1. T. V. TODAY NETWORK LIMITED V.

NEWS
LAUNDRY MEDIA PRIVATE LIMITED & ORS.

1. The application has been moved by the plaintiff along with the suit
seeking leave to file additional documents within 30 days, as the suit had
been filed for urgent relief.

2. In the interest of justice, the application is allowed.

3. The application stands disposed of.

I.A.14296/2021 (by the plaintiff u/S 12A of the Commercial Courts Act,
2015 seeking exemption from pre-institution mediation)

4. The application has been moved by the plaintiff along with the suit
seeking exemption from exhausting the remedy of pre-institution
mediation.

5. Mr. Saurabh Kirpal, learned senior counsel for the defendants No.1 to 9,
had raised an objection that the suit is not a „commercial suit". If that be
so, the application would be unnecessary. However, since the suit has been
filed as a „commercial suit" and in view of the fact that the urgent reliefs
of injunction against infringement of copyright has been sought, the
application is allowed and the plaintiff is exempted from exhausting the
remedy of the pre-institution mediation.

6. The application stands disposed of.

I.A.14964/2021 (by the plaintiff u/O VII Rule 10 CPC to file additional
documents) and I.A.37/2022 (by the plaintiff u/O VII Rule 14 read with
Section 151 CPC seeking permission to file additional documents)

7. These applications have been filed by the plaintiff seeking permission to

place on the record, the transcripts of the videos, in respect of which, the
plaintiff has sought relief, which are allegedly containing infringing
material and defamatory/derogatory material against the plaintiff.

8. The objection raised by the learned senior counsel for the defendants
No.1 to 9 was that neither provision was applicable. However, since the
videos have been produced before the court, the transcripts would only
assist the court, for which reason the plaintiff is allowed to place the same
on the record. Accordingly, these transcripts are taken as part of the
record, subject to any objection that the defendants may raise in respect of
the correctness of the transcripts during trial, as such a comparison is not
possible at this stage.

9. The application stands disposed of in aforesaid terms.

I.A.1055/2022 (by the plaintiff u/O XI Rule 1 CPC as amended by the

Commercial Courts Act, 2015 seeking leave to file additional documents)

10. The application has been moved by the plaintiff under Order XI Rule 1
of the Code of Civil Procedure, 1908 (for short, "CPC") as amended by the
Commercial Courts Act, 2015 seeking permission to place on record
additional documents, namely, screenshots of the tweets/posts appearing
on the websites of the defendant No.11 i.e., www.facebook.com and
www.instagram.com and the website of the defendant No.12 i.e.,
www.twitter.com, as listed in the plaint, allegedly containing
defamatory/infringing content.

11. Since these are only screenshots of details already listed in the plaint,
in the interest of justice, as it would only assist the court in appreciating
the contents as to whether they contain infringing/defamatory material, the
application is allowed and these screenshots mentioned in para No. 9 of
the present application are taken on record.

12. The application stands disposed of.

I.A. 14237/2021 (by the plaintiff u/O XXXIX R-l & 2 CPC for interim
injunction)

13. The application [I.A.14237/2021] has been moved by the plaintiff

under Order XXXIX Rules 1 & 2 CPC filed by the plaintiff along with the
suit for mandatory and permanent injunction as also for damages.
2.  Cameron Thomaz p/k/a Wiz Khalifa and Wiz Khalifa Trademark,
LLC v. Moniker Privacy Services/Kyle Lynch, 2014 SCC OnLine WIPO
1361

1. The Parties

Complainants
are Cameron Thomaz p/k/a1 Wiz Khalifa and Wiz Khalifa Trademark, LLC of New
York, New York, United States of America (“USA”), represented by Pryor
Cashman, LLP, New York, New York, USA.

Respondent is Moniker Privacy Services of Fort Lauderdale, Florida,

USA/Kyle Lynch of Lewes, Delaware, USA.

 2. The Domain Name and Registrar

The disputed domain name <taylorgang.net> (the “Disputed Domain Name”)

is registered with Moniker Online Services, LLC (the “Registrar”).

 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on September 4, 2014, identifying the Registrant as
Moniker Privacy Services. On September 5, 2014, the Center transmitted by
email to the Registrar a request for registrar verification in connection with the
disputed domain name. On September 11, 2014, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact
information for the Disputed Domain Name which differed from the named
Respondent and contact information in the Complaint; specifically, the Registrar
identified the Registrant as Kyle Lynch of Lewes, Delaware, USA. The Center sent
an email communication to Complainant on September 15, 2014 providing the
registrant and contact information disclosed by the Registrar, and inviting (but
not requiring) Complainant to submit an amendment to the Complaint.
Complainant did not submit an amendment to the Complaint. Accordingly, the
Center notified the parties on September 23, 2014 that the Center acknowledged
that Complainant had confirmed its choice not to accept the invitation to file an
amendment to the Complaint (or amended Complaint) in light of the Registrar-
provided registrant information for the disputed domain name. As such, the
Center informed Complainant that it would proceed to formal Complaint
notification on this basis, noting that any resultant issues of proper Respondent
identity would in any case need to be considered at the discretion of the Panel in
due course. In that light, and for avoidance of doubt regarding the Center's
notification obligations under the Policy and Rules, the Center stated that it
would nevertheless provide a copy of the Complaint both to the Respondent as
named in the Complaint, and to the registrant contact details subsequently
disclosed by the Registrar.2

The Center verified that the Complaint satisfied the formal requirements of
the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”),
the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified Respondent of the Complaint, and the proceedings commenced on
September 23, 2014. In accordance with the Rules, paragraph 5(a), the due date
for Response was October 13, 2014. On September 23, 2014 the Center received
an informal communication, presumably from Respondent. Respondent did not
submit any formal response. Accordingly, the Center notified the
commencement of panel appointment process on October 15, 2014.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter
on October 21, 2014. The Panel finds that it was properly constituted. The Panel
has submitted the Statement of Acceptance and Declaration of
Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.

 4. Factual Background

Complainants state, and provide a declaration in support thereof,

that Wiz Khalifa is “an internationally renowned recording artist and performer”
whose “albums and songs have peaked on numerous music charts and have
earned many awards, including, but not limited to, the 2012 Top New Artist
Billboard Music Award,” and that Wiz Khalifa was nominated “in several
categories” for Grammy Awards in 2012, 2013 and 2014.

Complainants further state that Wiz Khalifa founded “Taylor Gang Ent” in

2008 with “Academy Award winner Juicy J, and has since signed several notable
hip hop artists, such as Chevy Woods, Berner, Courtney Noelle and Ty Dolla
$ign”.

Complainants further state that “[t]hrough his

company Wiz Khalifa Trademark, LLC, Wiz Khalifa owns” two
U.S. trademark applications for TAYLOR GANG, that Complainants have used the
TAYLOR GANG trademark since at least December 2008, that “Complainant's
maintain an official website accessible via <taylorgangent.com>” and that
“[t]hrough his dominance in the music industry, including sold-out concerts, five
critically-acclaimed studio albums, Platinum-selling singles, thirty-four music
videos, international public and media appearances, and the
solicited and unsolicited publicity Wiz Khalifa has received, the TAYLOR GANG
mark has become famous and an extremely valuable commercial asset.”

Complainants further state, and provide evidence in support thereof, that the

website using the Disputed Domain Name “is dedicated to Wiz Khalifa: the site
features information about Wiz Khalifa, his tour dates, artists signed to his label,
his albums, the lyrics to his songs, links to a ‘Taylor Gang blog’ about Wiz Khalifa,
his music videos, and Wiz Khalifa's songs and albums are available for illegal
download”.

The Disputed Domain Name was created on February 25, 2010.

 5. Parties' Contentions

A. Complainant

Complainants contend, in relevant part, as follows:

- “There is no question that the TAYLOR GANG mark serves as a strong source
identifier of Complainants' goods and services, as evidenced
by Wiz Khalifa's success on the music charts, his substantial sales of music
records and clothing, and the unsolicited media attention that
Complainants receive.” Complainants further contend that the Disputed
Domain Name is identical or confusingly similar to the TAYLOR GANG
mark because it “consists only of Complainants' trademark”.

- Respondent has no rights or legitimate interests in respect of the Disputed

Domain Name because, inter alia, “Respondent has never been an
authorized representative or agent of Complainant”; “Respondent
engages in an obvious attempt to trade upon the goodwill associated with
Complainants and the TAYLOR GANG mark”; and “Respondent uses the
Disputed Domain Name to mislead Internet users searching for Taylor
Gang news and clothing to its unauthorized, commercial website for the
Respondent's financial benefit.”

- Respondent registered and is using the Disputed Domain Name in bad faith

because, inter alia, “Respondent intentionally and fraudulently deceives
<taylorgang.net> visitors into believing that [“www.taylorgang.net”] is
Complainants' official TAYLOR GANG website by falsely claiming to
 be Wiz Khalifa's manager” (a contention supported
by a declaration and relevant evidence); “Respondent is using the
Disputed Domain Name to profit from the sale of clothing bearing the
TAYLOR GANG mark and accessible for purchase from the ‘online store’
link on the website”; “Respondent offers full album music downloads from
several artists, including Complainant Wiz Khalifa, on the
[“www.taylorgang.net”] website, and upon information and belief, this
offering of full album downloads is illegal and constitutes copyright
infringement”; and “Respondent is also using the [“www.taylorgang.net”]
domain for commercial purposes by providing an ‘online shop’ link to the
[“www.taylorgang.spreadshirt.com”] website in order to sell clothing
bearing the TAYLOR GANG mark that is not manufactured, licensed or
approved by Complainants.”

 B. Respondent

Respondent did not reply to Complainants' contentions. However, on

September 23, 2014, the Center received an e-mail from a sender purportedly
acting on behalf of Respondent stating, in its entirety: “Fan site. Content no
different them [sic] khalifafans.com or others. Don't post anything
copyrighted and all links go to original content”.

 6. Discussion and Findings

Pursuant to the Policy, Complainants are required to prove the presence of

each of the following three elements to obtain the relief it has requested: (i) the
Disputed Domain Name is identical or confusingly similar to a trademark or
service mark in which Complainant has rights; (ii) Respondent has no rights or
legitimate interests in respect of the Disputed Domain Name; and (iii) the
Disputed Domain Name has been registered and is being used in bad faith.
Policy, paragraph 4(a).

 A. Identical or Confusingly Similar

Where, as here, a complainant fails to provide evidence of an

appropriate trademark registration, it must successfully assert common law or
unregistered trademark rights. To do so, the WIPO Overview of WIPO Panel views
on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”),
paragraph 1.7 says:

“The complainant must show that the name has become a distinctive

identifier associated with the complainant or its goods or services. Relevant
evidence of such “secondary meaning” includes length and amount of sales
 under the trademark, the nature and extent of advertising, consumer
surveys and media recognition…. [A] conclusory allegation of common law or
unregistered rights (even if undisputed) would not normally suffice; specific
assertions of relevant use of the claimed mark supported by evidence as
appropriate would be required…. Some panels have noted that the more
obvious the viability of a complainant's claim to common law or
unregistered trademark rights, the less onus there tends to be on that
complainant to present the panel with extensive supporting evidence.”

Here, Complainants' allegations of trademark rights in the TAYLOR GANG

mark are supported by a declaration and reference to specific recognition.
Accordingly, the Panel accepts that, for purposes of the Policy, Complainants
have acquired rights in the TAYLOR GANG mark.

As to whether the Disputed Domain Name is identical or confusingly similar

to the TAYLOR GANG mark, the relevant comparison to be made here is with the
second-level portion of the domain name only (i.e., “taylorgang”), as it is well-
established that the top-level domain name “.net” may be disregarded for this
purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix
in the domain name (e.g., ‘.com’) would usually be disregarded under the
confusing similarity test (as it is a technical requirement of registration), except
in certain cases where the applicable top-level suffix may itself form part of the
relevant trademark.”).

Here, because the Disputed Domain Name contains the TAYLOR GANG mark
— and only the TAYLOR GANG mark — in its entirety, “it is self-evident that the
disputed domain name is identical or confusingly similar to the
Complainant's… trademark.” SurveyMonkey Inc. v. Guanyong sun, WIPO Case No.
DCO2014-0012. See also, e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO
Case No. D2005-1249; Advanced Micro Devices, Inc. v. Piere Macena, WIPO Case
No. D2005-0652; and RapidShare AG, Christian Schmid v. Private Registrations
Aktien Gesellschaft Domain Admin, WIPO Case No. D2010-0591.

Accordingly, the Panel finds that Complainants have proven the first element
of the Policy.

 B. Rights or Legitimate Interests

Complainants have argued that, inter alia, “Respondent has never been an

authorized representative or agent of Complainant”; “Respondent engages in an
obvious attempt to trade upon the goodwill associated with
Complainants and the TAYLOR GANG mark”; and “Respondent uses the Disputed
Domain Name to mislead Internet users searching for Taylor Gang
news and clothing to its unauthorized, commercial website for the Respondent's
financial benefit.”

Under the Policy, “a complainant is required to make out a prima facie case

that the respondent lacks rights or legitimate interests. Once such prima
facie case is made, the burden of production shifts to the respondent to come
forward with appropriate allegations or evidence demonstrating rights or
legitimate interests in the domain name. If the respondent fails to come forward
with such appropriate allegations or evidence, a complainant is generally
deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0,
paragraph 2.1.

Accordingly, as a result of Complainants' allegations and without any

evidence from Respondent to the contrary, and in light of the discussion that
follows, the Panel is satisfied that Complainants have proven the second
element of the Policy.

 C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of

the Policy may be determined by evaluating four (non-exhaustive) factors set
forth in the Policy: (i) circumstances indicating that the registrant has registered
or the registrant has acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or
to a competitor of that complainant, for valuable consideration in excess of the
registrant's documented out-of-pocket costs directly related to the domain
name; or (ii) the registrant has registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the mark
in a corresponding domain name, provided that the registrant has engaged
in a pattern of such conduct; or (iii) the registrant has registered the domain
name primarily for the purpose of disrupting the business of a competitor; or (iv)
by using the domain name, the registrant has intentionally attempted to attract,
for commercial gain, Internet users to the registrant's website or other online
location, by creating a likelihood of confusion with the complainant's mark as to
the source, sponsorship, affiliation, or endorsement of the registrant's website
or location or of a product or service on the registrant's website or location.
Policy, paragraph 4(b).

Here, it is apparent by viewing the website associated with the Disputed

Domain Name that Internet users are likely to be confused because the website
appears to be affiliated with or endorsed by Complainants. The website is much
more than a “fan site,” as Respondent apparently contends, given its commercial
offerings. In any event a site considered by the registrant to be a fan site is
nevertheless registered and used in bad faith where it is likely to cause
confusion for commercial gain, where it displays images associated with the
complainant and where it has no disclaimer as to source or sponsorship.
See Glasgow 2014 Limited v. Vipin Kumar, Yajas Web Solutions, WIPO Case No.
D2013-1093.

Further, by apparently offering illegal downloads of Complainants' music,

Respondent also has acted in bad faith. As the panel wrote in RapidShare AG,
Christian Schmid v. ivano yura/PrivacyProtect.org, WIPO Case No. D2010-0569:
“The use of a complainant's mark to generate increased Internet traffic
to a website (with which that complainant has no connection) which is used to
facilitate unlawful activity is, in the Panel's view, sufficient to constitute bad faith
registration and use, even if the circumstances might not fall exactly within any
of the examples of bad faith registration and use which are provided at
paragraph 4(b) of the Policy.”

Accordingly, the Panel finds that Complainants have proven the third element
of the Policy.

