganesh Grains Limited And Anr on 24 December, 2021

Author: Aniruddha Roy

Bench: Aniruddha Roy

                IN THE HIGH COURT AT CALCUTTA
                    Civil Appellate Jurisdiction
                     COMMERCIAL DIVISION
                           Original Side


Present:-    Hon'ble Justice I. P. Mukerji
             Hon'ble Justice Aniruddha Roy


                           APO 69 of 2021
                            CS 92 of 2020
                         IA NO: GA 2 of 2021

             SHREE GANESH BESAN MILLL AND ORS.
                            Vs.
               GANESH GRAINS LIMITED AND ANR.



For the Appellants              :      Mr. Manish Biala,
                                       Mrs. Jayati Choudhury,
                                       Mr. Ashutosh Upadhyay,
                                       Mr. Devesh Ratan,
                                       Ms. Ranjana Seal, Advs.

For the Respondent              :      Mr. Ranjan Bachawat, Sr. Adv.,
                                       Mr. Debnath Ghosh,
                                       Mr. Soumya Roy Choudhury,
                                       Mr. Shounak Mitra,
                                       Ms. Vaibhavi Pandey, Advs.


Judgment on                     :      24.12.2021


I. P. MUKERJI, J.-
SUMMARY OF FACTS

This is a trademark appeal in this court's Commercial Division.

It is from a judgment and order dated 15th March, 2021 read with the

order dated 17th March, 2021, in terms of prayers (a), (b), and (c) of the

petition, made by the learned Interlocutory judge on an interim application

filed by the respondent plaintiffs, in the suit, inter alia, complaining of

infringement    of   their   registered   word   mark   "Ganesh"   by   the

appellant/defendants.

Prayers (a), (b) and (c) are inserted below:-

"a) The respondents their men, servants, agents, assigns, dealers,

distributors and/or any one claiming on their behalf be restrained from

infringing the petitioners' registered trademark "GANESH" by selling,
 manufacturing, marketing, advertising and/or otherwise dealing in any

goods or services under the mark "Shree Ganesh" or under any other mark

which is identical with or deceptively similar to the petitioners' registered

trademark "Ganesh" in any manner whatsoever;

b) The respondents, their men, servants, agents, assigns, dealers,

distributors and/or any one claiming on their behalf be restrained from

infringing the petitioners' registered trademark "Ganesh" by carrying on

business under the name and style of SHREE GANESH BESAN MILL or

under the mark "Shree Ganesh" or any business name or trading name

which is identical with or deceptively similar to the petitioners' registered

trademark "GANESH" as part of their trading name in any manner

whatsoever;

c) The respondents, their men, servants, agents, assigns, dealers,

distributors and/or any one claiming on their behalf be restrained from

passing off their goods and business as that of the petitioners by selling,

manufacturing, marketing, advertising and/or otherwise dealing in goods or

services under the mark "Shree Ganesh" or carrying on business under the

mark "Shree Ganesh" or under any other mark which is identical with or

deceptively similar to the petitioners' registered trademark "GANESH" in

any manner whatsoever."


The respondent No. 1 manufactures and markets within India and exports

out of the country, flour products like wheat, besan and so on. It has

substantial sale in West Bengal and some market in neighbouring states.

At the present point of time the appellant No.1 is also a manufacturer of

similar products from Raipur in Chattisgarh and have substantial sale in

Chattisgarh, Orissa, Jharkhand, Bihar and Madhya Pradesh but not in

West Bengal. This respondent has a turnover in excess of Rs.500 crores

per annum. The turnover of the appellant No.1 is much smaller.

The facts of this case from the pleadings and documents in short are like

this.


                                  2
 Ganesh Flour Mills was manufacturing and marketing flour using the

mark "Ganesh" since 1936. At that time, the forefathers of the second

respondent ran the business. Eventually, the business was acquired by

the father of the second respondent Brij Ratan Mimani who ran it from 88,

Burtolla Street, Kolkata. Thereafter, the second respondent took over the

business and as a promoter incorporated a private limited company

"Ganesh Flour Mills Private Ltd." on 19th March, 2000. The name was

changed to that of the first respondent on 5th February, 2011.

From time to time the first respondent made several applications for

registration of the mark "Ganesh" or label marks or device marks with the

word "Ganesh" imprinted on it and marks which are variations of

"Ganesh". Most of these applications are pending. It enjoys registration of

two label marks containing the mark "Ganesh" in Class 30, one with the

restriction that the sale of the goods could only be confined to West Bengal

and the other with the limitation that sale would be restricted to eastern

India.


By a certificate dated 28th October, 2005 the word mark "Ganesh" was

registered by the trademark registry at the instance of the respondents

without any geographical limitation. This is the subject matter of the suit

and appeal.

The trade dress of the respondent No. 1 is a rhombus, coloured green with

the word "Ganesh" prominently written in white and an artistic design in

the green part in light green and yellow. The words "since 1936" are

written below "Ganesh".

The mark used by the appellants is "Shree Ganesh". "Ganesh" is written

with great prominence in the same style as that used by the respondent

No.1. Above "Ganesh" there is the word "Shree" which is in much smaller

font. What is also important is that the character, size and font of the

alphabets constituting the word "Ganesh" are quite identical to those used

by the respondent No.1. There are also the added words: "besan mill" after


                                  3
 "Ganesh" in very small font. The above mark in english is at the back of

the package handed up to the court containing the appellants' product

"idli rava". The front of the package contains the same words in Hindi.

The appellants claim that the word "Ganesh" is common, generic and non-

distinctive. Moreover, it is the name of a most popular Hindu God. The

respondents cannot have any exclusive right to use the mark, inspite of

registration.


They also say that they have derived the name "Ganesh" from the father of

the appellant No. 2, Ganesh Lal Daryani. He had been doing business for

a very long time in grinding and/or manufacturing flour. This business is

being carried forward by the appellants in partnership. The trademark or

name "Shree Ganesh" which they are using is derived from Ganesh Lal

Daryani. They are entitled to use this mark under Section 35 of the

Trademarks Act, 1999.


Furthermore, the respondents were, at all material times fully aware of the

use of this mark by the appellants and admittedly from 2015. Having not

taken any action, the respondents are prevented from taking action by the

principles of acquiescence, waiver, estoppel and so on.


