Gujarat High Court
Good Life Industries vs J R J Foods Pvt Ltd on 22 December, 2022
Author: A. P. Thaker
Bench: A. P. Thaker
C/AO/10/2021 ORDER DATED: 22/12/2022
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 10 of 2021
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2021
In R/APPEAL FROM ORDER NO. 10 of 2021
With
CIVIL APPLICATION (FOR ORDERS) NO. 2 of 2021
In R/APPEAL FROM ORDER NO. 10 of 2021
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GOOD LIFE INDUSTRIES
Versus
J R J FOODS PVT LTD
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Appearance:
MR. SHAILEN BHATIA, ADVOCATE WITH MS.GITA RIZWANI, ADVOCATE
WITH MR AKSHAY A VAKIL(5473) for the Appellant(s) No. 1
MS. POOJA ACHARYA, ADVOCATE WITH MR ZK SHAIKH(5804) for the
Respondent(s) No. 1
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CORAM:HONOURABLE DR. JUSTICE A. P. THAKER
Date : 22/12/2022
ORAL ORDER
1. Being aggrieved by the order dated 7.11.2020 passed below Exh-5 in Trade Mark Suit No. 1 of 2020 by the 2nd Additional District Judge, Kalol, the original defendant has preferred the present Appeal from Order under Order 43 Rule 1 of the Code of Civil Procedure.
2. The appellant is the original defendant and defendant is the plaintiff before the trial Court. For the brevity and convenience, the parties are referred to in this order, as per their status before the trail Court.
3. The brief facts of the case of the plaintiff in nutshell is that the plaintiff is a Company incorporated under the Page 1 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 Companies Act, 1956 and engaged in the business of manufacturing, marketing and selling of sugar confectioneries, milk chocolates containing nuts, fruits, raisins, caramel, chocolate confectionery and all types of confectioneries. That the plaintiff is well-known manufacturer of the said goods and having wide set-up and network in the country which have become very famous and acquire tremendous reputation and goodwill in the market and public at large for its good quality throughout the country. The plaintiff has also stated regarding the facts of various trademarks, which he has applied for Registry and details of that applications are incorporated in the plaint. That the plaintiff has obtained the necessary licence and certificate from the different authorities of the Central and State Governments. It is the further case of the plaintiff that the plaintiff has been using the trademark 'MICHI'S' with the device of a boy since 1996. That subsequently, in the year 2000, the said trademark of 'MICHI'S' with the device of a boy in red colour, is being used by the plaintiff in all of its products. That the plaintiff started using the trademark which is with an exquisite layout, stylization and a specific colour combination of red and white, since 2002. That, both these trademark with the aforesaid devices have become a household name by it's exclusively, extensive and continuous use. That the defendant has started mark 'MISHI'S' along with colour combination red and white, Page 2 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 which is exact imitation of the plaintiff's trademark 'MICHI'S'. According to the plaintiff, the defendant has deliberately imitated after having knowledge of the plaintiff's trademark.
3.1 That, having come to the knowledge of this fact in January, 2018, the plaintiff issued Cease and Desist notice to the defendant. That the said notice was not served due to insufficient address. That, thereafter the plaintiff made inquiry in the market regarding use of the impugned trademark by the defendant and plaintiff did not find use of the mark 'MISHI'S' and anticipated that the defendant has stopped the manufacturing qua products bearing the trademark 'MISHI'S' as of the plaintiff. However, plaintiff received query regarding the product of the said trademark. That, therefore, the plaintiff has sent another legal notice to the defendant on 27.6.2020. That, the plaintiff has also filed Rectification Application against the present defendant for the several trademarks including house-mark 'MISHI'S' before the Trade Mark Registry. It is contended that use of mark 'MISHI'S 'along with red and white colour combination with the same manner as of the plaintiff's, by the defendant is likely to cause confusion and deception in the market and which may seriously injure reputation of the plaintiff. That, the defendant is deliberately infringing the plaintiff's registered trademark and the defendant is passing off its goods as that of the plaintiff's . Therefore, the plaintiff has filed the suit for Page 3 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 declaration, permanent and perpetual injunction and for passing off action as well as rendition of accounts against the defendant. Along with the plaint, the plaintiff has also moved an application for interim injunction at Exh-5.
4. The defendant has filed the written statement and has also produced the documentary evidence. According to the defendant, he is registered proprietor of mark 'MISHI'S' which is registered in the year 2017-18. It is also contended that defendant is using the trademark continuously, uninterruptedly, openly and extensively throughout the country. It is also contended that in such registration proceedings, the plaintiff has not raised any objection and plaintiff was well within knowledge of mark of the defendant. It is also contended that though the plaintiff has issued notice in January, 2018, at the relevant point of time, the plaintiff has not filed Rectification Application and has also not taken any objection regarding registration of the marks of the defendant. It is also contended that considering the registration of the mark of the defendant, it prima-facie appears to be proper, legal and valid. It is also contended that after the registration of the defendant's mark in January, 2018, the present Suit has been filed by the plaintiff in August, 2020. It is also contended that plaintiff has intentionally not initiated any legal proceedings for almost 31 months and due to such delay Page 4 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 and laches and acquiescence, the plaintiff has abandon his right.
4.1 According to the defendant, it has spent huge amount in advertisement and due to use of such trademark, it has acquire reputation and goodwill in the market. It is also contended that the defendant is honest and bonafide concurrent user of the disputed mark, as per Section 12 of the Trade Mark Act. It is also contended that the plaintiff has suppressed the material fact and, therefore, equitable relief of injunction cannot be granted. It is also contended that there is no prima-facie case of the plaintiff and if injunction is granted, irreparable injury would be caused to the defendant. It is also contended that Suit of the plaintiff is not maintainable as the defendant is the registered proprietor of the mark. It was prayed to reject the interim injunction application. The defendant has not filed any written statement in respect of the plaint.
5. After hearing learned advocates for the parties and perusing the material placed on record, ultimately, the learned Court below has granted the application of the plaintiff and interim injunction in terms of Para-35(a), (b) of the Exh-5 came to be allowed by the impugned order dated 7.11.2020.