 7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the

Policy and 15 of the Rules, the Panel orders that the disputed domain name
<taylorgang.net> be transferred to Complainant Wiz Khalifa Trademark, LLC (the
owner of the TAYLOR GANG mark).

 The use of “p/k/a” as used in the Complaint apparently is shorthand for the
phrase “professionally known as”. As indicated in the title of this decision, the
Panel, in its discretion, considers both Moniker Privacy Services and the
underlying registrant confirmed by the Registrar, Kyle Lynch, as Respondents
in this proceeding. “Respondent” will be used throughout the decision to
refer to either or both, as the case may be.

3. Arte Indiana (Partnership Firm) v. P. Mittulaul Lalah and

Sons, 1999 SCC OnLine Bom 337
The Judgment of the Court was delivered by
  Y.K. SABHARWAL, C.J.:— Admit. Counsel for respondent No. 1 waives service. In
this appeal, learned counsel for the appellant gives up respondent No.
2* and states that in fact, the suit itself will be withdrawn against respondent No.
2 and his client would take such appropriate separate proceedings against the
said respondent as may be permissible in law. Considering the nature of the
controversy, learned counsel for the parties have made their
submissions and submit that the Appeal be finally disposed of at this stage itself.

 2. The suit, out of which this appeal has arisen, was filed by the appellants
complaining of violation of the copyright under Copyright Act, 1957 as also
infringement of trademark and passing off. The appellant has its office at
Mumbai and it carries on business within the jurisdiction of this Court.
Respondent is carrying on business at Chennai. It is not in dispute that in regard
to violation of copyright which the appellant/plaintiff has alleged in the Plaint,
this Court has the jurisdiction in view of the provisions of section 62(2) of the
Copyright Act which, unlike other enactments, gives right to a plaintiff to institute
the suit within the local limits of whose jurisdiction, at the time of the institution
of the suit, the plaintiff carries on business or personally works for gain.

 3. In view of claims in the Plaint about the infringement of

trademark and passing off, the appellant filed an application under clause 14 of
the Letters Patent seeking leave of the Court to combine the cause of action
relating to copyright and the cause of action relating to
infringement and passing off. The leave has been declined by learned Single
Judge. In terms of the impugned order, learned single Judge has held that no
part of the cause of action has arisen within the territorial jurisdiction of this
Court. The learned single Judge has opined that clause 14 provides that leave
can be granted by this Court for joinder of causes of action provided one of such
causes of action has arisen within the jurisdiction of this Court. Clause 14 reads
as under:

“14. And we do further ordain that where Plaintiff has several causes of

action against a defendant, such causes of action not being for land or other
immovable property, and the said High Court shall have original jurisdiction
in respect of one of such causes of action, it shall be lawful for the said High
Court to call on the defendant to show cause why the several causes of
action should not be joined together in one suit, and to make such order for
trial of the same as to the said High Court shall seem fit.”

A bare reading of the aforesaid clause shows that the accrual of the cause of
action within the territorial jurisdiction of this Court is not contemplated to
permit joinder of causes of action. Clause 14 only contemplate that this Court
shall have original jurisdiction in respect of one of such causes of action to
permit two separate causes of action being combined together in one suit. The
learned single Judge has, however, come to the conclusion that if right to sue
has been conferred by an Act of Parliament and it is because of conferring of
such right that a suit can be maintained, then it cannot be said that the right to
sue is pursuant to ordinary original jurisdiction of this Court as conferred by the
Letters Patent. It has been also observed that the expression “original
jurisdiction” has been used to distinguish it from the extra ordinary jurisdiction
conferred by clause 13 of the Letters Patent.

 The aforesaid are the brief facts under which the present Appeal has been
preferred by the appellant. We may now notice some judgments relevant for
decision of the point in issue. A Division Bench of this Court in Tukojirao
Holkar v. Sowkabai, reported in AIR 1929 Bom. 100, while considering clauses
12 and 14 of the Letters Patent and the provision of Order 2, Rules 3 and 4, Civil
Procedure Code, has held that what is relevant is that one cause of action is
within the jurisdiction of this Court. In the present case, cause of action in
relation to infringement of copyright is admittedly within the jurisdiction of this
Court.

 4. In Burroughs Welcome (India) Ltd. v. G.K. Sharma and Kino Scientific Research

Centre reported in 1990 I PLR 60, it has been held that as Bombay High Court has
jurisdiction to entertain the suit in respect of cause of action relating to
infringement of copyright, cause of action in respect of infringement of
trademark and passing off should be permitted to be joined in the
suit and under these circumstances, leave under clause 14 of the Letters Patent
was granted.

 5. In Gold Seal Engineering Products Pvt. Ltd. v. Hindustan Manufacturers (an

unreported judgment dated 10th June, 1994), while reversing the decision of a
single Judge of this Court and proceeding on the assumption that this Court has
no jurisdiction to entertain the suit in respect of infringement of
trademark and passing off, the Division Bench held that once it is found that the
plaintiffs are entitled to maintain the suit in this Court in respect of grievance of
breach of copyright, there was no reason to refuse the leave so as to drive the
parties to file litigation in several Courts. It was held that it is necessary to grant
leave with a view to avoid multiplicity of litigation. The Bench noticed that it is
desirable that a practical view is taken and parties are not driven from Court to
Court on technicalities. It was held that clause 14 of the Letters Patent was
enacted to subserve the purpose of avoidance of multiplicity of
proceedings and the trial Court was entirely in error in refusing to grant leave on
assumption that the conduct of the appellant was not bona fide. The leave was
accordingly granted.

 6. In our view, when clause 14 does not require that one of the cause of action
should have risen within the jurisdiction of this Court, it would not be
permissible to read such a requirement in that clause. In this regard, reference
may be made to the decision of the Supreme Court in State of Kerala v. Mathai
Verghese reported in (1986) 4 SCC 746 : AIR 1987 SC 33. The Apex Court

was considering the interpretation placed on section 489-A of the Penal Code,
1860 by the High Court. The High Court had interpreted the words “any currency
note” in the said section as “Indian currency note”. While reversing the decision
of the High Court, the Supreme Court held that when the Legislature does not
speak of currency notes of India, the Court interpreting the relevant provision of
law cannot substitute the expression “Indian currency note” in place of the
expression “currency note” as has been done by the High Court.

 7. Faced with the aforesaid position, as this Court has territorial jurisdiction to
entertain the suit in respect of violation of copyright, learned counsel for the
respondent contends that this Court will have original jurisdiction only in respect
of cases contemplated by clause 12 and other cases would not be within the
original jurisdiction of the Court. The contention cannot be accepted on the face
of the clear and unambiguous language of clause 14.

 8. We are unable to accept the contention that the suits pertaining to
infringement of copyright would not be within the original jurisdiction of this
Court. The expression ‘ordinary original jurisdiction’ came up for consideration
before the Madras High Court in Munia Servai v. Hanuman Bank reported in AIR
1958 Mad. 418. In that case, the Bank was ordered to be wound up in 1947. The
appellant was indebted to the Bank. On the application of the liquidator, the
Court determined the liability of the appellant at Rs. 4,80,000/-, which was later
reduced to Rs. 1,74,000/-. The amount was not paid. The Bank moved for sale of
the charged properties. The Order was passed in favour of the Bank. On the
application for execution having been taken out in August 1957 to execute the
Decree passed in 1953, the judgment debtor objected to the execution on the
ground that it is time-barred under Article 183 of the Old Limitation Act. Article
183 of the Old Limitation Act, inter alia, provided that the period of limitation for
the application to enforce the judgment, decree or order of any Court
established by Royal Charter in exercise of its ordinary original civil jurisdiction
was 12 years. It was contended on behalf of the debtor that the decree passed
by the Court in 1953 was an order passed by the Court under the Banking
Companies Act of 1949 and it was not in exercise of ordinary original civil
jurisdiction. In the light of this controversy, the Division Bench of the Madras
High Court discussed the meaning of the expression “O.O.C.J.” and the test
formulated by the Division Bench of the Madras High Court is as follows:

“The expression ‘ordinary jurisdiction’ embraces all such acts performed by

the Court in ordinary course of law and without any special step being taken
to assume the jurisdiction as opposed to extra ordinary jurisdiction which the
Court may assume at its discretion upon special occasion and by special
Orders.”

Thus the Madras High Court held that the jurisdiction conferred in the Court
by Banking Companies Act is a part of ordinary original civil jurisdiction within
the meaning of Article 183 of the Old Limitation Act.

 9. In the case of Banaras Bank Limited v. Jyoti Gupta reported in AIR 1951

Allahabad 362, the Allahabad High Court,

construing the provisions of Clauses 11 and 12 of the Letters Patent held that
the words “ordinary jurisdiction” embraces all acts of the Court which are
exercised in the ordinary course of law and that it was opposed to extra ordinary
jurisdiction which the Court may assume at it's discretion upon happening of
special occasions.

 10. In the aforesaid two decisions, therefore, it was held that the jurisdiction
under the Companies Act or under the Banking Companies Act falls within the
ambit of ordinary original civil jurisdiction.

 11. Applying the aforesaid test, we have no hesitation in coming to the

conclusion that the suit fell within the purview of ordinary jurisdiction and not
extraordinary jurisdiction as concluded by the learned Single Judge.

 12. Next, the question is whether on facts, the appellant is entitled to grant of

leave as sought for or not. Learned counsel for the parties rightly adopted a
just and reasonable approach and submitted that to avoid unnecessary
delay and multiplicity of proceedings, this Court may examine the
facts and decide whether case for grant of leave has been made out or not.
Learned counsel for the respondent, relying upon a single bench decision of the
Madras High Court in the case of Brooke Bond India Limited v. Balaji Tea (India)
Pvt. Ltd., 1990 I PLR 266 contended that considering the facts and circumstances
of the case, the leave deserved to be declined. It was pointed out by the learned
counsel that the appellant had given legal notice to the respondent as far back
as on 10th January, 1997 which was replied on 1st March, 1997 and also that a
complaint was lodged by the appellant for the alleged violation of its right with
the Spice Board and the Spice Board had asked the respondent by its letter
dated 28th January, 1997 requiring the respondent to furnish its say on the
allegations made by the appellant and on the same being done, the matter was
closed by the Spice Board. That is also said to have happened at Chennai. It is
also pointed out that recently in the first week of January 1999, the appellant
had filed against the respondent, a complaint under section 483 read with
section 34 Penal Code, 1860 and sections 78 and 79 of the
Trade and Merchandise Marks Act, 1958 and sections 63 and 64 of the Copyright
Act, 1957 with the Police department at Chennai and as such too, the appellant
was not entitled to grant of leave.

13. We would not like to comment in detail on the facts pointed out by the
defendant lest our observation may adversely affect the parties while
considering the prayers for grant of interim relief or while deciding the suit.
According to the appellant, since the office of Spice Board was situated at
Chennai, the complaint could only be made there and also that the Police
complaint in law was required to be made at Chennai. We would only observe
that facts sought to be pointed out by the respondent, on the
facts and circumstances of the present case, are not quite relevant for the
purpose of considering the leave application under clause 14. It is evident that
both the parties are very affluent. The respondent claims to have exported
goods worth Rs. 2 crores in the containers complained of in the suit. It is said to
be so doing since 1996. As already observed, one of the object for enacting

clause 14 was to avoid multiplicity of proceedings, though it may be a different

matter if, on the facts and circumstances of a particular case, the Court may
decline leave considering undue hardship to the respondent or other such
similar ground. On facts, no such ground has been made out by the respondent
in the present case.

14. In view of the aforesaid conclusion, setting aside the impugned order we
allow the Appeal and grant to the appellant, the leave sought for under clause
14 of the Letters Patent. The parties are left to bear their own costs.
4. Deccan Bottling and Distilling Industries Pvt. Ltd. v. Brihan
Maharashtra Sugar Syndicate Ltd., 2008 SCC OnLine Bom 915
 1.This Appeal from Order was extensively heard at the admission stage. With
the consent of the learned counsel appearing for the parties, the appeal is being
disposed of finally.

 The appellant - defendant challenges the order dated 11-5-2007 passed by the
District Judge-3 Aurangabad under Order 39 Rules 1 and 2 of the Code of Civil
Procedure below Exhibit 5 in Regular Civil Suit No. 1 of 2007, which reads thus:

“1. The application at Exhibit 5 is allowed.

2. The defendant itself through its proprietors, partners, servants, agents or

through any other persons is restrained by way of temporary injunction
from infringing the plaintiffs right in its artistic label at Annexure B by re-
producing the same in material form or by printing, publishing or using
the impugned trade mark label at Annexure C or by any such work, which
is an imitation of plaintiffs artistic label at Annexure B.

3. The defendant, its proprietors, partners and servants are temporary

restrained by order of injunction from manufacturing, selling or from
offering for sale by advertising or otherwise dealing in country liquor
bearing the trade mark at Annexure C or by using any other trade mark
label deceptively similar to the plaintiffs trade mark at Annexure B so as to
pass off or enable others to pass off the defendant's country liquor
as and for the country liquor of the plaintiff.

4. The defendant to bear its own costs and to pay the costs of the plaintiff.”

 2. The appellant contends that it is a private limited company registered under

the Companies Act, 1956 and carries out its business of ‘Blending and Bottling”
of “Country Liquor” having its factory at Plot No. E-45, MIDC Area, Chikalthana,
Aurangabad. The appellant applied for registration of label of its “Country
Liquor” branded as “Paru Santra” before the Commissioner of State Excise,
Mumbai. Earlier, the appellant in the month of January, 2006 had submitted its
application for registration of its liquor brand as “Gangu Santra” which was
objected by the present respondent, original plaintiff, in Civil Suit No. 1 of 2007.
The objection of the present respondent for the name of “Gangu Santra” was
upheld and permission for manufacturing of country liquor in the brand name
“Gangu Santra” was refused by the Commissioner of Excise vide his letter dated
28-2-2006. The appellant thereafter would submit another application for
registration of its brand and label as “Paru Santra”. The Commissioner of Excise
Mumbai vide his order dated 9-3-2006 approved the above brand and label. It is
contended that the respondent further raised objection to the brand and label
as “Paru Santra” but the objection raised by the respondent came to be rejected
by the Commissioner of Excise against which, according to the
appellant, the respondent did not prefer any proceedings by challenging the
order of the State Excise.

 3. It is the contention of the appellant that due to quality of the product “Paru
Santra” and strong marketing strategy sale of the above brand/production of the
said liquor was increasing day by day. Considering the popularity of the said
brand of the appellant company it is alleged that the respondent being in the
same business and rival competitor, who could not digest the market growth of
the above product. It is alleged that the respondent aims to stop and obstruct
the appellant from its manufacturing activity of the country liquor of the above
brand and with an obstructionist attitude and to harass Regular Civil Suit No.
1/2007 was filed before the District Court along with application for temporary
injunction under Order 39, Rules 1 and 2 of the Code of Civil Procedure for
violation the Copyrights Act, 1957 and the Trade Marks Act, 1999. The
respondent manufactures country liquor under the brand and label as “Sakhu
Santra”.

 4. The learned counsel appearing for the appellant Shri. S.S. Deo submitted that
there is no deceptive similarity between the brand name and labels of the
appellant and the respondent's product. Phonetically there is dissimilarity. In the
submission of the counsel, the label of the respondent does not show any
glimpses of any artistic evidence and there fore there is no question of copying
the label of the respondent. In view of the facts and merits of the case it was
submitted by the learned counsel that the respondent failed to establish strong
prima facie case and balance of convenience in his favour.