The learned judge by his impugned judgment and order made on 15th

March, 2021 read with the order dated 17th March, 2021 has restrained

the appellants from using the mark "Ganesh".

TWO BASIC PRINCIPLES

Two principles have to be borne in mind. The first is that, in this kind of

an action alleging infringement of trademark and passing off, an order of

injunction made or refused to be made, virtually disposes of the suit.

Experience shows that the order initially passed becomes the final order

and nothing much remains of the proceeding thereafter. Therefore, the

court exercising jurisdiction has to be most judicious in passing or

refusing to pass an interim order in such an action.




                                  4
 Secondly, the general principle is that the discretion exercised by the

learned judge in passing an interim order in such a proceeding is

interfered with by the appeal court only if there is some gross or patent

error in appreciating the facts or law or the order is so unreasonable and

perverse that no reasonable judge could have passed it, is arbitrary or is a

product of bias. Otherwise, the court of appeal rarely interferes with the

discretion exercised by the learned trial judge in passing an interim order.

ORDER 41 RULE 27 APPLICATION

Another fact is noteworthy. It transpired during hearing of the appeal that

the appellants had not disclosed in their affidavit before the trial court

their turnover or sale of their products using the trademark "Ganesh".

After commencement of hearing of the appeal, the appellants took out an

application under Order 41 Rule 27 of the Code of Civil Procedure to

adduce further evidence.

Mr. Ranjan Bachawat, learned senior advocate, appearing for the

respondents very seriously opposed any order to be made permitting the

appellants from relying on those documents on the ground that they were

available with the appellants at the trial stage and if they did not disclose

them it was at their peril. Furthermore, most of the documents had been

fabricated to gain advantage in the appeal.

At the time of hearing of the appeal, without prejudice to the above

contentions, Mr. Ranjan Bachawat said that even from the documents

disclosed by the appellants, he would be able to show they had no case to

discharge the interim order.

As we have observed, a trademark matter is substantially decided at the

interim stage. Moreover, the question whether the learned single judge has

exercised his discretion judiciously or not is involved in the appeal.

Undoubtedly, the evidence which the appellants sought to produce were

available with them at the time of hearing of the interlocutory application

and could have been produced by them. For whatever reason they did not

produce those documents before the learned single judge. Since we were

                                  5
 hearing the matter substantially, we thought that full justice to the case

could be done if the parties were allowed to produce whatever materials at

their disposal.

ARGUMENTS

Mr. Biala, learned Counsel appearing for the appellants made very

elaborate submissions.

The respondents are registered proprietors of both label and word marks

"Ganesh". The label mark or device was categorically stated to be used for

sale of the goods in West Bengal as would appear from the registration

certificates at Pages 400 to 403 of the paper book. However, the word

mark "Ganesh", also registered did not contain any qualification with

regard to the geographical area of sale. It was contended that this word

mark was so registered on the assurance given by the appellants to the

Trademark Registry that they would restrict their sale to West Bengal only

so as not to infringe the trademark of others or pass off their goods as

those of others.


He submitted that the word "Ganesh" was very common and not

distinctive. It was widely used in trade and industry. In fact, about 550

applications for registration of that mark were pending before the

Trademark registry, out of which 66 had been registered. Secondly, he

submitted that out of inadvertence or mistake or irregular conduct of

proceedings, the respondents' mark "Ganesh" had been registered by the

authority. Similar applications by the respondents for registration of a

label mark containing the word "Ganesh" or marks being variants of the

word "Ganesh" like "Ganapati", "Shree Ganesh", "Ganesh Gold", "Ganesh-

G", "Ganesha" etc. were pending registration. The respondents had

admitted in a reply to a show cause before the trademark authority on 19th

November, 2005 the above generic nature of the mark that nobody had the

right of exclusive use thereof.




                                  6
 He also argued that the appellants were carrying on the business of

manufacturing and marketing flour products under the name and style of

"Ganesh" for a long period prior to the application for registration by the

respondent of their mark "Ganesh". His clients had substantial sale and

goodwill in the market for a long period of time.

In 1989 the predecessor-in-interest of the appellants one Shri Ganesh Lal

Daryani started using the trademark "Shree Ganesh" honestly and

bonafide deriving the name from his personal name. The appellants are

continuing such business.


Further, it was his contention that "Ganesh" was the name of a Hindu

deity, very popularly and extensively worshipped all over the country.

The registration of the mark "Ganesh" in favour of the respondent No.1

was illegal and wrongful and that by virtue of such registration no right of

exclusive user should be conferred on the respondents.

The appellants and the respondents are carrying on business from

different regions and the business of one does not trench on the other's

business.


In the application under Order 41 Rule 27 of the Code of Civil Procedure

the appellants had inter alia disclosed a certificate by a firm of Chartered

Accountants from where it appears that the gross sale of the firm in the

financial      year      1985-86     was         Rs.31,950/-.      It   increased      to

Rs.28,50,45,887.60/- in 2019-20. The gross sales were within Rs.1 crore

upto 2008-09. It crossed Rs.1 crore in 2009-10 and thereafter made a

steady increase till 2019-20, the increase from 2017-18 to 2018-19 being

most spectacular from Rs.9,29,20,326/- to Rs.18,07,11,321/-. The

appellants     in     that   application       have   also   enclosed   amongst     other

documents invoices relating to sale to their buyers and copies of income

tax returns.


In Paragraph Nos. 3(e) and (f) of the affidavit-in-opposition used by the

appellants before the learned trial Judge, they alleged that the word

                                           7
 "Ganesh" was generic and nobody had any right of exclusive use of the

mark. The respondents did not have the right of preventing anybody else

from using the mark. Moreover, "Ganesh" signified the Hindu God of

wealth. The respondents could not restrain the appellants from using this

mark, more so, when they have used it in an honest and bonafide manner.

In the said affidavit the appellants have referred to an examination report

of 2005 of the trademark registry in relation to Application no. 1386773 of

the respondent for registration of the word mark "Ganesh" under Class 30.

In their examination report, the trade mark registry objected to

registration because it was a personal name and that it was "identical with

or similar to registered trademark." To this, the respondents' patent and

trade mark Attorney S. Majumdar and Company by their letter dated 19th

November, 2005 replied that "Ganesh" was another name of Lord Ganesh

worshipped by the Hindus and did not have "any direct connection,

reference with the goods under the application". It was also urged in the

Attorney's reply that the word "Ganesh" was "generic and the mark is

common to trade as is evident from the several cited registered marks."