6. The respondent -original plaintiff has filed affidavit-in- reply of the present Appeal from Order and the Civil Application wherein he has reiterated the factum of plaint Page 5 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 and the observations made by the trial Court and has contended that the trial Court has properly decided the Application and has properly passed the order of injunction against the appellant- defendant.
7. Heard learned advocate Mr. Shailen Bhatia, assisted with Ms. Gita Rizwani for learned advocate Akshay Vakil for appellant-defendant and Ms. Pooja Acharya, learned advocate with Mr. Z.K. Shaikh, for the respondent - Plaintiff at length. Perused the written submissions submitted by both the sides coupled with the material placed on record and impugned judgment of the Court below as well as the decisions cited at bar.
8. Mr. Shailen Bhatia, learned advocate for the defendant has vehemently submitted the same facts and averment made in the Memo of Appeal from Order and has referred to various provisions of the Trade Marks Act and has submitted that the defendant -appellant is having registrations of the trademarks with different devices since 2017 and onwards. He has submitted that as the defendant is the registered owner of the said trademarks, he is entitled to the benefit of defence available under Section 28(3) of the Trade Marks Act, 1999. He has submitted that in view of the said provisions, no suit for infringement is maintainable against the defendant-appellant. He has also submitted that the plaintiff-respondent did not file any opposition to the registration of the trademarks of the Page 6 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 defendants when the application of the defendant was advertised in the Trade Marks Journal. According to him, therefore, the plaintiff cannot seek relief which deprives the defendant of its statutory right under Section 31 of the Trade Marks Act.
8.1 Learned advocate Mr. Bhatia has also submitted that the parameters applicable to an action of infringement and a passing off. He has submitted that the plaintiff has not made proper averments in regard to the infringement action and the present case is being a case of passing off only as both the parties are holding trademark registration. He has submitted that the decisions relied upon by the plaintiff deals with the infringement of the trademark. He has submitted that in a passing off action, additional matter like different labels, availability of the name of the manufacturer, etc. are important and to be weighed against each other. He has also submitted that both the parties have used different colour combination of label, packages, fonts, etc. He has also submitted that the plaintiff has no right over the work 'MICHI'S' per say. According to him, the plaintiff has a right in the word 'MICHI'S' in a particular manner in conjunction with the different devices and has no right over the word 'MICHI'S'' or even the alleged label 'MICHI'S', which is not registered.
8.2 Mr. Bhatia, learned advocate, while referring to the various labels of the plaintiff has submitted that there are Page 7 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 different margin used for the word MICHI'S' and the word 'MICHI'S' is used in a different manner on different products. He has submitted that, therefore, the plaintiff cannot carve out a monopoly over the word 'MICHI'S' as such. He has also submitted that Section 12 of the Trade Marks is not applicable as that stage has already gone. He has also referred to Section 12, 28,, 31, 57, 124 and 125 of the Trade Marks Act. He has also submitted that both the parties are operating in different territories. He has submitted that since both the parties are having registered trade mark, there cannot be any Suit for infringement against the registered trademark owner. He has submitted that the passing off action could lye but not the infringement action. He has submitted that the learned trial Court has not considered the factual and legal aspect of the case in proper perspective and has committed serious error of facts and law in issuing injunction against the defendant appellant. Learned advocate Mr. Bhatia, while relying upon the following decisions, has prayed to allow the present Appeal from Order and to set-aside the impugned order of the trial court, granting injunction, against the defendant-appellant:
1. State of J&K v. Mohd. Yakubkhan and other, reported in (1992) 4 SCC 167;Page 8 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022
C/AO/10/2021 ORDER DATED: 22/12/2022
2. Modern Food Industries (India) Ltd. And others V. Sachidanand Dass and others, reported in 1995 Supplementary (4) SCC 465;
3. Shiv Lal, Sub-Divisional Magistrate, Mahoba / Administrator Nagar Panchayat v. Ram Babu Dwivedi, reported in 2006 (2) AWC 127 (ALL);
4. P.M.Diesel Pvt. Ltd. V. Thukral Mechanical Works, reported in AIR 1988 Delhi 282;
5. Order dated 5.3.2009 of the Delhi High Court passed in AI No. 11476/07 with allied matters in the case of Smt. Harbans Kaur v. Gurmarg Appliances Pvt. Ltd.
and Others;
6. Rhizome Distilleries P. Ltd and other v. Pernod Richard S.A. France and Others, reported in 166 (2010) DELHI LAW TIMES 12 (DB);
7. Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboraties, reported in AIR 1965 SC 980;
8. The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., reported in AIR 1955 SC 558;
Page 9 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022
9. P.P. Jewellers Pvt. Ltd. V. P.P. Buildwell Pvt. Ltd., reported in 2009 (41) PTC 217 (Delhi);
10. P.P. Jewellers Pvt. Ltd. V. P.P. Buildwell Pvt. Ltd., reported in 2010 III AD (Delhi) 661;
11. Three - N- Products Pvt. Ltd. V. Emami Ltd, reported in 2009 (41) PTC 689 (Cal).
12. Zari v. Zari Silk India Pvt. Ltd, reported in 2014 (59) PTC 62 (Rajasthan).
13. Order dated 30.3.2015 passed by the Apex Court in Special Leave Appeal (C) No. 1457/2014 arising out of the aforesaid decision of Zari.
14. Patel Field Marshall Agencies and others v. P.M. Diesels, Ltd. And others, reported in AIR 2017 SC 5619;
15. Order dated 31.5.2014 passed by the Ld. Additional District Judge, Rohini District Court, Delhi in CS No. 397/2014 titled as "Sanjeev Goyal v. Neel Kanth Polytech Pvt. Ltd."
16. Order dated 7.8.2015 passed by the Hon'ble Delhi High Court in FAO 206/2014 titled as "Sanjeev Goel versus Neelkanth Polytech Pvt. Ltd."