 5. In support, the learned counsel places reliance on the following reported
judgments.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73. In

para 18 of the judgment the Apex Court observed:

“18. … As far as this Court is concerned, the decisions in the last four
decades have clearly laid down that what has to be seen in the case of a
passing-off action is the similarity between the competing marks and to
determine whether there is likelihood of deception or causing
confusion….”
 In R.G. Anand v. Delux Films, (1978) 4 SCC 118 : AIR 1978 SC 1613 the Apex Court
observed that there can be no copyright in an idea, subject-matter, themes,
plots or historical or legendary facts and violation of the copyright in such cases
is confined to the form, manner and arrangement and expression of the idea by
the author of the copyrighted work.

 Dabur India Ltd. v. K.R. Industries, 2008 AIR SCW 5265. In para 15 the Supreme

Court observed that an action for passing off is common law right but the same
does not determine the jurisdiction of the Court. The Supreme Court considered
a question whether the plaintiff in the said case can combine two causes of
action, one under the Copyright Act and the second under the Trade Marks Act,
1958. In para 29 the Apex Court observed:

“29. What then would be meant by a composite suit? A composite suit

would not entitle a Court to entertain a suit in respect whereof it has no
jurisdiction, territorial or otherwise. Order II, Rule 3 of the Code specifically
states so and, thus, there is no reason as to why the same
should be ignored. A composite suit within the provisions of the 1957 Act as
considered in Dhoda House (supra), therefore, would mean the suit which is
founded on infringement of a copyright and wherein the incidental power of
the Court is required to be invoked. A plaintiff may seek a remedy which can
otherwise be granted by the Court. It was that aspect of the matter which had
not been considered in Dhoda House (supra) but it never meant that two suits
having different causes of actions can be clubbed together as a composite
suit.”  Martin Burn Ltd. v. R.N. Banerjee, AIR 1958 SC 79: In para 27 the
Supreme Court observed:

“(27) … A prima facie case does not mean a case proved to the hilt but a
case which can be said to be established if the evidence which is led in
support of the same were believed. While determining whether a prima facie
case had been made out the relevant consideration is whether on the
evidence led it was possible to arrive at the conclusion in question and not
whether that was the only conclusion which could be arrived at on that
evidence. It may be that the Tribunal considering this question may itself
have arrived at a different conclusion. It has, however, not to substitute its
own judgment for the judgment in question. It has only got to consider
whether the view taken is a possible view on the evidence on the record.
[See Buckingham and Carnatic Co., Ltd. v. The Workers of the Company, (1952)
Lab. AC 490 (F)].”
 Heinz Italia v. Dabur India Ltd, 2007 (6) Mh.L.J. 7. In para 17 of the judgment the
Supreme Court observed:

“17. In Cadila Health Care case (supra) it has also been held that in the case
of a passing-off action the similarities rather than the dissimilarities have to
be taken note of by the Court and the principle of phonetic “similarity” cannot
be ignored and the test is as to whether a particular mark has obtained
acceptability in the market so as to confuse a buyer as to the nature of
product he was purchasing. We observe that both Glucon-D and Glucose-D
are items containing glucose and to us it appears that there is remarkable
phonetic similarity in these two words.”

 Brihan Maharashtra Sugar Syndicate, Nashik v. Meher Distilleries Pvt. Ltd., 2006 (1)

Mh.L.J. 344. In the facts of the said case this Court in para 13 observed:

“13. Secondly, even if the plaintiffs have a copyright about L-1, there is
absolutely no artistic work in preparing L-1. Regarding any other piece of art,
there could not be only many different opinions as to whether a particular
work is an artistic work or not. But regarding L-1 it cannot be said that there
is anything which can be said is an artistic work. Choosing orange as
background colour in the label or putting red border cannot be called as an
artistic work, no skill or specialization is required. Same is the case with
printing name and other material on the label. Same is the case with the label
of the defendant No. 2. There is absolutely nothing in the said label L-1 which
can be said to be an artistic work.”

 6. Learned counsel Shri. H.W. Kane appearing for the respondent submitted
that the appellant had infringed the copyright of the respondent, and in
the facts of the case, the respondent was entitled to claim relief on the basis of
infringement of copyright and for passing-off action. By demonstrating with the
help of both the labels of the appellant and the respondent the counsel
submitted that the brand name and label used by the appellant as “Paru Santra”
is deceptively similar to the brand name and label used by the respondent. The
respondent had proved prima facie case and balance of convenience both in
favour of the respondent and considering the facts and legal position the trial
Court had granted interim injunction. In the submission of the counsel the
appellant has not made out any case for causing interference in the impugned
order passed by trial Court.

 7. I may prefer to mention some of the cases cited by the learned counsel for
the respondent for the purpose of deciding this Appeal from Order.
 Laxmikant V. Patel v. Chetanbhat Shah, 2001 AIR SCW 4989. The Apex Court in para
13 observed:

“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 or 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. 306) states that the plaintiff does not have to
prove actual damage in order to succeed in an action for passing off.
Likelihood of damage is sufficient. The same learned author states that the
defendant's state of mind is wholly irrelevant to the existence of the cause of
action for passing off (ibid, pars 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. …”

 Hiralal Parbhudas v. Ganesh Trading Co., AIR 1984 Bombay 218. The Division

Bench of this Court (Coram: Lentin and Sawant, JJ.) observed in para 5:

“5. What emerges from these authorities is (a) what is the main idea or
salient features, (b) marks are remembered by general impressions or by
some significant detail rather than by a photographic recollection of the
whole, (c) overall similarity is the touchstone, (d) marks must be looked at
from the view and first impression of a person of average
intelligence and imperfect recollection, (e) overall structure, phonetic
similarity and similarity of idea are important and both visual and phonetic
tests must be applied, (f) the purchaser must not be put in a state of
wonderment, (g) marks must be compared as a whole, microscopic
examination being impermissible, (h) the broad and salient features must be
considered for which the marks must not be placed side by side to find out
differences in design and (i) overall similarity is sufficient. In addition,
indisputably must also be taken into consideration the nature of the
commodity, the class of purchasers, the mode of purchase and other
surrounding circumstances.”
The Division Bench in para 4 of the judgment also quoted from Kerly's “Law of
Trade Marks and Trade Names, (10th Edition, pages 456-457):

“…Moreover, variations in details might well be supposed by customers-to

have been made by the owners of the trade mark they are already
acquainted with for reasons of their own.”

 Tata Tea Limited v. Suruchi Tea Company, 2003 (2) Mh.L.J. 881; 2003 Vol. 105
(3) Bom. L.R. 241 wherein it is observed in para 16:

“16. Guided as I am by the principles of law which have been laid down in
several judgments of the Supreme Court and of this Court, the effort of the
Court has to be not to compare the two marks with a view to notice the
differences between them, but to consider whether the overall impact that is
conveyed by the mark of the respondent of which registration is sought is
one of visual similarity with the mark of the appellant. The two marks can
obviously not be identical. The test that is required to be considered under
section 11(a) is not whether the marks are identical, but whether they are
such that the use of the mark which was sought to be registered would be
likely to deceive or cause confusion…….”

 In para 21 of the judgment in Pidilite Industries v. S.M. Associates, 2004 (28) PTC

193 (Bom), a learned Single Judge of the Bombay High Court referred to para 7
of the judgment delivered by Division Bench of the Madras High Court in the
case of C. Cunniah and Co. v. Balraj and Co., AIR 1961 Madras 111. Para 21 reads
thus:

“21. In C. Cunniah and Co. v. Balraj and Co., AIR 1961 Madras 111 the

Division Bench held:

7. “The sole question for our consideration, therefore, is whether the

respondents picture is a copy or a colourable imitation of the appellants
picture. In Hanfsataengl v. W.H. Smith and Sons, 1905-1 Ch. 519, Kekewich J.
defined the copy thus:

“A copy is that which comes so near to the original as to suggest

that original to the mind of every person seeing it. Applying this test,
the degree of resemblance between the two pictures, which is to be
judged by the eye, must be such that the person looking at the
respondents picture must get the suggestion that it is the appellants
picture….”

 The Daily Calendar Supplying Bureau v. The United Concern, AIR 1967 Madras 381.
Paragraph 11 reads thus :
 “(11) After the deletion of the words colourable imitation in the Act of
1957, to find out the meaning of infringement one has, therefore, necessarily
to interpret the words ‘reproduce the work in any material form’. Section
14(2) of the Act includes also the reproduction of a substantial part of the
work, for the purposes of infringement of copyright, the word ‘reproduce’ is a
word of ordinary popular usage. However, the Shorter Oxford English
Dictionary refers to the progressive evolution of its meaning.

‘The action or process of bringing again before the mind in the same form.
The action or process of repeating in a copy. A copy or counterpart. A copy of
a picture or other work of art by means of engraving or some other
process and finally a representation in some form or by some means of the
essential features of a thing’.

 It, there fore, appears quite likely that when Act XIV of 1957, repealed the earlier
enactments and consolidated the law of copyright in India, it adopted the
procedure followed in the English Act XIX of 1956 of using the word
‘reproduction’ both of the work itself or a substantial part of it, as a sufficient
indication of the scope of infringement, and dropped the term ‘colourable
imitation, as superfluous or redundant.”

Penguin Books Ltd. England v. India Book Distributors, AIR 1985 Delhi 29. A

Division Bench of the Delhi High Court in para 44 of the judgment observed:

“44. As most infringements of copyrights consist of a continuous

process of successive infringing acts such as importation of ‘infringing
copies’ as in this case the most important remedy and in many cases the
only effective one is the injunction. This is always in the discretion of the
Court and the Court has to weigh the possible damage to the plaintiff if
the injunction is not granted against the possible damage to the
defendant if it is granted. Thus once the infringement and its continuance
is proved the plaintiff will usually be entitled to an injunction, but the
injunction would not be granted if the damage caused to the defendant
by granting the injunction would be out of all proportion to the
seriousness of the infringement or to the possible damage to the
plaintiff.”

 8. Section 2, Clause (c) (i) of the Copyright Act 1957 defines “artistic work” which
reads:
 “2(c)(i) a painting, a sculpture, a drawing (including a diagram, map, chart
or plan), an engraving or a photograph, whether or not any such work
possesses artistic quality.”

The provisions of section 14 of the Act refers to meaning of copyright.

Circumstances resulting in infringement of copyright are mentioned in section
51 of the Act.

 9. Section 2 of the Trade Marks Act, 1999 refers to the

definitions and interpretations of words appearing in the Act. Clause (zb) of
section 2 defines “trade mark”. The effect of registration of trademark is taken
into consideration under Chapter IV. Section 27(2) mentions that nothing in this
Act shall be deemed to affect rights of action against any person for passing off
goods or services as the goods of another person or as services provided by
another person, or the remedies in respect thereof.

 10. The principle emerging broadly from the number of judgments cited supra
is that marks must be compared as a whole to ascertain as to whether in totality
the mark objected to is likely to cause deception or confusion in the minds of
persons accustomed to the existing trademark. The Court would consider
impression of a person of an average intelligence and imperfect recollection. A
very close microscopic examination of two marks for ascertaining alleged
deceptive similarity may not be adopted. There need not be actual
deception or confusion and that only likelihood is sufficient. Keeping two trade
marks side by side for comparison and for close examination would also not be
a sound test. The Court will have to consider probable effect on minds of
ordinary people. It is not necessary that deception shall be intended to cause
such confusion.

 11. In a given case two marks may not be phonetically similar but visually
similar. In some cases the material would be similar visually,
phonetically and artistically. It would ultimately depend on the overall
appearance of the mark coupled with the most necessary essential feature of
the infringement action and that is its effect, impact on the mind of ordinary
persons of average intelligence. There fore, it would be for the Court in the given
fact situation of a case to analyse and appreciate the alleged deceptive similarity
from the angle of the ultimate user, customer and persons of average
intelligence having imperfect recollection.

 12. Considering the principles derived from the judgments cited above and in

view of the overall appearance of the two marks/labels I proceed to appreciate
the case of the respective parties.
 13. I have considered the overall design, the colour scheme, size of the label.
The appellant's label has a trade/brand name “Paro Santra” having two oranges
as device. The half lower portion exhibits orange colour. The label has a black
border. On the top it is written in red colour as “Deshi Daru”. In second line
below the same in black colour it is written - “Paro Santra”. Two leaves are
shown to be on the top of the each of the orange fruit. On the middle portion of
two orange fruits it is written in green ink as “Premium”. On the
respondent/plaintiffs trade mark on the top of the label it is written “Deshi
Daru” and below it is written in black ink “Sakhu Santra” having one orange fruit
device with two green colour leaves over the fruit and below Sakhu Santra, in the
green words it is written “Tango” and below “Tango” it is written “Premium”. The
upper half portion of the label is in orange colour and the lower portion is in
yellow colour. The label has black border. In the label of the appellant -
defendant the word “Premium” is written on both the orange fruits in green
colour. The manufacturer's name and address is written in the lower bottom
portion of the labels with place and name of district.

 14. The trial Court considered the appearance of these two labels, their sizes,
the price of the commodity and held that the prima facie case was made out by
the plaintiff in his favour having balance of convenience for grant of relief of
temporary injunction.

 15. Prima facie, considering the principles enunciated for appreciating the case
at the stage of grant of temporary injunction I find that the view adopted by the
trial Court does not call for interference of this Court in this Appeal from Order.

 16. I find that to some extent the contentions raised by the appellant required
to be looked into as regards the issue as to whether there is phonetic similarity
between the marks of the appellant and the registered trade mark of the
respondent/plaintiff. “Sakhu Santra” and “Paro Santra” would sound partly
having no phonetic similarity, if we exclude the word “Santra”. These two words
may not sound to be phonetically similar. Another submission of the learned
counsel Shri. Deo is by pointing out the difference of the marks one having two
orange leaves and respondent's having one orange fruit. In the submission of
the counsel it makes a lot of difference in its visual appearance when one sees
one fruit and two fruits on the label. The difference is such that it could easily be
made out by any person of average intelligence. In the submission of the
counsel the country liquor is consumed by a particular strata of society who are
common people. The word “Tango” occurring in the mark of the
respondent/plaintiff would make all the difference, according to the counsel.
 17. Much was submitted regarding the label having one orange device and two
oranges device. It would be useful to refer to the case reported in National
Chemicals and Colour Co. v. Reckitt and Colman of India Limited, AIR 1991 Bom. 76.
A Division Bench of this Court in para 17 observed:

“17. In the present case, in our view, the mark of a bird sitting on a twig is
very similar to the mark which is proposed to be registered, which is of two
birds sitting on a twig one of the birds being partially hidden by the other. We
agree with the learned single Judge that the mark proposed to be registered
is likely to cause confusion and is also deceptively similar to the registered
trade mark of the 1st respondent in respect of the same description of
goods.”

 18. Prima facie, I find that the colour combination, the ink used to write words
“Deshi Darn”, “Sakhu Santra”, “Paro Santra”, the word “Premium” and the rest of
the contentions the border of the label give an impression of mark/label having
similarity. The plaintiff has made out a prima facie case that the label used by
the defendant is likely to create confusion in the minds of ordinary customers or
people.

 19. I am convinced that the objection on the ground of passing off raised by the
plaintiff is justified as prima facie the plaintiff has made out a case. I need not
enter into the details of the sale of the products made by the plaintiff and the
defendant or any other details in this connection as placed on record by the
parties.

 20. Learned counsel Shri. Deo submitted that the plaintiff is supposed to

establish his strong prima facie case. After considering the judgments cited
supra and the principle behind grant of temporary injunction I find that in the
facts, of the case it was sufficient if the plaintiff establishes a prima facie case.