On this, Mr. Biala made two submissions. He referred to a certificate dated

25th November, 2020 obtained from the said registry relating to the

application for registration of the image mark "Ganesh". It stated that the

status of the application was "opposed". He submitted that the self same

word mark had been got registered by the respondents. This registration

had been wrongfully and illegally obtained as another office of the same

registry could not have granted registration of the self same mark.

Secondly, he submitted that having admitted through their trademark

Attorney that the mark was the name of God and in common and wide

spread use and of which there was several registrations, the respondents

could not prevent the appellants or are estopped from preventing the

appellants from using the mark.




                                  8
 From 1998 the predecessor-in-interest of the appellants Shree Ganesh Lal

Daryani adopted the trademark "Shree Ganesh" honestly and bonafide

from his name "Ganesh". The appellants continued with this business,

thereafter reconstituting it from a proprietorship to a partnership firm.

According to Mr. Biala, as stated in Paragraph No. 3(h) and (i) of the said

affidavit that the respondent have sale in a restricted area. Furthermore,

the appellants and the respondents carry on business in different regions.

Their business activities do not overlap.


Learned Counsel stated that another word mark in the form of an image,

of the respondents, had been registered subject to the limitation under

Section 18(4) read with Section 2(l) of the Trademarks Act, 1999 that it

would be used within the geographical area of West Bengal. He argued

that the right to exclusive use of a mark by the registered proprietor under

Section 28 of the said Act was subject to the other provisions of the Act

namely, Section 30(2)(b) which inter alia, provides that if a trademark is

used in a place where the registration did not extend geographically.


The said right of exclusive use of a registered proprietor could not interfere

with any bonafide use by a person of his own name or that of any of his

predecessors in business, under Section 35 of the said Act.


Learned counsel also submitted that the respondents were guilty of

suppression. They did not disclose to the court that several hundred

applications for the mark "Ganesh" were pending registration all over the

country, that label marks of the respondents containing the word

"Ganesh" were pending registration, subject to opposition or had been

registered with limitation and disclaimer with regard to the geographical

area of their use.


I will discuss only the relevant cases cited by learned Counsel at the time

of dealing with the arguments.




                                   9
 Mr. Ranjan Bachawat, learned senior counsel, appearing for the

respondent made the following submissions.


Ganesh Dariani was the name of the father of the appellant No. 2. There is

no evidence to show that Ganesh Daryani did business using the mark

"Ganesh" or that the father was engaged in the business of manufacture

and marketing of flour products. In other words, the appellants have not

been able to make out any connection between the father's business and

the present business of the respondent and use of the trade mark

"Ganesh". Therefore, the case sought to be made out by the appellants

that they were doing business using the personal name has no basis.


The appellants at best carried on and still carries on the business of

grinding flour for individual customers. They are not in any real sense

engaged in the manufacture and sale of flour products. Invoice documents

have been fabricated by them to show sale. He tried to show from the

invoice that the website referred to there had been obtained by the

appellants at a later date than when the invoice was issued.


By use of the word "Ganesh", the appellants were infringing the

respondents' mark under Section 29(5) of the said Act which lays down

that a registered mark is infringed by a person if he uses such registered

trademark as his trade name dealing with goods and services in respect of

which the trade mark is registered.


He referred to the documents at Pg. 333 of the paper book which showed

that application No. 854527 made by Harish Daryani who carrying on

business as "Shree Ganesh Besan Mill", on 4th May, 1999 made an

application in Mumbai for registration of the mark "Ganesh" dealing in

goods ata, besan and spices. The date of user was claimed from 1990.

According to the records of the Trademark Registry obtained on 10th

September, 2020, the application had been abandoned.




                                 10
 The Chartered Accountant who authenticated the sales figures of the

appellants had made a disclaimer that the figures were those provided by

the respondents and that no documents had been available to him. Hence,

the Chartered Accountant's certificate had little or no evidentiary value.


The respondents had used the mark "Ganesh" from 1936 as would be

evident from advertisements of the mark in newspapers in that period. The

respondents had also made sizeable expenses throughout the period of its

use, in advertisements.


The appellants have been unable to show use of the mark "Ganesh in its

business.


Learned Counsel brought our attention to the supplementary affidavit

affirmed on 8th February, 2021 filed by the appellants in the learned court

below. It appears from it that after the order of injunction was made on 4th

January, 2021, the parties had a sitting to settle the trademark dispute.

The appellants by an email dated 21st January, 2021 forwarded some

proposed trademarks to the respondent. They even became ready to use

the words "Shree Ganesh Besan Mill" without highlighting the word

"Ganesh" prominently.


Learned Counsel also stated that the appellants were unsuccessful in

getting registered three marks using the word "Ganesh", namely "Shree

Ganesh Chana Besan", "Shree Ganesh Gulab" and "Shree Ganesh Tota

Farsan Flour".


After receipt of the notice of opposition to registration of those marks, the

appellants abandoned the applications as would be evident from the

certificates dated 5th May, 2016 and 11th August, 2017 at Pgs. 325, 328

and 331 respectively of the paper book.


Mr. Bachawat further submitted that out of 540 marks containing

"Ganesh" revealed on search, sixty three were registered. Out of sixty

three, seven were registered in favour of the respondents. Fifteen were


                                  11
 word marks. Only four marks bearing the word mark "Ganesh" were

registered, out of which only one belonged to Class 30. Out of four marks,

one related to confectionary items, two have expired and the fourth was

owned by the respondents.


Learned Counsel also urged before us that the respondents enjoyed

substantial goodwill in the market and that the appellants had been

unable to furnish any evidence of user or sale of the subject product under

the trademark "Ganesh". At best, the appellants were carrying on the

business of grinding flour for individual consumers (ata chakki). He also

argued that the purported sale disclosed by the appellants did not show

any connection between the trademark "Ganesh" and the sale of the

product.


The partnership under which the appellants were carrying on business

was founded after the death of the said appellant No. 2's father and that

there was no connection between the business of the partnership and the

business carried on by the father.


Therefore, there was no justification for use of the father's name Shree

Ganesh Daryani. In any case, if the father's name had to be used "Ganesh

Daryani" and not "Ganesh" ought to have been used by the appellants.