Page 10 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022
17. American Home Products Corporation v. MAC Laboratories Pvt. Ltd. And Ors, reported in (1986) 1 SCC 465;
9. Per contra, learned advocate Ms. Pooja Acharya for the respondent - plaintiff has submitted that the impugned order of the trial Court is well reasoned order and there is no need to interfere in the same. She has submitted that as soon as the plaintiff came to know as to the disputed trademark of the defendant being registered, the plaintiff had issued a Notice and has also filed Rectification Application prior to filing of the Suit. She has also submitted that the plaintiff is prior user of the trademark MICHI'S'and it is house-mark. She has also submitted that the defendant has used the trademark 'MISHI'S' ánd the same is also house-mark. According to her submission, the words are phonetically similar and with a view to dishonest intention, the defendant has changed the words "C" by using "S" in the said word and has also used ORIGINAL. She has also submitted that due to phonetically similarity in both the words and both the parties are dealing with the same goods and in same markets and the customers are also the same, the public at large would be easily deceived. She has also submitted that by virtue of the defendant's mark, the goods of the defendant are likely to be passed off as of goods of the plaintiff.
Page 11 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022 9.1 She has also submitted that the defendant has raised the defence under Section 28(3) of the Act that means that the defendant is accepting that his trademark is resemble and similar to that of the plaintiff. She has also submitted that plaintiff is using the trademark 'MICHI'S' since 1996 and it has got registered in 2005 whereas the defendant's mark 'MISHI'S' has been subsequently registered. She has submitted that the defence under Section 28, as raised by the defendant, is not available to the defendant as the plaintiff is the prior user of the trademark and the registration thereof has not been challenged by the defendant. She has also submitted that the defendant has no locus-standi to take defence under Section 17 of the Trade Marks Act. She has submitted that plaintiff has also sought remedy for passing off action to exclusively claim entire trademark and prominent part and, therefore, Section 17(2) cannot be used as a licence to commit as an act of passing off by the defendant. She has also submitted that the trial Court has properly considered the various principles to be applied in a case of passing off action and the trial Court has considered the features of both the trademarks. According to her submission, the trial Court has not committed any error of facts and law.
9.2 Learned advocate Ms. Pooja Acharya has also vehemently submitted that the defendant is well aware of the reputation of the plaintiff's trademark and therefore there is no case of use of honest and concurrent marks. She has Page 12 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 submitted that as per settled principles of law, honest adoption is not a defence to subsequent user. She has submitted that defence under Section 12 of the Act of an honest and concurrent user is of no relevance at this stage.
9.3 Regarding delay, laches and acquiescence, she has submitted that there is no delay at all and however, if any delay is there, then it is not fatal to the case of the plaintiff for grant of injunction at this stage. She has submitted that in the present case, the initial adoption of trademark by the defendant is dis-honest and, therefore, the point raised on the aspect of delay, laches and acquiescence fells into insignificance. She has submitted that the impugned order of the trial Court is proper one and being a appellate Court this Court may not interfere with the same even if second view of the matter is possible. She has submitted that now as per the statement made by the defendant's advocate, after filing of the application for the breach of injunction before the trial Court, defendant has stopped to use the disputed trademark. She has prayed to dismiss the present Appeal from Order. She has relied upon the following decisions:
1. Tayabbhai M. Bagasrwalla v. Hind Rubber Industries Pvt.
Ltd, reported in LAWS (SC) 1997 (2) 118;
2. Order of Coordinate bench of this Court passed on Page 13 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 26.6.2015 in AO No. 396/2014 and allied matters in the case of Jindal Hotel Ltd. V. Hotel Surya Palace.
3. Shrimant Sangramsinh Pratapsinhrao Gaekwad v. Shantadevi Pratapsinh Gaekwad, reported in 1995 2 GLH 850;
4. Jaininder Jain and others v. Arihant Jain and others, reported in 2007 (34) PTC 128 (Delhi);
5. Satish Khoshla v. Eli Lilly Ranbaxy Limited, reported in LAWS (DLH) 1997 (12) 2;
6. Kantilal Premji Maru v. Madankumar, reported in 2018 (75) PTC 81 (Bombay)
7. Rajnish Agarwal and others v. Anantam, reported in 2010 (43) PTC 442 ( Delhi);
"19. Since the defendant is admittedly using the name „Anantam‟ as its mark as well as trade name, therefore, as its mark as well as trade name, therefore, the user of the mark is apparent on the face of it, as already stated as the goods in which registration is granted fall in Classes 14, 18, 24 and 25. Prima facie, I am of the considered view that registration in clause 35 is not correctly granted in accordance with the Trade Mark Rules, 2002, hence, the defendant cannot take the benefit of Section(s) 28 (3) and 30 of the Trade Marks Act, 1999 thus, there is no bar to the suit for infringement against the defendant. The plaintiffs are entitled to take the benefit of Section 134 of the Trade Marks Act, 1999 due to the Page 14 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 reasons (a) that plaintiffs no. 1 to 3 are actually and voluntarily residing within the local limits of this court ‟ as its mark as well as trade name, therefore,s territorial jurisdiction, (b) the application for registration of trademark was filed by the plaintiffs in the Delhi Trade Marks office and (c) the plaintiffs are advertising their products on national television channels and are also purchasing material from various manufacturers in Delhi. Hence, at this stage, this court cannot come to the conclusion that it has no territorial jurisdiction.
20. In addition to this, in the recent case of Clinique Laboratories LLC & Anr. v. Gufic Ltd. & Anr., 2009 (41) PTC 41 (Del) wherein the defendant had a similar/identical trade mark registered in the same class, a learned single judge of this court observed the following :
"Registration has been made only prima-facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) as contended by senior counsel for plaintiff but I find that even Section 28(1) while being subject to other provisions of Act, further provides that "registration of the trademark, if valid, give to the registered proprietor" exclusive right to use the trademark. Thus the validity of registration can be gone into, wherever permissible under the Act. Section 124(1)
(b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered. The legislature while Page 15 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 further providing for stay of suit in such cases, in Sub-section (5) expressly provided that such stay would not preclude the court from making any interlocutory order. Section 31 r/w the scheme of 124 leads to an un-escapable conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings and (C) the court is empowered in such case to pass any interlocutory order. The court while passing interlocutory order will necessarily have to prima facie adjudicate the validity of the two competing registrations. Upon inquiry, it was informed that the Registrar while trying the rectification application has no power to grant interim relief. The legislature under Section 124(5) has thus empowered the court under Section 124(5) to grant injunction against use of a registered trademark also if the court is satisfied of the invalidity thereof ...