 21. The view adopted by the trial Court could not be brushed aside. Prima facie I
find that the view was based on the material placed before the trial
Court and after considering the principles behind grant of temporary injunction,
the trial Court reached appropriate reasonable conclusions.

 22. For the reasons stated above, I find that this Appeal from Order is
meritless and it is accordingly dismissed.

 23. After pronouncement of judgment, the learned counsel Shri. S.S. Deo,

appearing for appellant, prayed for directions to the trial Court to expeditiously
dispose of the suit as, according to counsel, this is the only suit under the
Copyrights Act, 1957 which is pending before the Court.
 24. The learned counsel Shri. Deshmukh, appearing for respondent, has no
objection if such directions are issued by this Court.

 25. The trial Court is directed to expeditiously dispose of the suit finally on its
own merits.

5. Jagdish Gopal Kamath v. Lime and Chilli Hospitality Services

P. Ltd., 2013 SCC OnLine Bom 597
1. The Petitioners (Original plaintiffs) have filed the above petition for grant of
Leave under Clause XIV of the Letters Patent. The Respondents are opposing the
said grant on the ground that this is a fit case for refusal of leave in exercise of
the discretion conferred on the Court by Clause XIV of the Letters Patent. For the
sake of convenience the Petitioners shall hereinafter be referred to as
“plaintiffs” and the Respondents as “defendants”.

 2. The plaintiffs are the registered Proprietor of two trade marks “Cafe
Madras” bearing Nos. 1390976 and 1390977. The Registration Certificates are at
pages 30 and 31 of the Plaint. The legal proceedings certificates are at pages 93-
96 of the Plaint. The above suit seeks two fold reliefs i.e. against : (i)
infringement and (ii) passing off. This Court has jurisdiction to entertain the suit
for infringement by virtue of the provisions of section 134 of the Trade Marks
Act, 1999 (“the Act”). The infringement action before this Court will therefore be
maintainable and continue, regardless of whether leave is granted or not. The
cause of action for passing off has admittedly arisen outside the jurisdiction of
this Court i.e. Nashik and Jalgaon where the defendants have opened
restaurants with the name identical to that of the plaintiffs' restaurant and also
identical to the plaintiffs' registered trade mark “Cafe Madras”. According to the
plaintiffs, they would be entitled to file suits against the defendants for passing
of before the District Courts of Jalgaon and Nasik. However, were such suits to
be filed, (i) the parties thereto, (ii) the rival marks in question; (iii) the general
inquiry by the Court; (iv) the majority of issues (if not almost all) [e.g. honesty of
adoption, likelihood of deception/confusion; identify of the marks, etc.]; (v) the
evidence/evidentiary inquiry, etc. will also be the same. In this background, it is
therefore submitted on behalf of the plaintiffs that the multiple actions be
allowed to be clubbed and/or joined together in one action by granting leave
under Clause XIV of the Letters Patent instead of compelling the plaintiffs to
institute three separate suits.

 3. Dr. Veerendra Tulzapurkar, the Learned Senior Advocate appearing for the
defendants, has opposed the application seeking grant of leave under Clause XIV
of the Letters Patent. He has taken the Court through Clause XIV of the Letters
Patent which reads thus:

“And we do further ordain that where plaintiff has several causes of action against a
defendant, such causes of action not being for land or other immovable
property, and the said High Court shall have original jurisdiction in respect of one of
such causes of action, it shall be lawful for the said High Court to call on the
defendant to show cause why the several causes of action should not be joined
together in one suit, and to make such order for trial of the same as to the said High
Court shall seem fit.”

Dr. Tulzapurkar submitted that the provisions of Clause XIV of the Letters Patent
require the Court in each case to consider the facts and exercise discretion
before granting the leave. The provisions are not similar to the provisions of
section 10 of the Code of Civil Procedure, 1908 under which the Court is bound
to stay the subsequent suit if the issues in the subject suit are substantially the
same as those in the earlier suits instituted in a Court having jurisdiction. If the
conditions are satisfied, the grant of stay under section 10 of the Civil Procedure
Code is mandatory. Even if the earlier suit is instituted mala fide, the Court has
no option but to grant stay of the subsequent suit, if the conditions in section 10
Civil Procedure Code are satisfied. However, under Clause XIV of the Letters
Patent, even if the conditions are satisfied, viz. if the High Court has jurisdiction
to entertain the suit for one cause of action, it is not obliged to grant leave to the
plaintiff to combine other causes of action in respect of which the High Court
has no jurisdiction. The Court is required to examine the facts of a particular
case and thereafter exercise its discretion. Dr. Tulzapurkar further submitted on
behalf of the defendants that before exercising discretion in favour of the
plaintiffs, the Court is required to consider whether prima facie the plaintiffs
have some case in respect of the cause of action in respect of which the Court
has jurisdiction so as to order joining of other causes of action. This position is
borne out by the legislative provisions and judicial interpretation of the
provisions of Clause XIV of the Letters Patent. The wordings of Clause XIV
provide that the High Court after calling upon the defendants to show cause
against joinder of causes of action, make an order for the same. The order under
Clause XIV is not passed ex parte unlike the order under Clause XII of the Letters
Patent. The defendant is called upon to show cause against the joinder of causes
of action before granting leave under Clause XIV of the Letters Patent.

 4. Dr. Tulzapurkar submitted that in considering the application for leave

under Clause XIV, apart from the balance of convenience, respective hardships
of the parties are required to be considered, keeping in view the object of Clause
XIV i.e. avoidance of multiplicity of proceedings. When the Court is required to
consider the application with the aforesaid object, it is incumbent on the Court
to consider ex facie at least that the plaintiff has some case in respect of the
cause of action for which the Court has jurisdiction. It is submitted that the Court
is not required to go into great detail to ascertain whether the plaintiff will
ultimately succeed in the suit or not, in respect of the cause of action for which
the Court has jurisdiction, but if it can be shown that ex facie the plaintiff cannot
sustain the cause of action for which the Court has jurisdiction, then the exercise
of discretion should be against the plaintiff. In support of his contention that in
passing of, the order granting leave under Clause XIV of the Letters Patent is
discretionary and not a matter of routine and that the object is to avoid
multiplicity of proceedings, Dr. Tulzapurkar has relied on the decisions in
(i) Burroughs Wellcome v. G.K. Sharma, 1989 I PLR 60, (ii) Brooke Bond India
Ltd. v. Balajee Tea (I) P. Ltd., 1989 I PLR 266, (iii) Arte Indiana v. Mittulaul Lalah, 1999
(2) Mh.L.J. 957 : (1999) 4 Bom.C.R. 239 paragraphs 9 and 10, (iv) Asian
Paints v. Jaikrishna Paints, 2002 (4) Mh.LJ. 536 : (2002) 6 Bom.C.R. 1, (v) Marico
Industries v. Sarfaraj Trading, 2002 (3) Mh.LJ. 588 : (2002) 104 Bom.L.R.
254 and (vi) European Limited v. Economist Newspaper Limited, 1998 FSR 283.

 5. Dr. Tulzapurkar next submitted that if it can be shown by the defendant

that the registered Proprietor's trademarks has conditions and/or limitations
which do not give him exclusive right, or if the defendant can successfully raise a
defence under section 36 of the Act, or if the defendant is admittedly a
registered proprietor (in which event, no suit for infringement can lie), or if the
defendant can show that his user is prior to the user of the plaintiff or
registration, then it can be said that ex facie the plaintiffs claim is
outside and beyond the provisions of section 28 of the Act. In all such cases
merely because the Court has jurisdiction to entertain the suit for infringement,
the discretion should be exercised against the plaintiff by refusing to grant leave
under Clause XIV of the Letters Patent to combine the cause of action for
passing off for which the Court has no jurisdiction, with the cause of action for
infringement.

 6. Dr. Tulzapurkar has submitted that in the instant case the registration
granted to the plaintiffs (on which the suit for infringement and/or the
invocation of the jurisdiction of this Court is based) is itself subject to a limitation
that no monopoly is conferred upon the use of the word “Madras”. He submitted
that the effect of this limitation on the plaintiffs registration, coupled with the
undisputed fact that the word “Cafe” is used in relation to
restaurant services, and is a descriptive word, would be to allow the plaintiffs to
indulge in an abuse of process of law, by filing a suit for infringement in this
Court and to seek leave to combine the cause of action for passing off, on
specious plea of avoiding multiplicity of proceedings. In this connection, Dr.
Tulzapurkar has relied on the decision of the Court of Appeal
in Pirie and Sons v. Goodall and Sons, 9 RPC 17. Dr. Tulzapurkar has further
submitted that the plaintiffs trade mark consists of words “Cafe Madras”. The
plaintiffs have themselves agreed not to claim any exclusive rights in respect of
the word “Madras”. The other word “Cafe” is purely descriptive of the services.
Hence, both the words, which are the only words in the registered trade mark
are such that the combination thereof in the form of the mark “Cafe Madras”
does not give the plaintiffs any exclusive right to use the same. It is submitted
that out of the parts of a registered trade mark at least one should be distinctive
so as to confer exclusive right to use the trade mark on the proprietor of the
registered trademark within the meaning and provisions of the Act.

 7. Dr. Tulzapurkar submitted that the defendants are not using the plea of
invalidity of the plaintiffs registration at this stage but are raising a plea that in
the facts of the case, discretion under Clause XIV should be exercised against the
plaintiffs inasmuch as the plaintiffs are claiming rights which do not exist in
law and in such a case, the suit for infringement itself is an abuse of process of
law
and it is inequitable to order joining of causes of action for passing off in the
present case. In this connection reliance is placed on section 28(2) and section
17 of the Act. It is therefore submitted that keeping in mind avoidance of
multiplicity of proceedings, this is a fit case where leave should be refused.

 8. Mr. Venkatesh Dhond, the Learned Senior Advocate appearing for the
plaintiffs, has submitted that the issue canvassed on behalf of the defendants is
not new. It has in the past been unsuccessfully canvassed before this Court in at
least 5 cases (three before learned Single Judges and two before Division
Benches) i.e. in the cases of (i) Arte Indiana Mumbai v. P. Mutttdaul Lalah and sons,
Madras, 1999 (2) Mh.LJ. 957 : AIR 1999 Bom. 369, (ii) Marico Industries
Ltd. v. Sarfaraj Trading Company, 2002 (3) Mh.LJ. 588 : (2002) 25 PTC 93 (Bom)
(DB), (iii) Dow Agro (unreported Leave Petition No. 184 of 2006), (iv) Parle Agro
Pvt. Ltd. v. Balan Natural Food (P) Ltd., Order dated 4th May, 2006 in Leave
Petition No. 229 of 2006 in Suit No. 1220 of 2006 (unreported) and (vi) Burroughs
Wellcome (India) Ltd. v. G.K. Sharma (supra). Mr. Dhond submitted that the clear
legal proposition which emerges from these cases is (i) the paramount and/or
overriding consideration/yardstick in considering applications for grant of leave
is avoiding multiplicity of litigation. Multiplicity of litigation is to be avoided
where possible. The legislative policy and object behind Clause XIV is precisely
this, (ii) Considerations/inquiries touching the merits/strength of the case of
parties are not relevant. In an application under Clause XIV, in fact the Courts
should at the stage of granting leave refrain from making any such
inquiry and/or commenting thereon, since this will potentially affect a decision
on interim relief. Mr. Dhond submitted that it should be borne in mind that
traditionally and until very recently and possibly in future—leave applications
were considered by the Chamber Judge while interim relief applications were
considered by the Judge hearing Motions.

 9. Mr. Dhond has further submitted that the arguments advanced on behalf
of the defendants firstly that the grant of leave is a discretionary
exercise and that granting leave in the present case will be dragging the
defendants from a forum which does not otherwise have jurisdiction and would
seriously inconvenience the defendants is completely fallacious and wholly
irrelevant. Equally irrelevant is the second submission advanced on behalf of the
defendants that this Court should consider the fact that the registration granted
to the plaintiffs is itself subject to a limitation that no monopoly will be conferred
upon the use of the word “Madras” and the word “Cafe” is a word over which no
monopoly can ever be claimed by anybody in the restaurant business. It is
submitted that it is a well settled proposition of law that the Court does not
consider matters/issues which touch upon the merits of the controversy
between the parties in the suit. All the submissions of the defendants pertain to
the merits of the case of the plaintiffs before this Court. These are relevant to an
enquiry as to whether the plaintiff has and/or has made out a case for
infringement. These have no relevance to the question of grant of leave. The
same would have the effect of disentitling the plaintiffs to the grant of
interim/final reliefs which cannot be allowed. Mr. Dhond has submitted that the
decision of the Madras High Court in the case of Brook Bond India v. Balaji
Tea (supra) is of no assistance to the defendant. The said judgment has to be
understood in the context of the facts and circumstances of
that case. Mr. Dhond without prejudice to his contention that the arguments
based on the limitations placed on registration are arguments which deal with
the merits of the case and are required to be excluded from consideration at the
stage of deciding applications for leave under Clause XIV of the Letters Patent,
submitted that even on merits, the defendants' submissions are misconceived.
While placing limitations, at the time of granting registration, the Registrar after
due exercise of discretion and/or after due consideration of the material on
record, only places a limitation on the word “Madras”. This only means the
plaintiffs cannot claim monopoly over the word “Madras”. The plaintiffs are not
even claiming any such monopoly. Notwithstanding the limitation on the word
“Madras”, the Registrar granted registration of the composite mark “Cafe
Madras”. The plaintiffs are therefore entitled to exclusive use of the words “Cafe
Madras”. Mr. Dhond has therefore submitted that the plaintiffs are entitled to
leave under Clause XIV of the Letters Patent and the same be granted.

 10. I have considered the submissions advanced by Mr. Dhond and Dr.

Tulzapurkar, learned Counsel appearing for the plaintiffs and the defendants
respectively.

 11. The Courts have repeatedly affirmed in its various decisions including the
decisions relied upon herein that the paramount and/or overriding
consideration/yardstick in considering application for grant of leave is ‘avoiding
multiplicity of litigations’ and the legislative policy and object behind clause XIV is
precisely this. The serious consequence and/or prejudice flowing from
multiplicity of litigation are well known and need not be rediscussed. The
Hon'ble Division Bench of this Court (Coram : A.P. Shah and V.K. Tahilramani, JJ.)
in Marico Industries v. Sarfaraj Trading (supra) after considering the facts of the
case and the decisions of this Court in Burroughs Wellcome (India)
Ltd. (supra) and the Division Bench decision in Gold Seal Engineering Products Pvt.
Ltd. (supra) set aside the order of the Learned Single Judge declining leave under
Clause XIV of the Letters Patent on the ground that, in their opinion grant of
leave would definitely avoid multiplicity of proceedings and serve the ends of
justice. In the said decision the Division Bench also noted that in the decision of
the Division Bench of this Court in Gold Seal Engineering (supra) it is held “that
once it is found that the plaintiffs are entitled to maintain the suit in this Court in
respect of grievance of breach of copyright, there was no reason to refuse the leave
so as to drive the parties to file litigation in several Courts”. Paragraphs 10,
11 and 12 of the decision in Marico are relevant and therefore reproduced
hereunder:

“10. Next, the question is whether on facts, the appellants are entitled to grant
of leave as sought or not. The learned Counsel Mr. Shah referred to the
decision in Burroughs Wellcome (India) Ltd. v. G.K. Sharma and King
Scientific Research Centre, v. G.K. Sharma and King Scientific Research
Centre, 1990 I PLR 60 where it has been held that as the Bombay High Court
 has jurisdiction to entertain the suit in respect of cause of action relating to
infringement of copyright, cause of action in respect of infringement of trade
mark and passing off should be permitted to be joined in the suit and under
these circumstances, leave under Clause 14 of the Letters Patent was granted.