The sole purpose of the appellants was to trade on the goodwill of the

respondents by using their mark "Ganesh".


In those circumstances, there was no case for vacation or variation of the

interim order.


I will deal with the relevant cases cited by Mr. Bachawat when I deal with

the arguments.


FACTS IN DETAIL, DISCUSSION AND FINDINGS


The respondent plaintiffs' case is founded on the registered word mark

"Ganesh". The application (No. 1168684) in Class 30 was made on 21st



                                 12
 January, 2003. Registration had been granted on 28th October, 2005

without any limitation or disclaimer.


The application of Manish Mimani at Page 400 of the paper book was

made on 17th January, 1992 (TM Application No. 565726 in Class 30) for

registration of the image word mark "Ganesh". It was registered under

Certificate No.231828 dated 31st August, 2000 and renewed till 17th

January, 2026 for flour, besan, ata, suji, sattu etc. with the limitation that

it could be used for goods for sale in the state of West Bengal only.

Another Application No. 928276 in Class 30 was made on 30th May, 2000

by Manish Mimani for the marks "Ganesh Bhog", "Ganesh Photo (device)".

It was registered as a device under Certificate No. 777955 dated 10th

March, 2009 and renewed till 30th May, 2030 for the same category of

goods with the limitation that the mark could be used for sale in the states

of eastern region of India only (Pg. 403 of the paper book).


On 22nd September, 2005 just a month or so before the registration of the

word mark "Ganesh" Purusottam Das Mimani made the application No.

1386773 for registration of the same trade mark in Class 30 for inter alia,

flour products (Pg. 404 of the paper book). A certificate dated 25th

November, 2020 issued by the trade mark registry states that the status of

the registration is "opposed". The examination report of the trade mark

registry stated that the mark was refused registration as it was a personal

name and identical or deceptively similar to registered trademarks. To this

the respondents' trade mark Attorney replied on 19th November, 2005

that "Ganesh" was the name of a God worshipped by the Hindus and did

not have "any direct connection reference with the goods under the

application" and further that the name was generic.


About 540-550 marks of "Ganesh" or variants thereof like Ganesh Gold,

Ganesh-G, Ganesh-R, Shree Ganesh have been applied, for registration.

63-66 have been registered. 4 are for the word mark "Ganesh". One relates




                                  13
 to confectionary. Two registrations have expired. The other belongs to the

respondents, the only registered word mark "Ganesh" is Class 30.


On the other hand, the appellants filed several applications for registration

of the trade mark "Shree Ganesh" and its variants. Some of these

applications were opposed by the respondents who filed their opposition.

None of these marks have been registered in favour of the appellants.

Some of the applications of the appellants are deemed to have been

abandoned according to the respondents.


By virtue of registration of the word mark "Ganesh", the respondent seeks

to restrain the appellants from using that mark in any manner

whatsoever.


The trademarks registry has been very cautious in dealing with such a

huge number of applications. Either they are kept pending or granted with

disclaimer and limitation so as to recognize that the mark is generic and

not distinctive of any trader and not common to the trade (See Section 12

of the said Act).


In the application dated 22nd September, 2005 stated above, registration

has not been granted after consideration of the examination report that

"Ganesh" is the name of God, generic and not distinctive. The respondents

have admitted through a letter of their trade mark Attorney dated 19th

November, 2005 and in answer to opposition to applications for

registration of "Ganesh" or variant marks that the name was common and

generic and that no trader could claim exclusive right over it.


It is quite extraordinary how the word mark "Ganesh" of the respondents

was registered on 28th October, 2005 without any restriction or limitation.

More extraordinary is the conduct of the respondents in trying to exercise

their right of exclusive user of the mark "Ganesh" at least in Class 30

goods, when they were aware that it was generic, common to the trade and




                                  14
 not distinctive and had admitted so in their said correspondence with the

trade mark registry.


When a mark is registered the registering authority may do so without any

condition or limitation. It is equally open to the said authority to specify

that the proprietor will not have exclusive right over a part of the mark.

Absence of a disclaimer does not always vest the proprietor with an

exclusive right over a word mark. In our case registration of the word

mark "Ganesh" was without any disclaimer.


Just because the word mark "Ganesh" was registered without any

limitation or condition, could this registration confer on the respondents

the right to prevent the appellants from using the mark "Ganesh"?


Ganesh is a Hindu deity. He is the son of Ma Durga and Lord Shiva. In the

Hindu pantheon of gods and goddesses, Ganesh is a most powerful and a

very widely worshiped God. So much so that nearly two weeks of

celebration attending his worship takes place every year just before

autumn in Maharashtra. Ganesh festival is also highly popular in the rest

of the country. Its popularity is growing day by day in Bengal also. Hence,

the word or mark "Ganesh" can never be distinctive of any person or trade.

It is too common to be so. Any name of God is generally not distinctive and

very common and is usually not registered as a trademark.


It is doubtful whether the registration of "Ganesh" word mark is valid

under Section 28(1) of the Trademark Act, 1999. The registered proprietor

of the mark has the right of its exclusive use only if the registration is

valid.


It is true that till date the appellants have not taken any steps for

rectification of the register. But after promulgation of the Tribunal Reforms

Ordinance, 2021 it is always open to them to take the point of invalidity at

the trial of the suit. They have done so in the written statement filed in

this suit. In that case the court would be called upon to adjudge the


                                  15
 validity of the registration. The question is whether the appellants could be

restrained from using the word "Ganesh"?


By amendment of Section 57(1) of the said Act, the power to rectify the

register has been conferred on the Registrar or the High Court.


The said Ordinance, 2021 made amendments to the Trademark Act, 1999.

The effect of this amendment was that if any proceedings for rectification

of the register in relation to the plaintiffs or the defendant's trade mark

were pending before the Registrar or the High Court, the suit would be

stayed till the final disposal of such proceeding. If no such proceeding had

been taken out and the High Court was under the tentative view that a

plea regarding validity of a trademark was tenable, it may adjourn the case

for a period of three months to enable the party to apply for rectification.

The High Court could extend the time.