11. Once having reached a conclusion that registration is only prima facie evidence of validity, it is axiomatic that if the court is satisfied otherwise on the basis of material on record and in the facts of the case, the court is empowered to injunct use of registered trademark also ..."
21.Following the above-quoted observation, learned single judge, as far as this issue was concerned, held as under :
Page 16 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022 "14. I thus conclude that a suit for infringement of registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit, while staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court, if the court is prima facie convinced of invalidity of registration of the defendant's mark."
22. In view of the finding given in the earlier paras above and the case law referred, I hereby hold that a suit for infringement is maintainable in the present case and that this court has got jurisdiction as per the averment made in the plaint."
8. S. Narendrakumar v. Apricoat Foods Pvt Ltd, reported in Laws (Bom) 2013 (5) 14;
"7. The Defendant has further contended that the Suit, as originally filed, did not lie and was barred by law in view of the fact that the Defendant had registered the mark "EVEREST". It is also the Defendant's contention that since the passing off, as originally pleaded, was outside Mumbai, the entire Suit, as originally filed, was defective and not maintainable and this alleged vested right was sought to be taken away by the amendment. In this connection, the Defendant has relied upon Sections 28 (3), 29 (2) and 30 (2) (e) of the Act to contend that the Suit for infringement cannot lie and is barred by law. The Plaintiff, in response to the submission, has correctly submitted Page 17 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 that this contention of the Defendant is based on a complete misreading of the Act. None of the aforesaid provisions incorporate any bar on filing of a suit for infringement in a case where the Defendant's mark is also registered. In fact, the Defendant's submission cannot be accepted in view of Section 124 of the Act which clearly states that in a suit for infringement of a trademark, where the Defendant raises a defence under Section 30 (2) (e) of the Act to the effect that the Defendant's KPP -
9- CHS 1319 of 2012 mark is also registered and the Plaintiff pleads the invalidity of the Defendant's mark, the Court trying the suit shall, if any proceedings for rectification of the Register in relation to the Plaintiff or Defendant's trademark be pending before the Registrar or before the Appellate Board, stay the suit pending the final disposal of such proceedings. In Section 124 (5) of the Act, it is clarified that the stay of the suit for infringement of a trademark under Section 124 of the Act shall not preclude the Court from making any interlocutory order during the period of the stay. In the present case, the Plaintiff's application for rectification of the register in relation to the Defendant's mark is pending. Section 124 of the Act thus clearly shows that a suit for infringement is not barred by the mere fact that the Defendant's mark is also registered. In fact, the said provision clearly contemplates that a suit can be filed and would lie. The course of action to be adopted in such a suit is also provided for."
"10. The Defendant's contention that the amendment lacks bona fides also deserves to be rejected. The mere fact that the suit was filed five years after the cease and desist notice does not in any manner make the suit lack Page 18 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 bona fides. There is nothing to indicate that the Plaintiff was aware of the Defendant's mark being registered and therefore the question of suppression of the same does not arise. In any case, it is not as though the Plaintiff secured any order from this Court on the basis that the Defendant's mark was unregistered. As regards the grant of leave under Clause 14, the Defendant has filed an application for revocation of the same which shall be considered by this Court on its own merit. If the Defendant disputes the contents of the amendment, it shall be open for it to do so after the amendment is allowed. As correctly submitted on behalf of the Plaintiff, the Defendant cannot seek an adjudication on the merits of the proposed amendment at this stage."
9. Siyaram Silk Mills Limited v. Shree Siyaram Fab Private Ltd. And ors, reported in 2013 (53) PTC 410 (Bombay);
10. Pidilite Industries Ltd. V. Poma-Ex Products, reported in 2017 (72) PTC 1 (Bom);
40. Learned counsel for the plaintiff placed reliance on the judgment delivered by Full Bench of this Court in the case of Lupin Ltd. Vs. Johnson & Johnson, reported in 2015 (1) Mh.L.J. 501 and in particular paragraphs 24,26, 29, 34, 35, 59 and 60 in support of the submission that the Court can go into the validity of the registration at interlocutory stage for rendering a prima facie finding on the issue as to whether any infringement of the trademark is committed by the defendant or not, though challenge to the validity of the registration of trademark can finally succeed only in rectification proceedings before Page 19 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 Intellectual Property Appellate Board. He submits that there is no express or implied bar taking away jurisdiction or power of the Civil Court to consider the challenge to the validity of trademark at interlocutory stage by way of a prima facie finding.
41. Learned counsel for the plaintiff placed reliance on the judgment of Delhi High Court in the case of Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr., reported in 2009 (41) PTC 41 (Del) and in particular paragraphs 11, 12 and 14 in support of the submission that a suit for infringement of registered trademark is ppn 21 nms-2695.16(j).doc maintainable against another registered proprietor of identical or similar trademark and interim order can be passed if the Court is prima facie convinced of invalidity of registration of the defendant's mark and if the Court finds infringement of the registered trademark of the plaintiff. In support of the aforesaid submission, the plaintiff also placed reliance on the judgment of the Delhi High Court in the case of Abbott Healthcare Pvt. Ltd. Vs.Raj Kumar Prasad & Ors., reported in 2014 (58) PTC 225 (Del) and in particular paragraphs 21 to 23 thereof."
"83. In my view, merely because the application of the plaintiff for rectification of the registration of the trademark of the defendant is pending before the Intellectual Property Appellate Board, that cannot be a bar against this Court from deciding issue of infringement under Section 28 (1) of the Trade Marks Act, 1999 and to render a prima facie finding on the issue of validity of the registration for a limited purpose for granting interim Page 20 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 relief against the defendant. Such prima facie finding, however, rendered by the Court would not affect the outcome of the final conclusions, as may be drawn by such Intellectual Property Appellate Board in the said application filed by the plaintiff. The principle of law laid down by the by Full Bench of this Court in the case of Lupin Ltd. Vs. Johnson & Johnson (supra) squarely applies to the facts of this case. I am respectfully bound by the said judgment.