11. In the next decision relied upon by Mr. Shah in Gold Seal
Engineering Products Pvt. Ltd. v. Hindustan Manufacturers
(supra) while reversing the decision of single Judge of this
Court and proceedings on the assumption that this Court has no
jurisdiction to entertain the suit in respect of infringement of
trademark and passing off, the division bench held that once it is found
that the plaintiffs are entitled to maintain the suit in this Court in respect of
grievance of breach of copyright, there was no reason to refuse the leave so
as to drive the parties to file litigation in several Courts. It was held that it is
necessary to grant leave with a view to avoid multiplicity of litigations. The
bench noticed that it is desirable that a practical view is taken and parties
are not driven from Court to Court on technicalities. It was held that Clause
14 of the Letters Patent was enacted to subserve the purpose of avoidance
of multiplicity of proceedings and the trial Court was entirely in error in
refusing to grant leave on assumption that the conduct of the appellant
was not bona fide. Leave was accordingly granted. The decision in Gold
Seal Engineering Products Pvt. Ltd.'s case (supra) was followed by the
division bench in the case of Arte Indiana (supra).

12. In the light of the decided cases, we will examine whether the order
passed by the learned Single Judge refusing to grant leave under Clause 14
is correct. It is apparent from the order of the learned Single Judge that the
leave was refused solely on the ground that the respondents are carrying
on business at Hyderabad/Secunderabad and grant of leave would cause
hardship to them. In our opinion the learned Single Judge was in error in
refusing leave under Clause 14. The Court should endeavour to avoid
multiplicity of litigation and the parties should not be driven from Court to
Court on technicalities. In the present case the parties involved are
businessmen and we are not satisfied that no undue hardship is likely to be
caused to the respondents if the appellants are allowed to combine the
action of trademark and passing off along with the action of infringement
of copyright. In our opinion grant of leave would definitely avoid
multiplicity of proceedings and serve the ends of justice”.

 12. It is not the case even of the plaintiffs that once leave is sought under
Clause XIV of the Letters Patent the Court is bound to grant the same without
considering any aspect of the case. The Division Bench of this Court (Y.K.
Sabharwal, C.J. and S.H. Kapadia, J.) in the case of Arte Indiana (supra) held that,
“As already observed, one of the objects for enacting Clause (14) was to avoid
multiplicity of proceedings, though it may be a different matter if, on the
facts and circumstances of a particular case, the Court may decline leave considering
undue hardship to the respondent or other such similar ground”. In the case
of Brook Bond India v. Balaji Tea (India) Pvt. Ltd. (supra), the plaintiff therein who
was a large Corporation having branches across the country despite having an
office and/or was carrying on business at the place where the defendants were
carrying on business and could therefore have conveniently sued at the said
location, consciously chose not to do so but had chosen to file a suit in Madras,
where it had a branch office. The plaintiff therein did not appear to be serious
about its case on infringement of copyright. The pleading on copyright
infringement was almost entirely lacking (Paragraph 9 of the Judgment). The
submission before the Court was that the filing of the suit, as framed, was an
abuse of process of the Court and made with a view to preventing the defendant
from effectively defending the action. It is in this context that the Madras High
Court declined to grant leave under Clause XIV, since it felt that the object
behind the entire exercise was an abuse of the process of the Court.

 13. Therefore, a bare argument that grant of leave will drag the defendants
from a forum where the defendants are situated to the Court from which clause
XIV is sought and that this is prejudicial/inconvenient to the defendants is
fallacious and misconceived. Upon leave being granted, all that the defendants
are required to do is to defend before the very Court and the very proceedings
in which the defendant already finds itself arrayed, the allied issue of passing off.
This poses no genuine or real inconvenience.

 14. However none of the decisions cited, suggests that even if the suit as filed
is on the face of it not maintainable and that the suit framed is nothing but an
abuse of law/Court, the Court should only upon considering the issue of
hardship/inconvenience proceed to grant leave under clause XIV of the Letters
Patent. Such an interpretation if applied to the said provision would invite
absurd consequences. For example, if a plaintiff files a suit alleging infringement
of a trade mark without the mark being registered and then applies for leave
under Clause XIV of the Letters Patent, the Court is surely entitled to enquire
into the matter and not grant the leave sought for. Grant of leave in such a
situation would be nothing but a total abuse of the process of the Court.
Therefore, there can be no hard and fast rule prescribed by any Court in any of
its decisions as to under what circumstances the Court should grant leave or
decline leave. The Court has to use its judicial discretion and arrest any abuse of
the process of the Court, however, keeping uppermost in mind that multiplicity
of litigation is to be avoided wherever possible.

 15. As stated hereinabove, the Division Bench of this Court has in the case
of Gold Seal Engineering Products Pvt. Ltd. (supra) held, “that once it is found that
the plaintiffs are entitled to maintain the suit in this Court in respect of grievance of
breach of copyright, there was no reason to refuse the leave….”. Again in the case
of Arte Indiana (supra) the Division Bench of this Court though it held that, “the
Court may decline leave considering undue hardship to the respondent or other such
similar grounds” the Division Bench has after setting out the submissions qua the
facts of that case and observing that the same are not quite relevant for the
purpose of considering the Leave Application under Clause (14), have clearly
stated that, “We would not like to comment in detail on the facts pointed out by the
defendant lest our observations may adversely affect the parties while considering
the prayers for grant of interim relief or while deciding the suit”. The Division Bench
has therefore in no uncertain terms indicated that the Court should not hold a
detailed inquiry on facts, so as to ensure that the observations made pursuant
to such inquiry in no way adversely affects the parties while considering the
prayers for grant of interim relief or while deciding the suit.

 16. From a reading of Clause XIV of the Letters Patent, the

observations/findings in the aforestated decisions of the Hon'ble Division Bench
of this Court, and from the above discussion it can safely be concluded that:

(i) the grant of leave under Clause XIV of the Letters Patent is a discretionary
exercise

(ii) the primary consideration, while deciding applications for grant of leave
under clause XIV of the Letters Patent is ‘avoiding multiplicity of litigation’;

(iii) in the absence of proven mala fides/hardship, the argument that grant of
leave will drag the defendant from a forum where the defendant is
situated, to the Court from which Clause XIV is sought and that this is
prejudicial/inconvenient to the defendant, is fallacious and misconceived;

(iv) leave may be declined considering undue hardship to the defendant or

such other similar ground/s;

(v) leave may be declined if the suit as filed is on the face of it not
maintainable and the same is nothing but an abuse of law/Court;

(vi) the inquiry whether on facts the plaintiff is entitled to grant of leave as
sought for or not has to be minimal and not in detail, so as to ensure that
 observations made do not adversely affect the parties while considering
the prayers for grant of interim relief or while deciding the suit;

(vii) it is not possible to list all the circumstances under which leave under
Clause XIV should be granted or declined. The Court has to use its judicial
discretion and arrest any abuse of the process of a Court without going
into the merits of the case to the extent of virtually obliterating the
distinction between grant of leave and grant of interim relief.

(viii) leave petitions cannot be converted into interlocutory hearings based on

the initial cause of action. This will be an anathema to the
object/legislative policy behind granting leave.

 17. In the instant case, the plaintiffs are the registered Proprietor of two trade
marks. The Registration Certificates are at pages 30-31 of the Plaint. The Legal
proceedings certificates are at pages 93-96. The factum of registration is
admitted. The validity thereof in these proceedings is not contested. Whilst
placing limitations, at the time of granting registration, the Registrar after due
exercise of discretion and/or after due consideration of the material on record,
only placed a limitation on the word “Madras”. Notwithstanding the limitation on
the word “Madras”, the Registrar granted registration of the composite mark
“Cafe Madras” entitling the plaintiffs to the exclusive use of the words “Cafe
Madras”. The defendants are admittedly using the mark ‘Cafe Madras’. The
defendants have themselves made an application for registration of the very
mark, after being served with a cease and desist notice. Under the
circumstances, the suit filed by the plaintiffs alleging infringement cannot be
said to be lacking in bona fides and nor is it an abuse of the process of the Court.
Going into the details upon the limitations placed upon the registration at this
stage as suggested by the defendants would amount to conducting an inquiry as
to whether the plaintiffs have made out a case for infringement. This would
certainly affect the application for interim/final reliefs. Having come to the
conclusion that the suit filed by the plaintiff cannot be said to be lacking in bona
fides and is not an abuse of the process of the Court, the question of dragging
the defendants to this Court

upon leave being granted or inconveniencing them also does not arise. In fact,
the defendants will have to defend their action only before this Court instead of
defending the same before the Courts at Bombay, Jalgaon and Nashik which
would result in multiplicity of proceedings followed by possibility of conflicting
decisions.
  18. In the circumstances, leave is granted to the plaintiffs under Clause XIV of
the Letters Patent as sought. However, it is clarified that all the contentions
raised by the parties are kept open and the ad-interim/interim and final reliefs
shall be granted by the Court without being influenced by any of the
observations made in this Judgment. The Leave Petition is accordingly disposed
of.

6.Colgate Palmolive Company v. Anchor Health and Beauty Care

Pvt. Ltd., 2004 SCC OnLine Bom 909
R.M. LODHA, J.:— By this notice of motion taken out by the appellants it is prayed
that the appellants be permitted to tender additional evidence marked
Annexure ‘1’ to Annexure ‘27’ along with the affidavit of Dinesh Castellino dated
28th June, 2004.

 2. The learned senior counsel for the appellants, as well as the learned
counsel for the respondents wanted us to hear and decide this application for
additional evidence before the hearing of the appeal. Ordinary the legitimate
occasion for consideration of the application for production of additional
evidences under Order 41, Rule 27 should be when the appeal is heard but since
the learned counsel for the appellants as well as the learned counsel for the
respondents wanted this application to be heard first before the appeal was
heard, we took up the notice of motion for hearing.

3. We, therefore, have to consider whether the appellants may be permitted to

tender additional evidence as sought for.

 4. The appeal in which the application for additional evidence is made arises
out of the order dated 5th October, 1998 whereby the learned motion Judge
declined to grant order of temporary injunction in the suit filed by the plaintiffs
for infringement of copyright and passing off action.

 5. This application for production of additional evidence is admittedly made

under Order 41, Rule 27 of the Code of Civil Procedure.

“27. Production of additional evidence in Appellate Court.— (1) The parties to an

appeal shall not be entitled to produce additional evidence, whether oral or
documentary, in the Appellate Court. But if—
 (a) the Court from whose decree the appeal is preferred has refused to
admit evidence which ought to have been admitted, or

[(aa) the party seeking to produce additional evidence, establishes that

notwithstanding the exercise of due diligence, such evidence was not
within his knowledge or could not, after the exercise of due diligence,
be produced by him at the time when the decree appealed against was
passed, or]

(b) the Appellate Court requires any document to be produced or any

witness to be examined to enable it to pronounce judgment, or for any
other substantial cause,

the Appellate Court may allow such evidence or document to be produced, or

witness to be examined.

(2) Whenever additional evidence is allowed to be produced by an Appellate

Court, the Court shall record the reason for its admission.”

 6. The scope of the provision contained in Order 41, Rule 27 is well known.
Since few judgments were cited on the subject, without multiplying the
authorities, we may refer to one judgment of the Supreme Court in the case
of Mahavir Singh v. Naresh Chandra, (2001) 1 SCC 309 wherein the Supreme Court
observed thus:

“5. Before we proceed further we would like to refer to the scope of an

application under Order 41, Rule 27, Civil Procedure Code. Section 107, Civil
Procedure Code enables an appellate Court to take additional evidence or to
require such other evidence to be taken subject to such
conditions and limitations as are prescribed under Order 41, Rule 27, Civil
Procedure Code. The principle to be observed ordinarily is that the appellate
Court should not travel outside the record of the lower Court and cannot
take evidence on appeal. However, section 107(d), Civil Procedure Code is an
exception to the general rule, and additional evidence can be taken only
when the conditions and limitations laid down in the said rule are found to
exist. The Court is not bound under the circumstances mentioned under the
rule to permit additional evidence and the parties are not entitled, as of right,
to the admission of such evidence and the matter is entirely in the discretion
of the Court, which is, of course, to be exercised judiciously and sparingly.
The scope of Order 41, Rule 27, Civil Procedure Code was examined by the
Privy Council in Kessowji Issur v. Great Indian Peninsula Rly. Co. in which it
was laid down clearly that this rule alone can be looked to for taking
additional evidence and that the Court has no jurisdiction to admit such
evidence in cases where this rule does not apply. Order 41, Rule 27, Civil
Procedure Code envisages certain circumstances when additional evidence
can be adduced:

(i) the Court from whose decree the appeal is preferred has refused to
admit evidence which ought to have been admitted, or

(ii) the party seeking to produce additional evidence, establishes that

notwithstanding the exercise of due diligence, such evidence was not
within his knowledge or could not, after the exercise of due diligence,
be produced by him at the time when the decree appealed against was
passed, or

(iii) the appellate Court requires any document to be produced or any

witness to be examined to enable it to pronounce judgment, or for any
other substantial cause.

In the present case, it is not the case of either party that the first situation is
attracted. So far as the second circumstance noticed above is concerned,
question of exercise of due diligence would not arise because the scientific
equipment concerned from which examination is sought to be made itself
was not in existence at the time of trial and so that clause is also not
attracted. In the third circumstance, the appellate Court may require any
document to be produced or any witness to be examined to enable it to
pronounce the judgment, or for any other substantial cause. The expression
“to enable it to pronounce judgment” has been the subject of several
decisions including Syed Abdul Khader v. Rami Reddy wherein it was held that
when the appellate Court finds itself unable to pronounce judgment owing to
a lacuna or defect in the evidence as it stands, it may admit additional
evidence. The ability to pronounce a judgment is to be understood as the
ability to pronounce a judgment satisfactory to the mind of the Court
delivering it. It is only a lacuna in the evidence that will empower the Court to
admit additional evidence (see: Municipal Corpn. of Greater Bombay v. Lala
Pancham). But a mere difficulty in coming to a decision is not sufficient for
admission of evidence under this rule. The words “or for any other
substantial cause” must be read with the word “requires”, which is set out at
the commencement of the provision, so that it is only where, for any other
substantial cause, the appellate Court requires additional evidence, that this
rule would apply as noticed by the Privy Council in Kessowji Issur v. G.I.P. Rly. It
is under these circumstances such a power could be exercised.”
  7. The learned senior counsel for the appellants-applicants submitted that the
additional evidence which is sought to be tendered by the appellants is relevant
for disposal of the appeal. He would urge that the said documents came into
existence subsequent to the impugned order and for doing complete justice
between the parties, the additional evidence is necessary. The learned senior
counsel relied upon clause (b) of sub-rule (1) of Rule 27, Order 41 particularly
clause “or for any other substantial cause” in this regard. Relying upon the two
decisions of this Court in the case of Hiralal Prabhudas v. Ganesh
Trading Company, AIR 1984 Bom. 218 and National Chemicals and Colour
Co. v. Reckit and Coloman of India Ltd., AIR 1991 Bom. 76, the learned senior
counsel submitted that the impugned order cannot be termed as a discretionary
order since the learned motion Judge prima facie adjudicated that the product of
the defendant was not deceptively similar to that of plaintiffs and based on that
finding, interim relief was declined to the appellants. The learned senior counsel
would submit that the exercise of discretion could arise only if the learned
motion Judge had decided in favour of the plaintiffs the prima facie
case and then declined to grant interim relief for some reason.