It is always be open to the appellants to raise the plea of invalidity of the

respondents' trademark at the trial. Even if no proceedings for rectification

of the mark are pending now the court trying the suit has the discretion to

adjourn the suit for three months to enable them to make such an

application [Section 124(1)(ii)]. It even has the power to further extend the

time [under Section 124(2)]. Only if no such application is made within the

extended time can the court declare the issue regarding validity of the

registration to have been abandoned. The decision of the Supreme Court

in Patel   Field   Marshal   Agencies   vs.   P.M.   Diesels   Limited   and

Ors., reported in (2018) 2 SCC 112 cited by Mr. Bachawat was before

promulgation of the ordinance. It inter alia held on the basis of the Act

then existing that if the parties did not approach the Tribunal the plea

regarding validity of the mark would not survive. With the coming of the

ordinance this consequence is done away with and the suit court retains

its discretion throughout the proceedings to order trial of the invalidity

issue. Hence the issue of invalidity is very much open to the appellants.



                                  16
 They have, in my opinion, raised a very strong prima facie case regarding

invalidity of the registration.


Section 35 of the said Act enacts as under:-


"35. Saving for use of name, address or description of goods or
services.--Nothing in this Act shall entitle the proprietor or a registered user
of a registered trade mark to interfere with any bona fide use by a person of
his own name or that of his place of business, or of the name, or of the name
of the place of business, of any of his predecessors in business, or the use
by any person of any bona fide description of the character or quality of his
goods or services."


From the evidence disclosed by the appellants before the trial court they

have been able to show that the father of the appellant No. 2, Ganesh Lal

Daryani carried on some business in the grinding and making of flour. It

may not have been of the type and to the extent now carried on by the

appellants in partnership. The appellants say that Ganesh Lal used this

word mark in business atleast from 1989. He died on 20th July, 1998.


On 20th July, 1998 a partnership was formed by his son and grandsons.

In the deed of partnership it was clearly stated that the business would be

carried on under the name and style of "M/s Shree Ganesh Besan Mill".

The business was to be of manufacture and sale of ata, besan, dal etc.

This partnership deed was annexed to the affidavit in opposition.


Prima facie, it appears that the derivation of "Shree Ganesh" was from

Ganesh Lal Daryani way back in 1989. As Ganesh Lal Daryani was

engaged in the business of flour grinding and manufacturing, he could be

called a predecessor in business of the respondents. If his name was used

to run the partnership business from 1989, the decision of the appellants

to use "Shree Ganesh" as a trademark to manufacture and market their

products when the business expanded cannot be said to be lacking in

bonafide. If that be so, even if the respondent No.1 is the registered

proprietor of the trademark "Ganesh", they cannot prevent the appellants



                                   17
 under Section 35 of the said Act to use the words "Shree Ganesh Besan

Mill".


In Precious Gems and Anr. Vs. Varun reported in (2015) 1 SCC 160,

cited by Mr. Biala, the court opined:

"4. The plaintiff claiming trade mark of their surname "RAKYAN" filed a suit
praying, inter alia, that the defendants be restrained from doing their
business in the name and style of "NEENA AND RAVI RAKYAN". In the said
suit, an application seeking interim relief was filed whereby it was prayed
that the defendants be restrained from doing the business in the name and
style of "NEENA AND RAVI RAKYAN". By virtue of the impugned order, the
defendants i.e. the present appellants have been restrained from doing their
business in the concerned name and therefore, the appellants have
approached this Court.

9. We have perused the hoardings of the shops where they are doing the
business and upon perusal of the hoardings we do not find any similarity
between them.

10. In our opinion, looking at the provisions of Section 35 of the Act, there is
no prima facie case in favour of the plaintiff and therefore, the defendants
could not have been restrained from doing their busines. We, therefore,
quash and set aside the impugned order granting interim relief in favour of
the plaintiff and the appeal is allowed with no order as to costs."

A very interesting and important concept is that of trade dress. A mark

may be a label or a device mark comprising of a word mark and artistic

design, colour combinations, artistically designed shapes, configurations

etc.


Let us consider two label marks with similar word marks which are non-

distinctive and common to the trade. But a label or device mark with a

particular unregistered trade dress made artistically may differentiate one

mark as a whole from the other with a different unregistered trade dress.

In that case, the word mark of a party containing a registered word mark

would nevertheless become distinctive if viewed as a whole with the trade

dress. This kind of a trade dress was spoken about by Chandrachud, J. in

Kuber Khaini Private Limited Vs Sopariwal Exports & Anr. reported in


                                   18
 (2013) SCC Online Bom 1072 also cited by Mr. Bachawat in the following

manner:


"3. The First Respondent is the registered proprietor of the mark `Afzal'

which is described in the certificate of registration dated 12 November 1995

as a device. Registration of the mark in relation to Class-34 of the

Trademarks Act, 1999 (tobacco) is subject to the condition and limitation

that it shall not give a right to the exclusive use of the words `Pandharpuri',

`Best Quality Indian' and to the `descriptive matter appearing on the label'.

The First Respondent has three certificates of registration which were

annexed at Exhibits B-1, B-2 and B-3 to the plaint.


4. The Appellant has obtained registration of the mark `KUBER' and its

certificates of registration are annexed at Exhibits A-1 to A-9 of the plaint.

Among them is a registration under Clause-34 in relation to Chewing

Tobacco. The First Respondent has no objection to the use of the mark of

`Kuber', per se, by the Appellant. The case of the First Respondent, however,

is that the Appellant has adopted the same trade-dress as is used by it as

part of its labels. The First Respondent accordingly sought an injunction,

basing its claim on the infringement of its registered trademark, for passing

off and for infringement of the copyright in the artistic work.


6. During the course of the hearing, the packages in which the Appellant

sells its product, chewing tobacco, as well as the packages of the First

Respondent have been produced for comparison. Both the counsel have

accepted their authenticity. In view of the settled position in law, what falls

for consideration is whether the essential features of the mark of the

Appellant are deceptively similar to those of the First Respondent.