84. Delhi High Court in the cases of Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr. (supra) and Abbott Healthcare Pvt. Ltd. Vs.Raj Kumar Prasad & Ors. (supra) has taken a similar view that is taken by the Full Bench of this Court. I am in ppn 40 nms-2695.16(j).doc agreement with the views expressed by the Delhi High Court in the aforesaid two judgments."
"105. This Court in the case of M/s.Siyaram Silk Mills Ltd. Vs. M/s.Shree Siyaram Fab Pvt. Ltd.(supra) has held that Section 29 of the Trade Marks Act, 1999 does not prohibit the filing of a suit for infringement merely because the defendant's mark is also registered. There is no bar against the Court for exercising inherent jurisdiction to entertain or try the suit for infringement. Section 29 provides a defence to an infringement action but does not bar the filing of the suit. It is ppn 50 nms-2695.16(j).doc held that Section 30(2)(e) provides a defence to an action for infringement, however, does not bar the institution of a suit for infringement. This Court considered Section 124 of the Trade Marks Act, 1999 and held that the legislature did not intend prohibiting the filing of a suit for infringement merely because the defendant's mark is also Page 21 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 registered. The said provision expressly recognizes the right to file such an action. It is held that the defence under Section 29 can only be limited to and qua the use of the defendant's registered label mark and nothing else."
"115. This Court has already taken prima facie view by an order dated 5th May 2014 holding that the defendant had adopted the packaging in respect of the impugned product with a view to ride on the reputation of the plaintiff which has been generated in the FEVIKWIK Distinctive Packaging and are seeking to misrepresent their products as those of the plaintiff leading to or likely to lead to confusion amongst the trade and the consuming public. It is held that the defendant had infringed the registered trademark of the plaintiff. The balance of convenience is also in favour of the plaintiff and continued use by the defendant would cause grave injury to the plaintiff and it's trademark. The said ad- interim order passed by this Court has not been impugned by the defendant."
11. Ruston Hornsby v. Zamindara Engineering, reported in PTC (Suppl) (1) 175 (SC):
"3. The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows :
Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ?Page 22 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022
C/AO/10/2021 ORDER DATED: 22/12/2022 But in an infringement action the issue is as follows :
Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark ?
4. It very often happens that although the defendant is not using the trade mark 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 would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plain-
tiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the-defendant is improperly using the plaintiff's mark."
"7. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions.
8. In the present case the High Court has found that there is a deceptive resemblance between the word "RUSTON"
and the word "RUSTAM" and therefore the use of the bare word "RUSTAM" constituted infringement of the Page 23 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 plaintiff's trade mark "RUSTON". The respondent has not brought an appeal against the judgment of the High Court on this point and it is, therefore, not open to him to challenge that finding. If the respondent's trade mark is deceptively similar o that of the appellant the fact that the word 'INDIA' is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark."
12. United Biotech Pvt. Ltd. V. Orchid Chemicals and Pharmaceuticals Ltd. , reported in 2012 (5) PTC 433 (Delhi) (DB);
13. Telecare Network India Pvt. Ltd. V. Asus Technology Pvt.
Ltd. And Others, reported in LAWS(DLH) 2019 (5) 244;
14. Satyam Infoway Ltd. V. Sifynet Solutions Pvt. Ltd., reported in 2004 (28) PTC 566 (SC);
"12. The next question is would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off. as the phrase "passing off itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its service in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one. invents and uses it. If two trade rivals Page 24 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.
13. The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any malafide intention on the part of the defendant. Ofcourse, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to plaintiff. What has to be established is the likelihood of confusion in the minds of the public, (the word "public" being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory"
14 The third element of a passing off action is loss or the likelihood of it."
"28. According to the respondent the word "Siffynet" which features both as its corporate name and in its domain names was derived from a combination of the first letter of the five promoters of the respondent, namely Saleem, Ibrahim, Fazal, Fareed and Yusuf, and the word "net" implies the business of the respondent. The stand taken by the respondent is that it was not aware of the appellant's trade name and trading style 'Sify'. This Page 25 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 is not credible for several reasons. In answer to the legal notice issued by the appellant no such case was made. The refusal of the respondent to comply with the demand notice issued by the appellant was based only on an alleged difference between the trade name, 'Sify' and 'Siffynet' and a claimed difference in the field or operation. The High Court has not also found that the respondent-company was unaware or ignorant of the use of the trade name 'Sify' by the appellant. The reason put forward by the respondent for the choice of the word 'Siffy' as part of its corporate and domain names appears from the second written statement filed by the respondent before the trial Court where it has been said that the respondent company was the brain child of its founder Director, Mr. Bawa Salim and that the word 'Siffy' was invented from the first letters of the five persons involved in the setting up of the respondent company. But only four names were given. The fifth name was given in the counter affidavit filed in this Court. In the first written statement and the first answer to the interlocutory application of the appellant verified by Bawa Salim was Managing Director of the respondent, no such case as has been put forward now regarding the choice of the name "Siffy" was made out. In fact in the original written statement, the respondent had stated that though its domain name "was got registered in the name of one Mr. C.V. Kumar, now the said person does not have any connection with this defendant since the second defendant is no longer in existence as a partner(sio)". Thus, it appears that the respondent may originally have been a firm because C.V. Kumar, in whose name 'Siffynet' was registered, has been described as a partner. Even if this inference is incorrect and the respondent was always a company, we are still not convinced as to the reason why the name "Siffy" was chosen by the respondent. If the originators of the company were the five persons viz. Salim, Ibrahim, Fazal, Page 26 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 Fareed and Yousuf why was the domain name of the respondent already registered as 'Siffynet' in the name of Mr. C.V. Kumar? Furthermore, the list of names provided by the respondent to support its case that 'Siffy' as an original acronym was based on the initial letters of the respondent company's promoters seems unsupported by any evidence whatsoever. No document apart from a bare assertion that the five named individuals had any special collective role in the origination or promotion of the business has been filed. The appellant's internet based business was, from 1999, high profile. The evident media prominence to 'SIFY' and large subscriber base could have left the respondent in no doubt as to its successful existence prior to the adoption of Siffy as part of its corporate name and registration of Siffynet and Siffy.com as its domain names. It would therefore appear that the justification followed the choice and that the respondent's choice of the word "Siffy" was not original but inspired by the appellant's business name and that the respondent's explanation for its choice of the word "Siffy" as a corporate and domain name is an invented post-rationalisation."