 8. The order passed by the Court under Order 39, Rules 1 and 2, Civil
Procedure Code is discretionary is well known. In Dalpat Kumar v. Prahlad Singh,
AIR 1993 SC 276, it was held that grant of injunction is a discretionary relief. The
exercise of discretion in the matter of interim relief is subject to the Court
satisfying that there is a serious disputed question to be tried in the suit and that
on the facts before the Court, there is probability of his being entitled to the
relief asked for by the plaintiff/defendant and that the Courts interference is
necessary to protect the party from the species of injury.
In Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd., (1999) 7 SCC 1, the
Supreme Court observed thus:

“24. We, however, think it fit to note herein below certain specific
considerations in the matter of grant of interlocutory injunction, the basic
being non-expression of opinion as to the merits of the matter by the Court,
since the issue of grant of injunction, usually, is at the earliest possible stage
so far as the time-frame is concerned. The other considerations which ought
to weigh with the Court hearing the application or petition for the grant of
injunctions are as below:

(i) extent of damages being an adequate remedy;

 (ii) protect the plaintiffs interest for violation of his rights though,
however, having regard to the injury that may be suffered by the
defendants by reason therefor;

(iii) the Court while dealing with the matter ought not to ignore the factum
of strength of one party's case being stronger than the other's;

(iv) no fixed rules or notions ought to be had in the matter of grant of

injunction but on the facts and circumstances of each case - the relief
being kept flexible;

(v) the issue is to be looked at from the point of view as to whether on

refusal of the injunction the plaintiff would suffer irreparable
loss and injury keeping in view the strength of the parties case;

(vi) balance of convenience or inconvenience ought to be considered as an

important requirement even if there is a serious question or prima
facie case in support of the grant;

(vii) whether the grant or refusal of injunction will adversely affect the
interest of the general public which can or cannot be compensated
otherwise.”

9. The scope of the appeal preferred against the discretionary order in the
matter of interlocutory injunction is also well established and if any authority is
required we refer to the judgment of the Supreme Court in the case
of Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727 wherein the Supreme
Court held thus:

“13. On a consideration of the matter, we are afraid, the appellate bench fell
into error on two important propositions. The first is a misdirection in regard
to the very scope and nature of the appeals before it and the limitations on
the powers of the appellate Court to substitute its own discretion in an
appeal preferred against a discretionary order. The second pertains to the
infirmities in the ratiocination as to the quality of Antox's alleged user of the
trademark on which the passing off action is founded. We shall deal with
these two separately.

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 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. 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 Osenton and Co. v. Jhanaton …. the law as to the
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.”

 10. Let us make it clear and we do that the impugned order declining to grant

temporary injunction has not ceased to be discretionary order merely because
the learned motion Judge did not find any prima facie case and accordingly
refused to grant interim restraint order. In the matters of temporary injunction,
the Court does not adjudicate on the subject matter or any part of it on merits.
The Court considers the application for temporary injunction in the light of well
known principles as already noticed above and then exercises its discretion
weighing all relevant consideration without any expression of opinion on merits
of the matter. We hardly find the relevance of the two judgments of this
Court namely Hiralal Prabhudas and National Chemicals and Colour Co. on the
position we have noticed above.

 11. In the appeal preferred by the appellant aggrieved by the order of the
learned motion Judge declining to grant interim injunction shall have to be
considered within the parameters laid down by the Supreme Court in the case
of Wander Limited. Whether the learned motion Judge was right or not in passing
the impugned order shall have to be seen in the light of the material placed
before the learned motion Judge by the parties. With the limited jurisdiction that
the appeal Court has in the matter arising out of an application for temporary
injunction, ordinarily the appeal Court shall confine the consideration of the
matter to the pleadings and material that were under consideration before the
motion Judge. You cannot find fault with the discretionary order of the learned
Judge by relying upon the material placed in appeal which was not under
consideration at the time of consideration of application for temporary
injunction and interfere with the discretionary order. The appeal Court, in an
appeal from discretionary order does not generally travel beyond the record of
the lower Court. The aspects whether the respondent (the defendant) intends to
trade on the reputation of the plaintiff and whether the adoption is dishonest by
the defendant, in our view, has to be examined on the basis of the available
material which the parties have placed on record. Moreover, the additional
evidence, sought to be produced is not decisive and conclusive.

 12. For all these reasons, we are satisfied that there is no justification for
taking on record the additional evidence.

 13. We, accordingly, dismiss the notice of motion.

6. Lupin Ltd. v. Johnson and Johnson, 2014 SCC OnLine Bom

4596
 MOHIT S. SHAH, C.J.:— This reference has been made to the Full Bench pursuant
to the order dated 13 August, 2012 of learned Single Judge of this Court (Coram:
B.R. Gavai, J.) for considering following question of law:

“Whether the Court can go into the question of the validity of the registration of
the plaintiff's trade mark at an interlocutory stage when the defendant takes up
the defence of invalidity of the registration of the plaintiff's trade mark in an
infringement suit?”

(1) The expression ‘if valid’ in section 28 and the words ‘prima facie evidence
of the validity of the trade mark’ in section 31 of the Trade Marks Act, 1999
(the Act) must be given their plain and natural meaning. The
plain and natural meaning is given to these phrases by various High
Courts, (paras 24, 26, 29, 31, 35, 44 and 56)

(2) Though the object of providing registration of trade mark is to obviate the
difficulty in proving each and every case the plaintiff's title to the trade
mark, the object is achieved by raising a strong presumption in law to the
 validity of the registration of the trade mark and heavy burden is cast on
the defendant to question the validity of the trade mark. (Paras 34, 43,
55 and 57)

(3) A challenge to the validity of the registration of the trade mark can finally
succeed only in rectification proceedings before the Intellectual Property
Appellate Board. However, there is no express or implied bar taking away
the jurisdiction and power of the Civil Court to consider the challenge to
the validity of the trade mark at the interlocutory stage by way of prima
facie finding. (Paras 34 and 53)

(4) There is nothing in the Act to suggest that any different parameters for
grant of injunction are required to be applied when a plaintiff seeks
injunction on the basis of registered trade mark. The relief of injunction
being a relief in equity, when the Court is convinced that the grant of
interim injunction would lead to highly inequitable results, Court is not
powerless to refuse such relief. (Paras 35, 36 and 47)

(5) However, a very heavy burden lies on the defendants to rebut the strong
presumption in favour of the plaintiff on the basis of the registration at
the interlocutory stage. The plaintiff is not required to prove that the
registration of a trade mark is not invalid, but only in the cases where the
factum of registration is ex facie totally illegal or fraudulent or shocks the
conscience of the Court that the Court may decline to grant relief in favour
of the plaintiff. (Paras 25, 27 and 55)

(6) It is not sufficient for the defendant to show that the defendant has an
arguable case for showing invalidity. The prima facie satisfaction of the
Court to stay the trial under section 124 of the Act is not enough to refuse
grant of interim injunction. It is only in exceptional circumstances, such as,
the registration being ex facie illegal or fraudulent or which shocks the
conscience of the Court that Court will refuse the interim injunction in
favour of the registered proprietor of the trade mark. (Para 57)

(7) The Division Bench in the case of Maxheal Pharmaceuticals considered it as

the view of Vimadalal, J. that it is “the practice of this Court” to grant
injunction to the holder of a registered trade mark. However, there was
no sound footing for the Division Bench to recognize it as a longstanding
practice of this Court. (Para 33)

(8) Though it is considered as a practice of this Court in granting injunction in

favour of the plaintiff having a registered trade mark, the same cannot be
 treated as a total embargo on the power of the Court to refuse grant of
interim injunction. In exceptional cases, that is in cases of registration of
trade mark being ex facie illegal, fraudulent or such as to shock the
conscience of the Court, the Court would be justified in refusing to grant
interim injunction. (Para 33)

(9) As regards the controversy at hand, the provisions of the Trade Marks Act,
1999 are not comparable with the provisions of the Designs Act,
2000 and the Patent Act, 1970. (Paras 37 and 38)

 2.  The question posed for consideration in the reference: “Whether the Court
can go into the question of the validity of the registration of the plaintiff's
trade mark at an interlocutory stage when the defendant takes up the defence
of invalidity of the registration of the plaintiffs trade mark in an infringement
suit?” is answered thus:

In cases where the registration of trade mark is ex facie illegal, fraudulent

or shocks the conscience of the Court, the Court is not powerless to refuse to
grant an injunction, but for establishing these grounds, a very high threshold
of prima facie proof is required. It is, therefore, open to the Court to go into
the question of validity of registration of plaintiffs trade mark for this limited
purpose, to arrive at a prima facie finding.

8. Manu Kagliwal v. Mayo Foundation for Medical Education

and Research, 2017 SCC OnLine Bom 9898
 Parties are referred to their original status.

 2. Present appeal is presented by the plaintiff against the order passed below
Exh. 9 in Civil Suit No. 03/2016 by the learned District Judge-1, Aurangabad on
13-7-2017.

 3. The plaintiff filed suit for perpetual injunction restraining infringement of

trademark and passing-off, damages etc., in which he has also
applied for temporary injunction. The brief facts may be stated as follows.
  4. The plaintiff, Mayo Foundation for Medical Education and Research, is a
charitable organization incorporated under the law of United States of America.
The plaintiff s Mayo Clinic is a leading internationally known medical center
recognized for inter alia providing the highest quality medical care through the
physician-led-team of diverse people involved providing clinical, educational,
diagnostic and research services in a unified multi-campus system.

 5. Plaintiff is doing its activities under the name/trade styled as “MAYO”,

“MAYO CLINIC”, ‘the Triple Shield Design’ and MAYO formative trademarks are
used as part of the plaintiff's trade name and style as well as its trademarks. The
trademark “MAYO” also form a key part of the domain name as plaintiffs
website www.mayoclinic.org and www.mayo.edu. Through its global activities,
the plaintiffs reputation and good will has split over to India and the plaintiff's
services and goods under the trade mark are well known amongst the public in
India as a valuable sources and repository of knowledge regarding
health and medicine.

 6. Since 2011 to 2015, 1,930 citizens from India have visited the hospitals in
Rochester, Scottsdale and Jacksonville to avail their highly
acclaimed medical services, out of which more than 1000 have been unique
visitors. Further the plaintiff has recorded 347 profile of Indian citizens who have
enrolled in the plaintiff s Mayo School of Continuous Professional
Development and 28 Indians who had been selected to participate in Mayo
Cardiovascular Continuing Education Courses. Additionally, the plaintiff's
websites have noted a progressive rise in traffic from individuals residing in
India.

 7. Apart from India, the plaintiff's said trademarks are also registered or have
been applied for registration in 73 countries around the world.

 8. The defendants are believed to be engaged in the business of

marketing and selling pharmaceuticals products under the mark
“MAYO” and other MAYO formative marks. The defendant No. 3 has believed to
be stopped conducting its business through this company in
2011 and incorporated defendant No. 2 to carry on its business activity. So, in
short, it is the contention of the plaintiff that, the defendants are using his trade
name/mark “MAYO” to introduce their products in market in India and the
ordinary customer is likely to be confused about the trade name/mark and may
purchase the goods under the impression that the goods are belonging to the
plaintiffs product.
  9. According to the plaintiff the name/mark “MAYO” is
phonetically and visually used by the defendants is similar to the trade
name/mark of the plaintiff s MAYO Foundation.

 10. As against this, it is the case of the defendants that, the origin of the name
is taken from “MAA YOGMAYA” which is the name of deity of the defendants.

 11. Considering the evidence on record and upon hearing both the sides the

learned District Judge-1 restrained the defendants from using word “MAYO”.
Therefore, the present appeal.

 12. I have heard the arguments of Mr. Sanjiv Deshpande, learned counsel
appearing for the appellant/defendant and Mr. P.M. Shah, learned Senior
Counsel appearing for the respondent/plaintiff.

 13. Mr. Deshpande learned counsel has submitted that the plaintiff

applied for the registration of the trademark in India in the year 2011 and the
defendants are using the trade name “MAYO” since 1982. Therefore, the
defendants are first in time in the business. Therefore, it cannot be said that the
trade name of the plaintiff s is used by the defendants. Further, he argued that,
the activities of the plaintiff are in regards mainly with
the medical services and the business of defendants is marketing and selling the
pharmaceuticals products. Therefore, the class of the business is altogether
different and therefore it cannot be said that the defendants are using the trade
name/mark of the plaintiff for doing their business of selling pharmaceuticals.

 14. Mr. Deshpande further submitted that the trade name/mark and area of

plaintiff and defendants is altogether different, as the plaintiff is doing the
business in USA and other countries and the defendants area of business is of
India.

 15. As against this Mr. Shah, learned senior counsel has argued that the word
“MAYO” is trade name/mark of plaintiff and the plaintiff is using it since 1914.
Number of citizens of India have visited the plaintiffs institution
either for treatment or for academic sessions. Mr. Shah further argued that, the
defendants have copied the origin of the plaintiffs from its
website and displayed it, as it is their origin. Mr. Shah further argued that,
though the plaintiff is doing services but such services are regarding the same
field i.e. the medical field. He further submitted that, the feature of the word
“MAYO” used by the defendants is phonetically and visually are similar with the
trade name/mark of the plaintiff. According to Mr. Shah the area of the trade of
plaintiff is not restricted to USA but it extend to all over the world. The plaintiff is
using his trade name/mark since 1914 and registered in almost 200 countries in
the world.

 16. Mr. Shah, further argued that, when the defendants applied for the

registration of the trade name/mark “MAYO” at the relevant time the plaintiff
have objected the same. Therefore, the claim of defendants is abundant.

 17. Considering the arguments advanced by both the sides, I have carefully

observed the trade name/mark of the plaintiff as well as the trade name/mark
used by the defendants. Looking to the both trade names, it appears that the
trade name/mark used by the defendants is exactly similar with the trade
name/mark of the plaintiff, who is in the global market since 1914. Further, it
appears that the defendants were in the market since 1982. The defendants
applied for using trademark in India in the year 2011.

 18. Nowadays, it is very easy for any person to know the facilities provided by

the plaintiff through the Internet. So also, it is possible to purchase the
articles online. Due to development in the information and technology, the
whole world came under one roof. Therefore, distinction cannot be made in
regards with the trade in one country and in multiple countries. In such
circumstances it cannot be said that the area of the business of the plaintiff is
restricted to the USA and it has no connection with the business in India, as due
to Internet the whole world comes on a finger point.

 19. As referred above, the prefix name as used by the plaintiff as well as the
defendants is exactly similar. Hence, infringement mostly occurs when another
trader copies the essential features of the trademark but sell the goods in his
own name in contrast to counterfeiting where the counterfeiter holds out that
the goods and produced by the actual proprietor. Some elements of
inconsequential nature are intentionally inserted in the Trade Marks, so as to
plead the differences in faced with civil or criminal proceedings. If a mark/name
is confusingly similar to a registered Trade Marks used on similar goods or
services, it constitutes infringement. The infringement action is a statutory
remedy available to the registered proprietor or to the registered owner, based
upon the statutory rights conferred by the Registration of a Trade Mark. The
infringement action is now contemplated when a mark is unauthorizedly used
not only on the same goods or services but also on similar goods or services to
those covered under the registered trademark.

 20. Section 29(2) provides three circumstances in which the infringement may

take place if any of the two results take place.
 (i) The use of the trade mark is unauthorized.