Undoubtedly the word mark of the First Respondent is `Afzal', whereas that

of the Appellant is `Kuber'. However, what needs to be emphasised is that

the Appellant had admittedly advertised its product `Kuber' initially with a

distinctive trade-dress until it commenced using the disputed label. Exhibit-


                                    19
 H to the plaint is the impugned mark of the Appellant. A bare look at the 4 of

7 APP.725.2012 rival labels would indicate that the Appellant has used the

same colour scheme (brown and green in colour); the use of the hookah; and

this is coupled with the order of the descriptive words "Pandharpuri Best

Quality Indian Tobacco" with green shaded lines under the edge of the

words. The Appellant has absolutely no explanation, much less a bona fide

explanation, of the circumstances in which it has adopted a label which is

shown at Exhibit-H which is deceptively similar to the label of the

Respondent. There can be prima facie no manner of doubt that this was

done in an undisguised attempt to trade on the reputation and the goodwill

of the mark of the First Respondent. The essential character of the two

labels would leave no manner of doubt that the entire colour scheme, get up

and trade-dress which constitute essential features of the mark of the First

Respondent, have been adopted by the Appellant. The evaluation, prima

facie, of the merits by the learned Single Judge does not suffer from error.


8. As regards the descriptive words `Pandharpuri Best Quality Indian

Tobacco', it has been pointed out on behalf of the Appellant that the

registration which the First Respondent has obtained at Exhibit B-1 contains

a disclaimer to the effect that the registration of the mark shall not give a

right to the exclusive use of the words and the descriptive matter appearing

on the label. Hence, it has been urged that the First Respondent cannot

prevent the Appellant from using those words and the Appellant is entitled

to use those words too. While dealing with this contention, it must be noted

that a disclaimer which has been imposed in connection with the

registration of a mark under the Trademarks Act, 1999 operates in respect

of the proprietary interest which is claimed in a mark under and in

accordance with the provisions of the Act. Consequently, in an action for

infringement of a registered trademark, a Plaintiff cannot found a cause of

action on the use of descriptive words in respect of which a disclaimer has

been granted. But, equally, this does not preclude a Plaintiff from asserting


                                   20
 a cause of action for passing off. A disclaimer which is of relevance to an

action for infringement does not prohibit a Plaintiff from asserting

nonetheless that in an action for passing off, the use of the words by the

Defendant in a particular syntax and context would constitute the use of the

mark of the Plaintiff in a manner which is deceptively similar.


10. Hence, the descriptive words `Pandharpuri', `Best Quality', `Indian' and '

Tobacco' cannot be used or depicted by the Appellant in the manner as

shown in Exhibit-H to the plaint or in the same form or in a deceptively

similar trade-dress so as to render the label of the Appellant similar to that

of the First Respondent. The order of the learned Single Judge thus cannot

be faulted because in an action for passing off, the learned Single Judge

was justified in coming to the conclusion that it was not open to the

Appellant to use even descriptive words in a form, manner or syntax that

would render their use in deceptive similarity to the trade-dress which has

been adopted by the Respondent."


Even if a non-distinctive mark is part of the trader's trade dress taken as a

whole which has a distinctive and original character it would be open for

the proprietor of the trade or the label mark or device or trade dress to

prevent another from using it in a passing off action.


The Supreme Court said these words in Registrar of Trademarks Vs.

Ashok Chandra Rakhit Ltd. reported in AIR 1955 SC 59, cited by Mr.

Bachawat.


"9. The last feature of the section is its proviso. That proviso preserves intact

any right which the proprietor may otherwise under any other law have in

relation to the mark or any part thereof. The disclaimer is only for the

purposes of the Act. It does not affect the rights of the proprietor except such

as arise out of registration. That is to say, the special advantages which the

Act gives to the proprietor by reason of the registration of his trade mark do

not extend to the parts or matters which he disclaims. In short, the


                                    21
 disclaimed parts or matters are not within the protection of the statute. That

circumstance, however, does not mean that the proprietor's rights, if any,

with respect to those parts or matters would not be protected otherwise than

under the Act. If the proprietor has acquired any right by long user of those

parts or matters in connection with goods manufactured or sold by him or

otherwise in relation to his trade, he may, on proof of the necessary facts,

prevent an infringement of his rights by a passing off action or a prosecution

under the Indian Penal Code. Disclaimer does not affect those rights in any

way."


This principle was followed and reiterated by the division bench of the

Bombay High Court in Skol Breweries Ltd. Vs. Som Distilleries &

Breweries Ltd. & Anr reported in 2012 (49) PTC 231 Bom., also referred

to by learned senior counsel.


The trade dress of the respondents is a rhombus coloured green with the

word "Ganesh" prominently written in white and an artistic design on the

green part in light green and yellow. The words "since 1936" is written

below "Ganesh". In the package of the appellants handed up to the court

the word "Ganesh" has been written in the same character, font, layout

and design as that of the respondents. It is by far the most prominent part

of the mark. The word "Shree" is written over it using a small font in light

green. On top of it is a floral design. The overall effect of this trade dress of

the appellants is quite similar to that of the respondents and in my view

bound to cause confusion in the trade with regard to identification of the

goods with the manufacturer.


Even if the case for infringement of the trademark fails on the plea of

invalidity or lack of distinctiveness and the common use of the mark in the

trade, a case in passing off would lie.


On a comparison of the two labels, prima facie the respondents have been

able to make out a case in passing off.


                                    22
 Now the question is whether the principle laid down in Midas Hygiene

Industries (P) Ltd. and Anr. Vs. Sudhir Bhatia and Ors. reported in

(2004) 3 SCC 90 also shown to us by Mr. Bachawat can be applied here.

The principle is as follows:


"5. The law on the subject is well settled. In cases of infringement either of
trade mark or of copyright, normally an injunction must follow. Mere delay
in bringing action is not sufficient to defeat grant of injunction in such cases.
The grant of injunction also becomes necessary if it prima facie appears that
the adoption of the mark was itself dishonest."


It is in broad and general terms. It does not take into account the

situation where another user challenges the validity of the registration.

(See Section 124 of the said Actread with Section 28(1)). The effect of the

registration on another user claiming prior, honest and concurrent use

was also not before the court (See Section 34 of the said Act). Nor was any

right of a person seeking to use the name of a predecessor in business.

(See Section 35). Here the first and last factors have become most relevant.

In my opinion the broad and general principle of this case has only limited

application to the facts of this case


IGNORING THE ORDER 41 RULE 27 APPLICATION


Let us ignore all the documents brought on record by the appellants in

their application under Order 41 Rule 27 of the Civil Procedure Code.


Still, two points of great significance were worthy of consideration on the

evidence disclosed before the trial court and have not been adequately

considered by the learned single judge.