15. S. Syed Mohideen v. Sulocahana Bai, reported in 2016 (66) PTC 1 (SC);
16. Laxmikant V. Patel v. Chetanbhai Shah & Anr., reported in 2002 (24) PTC 1 (SC) "8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business Page 27 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair Page 28 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 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.
11. Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and observe the same having been awkwardly termed as passing off and state:-
"The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition Page 29 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders."
12. In Oertli Vs. Bowman (1957) RPC 388, (at page
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 plaintiffs 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 plaintiffs 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 Page 30 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 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 Edition, 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 defendants 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 plaintiffs 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).
"16. There was no delay in filing the suit by the plaintiff. The plaintiff filed the suit with an averment that the defendants were about to commit an injury to the plaintiff. The defendants took a plea that they had already commenced the business with the offending trade name without specifying actually since when they had commenced such business. This has to be seen in the background that the defendants business earlier was admittedly being carried on in the name and style of Gokul Studio. The commencement of such business by the defendants could therefore have been subsequent to the institution of the suit by the plaintiff and before the filing Page 31 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 of the written statement by the defendants. In such a situation, on the plaintiff succeeding in making out a prima facie case, the court shall have to concentrate on the likelihood of injury which would be caused to the plaintiff in future and simply because the business under the offending name had already commenced before the filing of the written statement or even shortly before the institution of the suit would not make any difference and certainly not disentitle the plaintiff to the grant of ad- interim injunction.
17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefor except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. 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 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 courts exercise of discretion [(see Wander Ltd. v. Antox India P.Ltd : 1990 (Supp) SCC 727 and N.R. Dongre v. Whirpool Corporation and another: (1996) 5 SCC 714)]. However, the present one is a case falling within the well accepted Page 32 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 exceptions. Neither the Trial Court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere. For the foregoing reasons these appeals are allowed. An ad-interim injunction under Rules 1 and 2 of Order 39 of the CPC shall issue in favour of the plaintiff-appellant restraining the defendant-respondents from using directly or indirectly the word Muktajivan in their trade name associated with the business and services of colour lab and studio and any other similar word or name which may be identical or deceptively similar to the plaintiffs trade name. The plaintiff-appellant shall be entitled to costs throughout incurred upto this stage. Before parting we would like to make it clear that this order is being passed at an interlocutory stage, and therefore, any observation made by this Court touching the facts, and any factual finding arrived at this stage would not come in the way of the Trial Court or Appellate Court in arriving at a final decision at variance therewith on trial of the issues on merits after recording the evidence.Page 33 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022
C/AO/10/2021 ORDER DATED: 22/12/2022
17. T.V. Venugopal v. Ushodaya Enterprises Ltd. & Another, reported in 2011 (45) PTC 433 (SC) ;
"102. On consideration of the totality of facts and circumstances of the case, we clearly arrive at the following findings and conclusions :
b) The adoption of the words `Eenadu' is ex facie fraudulent and mala fide from the very inception. By adopting the mark `Eenadu' in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company;
c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the court on the dishonest, illegal and clandestine conduct of the appellant;
h) Permitting the appellant to sell his product with the mark `Eenadu' would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary rights vested with the respondent company."
18. Ramdev Food Products Ltd. V. Arvindbhai Rambhai Patel and Ors, reported in 2006 (33) PTC 281 (SC);
"77. Section 15 of the 1958 Act postulates registration of the whole and a part thereof as separate trade marks. The nature of the trade mark of the appellant has been noticed hereinbefore.
78. There are three elements in the said trade mark, viz., 'Ramdev', 'Masala' and the 'horse'. The deception Page 34 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 could be as regard the prominent features of the said trade mark.
79. Section 15 of the 1958 Act, in our considered opinion, is not attracted in the instant case. By reason of the said provision, registration of trade mark in regard to the exclusive use is permissible both in respect of the whole trade mark as also the part thereof separately. Where such separate trade mark in regard to a part of it is applied for, the applicant must satisfy the conditions applying to and have all the incidents of an independent trade mark. Sub-section (3) of Section 15 of the 1958 Act provides for a case where the proprietor of several trade marks claimed registration in respect of the same goods or description of the goods which while resembling each other in the material particulars thereof yet differ in respect of the matters provided for therein. We are not, in this case, concerned with such a legal question.
80. In Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr. Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining therein, this Court, referred to the decision of Lord Esher in Pinto v. Badman [8 RPC 181] to say that where a distinctive label is registered as a whole such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the Page 35 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 mark as a whole. This Court in the aforementioned factual backdrop opined: "This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration"
(Emphasis supplied)
81. The said decision has no application to the fact of this case.
82. Mr. Nariman is also not correct in contending that only a label has been registered and not the name 'Ramdev'. Definition of 'mark' as contained in Section 2(j) of the 1958 Act also includes name, signature, etc.
83. Section 28 of the 1958 Act confers the right of registration whereas Section 29 thereof provides for the remedies for infringement of trade mark. What is needed by way of cause of action for filing a suit of infringement of trade mark is use of a deceptively similar mark which may not be identical. What would be deceptively similar, as defined in Section 2(d) of the 1958 Act, would be a Page 36 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 mark if it nearly resembles that other mark as to be likely to deceive or cause confusion. It is, therefore, not a case where the respondents could raise valid defence in terms of Section 29 of the 1958 Act.
84. The right conferred in terms of Section 28 of the 1958 Act although is required to be read with Sections 15 and 17 thereof but it is difficult to accept that each part of the logo was required to be separately registered. Section 28 of the 1958 Act confers an exclusive right of using trade mark to a person who has got the trade mark registered in his name. Such right is, thus, absolute. Sub- section (3) of Section 28 raises a legal fiction for the purposes specified therein but we are not concerned therewith in the instant case. Sub-section (2) of Section 29 inter alia provides for the defences.