(ii) Use of the mark is in course of trade,

(iii) (a) Offending mark is identical to the registered Trade Mark and goods or

services are similar; or

(a) Offending mark is similar to the registered Trade Mark and goods or

services are identical or similar; or

(b) Offending mark is similar to the registered Trade Mark and goods or

services are identical. In this case there is a presumption of likelihood of
confusion on the part of the public, or in other words the act of
infringement is complete.

The result should be any one of the following two, if any one of the
above situation is applicable.

(i) Likelihood of confusion on the part of the public, or

(ii) The infringement mark is likely to hold out an association with the
registered Trade Mark.

 21. Herein the present case, looking to the features of the word “MAYO” used
by the defendants for trading their products, an ordinary person can confuse, as
the trade name/mark used by the defendants is phonetically and visually is
exactly similar with the trade name/mark of the plaintiff. Due to such features
adopted by the defendants in their trade name/mark, definitely an ordinary
customer will confuse and will be under impression that the products
introduced by the defendants are belonging to the plaintiffs.

 22. In the present case, though the class of business of the

plaintiff and defendants is different but it relates to one field i.e. medical.
Therefore, there is close proximity between the services of the plaintiff as well as
trade of the defendants.

 23. The defendants have applied for registration as trade mark/name

“MAYOCIP” and the status of the above application as on 29-6-2016 is
“abandoned”. Another application was filed by the defendants for trade
mark/name “MAYOFLAM”. It was opposed by the plaintiff and its status as on 29-
6-2016 was “opposed”. Another application was filed by the
defendants for registration of trade name/mark “MAYOPRESS”. It was also
objected. Another application was filed by the defendants for registration of
trade name/mark “MAYOTAL DS” was also objected by the plaintiff. From the
webpage of defendants the trade name/marks appearing as “MAYO” is similar
with the trade name/mark of the plaintiff. Therefore, it appears from the record
that an ordinary customer can carry impression in his mind that the product
under the trade name/mark starts from the word “MAYO” must be belonging to
the plaintiffs institution.

 24. Mr. Deshpande learned counsel for the appellant has relied upon the

following case laws.

(1) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in 2001

(21) PTC 300 (SC), (2) CIPLA Limited v. CIPLA Industries Private Limited. reported
in 2017 (2) Mh.L.J. (F.B.) 877 : 2017 (3) ARBR 97, (3) Vishnudas Trading v. Vazir
Sultan Tobacco. reported in (1997) 4 SCC 201 : AIR 1996 SC 2275, (4) Bombay
High Court, International Foodstuff Co. v. Parle Products. reported in MIPR 2016
(2) 34, (5), Advance Magazine Publishers v. Just Lifestyle Pvt. Ltd. (6) Balkrishna
Hatcheries v. Nandos International Ltd.. reported in 2007 (4) Bom.C.R. 48,
(6) Thomas Bear and Sons v. Prayag Narayan. reported in 1940 (42) BOMLR
734, (7) Khoday Distilleries Limited. v. Scotch Whisky Association. reported
in (2008) 10 SCC 723 : AIR 2008 SC 2737, (8) Power Control Appliances v. Sumit
Machines Private Limited. reported in (1994) 2 SCC 448, (9) Neel Electro
Techniques v. Neelkanth Power Solutions. reported in 2016 (4) ABR 345,
(10) Torrent Pharmaceuticals v. Wockhardt. Ltd. reported in MIPR 2017 (2) 136,
(11) Kamat Hotels (India) Limited. v. Royat Orchid Hotels. reported in 2011 (4)
Mh.L.J. 71 : 2011 (7) ALL MR 514.

 25. Mr. Shah, learned senior counsel appearing for the respondent has relied

upon following case laws.

(1) Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia. reported in (2004)

3 SCC 90, (2) Milmet Oftho Industries v. Allergan Inc. reported in (2004)
12 SCC 624, (3) Wander Ltd.
v. Antox India P. Ltd. reported in 1990 Supp SCC 727, (4) S. Syed Mohideen v. P.
Sulochana Bai. reported in (2016) 2 SCC 683, (5) FDC Limited v. Docsuggest
Healthcare Services Pvt. Ltd.. reported in 2017 SCC OnLine Del. 6381,
(6) Bhavnesh Mohanlal Amin v. Nirma Chemicals Works Ltd.. reported in (2006)
1 SCC 185, (7) Laxmikant V. Patel v. Chetanbhai Shah. reported in (2002)
3 SCC 65, (8) T.V. Venugopal v. Ushodaya Enterprises Limited.

 26. Mr. Deshpande, learned counsel relying upon the observations in 2001

(21) PTC 300 (SC) which reads as follows:
 “Broadly stated in an action for passing off on the basis of unregistered
trade mark generally for deciding the question of deceptive similarity the
following factors to be considered:

a) The nature of the marks i.e. whether the marks are word marks or
composite marks i.e. both words and label works.

b) The degree of resembleness between the marks, phonetically

similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade
marks.

d) The similarity in the nature, character and performance of the goods of

the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and a degree
of care they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods, and

g) Any other surrounding circumstances which may be relevant in the

extent of dissimilarity between the competing marks.

 27. Mr. Deshpande, learned counsel strongly relied upon the observations of

the Full Bench of this Court reported in 2017 (2) Mh.L.J. (F.B.) 877 :
AIR 2017, CIPLA Limited v. CIPLA Private Limited Industries, which reads as follows:

“For the reasons which we have set out earlier, we are unable to concur
with the view expressed in the aforesaid highlighted portions of paragraphs
45.4 and 51 of the judgment which otherwise is a very erudite opinion of the
learned single Judge of the Delhi High Court. He has read into sub-section (4)
the use of a trade mark as a part of corporate/trade/business name. With
greatest respect, sub-section (4) applies only when a mark is used during the
course of trade in relation to goods or services which are not similar to
those for which the trade mark is registered. By way of illustration, we may
say that when a trademark “XYZ” is registered in respect of goods “A” is used
while selling goods of the category “B” which are not similar to “A”, sub-
section (4) will apply if
the other conditions are satisfied. Sub-section (5) will apply when a
trademark “XYZ” is registered in respect of the goods “A” and the defendant
uses “XYZ” as a part of the name of his business concern dealing in the goods
similar to the goods in respect of which the trade mark is registered.”
  28. Mr. Deshpande further relied upon the observations in (1997)
4 SCC 201 : AIR 1996 SC 2275, which reads as follows:

“The “class” mentioned in the 4th Schedule may subsume or comprise a

number of goods or articles which are separately
identifiable and vendible and which are not goods of the same description as
commonly understood in trade or in common parlance. Manufactured
tobacco is a class mentioned in Class 34 of 4th Schedule of the Rules but
within the said class, there are number of distinctly identifiable goods which
are marketed separately and also used differently. In our view, it is not only
permissible but it will be only just and proper to register one or more articles
under a class or genus if in reality registered only in respect of such articles
are intended, by specifically mentioning the names of such articles and by
indicating the class under which such article or articles are to be comprised. It
is, therefore, permissible to register only cigarette or some other specific
products made of manufactured tobacco as mentioned in Class 34 of 4th
Schedule of the Rules. In our view, the contention of Mr. Vaidyanathan that in
view of change in the language of section 8 of Trade Marks Act as compared
to section 5 of Trade Marks Act 1940, registration of trade mark is to be made
only in respect of class or genus and not in respect of articles of different
species under the genus is based on incorrect appreciation of section 8 of the
Trade Marks Act and 4th Schedule of the rules.”

 29. By relying upon the observations of the above cited authorities, Mr.
Deshpande, learned counsel has submitted that the Class of the business of the
plaintiff and the defendants is altogether distinct. The plaintiffs institution is
mainly dealing with the medical services whereas; the defendants are dealing in
the business of manufacturing and marketing of pharmaceuticals product. But it
is important to note that the activities of the plaintiff as well as the defendants
are in relation to the trade relating to the same field i.e. medical.

 30. Mr. Deshpande, learned counsel, repeatedly harping on the aspect of

delay and latches in taking the action. For which Mr. Shah, learned senior
counsel has relied upon the observations of Hon'ble Supreme Court in case
reported in (2011) 4 SCC 85 which reads as follows:

“The learned counsel for the respondent Company also relied on a

judgment of this Court in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia. The
Court observed that:

“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.”

 31. Thus the observations of the Division Bench of the Hon'ble Supreme Court
is complete answer to the question raised by Mr. Deshpande, learned counsel.
In my opinion, the prima facie case is made out by the plaintiff in regards to the
infringement of trade name/mark then the temporary injunction has to be
issued against the defendants and in such circumstances some delay has no
significance looking to the interest of the parties to the litigation.

 32. Mr. Shah, learned senior counsel further relied upon the observations in
case reported in 2017 SCC Online Del 6381, which read as follows:

“Goods and Services can be “related” without being Competitive. To be

“related” in the parlance of trademark law, the conflicting good or services do
not have to be in competition with each others. That the goods or services
are noncompetitive does not answer the question of whether the goods are
so “related” that a reasonable buyer is likely to think that defendant's goods
or services are somehow connected with, or sponsored by, the plaintiff, due
to similar marks. There is no simple, one question test for determining
whether noncompetitive products are “related” such that confusion is likely
as to source, affiliation, connection or sponsorship.

What does “related” mean? Goods are “related”, not because of any
inherent common quality of the respective goods, but “related” in the sense
that buyers are likely to believe that such goods, similarly marked, come from
the same source, or are somehow connected with or sponsored by a
common company. As the Federal Circuit observed, “related” means related
in the minds of potential buyers:

Goods that are neither used together nor related to one another in
kind may still “be related in the mind of the consuming public as to the
origin of the goods. It is this sense of relatedness that matters in the
likelihood of confusion analysis”.

“Related” does not mean that there is necessarily any physical relationship
between the goods or services identified by the conflicting marks. Rather, it
means that the marks as used are “related” in the mind of the consuming
public. Goods are “related” if customers are likely to mistakenly think that the
infringer's goods come from the same source as the senior user's goods or
are sponsored by, affiliated with or connected with the senior user. As the
 Ninth Circuit stated:“The (defendant's) use need not to be the same as, nor
one in competition with the original use. The question is, are the uses so
related that they are likely to be connected in the mind of a prospective
purchaser?…”

 33. From the observations referred above it appears that the business

relating to the services as well as goods are related business. Therefore, in my
opinion, there is proximity between the services of the plaintiff and the business
of the defendants.

 34. Mr. Shah, learned senior counsel further relied upon a case reported
in 1990 Supp SCC 727 in which it is observed that,

“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. Pathan Joseph:

“………These principles are well established, but as has been observed

by Viscount Simon in Charles Osenton and Co. v. Jhanaton… the law as to
the 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.”

 35. Herein the present case on going through the reasons recorded by the
learned District Judge, it appears to me that he has passed well reasoned
order and it cannot be said that the District Judge has exercised its discretion
arbitrarily or capriciously or perversely. Therefore, there is no reason for this
Court to substitute its own discretion.
  36. As already referred above, the services and the business of the plaintiff
respectively are in relation to the same field i.e. medical, therefore, the following
observations of the Supreme Court in case reported in (2004) 12 SCC 624, is
important, which quoted below:

“7. In the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the
question was whether the marks “Falicigo” and “Falcitab” were deceptively
similar. The trial Court refused interim injunction. The appeal was also
dismissed. This Court did not interfere on the ground that the matter
required evidence on merits but laid down principles on which such cases
were required to be decided. This Court held that in a passing-off
action for deciding the question of deceptive similarity the following facts had
to be taken into consideration:

“(a) The nature of the marks i.e. whether the marks are word marks or
label marks or composite marks i.e. both words and label works.

(b) The degree of resembleness between the marks, phonetically

similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade
marks.

(d) The similarity in the nature, character and performance of the goods of

the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and a degree
of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods.

(g) Any other surrounding circumstances which may be relevant in the

extent of dissimilarity between the competing marks.”

In respect of medicinal products it was held that exacting judicial scrutiny

is required if there was a possibility of confusion over marks on medicinal
products because the potential harm may be far more dire than that in
confusion over ordinary consumer products. It was held that even though
certain products may not be sold across the counter, nevertheless, it was not
uncommon that because of lack of competence or otherwise mistakes arise
specially where the trade marks are deceptively similar. It was held that
confusion and mistakes could arise even for prescription drugs where similar
goods are marketed under the marks which looked alike and sound alike. It
was held that physicians are not immune from confusion or mistake. It was
held that it was common knowledge that many prescriptions are telephoned
to the pharmacists and others are handwritten, and frequently the
handwriting is not legible. It was held that these facts enhance the chances of
confusion or mistake by the pharmacists in filling the prescription if the
marks appear too much alike.

8. We are in all agreement with what has been laid down by this Court.
Whilst considering the possibility of likelihood of deception or confusion, in
present times and particularly in the field of medicine, the Courts must also
keep in mind the fact that nowadays the field of medicine is of an
international character. The Court has to keep in mind the possibility that
with the passage of time, some conflict may occur between the use of the
mark by the applicant in India and the user by the overseas company. The
Court must ensure that public interest is in no way imperilled. Doctors,
particularly, eminent doctors, medical practitioners and persons or
companies connected with the medical field keep abreast of latest
developments in m medicine and preparations worldwide. Medical literature
is freely available in this country. Doctors, medical practitioners and persons
connected with the medical field
regularly attend medical conferences, symposiums, lectures, etc. It must also
be remembered that nowadays goods are widely advertised in newspapers,
periodicals, magazines and other media which is available in the country. This
results in a product acquiring a worldwide reputation. Thus, if a mark in
respect of a drug is associated with the respondents worldwide it would lead
to an anomalous situation if an identical mark in respect of a similar drug is
allowed to be sold in India. However, one note of caution must be expressed.
Multinational corporations, which have no intention of coming to India or
introducing their product in India should not be allowed to throttle an Indian
company by not permitting it to sell a product in India, if the Indian company
has genuinely adopted the mark and developed the product and is first in the
market. Thus the ultimate test should be, who is first in the market.

9. In the present case, the marks are the same. They are in respect of
pharmaceutical products. The mere fact that the respondents have not been
using the mark in India would be irrelevant if they were first in the world
market. The Division Bench had relied upon material which prima facie
shows that the respondent's product was advertised before the appellants
entered the field. On the basis of that material the Division Bench has
 concluded that the respondents were first to adopt the mark. If that be so,
then no fault can be found with the conclusion drawn by the Division Bench.”

 37. Mr. Shah learned senior counsel has further relied upon the observations
in case reported in (2004) 3 SCC 90 wherein it is observed that, “Mere delay in
bringing action is not sufficient to defeat grant of injunction in such cases.” It is
further held that, “grant of injunction also becomes necessary if it prima facie
appears that the adoption of the mark was itself
dishonest and deceptive and similar to the marks of the other party.”

 38. In view of the above, I am of the opinion, the plaintiff has made out the
case to show that the defendants are using trade name/mark “MAYO”
deceptively similar to the trade name/mark of the plaintiff. The reasons
recorded by the learned Trial Court while issuing the injunction appears to be
proper.

 39. The above observations of this Court are made in order to decide the
present appeal at prima facie stage and the learned trial Court shall not
influence about such observations at the time of final disposal of the suit.

 40. For the reasons stated, I am of the opinion that, there is no substance in

the appeal. Therefore, it is liable to be dismissed at the stage of admission
itself and accordingly it is dismissed.