The first, relates to the alleged invalidity of registration of the word mark

"Ganesh" in favour of the respondent. Section 28 of the said Act makes it

specific that rights acquired by registration would only flow if the

registration was valid. An invalidly registered mark can be resisted by any

user on that ground. An action for infringement brought by the proprietor

can be successfully defended by pleading lack of validity. In fact, Section

                                    23
 9(1)(a) of the said Act specifically states as an absolute ground for refusal

of registration, of trademarks which are devoid of any distinctive

character. The word "Ganesh" apart from being the name of a most

popular Hindu god is most generic, common, non-distinctive and

incapable of conferring any exclusive right of user on a person. If that has

been the case of the appellants, whether the respondents have used the

mark from 1936 or the appellants have used it from 1989 does not matter

at all. It also does not matter whether the respondent has a sale of Rs.500

crores and the appellants much smaller. To my mind, it also does not

matter whether the mark "Ganesh" is the only registered mark in Class

30.


Further, in my opinion, due consideration was not given by the learned

judge to the adopted use by the appellants of the name of the predecessor-

in-interest of the appellants Ganesh Lal Daryani, as discussed above.


Another substantial point in favour of the appellants is that having

discovered the use of the word "Ganesh" by the appellants from 2015, the

respondent allowed them to use it till 2020 when the instant suit was filed

and in January, 2021 the order of injunction obtained. While using the

mark "Ganesh" in relation to flour products in Class 30 from 2015 to 2021

the mark has been made more generic and common and non-distinctive,

even in the flour manufacturing trade. By the principles of acquiescence

and waiver, the respondents cannot insist on exclusive use of the mark

"Ganesh", to the exclusion of the respondent.


THE IMPUGNED JUDGMENT AND ORDER


The learned judge made a detailed judgment. In the first part of it, the

submissions of learned counsel for the parties have been enumerated.


The respondents' arguments have been summarized as follows:-


The respondents have been manufacturing and selling products under the

mark "Ganesh" since 1936. Their turnover is in excess of Rs.500 crores.


                                  24
 The expenses on account of advertisement have been Rs.3 to 4 crores per

year. They became aware of the appellants' use of the mark in 2015. The

appellants have been trying to ride on the respondents' goodwill by using

the word "Ganesh". Hence, an action in passing off would lie. The

appellants have not disclosed any documents to show long or prior user.


The submissions of learned counsel for the appellant defendants were

tabulated as under:-


The appellants are using the mark "Ganesh" deriving it from the father of

one of the partners Shri Ganesh Lal Daryani. The adoption has been

honest and bonafide.


The respondents' application for registration of a similar mark was

rejected by the Registrar on the ground as it was a personal name and

similar    to   registered   trademarks      or    pending    applications.

The respondents were aware of the appellants using the mark "Shree

Ganesh" since 2015 and had taken no action. Hence, there was

acquiescence and waiver of their right.


The appellants have been honest and concurrent user of the mark "Shree

Ganesh".


It is also generic in nature being that of a Hindu God and common to the

trade.


Then, the learned judge came to his findings which were as follows:-


The respondents have a claim on account of infringement of the registered

trademark as well as in passing off against the appellants.


They have in their favour registration of the trademark "Ganesh" dated

28th October, 2005. The respondents also are the registered proprietors of

trademarks "Ganesh Gold", "Ganesh Premium", "Ganesh Healthy" and

"Ganapati".




                                 25
 According to the materials produced, the respondent plaintiffs have

registration for the trademark "Ganesh". The respondents' have produced

invoices from 1936 to establish its claim. The appellants can only produce

a trade licence of 1989 in support of their claim of use of the word

"Ganesh". But, they have failed to produce any document that it was

marketing products under the name and style of "Ganesh" from 1989. By

reason of the registration of the trademark "Ganesh" in favour of the

respondents, they have under Section 29 of the said Act became entitled to

protection of the mark.


They are not entitled to protection under Section 35 as "Shree Ganesh"

has never been the name of the predecessor-in-interest of the defendant.

His name was Shri Ganesh Lal Daryani.


The description of "Shree Ganesh" shows that the word "Shree" has been

used in a manner so as to "camouflage itself in the design of the label the

word "Ganesh". Visually, a customer is likely to mistake the product of the

appellants to be that of the respondents. In such a case following the case

of Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd., the court should grant "a

prompt ex-parte injunction followed by appointment of a local commission

if necessary."


The appellants are not entitled to use the word "Shree Ganesh" in carrying

on its business.


Orders in terms of prayers (a), (b) and (c) of the petition were passed.



INJUNCTION AND EXERCISE OF DISCRETION


The circumstances to be considered by the court to assess the prima facie

case of the applicant before it in an intellectual property matter were re-

written by Lord Diplock in the American Cynamid Vs. Ethicon case

reported in (1975) AC 396.




                                   26
 There is now departure from the principle of assessment of the prima facie

case of the petitioner atleast in intellectual property cases, from an

arguable case, a good case, a reasonably good case, and so on. If a

substantial question is raised to go to trial, then the court has to consider

granting an interim order to balance the rival rights of the parties which

remain uncertain till all the evidence is produced in the proceedings. The

balance of convenience has to be weighed by the court. If an interim order

of injunction is granted against the respondent and the petitioner fails at

the trial would the award of damages adequately compensate the

respondent for the loss suffered? On the other hand if the order of

injunction is refused at the interim stage and at the final trial the

petitioner wins, would the award of damages adequately compensate him?

This exercise involves the use of discretion.


Now, this exercise of discretion by the trial judge is usually not interfered

with by the appellate court only for the reason that it would have come to

a different conclusion. This principle was explained by the Supreme Court

in Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd. reported in 1990

(supp) SCC 727 in the following words:


9. Usually, the prayer for grant of an interlocutory injunction is at a stage

when the existence of the legal right asserted by the plaintiff and its alleged

violation are both contested and uncertain and remain uncertain till they are

established at the trial on evidence. The court, at this stage, acts on certain

well settled principles of administration of this form of interlocutory remedy

which is both temporary and discretionary. The object of the interlocutory

injunction, it is stated is to protect the plaintiff against injury by violation of

his rights for which he could not adequately be compensated in damages

recoverable in the action if the uncertainty were resolved in his favour at the

trial. The need for such protection must be weighed against the

corresponding need of the defendant to be protected against injury resulting

from his having been prevented from exercising his own legal rights for

                                     27
 which he could not be adequately compensated. The court must weigh one

need against another and determine where the "balance of convenience

lies". The interlocutory remedy is intended to preserve in status quo, the

rights of parties which may appear on a prima facie. The court also, in

restraining a defendant from exercising what he considers his legal right but

what the plaintiff would like to be prevented, puts into the scales, as a

relevant consideration whether the defendant has yet to commence his

enterprise or whether he has already been doing so in which latter case

considerations somewhat different from those that apply to a case where

the defendant is yet to commence his enterprise, are attracted.