"104. A civil suit was filed by the first respondent in the Ahmedabad City Civil Court wherein a prayer was made that the deed of assignment be declared null and void and the appellant herein be permanently restrained from using the same as also for a declaration that they are the owners of the said trade mark/trade name. However, an interim order as prayed for therein was not granted. A First Information Report was also lodged against the respondents by the appellant-Company before the Madhupura Police Station for commission of an alleged offence underSection 63 of the Copyright Act and Sections 78 and 79 of the 1958 Act as well as Sections 417, 420, 419 and 486 of the Indian Penal Code. An application for quashing the said complaint was filed before the Gujarat High Court on 4.8.1999. It was dismissed by an order dated 26.10.1999. A Special Leave Petition preferred Page 37 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 there against being SLP (Crl.) No. 3900 of 1999 was also dismissed by this Court by an order dated 14.12.1999. In the meanwhile, a rectification application was filed by the respondents before the Registrar of Trade Mark, Mumbai allegedly stating that the registered trade mark bearing No. 447700 was not being used by the plaintiff, it was not entitled to continue to claim title thereover or use the same. Various applications were moreover filed by the respondents herein for rectification of the entry in the register in respect of various label marks of the appellant. The appellant thereafter issued a public notice on 17.12.1999 calling upon the respondents to restrain themselves from infringing upon the trade mark of the appellant, in respect whereto a public notice was also issued by the respondents herein on 21.12.1999. The suit thereafter was filed on 10.2.2000. Contention of the respondents in this behalf was that not only in terms of the MOU the appellant had been allowed to carry on business under the name and style of 'Ramdev Masala', no immediate step having been taken after issuance of the public notice dated 15.12.1998 for long time, they were not entitled to obtain an order of injunction. Delay in some cases may defeat equity but the chronology of events noticed hereinbefore do not suggest that the appellant's consciously allowed the respondents to use the trade mark."
111. Applying the aforementioned principles in the instant case, it is evident that the time gap between the issuance of the notice and filing of an application for grant of injunction was not a voluntary act on the part of the appellant herein. It had to wait for the outcome of various proceedings pending before different courts. The Page 38 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 respondents having themselves taking recourse to judicial proceedings, as noticed hereinbefore, cannot now be permitted to set up the defence of acquiescence on the part of the appellant. Indisputably, in a case of infringement of trade mark, injunction would ordinarily follow where it is established that the defendant had infringed the trade mark and had not been able to discharge its burden as regard the defence taken by it."
19. Jolen Inc versus. Doctor & Company, reported in 2002 (25) PTC 29 (Delhi )
20. Midas Hygience Industries P. Ltd and Anr., v. Sudhir Bhatia and Ors, reported in 2004 (28) PTC 121 (SC);
21. Hindustan Pencils Pvt. Ltd. V. India Stationery Products Co. And Another, reported in 1989 (9) PTC 61 (Delhi);
22. Wockhardt Limited. V Torrent Pharmaceuticals Ltd. and Anr., reported in LAWS (SC) 2018 (9) 48;
23. Dr. Reddy's Laboratories Ltd. V. Reddy Pharmaceuticals Ltd., reported in 2004 (29) PTC 435 (Delhi);
24. Wander Ltd. And Another v. Antox India (P) Ltd., reported in 1991 (11) PTC 1 SC;
25. Medicure Hygiene and Anr. V. Medicare Hygience Pvt.
Ltd. And Others, reported in 2013 (53) PTC 425 (Gujarat);
Page 39 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022
26. Neon Laboratories Ltd. V.Medical Technologies Ltd., reported in LAWS (SC) 2015 (10) 52;
27. Keshavkumar Agrawal v. NIIT Ltd., reported in 2013 (54) PTC 178 (Delhi);
28. K.R. Chinna Krishna Chettiyar v. Sri Ambal and Company, reported in LAWS (Supreme Court) 1969 (4) 8;
29. Navyug Commercial v. Maheshwari Tea Company Pvt.
Ltd., reported in 2013 (56) PTC 596 (Raj);
10. At the outset, it needs to be observed that during the course of arguments, the learned advocates appearing for both the parties have relied upon numbers of authorities, which are pertaining to the well-known principles regarding infringement action and passing off action under the Trade Marks Act. This Court is guided by the time-tested principles laid down therein and the same are considered while deciding this Appeal from Order. To avoid prolixity, all the authorities are not discussed in detail in this Order.
11. It is well settled principles of law that in an Appeal against exercise of 'discretion' by the Court of first instance, the power of appellate Court to interfere with the exercise of discretion is restrictive. Merely because on facts, the Page 40 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 appellate Court would have concluded differently from that of the Court below, that would not , by itself, provide justification for appellate Court to interfere. To justify interference, the appellant would have to demonstrate that 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 injunction. An appeal against the exercise of discretion is an appeal on principle. In the case of Wander Ltd. V. Antox India P. Ltd, (Supra) wherein it has been adumbrated that the Appellate Court ought not to "re- assess the material and seek to reach a conclusion different from the one reached by the Court below if the one reached by that 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".
12. In view of the above settled principles of law, power of this Court, as an Appellate Court, to interfere with the order passed by the trial Court is very limited and only in Page 41 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 exceptional circumstances, the Appellate Court can interfere with the discretionary order passed by the trial Court. The Appellate Court cannot re-evaluate the entire evidence and arrive at a conclusion contrary to the conclusion arrived at by the trial Court. However, in case where the order passed by the trial Court is found to be invalid, illegal, arbitrary, perverse or contrary to the settled principles of law, the Appellate Court has all powers to interfere with the same. Considering the above principles of law, this Court has only to see as to whether the trial Court has committed any error in passing the impugned order. It has also to see whether the main basic principles of law namely, prima-facie case, balance of convenience and irreparable loss are satisfied or not in passing the order.
13. Keeping in mind the aforesaid principles of law along with the submissions made on behalf of both the sides, coupled with the pleadings of the parties and material placed on record and the decisions cited at bar, it appears that there is no dispute regarding the fact that both the parties are dealing with the same Food Products. It is also an admitted fact that the class of the consumer and the market of the goods are same.