14. The appeals before the Division Bench were against the exercise of

discretion by the Single Judge. In such appeals, the Appellate Court will not

interfere with the exercise of discretion of the court of first instance and

substitute its own discretion except where the discretion has been shown to

have been exercised arbitrarily, or capriciously or perversely or where the

court had ignored the settled principles of law regulating grant or refusal of

interlocutory injunctions. An appeal against exercise of discretion is said to

be an appeal on principle. Appellate Court will not reassess the material

and seek to reach a conclusion different from the one reached by the court

below if the one reached by the court was reasonably possible on the

material. The appellate court would normally not be justified in interfering

with the exercise of discretion under appeal solely on the ground that if it

had considered the matter at the trial stage it would have come to a

contrary conclusion. If the discretion has been exercised by the Trial Court

reasonably and in a judicial manner the fact that the appellate court would

have taken a different view may not justify interference with the trial court's

exercise of discretion. After referring to these principles Gajendragadkar, J.

in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721) ....These principles are well established, but as has been observed by Viscount Simon in Charles Osention & Co. v. Johnston the law as to the 28 reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case. The appellate judgment does not seem to defer to this principle." In Dalpat Kumar and Anr. vs. Prahlad Singh and Anr. reported in (1992) 1 SCC 719 the Supreme Court said:

"4. ........ It is settled law that the grant of injunction is a discretionary relief. The exercise thereof is subject to the court satisfying that (1) there is a serious disputed question to be tried in the suit and that an act, on the facts before the court, there is probability of his being entitled to the relief asked for by the plaintiff/defendant; (2) the court's interference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensue before the legal right would be established at trial; and (3) that the comparative hardship or mischief or inconvenience which is likely to occur from withholding the injunction will be greater than that would be likely to arise from granting it.
5. Therefore, the burden is on the plaintiff by evidence aliunde by affidavit or otherwise that there is "a prima facie case" in his favour which needs adjudication at the trial. The existence of the prima facie right and infraction of the enjoyment of his property or the right is a condition for the grant of temporary injunction. Prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The Court further has to satisfy that non-interference by the Court would result in "irreparable injury" to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely one that cannot be adequately compensated by way of damages. 29 The third condition also is that "the balance of convenience" must be in favour of granting injunction. The Court while granting or refusing to grant injunction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunction is granted. If on weighing competing possibilities or probabilities of likelihood of injury and if the Court considers that pending the suit, the subject-matter should be maintained in status quo, an injunction would be issued. Thus the Court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit.
6. .........The phrases "prima facie case", "balance of convenience" and "irreparable loss" are not rhetoric phrases for incantation, but words of width and elasticity, to meet myriad situations presented by man's ingenuity in given facts and circumstances, but always is hedged with sound exercise of judicial discretion to meet the ends of justice."

The appeal court can only exercise its discretion if the order of the trial judge is perverse, most unreasonable or has not considered material facts We have already discussed the various vital issues involved in this case for consideration of grant or refusal to grant an interim injunction which were not adequately considered by the learned judge in exercising his discretion in the matter.

Before concluding this judgment, I would like to deal with the point of suppression raised by Mr. Biala. An interim order is vitiated if it is obtained by suppression of material facts. The plaintiff or the petitioner is not obliged to disclose all facts before the court but is only obliged to disclose those which are material on proof of which he is entitled to an order. The respondents had founded their case on the certificate dated 28th October, 2005 issued by the trademark registry in respect of their word mark "Ganesh" without any condition, restriction or limitation. On that basis, they ran the case of infringement seeking a restraint order on 30 the appellants to use that mark in any form. Whether registration of word and label marks containing the word "Ganesh" or any variant thereof was pending or marks with "Ganesh" had been registered subject to a geographical limitation or disclaimer was not material for the respondents' case. Hence, I see no merit in this contention.

In those circumstances and for the reasons advanced, the interim order granted by the learned judge requires modification if not wholly, substantially.

CONCLUSIONS:

As the word mark Ganesh is very common to the flour trade generic, non- distinctive and moreover as it is the name of a most popularly worshipped Hindu god, the registration of this mark in favour of the respondent No. 1 prima facie appears to be invalid. The respondents do not have any exclusive right of ownership of this mark. They cannot restrain the appellants from using the word mark "Ganesh", in an infringement action. However in my opinion the respondents have a proprietary right over the label mark or trade dress under which their goods are sold, containing the word mark "Ganesh" along with artistically coloured designs. Specially important in this trade dress is the character, size, font and style of writing "Ganesh" prominently, accompanied by the above colour combination and design. In my opinion the appellants have imitated the character, size, font and style of writing "Ganesh". The prominence of "Ganesh" in their label mark also containing the word mark "Ganesh" and colourful designs is such, that the label resembles the trade dress of the respondents, causing deception and confusion in the trade. The appellants seem to be trading on the goodwill of the respondents. In those circumstances, an action in passing off action lies. The respondents have been able to make out a prima facie case in passing off.
31 The appellants are entitled to use the mark "Shree Ganesh" under Section 35 of the Trademarks Act, 1999.

Considering all the circumstances the impugned interim order granting a blanket injunction restraining use by the appellants of the respondents' trademark is modified to the extent that they will be entitled to use the label mark with the following modifications:

The word "Ganesh" in isolation cannot be used. The words: "Shree Ganesh Besan Mill" has to be written on the label in the same character font and style and in a non-prominent way, differently from the style in which it is written on the label of the respondents' products. The place of manufacture Raipur, Chhattisgarh should also be mentioned so as not to cause any confusion or deception in the trade.
The appeal is disposed of. The application (CAN 2 of 2021) is allowed. Certified photocopy of this order, if applied for, be supplied to the parties upon compliance with all requisite formalities.


I agree,




(ANIRUDDHA ROY, J.)                                     (I. P. MUKERJI, J.)




                                  32