14. Now, considering the material placed on record, it appears that plaintiff's trademark is 'MICHI'S' whereas the trademark of the defendant is 'MISHI'S' with the added words Page 42 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 ORIGINAL. It also reveals from the record that plaintiff is the proprietor of trade mark 'MICHI'S'and it has applied for registration in the year 1997, which came to be ultimately registered in the year 2005. Thus, the plaintiff is the prior user of the trademark 'MICHI'S'. Now, the defendant has got registration of the trademark 'MISHI'S'. As per the version of the defendant it has got registration thereof in the year 2017. Thus, admittedly the use of the trademark by the defendant is subsequent to that of the plaintiff. On comparison of both these trademarks, it appears that the defendant has used alphabet "S" in place of alphabet "C" of the plaintiff's trademark. It also appears that the alphabet "I" has been used in capital in the trademark of the plaintiff whereas small "i" have been used by the defendant in his trademark after alphabets "M" and "H". However, phonetically both words would be same.
15. The defendant has placed reliance upon the provisions of Sections 12, 28(3), 31, 57, 124, 125, of the Trade Marks Act and has submitted that this is a case of honest concurrent user and the defendant being a registered owner of the trademark in question, he has equal right to use it for the same product and there is no case for infringement of trademark as well as the passing off action. At this juncture it is worthwhile to reproduce the above Sections, which are as under:
Page 43 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022 Section 12: Registration in the case of honest concurrent use, etc .- In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
Section 28 : Rights conferred by registration. (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any Page 44 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Section 31. Registration to be prima facie evidence of validity.
(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.
Section 57. Power to cancel or vary registration and to rectify the register.
Page 45 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022C/AO/10/2021 ORDER DATED: 22/12/2022 (1) On application made in the prescribed manner to the 1 [High Court] or to the Registrar by any person aggrieved, the 2[Register or the High Court, as the case may be,] may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served Page 46 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
Section 124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. (1) Where in any suit for infringement of a trade mark--
(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall,-
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding Page 47 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a Page 48 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 receiver or attaching any property), during the period of the stay of the suit.
Section 125. Application for rectification of register to be made to High Court in certain cases.
(1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (e) of sub- section (2) of section 30 and the plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the register and, notwithstanding anything contained in section 47 or section 57, such application shall be made to the Appellate Board and not the Registrar.
(2) Subject to the provisions of sub-section (1), where an application for rectification of the register is made to the Registrar under section 47 or section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board.
16. In order to take benefit of Section 12 of the Act, the user should be honest, and if a person adopts a trademark with Page 49 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 the knowledge of an earlier existing identical or deceptively similar mark, such adoption would be dis- honest and malafide and would not entitle the person to the benefit of Section 12 of the Act. Further, the extent of concurrent use necessary to bring the case in Section 12 depends upon the degree of resemblance between the marks and the nature of the goods or services. If the marks are closely similar and the goods are the same, very extensive use over a considerable length of time would be necessary to justify registration. Moreover, the necessity for invoking Section 12 would arise only when the similarity between the two marks is such as is likely to cause confusion in the public including likelihood of association with other marks. Hence, by taking shelter under Section 12 of the Act, the defendant indirectly admits the similarity between two marks which is likely to cause confusion in the public at large.
17. The plaintiff has filed Suit for infringement as well as for passing off action. Even if the defence of the defendant that it being registered owner of the disputed trademark, and therefore, no infringement action would lie against it, is accepted, for the sake of argument, then in that case also, the similarity between the two marks, which is likely to cause confusion in the public at large, can be considered for protecting the right of the plaintiff, under the head of passing off action. Passing of action has its origin, as an Page 50 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 action in tort to restrain the wrongful conduct of the defendant in passing off his goods as the goods of the plaintiff. This might be done by using the trade name, trademark or other get-up of the plaintiff so as to induce any potential purchaser the belief that his goods or business were those of the plaintiff's. The tort liest in the mis-representation by the defendant. Mis-representation is aimed at the potential buyers of the goods or the services, who are invited to buy goods believing that the goods are of the plaintiff. This might be done through confusion or deceitful use of the trade name or mark with or other indication used by the plaintiff in respect of such goods or service. The passing off action is to create an actionable wrong based on the border principles of law that nobody has any right to represent his goods or business as the goods or business of somebody else. The principle is that "
trading must not only be honest but must not even unintentionally be dis-honest". The purpose of passing off action is to protect commercial goodwill and to ensure that the purchaser are not exploited and dis-honest trading is prevented. For that, the plaintiff must establish that his business or goods have acquired the reputation. Whether the defendants goods are marked with the trademark of the plaintiff or made-up or described as calculated to mislead the ordinary purchaser, it is thus tendency to mislead or confuse which forms the gist of passing off action. There is no need to establish fraud or actual Page 51 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 deception or actual damages in such cases. In passing off action it is necessary to prove that an ordinary person is likely to buy goods in a believe that the goods are that of plaintiff, though it is not necessary to show that actual sale took place.
18. It is well settled that while considering the likelihood of confusion in the mind of a purchaser, the wisdom of an ordinary person is to be taken into consideration. If an ordinary person exercising ordinary caution is likely to be confusion or is likely to be deceived into buying the product of the defedant, believing the same to be originating from the plaintiff, the injuction must follow. Intention to pass of his neither necessary nor is required to be shown. There is no necessity to prove actual damage to the plaintiff. Of course, the plaintiff has to establish that he has build-up good reputation and goodwill on the trademark. The plaintiff has also to establish deception similar so as to cause confusion in the minds of consumer and also likely suffering of subsantial damages either to his business financialy or to the reputation and goodwill of his trademark.
19. Now, considering the impugned order of the Court below, it clearly transpires that the Court below has considered every aspects and defence raised by the defendants and has also considered the well-known principles in regard to Page 52 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022 C/AO/10/2021 ORDER DATED: 22/12/2022 grant or refusal of the interlocutory injunction. It also reveals from the impugned order that the trial Court, after considering all the relevant facts and circumstances of the case, has properly allowed the application of the plaintiff and has granted relief of injunction against the defendant. The impugned order of the trial Court is sustainable in the eyes of law and the same is not liable to be quashed and set-aside.
20. In view of the discussion, the present Appeal from Order is liable to be dismissed. Accordingly, it is dismissed. No order as to costs.
Civil Application, if any, stands disposed of accordingly.
(DR. A. P. THAKER, J) SAJ GEORGE Page 53 of 53 Downloaded on : Sat Dec 24 04:38:50 IST 2022