 41. Pending A.O. is disposed of.

 42. As A.O. is dismissed, hence, Civil Application No. 10457 of 2017 is disposed
of.

9. Manoj Kumar Maheshwari v. Tips and Toes Cosmetics (P)

Ltd., 2006 SCC OnLine Del 1884
A.K. SIKRI, J. (ORAL):— Plaintiff has filed this suit under Section 120 of the
Trade and Merchandise Marks Act and Section 60 of the Copyright Act, 1957, for
declaration and permanent injunction against the threats given by the
defendant to institute legal proceedings against the plaintiff herein. It is alleged
that plaintiff is selling the goods under the trademark/label ‘SUPREME SUHAG’,
whereas, defendant is selling the goods under the trademark ‘SHILPA’.
Defendant is threatening the plaintiff to stop trading under the trademark
‘SUPREME SUHAG’ failing which, defendant would institute legal proceedings
against the plaintiff. According to the plaintiff, these threats of instituting legal
proceedings are groundless, misconceived and malicious as plaintiff has a right
to do trade under the trademark ‘SUPREME SUHAG’ and does not infringe or
violate any of the rights of the defendant, even under the Trademark Act or
Copyright Act.

2. The averments made in the plaint are that the plaintiff is the sole
proprietor of M/s. Supreme Suhag Sticker Bindi and is carrying on the business
of manufacturing and marketing of ‘Sticker Bindi’ under the trademark/label
‘SUPREME SUHAG’ since 1986. He has also applied for registration of this
trademark on 13.2.2002 in Class 3 which application is pending before the
Registrar of Trade Marks. Similar application for registration under the Copyright
Act moved by the plaintiff is also pending for registration. It is alleged that the
plaintiff has given wide publicity to his trademark/label ‘SUPREME SUHAG’
through various modes of publicity and the said product has acquired excellent
goodwill and reputation in the market. The trademark/label ‘SUPREME SUHAG’
of the plaintiff is now well known throughout India for its excellency and high
quality. This trademark is represented in a popular artistic design and colour
pattern with the
device of a lady, who is the wife of the plaintiff. The photograph of the said lady
is placed in the shape of a circle having the black colour background. The hair of
the lady is black. She is wearing a Saree and Blouse of green colour. She is
wearing a home-made neckless. The said label is having some descriptive matter
such as hundred percent extra and clinically tested adhesive. Another side of the
label contains the trademark/label ‘SUPREME SUHAG KUMKUM’ and device of
Bindis. The name of the firm is also appearing on the said label.

3. The defendant, who is carrying on the business of

manufacturing and trading of Bindis under the trademark/label ‘SHILPA’
allegedly since 1987, issued notice to the plaintiff on 8.8.2002 through its
attorney alleging that the use of trademark ‘SUPREME SUHAG’ by the plaintiff
amounted to infringement of defendant's trademark ‘SHILPA’ and, therefore,
plaintiff is asked to desist from using the same. In these circumstances, the
present suit is filed with the following prayers:

“(a) the defendant and its representatives may please be permanently

restrained from making groundless threats of legal proceedings against
the plaintiff and its representatives by a decree of permanent injunction.
 (b) a decree be made to the effect that the threats are
unjustified and groundless and that the alleged infringement of the trade
mark/label and copyright to with threats relate are not
infect and infringement of any legal right of the present defendant.

(c) any other relief which this Hon'ble Court may deem fit and proper in the
circumstances of the case may also be passed in favour of the
plaintiff and against the present defendant.

(d) cost of the suit may also be awarded to the plaintiff.”

4. Defendant was served with the summons for 29th July, 2003. Nobody put
in appearance on behalf of the defendant and, therefore, by order dated 29th
July, 2003, the defendant was proceeded ex-parte. Plaintiff was directed to file
affidavit by way of evidence. After the affidavit was filed by the plaintiff, the
same was taken on record vide order dated 19th May, 2005, and the documents
were exhibited and the matter was listed for arguments. It is obvious on the
reading of the plaint and going through the documents that there is no similarity
between the two trademarks and the trademark of the plaintiff does not infringe
the trademark of the defendant. From the label of the plaintiff's trademark as
well as defendant's trademark, as produced on record, again there is no
similarity between the two. No doubt that on both labels words ‘Clinically Tested
Adhesive’ are written but apart from that the two labels are entirely different in
all other respects. Since the product is Bindi which is sold by both the parties, it
is but natural that on the labels, there would be photographs of ladies. However,
the two ladies shown on the two labels are entirely different with no
resemblance or proximity. Even the colour scheme is different and on going
through the two
labels, nobody can even think that there would be any confusion, what to talk of
any resemblance. There is stalk difference between the two.

5. Section 142 of the Trade and Merchandise Marks Act, 1957, provides a

remedy for groundless threats of legal proceedings by any person for
infringement of trademark. This section reads as under:

“Section 142. — (1) Where a person, by means of circulars, advertisements

or otherwise, threatens a person with an action or proceeding for
infringement of a trade mark which is registered, or alleged by the first-
mentioned person to be registered, or with some other like proceeding, a
person aggrieved may, whether the person making the threats is or is not the
registered proprietor or the registered user of the trade mark, bring a suit
against the first mentioned person and may obtain a declaration to the effect
 that the threats are unjustifiable, and an injunction against the continuance
of the threats, and may recover such damages (if any) as he has sustained,
unless the first mentioned person satisfies the court that the trade mark is
registered and that the acts in respect of which the proceedings were
threatened, constitute, or, if done, would constitute, an infringement of the
trade mark.

(2) The last preceding sub-section does not apply if the registered
proprietor of the trade mark, or a registered user acting in pursuance
of sub section (1) of section 52, with due diligence
commences and prosecutes an action against the person threatened
for infringement of the trade mark.

(3) Nothing in this section shall render a legal practitioner or a registered

trade marks agent liable to an action under this section in respect of
an act done by him in his professional capacity on behalf of a client. (4)
A suit under sub section (1) shall not be instituted in any court inferior
to a District Court.”

6. This is a peculiar statutory remedy provided under this Act, where a person
can obtain injunction against the institution of legal proceedings by another
person. This is a remedy provided under the statute itself, where the plaintiff has
a right to invoke such a remedy as per provisions of Section 142 of the Act:

“Section 142 is intended to give relief in cases where

irresponsible and unjustified threats are made and published in order to
injure another person's trade. In such cases the person threatened would be
entitled to come to court and have it adjudicated that such threats are
groundless. But the said section is not intended to prevent a person from
instituting a suit alleging passing off. A suit for passing off may be deemed to
be a proceeding similar in nature to a proceeding in respect of the
infringement of a trade mark within the meaning of s. 142.”

7. Thus, in view of Section 142 of the Act, where any person threatens
another with an action for infringement of a trade mark or similar proceeding,
the aggrieved person may bring a suit against that person for obtaining a
declaration to the effect
that the threats are unjustifiable, and for an injunction against the continuance
of the threats. He may also recover damages, if any, he has sustained.
 8. In the case of Mehta Unani Pharmacy and Co., Rajkot v. Amrutanjan Limited,
Madras (2002) 25 PTC 475 (Mad) (DB), Division Bench of Madras High Court
interpreted the aforesaid provision in the following manner:

“The opening part of Section refers to ‘a person’ who by means of

circulars, advertisements or otherwise threatens a person with an action or
proceedings for infringement of trade mark. The means employed to pose
such threats referred to in the section are circulars, advertisements or
otherwise. What is sought to be emphasised by the section by use of those
terms is that the threat need not be contained merely in a letter addressed to
the individual concerned, but that threat could be held out in circulars which
are made available to a large number of persons as also in advertisements
put up in newspapers which have large circulation. The scope of expressing
of ‘a person’ used in the section must, therefore, be ascertained in the
context of the reference to circulars and advertisements. ‘Person’ referred to
in Section 120 of the Act is the person who feels threatened by the action of
the person who has issued the circulars, advertisements or otherwise, the
threat being an action or proceedings for infringement of a trade mark which
is registered or alleged to be registered or with some other like proceedings.
The right given under the section to invoke the jurisdiction of the Court is to
‘a person aggrieved’. There is nothing in the section which would support the
interpretation sought to be placed on it by the learned counsel for the
defendants who seeks to confine the scope of the term threatens a person to
a named individual. The threat can be made to a ‘body of persons’ of whom
the person who invoked the jurisdiction under Section 120 of the Act may be
one, if he is aggrieved by the threat held out.”

9. That was also a case filed by the plaintiff on the issuance of notice by the
defendant which the plaintiff perceived as threat. Contention of the defendant in
the said case that the notice was bonafide was brushed aside in the following
words:

“One more argument that was raised for the defendants needs to be
noticed. It was submitted for them that notice had been bona fide and that
therefore such a notice should not be regarded as amounting to a threat. In
this context, attention was invited to Narayanan's book on the Law of Trade
Marks and Passing Off, 4th Edition, wherein at page 671 it is stated that ‘a
general warning or cautionary notice to the public regarding infringement of
the rights of the owner of patent, trade marks or copyright published in a
good faith may not amount to a libel’. In support of that proposition three old
English cases are referred to. Those cases have not been placed before us
 nor have the provisions of the statue considered therein been placed before
us. The question here also is not libel. The question here is one of protecting
the person entitled to such a protection against groundless threats or action,
where a threat which is found
to be groundless cannot be regarded as having been made bona fide. The
plea of bona fide now raised is also without any substance. The defendants
themselves had filed an affidavit in another proceedings saying that ‘COLD
RUB’ is a descriptive expression which prima facie, indeed, it is. It is also the
case of the plaintiff that the defendants had specifically undertaken to
disclaim the descriptive expression ‘COLD RUB’ appearing in the trade mark
application. Having taken that stand, it can hardly be said that the defendants
were acting bona fide when they asserted a claim and on such assertion held
out a threat of action against any-one else using the words ‘Cold Rub’ which
two words clearly are words of common use and are indeed descriptive.”

10. To the same effect is the judgment of the Division Bench of Madras High
Court, Exxon Corporation, USA v. Exxon Packing Systems Pvt. Ltd., Hyderabad, Supp
(2) PTC 558 (Mad) (DB). In the case of Lakshmi PVC Products Pvt. Ltd.,
Madras v. Lakshmi Polymers, Shoranur (Kerala). 1992 PTC 255, the Court granted
injunction order by directing the defendant not to issue any further notice or
circular pending disposal of the application for registration by the Registrar but
leaving the option to the defendant to file a suit against the plaintiff.

11. It would also be useful to refer to the judgment of Bombay High Court in
the case of Millab Private Limited v. Glenmark Pharmaceuticals Limited - (2004) 28
PTC 244 (Bom), where protection was given under Section 120 of the Act after
finding that threat was not based prima facie on any legal right, as is clear from
the following observations contained in para 9 which as under:

“As stated earlier, in this suit the plaintiff has sought an injunction
restraining the defendants from communicating groundless threats and they
seek protection of Section 120 of the Trade and Merchandise Marks Act,
1958. By the Notice of Motion, the plaintiff i.e. Glenmark Pharmaceuticals Ltd.
seeks the interim relief of an injunction restraining the defendants from
issuing groundless or unjustifiable threats in relation to the use of trade
marks MILICAL and MILICAL-12. The plaintiffs product MILICAL shows that it
has been manu factured by Glenmark Pharmaceuticals. The application for
registration of the, trade mark MILICAL dated 31.1.2000 is pending. As stated
earlier, the plaintiff claims an assignment under the assignment deed dated
19.4.2000 whereunder Aimed Lab. Private Limited has assigned the trade
mark MILICAL. The plaintiff thereafter received a notice at Exh. “F” dated
10.10.2000 from Milichem Laboratories which is owned by Mililab Private Ltd.
By this notice, Milichem Laboratories has called upon the plaintiff to
cease and desist from using, printing, stamping screening, manufacturing,
selling or otherwise dealing in relation to trade mark MILICAL and to deliver
the said product for destruction. It appears that the plaintiff replied by letter
dated 25.10.2000 and sought certain documents, including the application for
registration of the trade mark and a copy of the disclosure for
manufacture and sale of the product MILICAL. This has been replied to by the
Milichem Laboratories who have refused compliance with the plaintiff's
request and have reiterated their demand. The demand is set out in their
notice dated 10.10.2000. Section 120 of the Trade and Merchandise Marks
Act, 1958 reads as follows:

“Section 120. Groundless threats of legal proceedings—

(1) Where a person, by means of circulars, advertisements or

otherwise, threatens a person with an action or proceeding for
infringement of a trade mark which is registered, or alleged by the
first-mentioned person to be registered, or with some other like
proceeding, a person aggrieved may, whether the person making
the threats is or is not the registered proprietor or the registered
user of the trade mark, bring a suit against the first-mentioned
person and may obtain a declaration to the effect that the threats
are unjustifiable, and an injunction against the continuance of the
threats, and may recover such damages (if any) as he has
sustained, unless the first mentioned person satisfies the court that
the trade mark is registered and that the acts in respect of which
the proceedings were threatened constitute, or, if done, would
constitute, an infringement of the trade mark.

(2) The last preceding sub-section does not apply if the registered
proprietor of the trade mark, or a registered user acting in
pursuance of sub section (1) of section 51, with due diligence
commences and prosecutes an action against the person
threatened for infringement of the trade mark.

(3) Nothing in this section shall render a legal practitioner or a

registered trade marks agent liable to an action under this section
in respect of an act done by him in his professional capacity on
behalf of a client.
 (4) A suit under sub section (1) shall not be instituted in any court
inferior to a District Court.”

12. In view of my finding above, the plaintiff is entitled prima facie under the
assignment to use the trade mark MILLICAL, the assignment being by a
purported owner of the trade mark, I am of the view that Glenmark
Pharmaceuticals Ltd. is entitled to protection under Section 120 of the
Trade and Merchandise Marks Act. The threat is not based prima facie on any
legal right and moreover, as discussed above, Milichem Laboratories, which is
merely a proprietary concern of the plaintiff Mililab Private Ltd. is not entitled to
any right higher than that might vest in Millilab. In the circumstances, threats are
wrongful and groundless threats. Therefore, there shall be an injunction in
terms of prayer Clause (a) of the Motion.

13. In view of the unrebutted testimony in the present case, the plaintiff has
been able to make out a prima facie case for grant of injunction. The suit is,
accordingly, decreed by directing the defendant to desist from giving such
threats till the pendency of the applications for registration of Trade
Mark and Copyright. However, no cost.

10.Orient Ceramics and Industries Ltd. v. Square Ceramic

Private Ltd., 2017 SCC OnLine Del 11306
The Judgment of the Court was delivered by

YOGESH KHANNA, J.:— The plaintiff seeks decree for permanent injunction
restraining the defendants, their directors, agents, assignees, distributors,
servants or any other person claiming under or through them from in any
manner dealing with, manufacturing, exporting, selling, offering for sale,
exhibiting, advertising, directly or indirectly dealing with tiles or cognate/allied
goods under the trade mark of the plaintiff company “ORIENT” or any other
identical/deceptively similar mark of the plaintiffs mark “ORIENT” including
deceptively similar name “ORIENTO” amounting to passing off the defendant's
goods as and those of the Plaintiff and also seeking a decree for an amount of
Rs. 50,00,000/- on account of damages on the following averments:—

(a) the plaintiff company i.e. Orient Ceramics and Industries Limited alleges to

be market leader in manufacturing and sale of premium
quality ceramic and vitrified tiles throughout India with reputed ISO
 9001:2008 and engaged in the manufacturing of tiles, which are used on
walls &floors of buildings, houses and hotels (Bathrooms,
kitchens and even in living rooms, bedrooms, etc.) and sell it under trade
mark/name “ORIENT TILES”;

(b) the defendant No. 1 is a company incorporated in Gujarat and is engaged

in the trade of manufacturing and sale
of ceramic tiles and other ceramic products throughout Gujarat and other
parts of India including Delhi. The defendant no. 2 and 3 are directors of
the defendant no. 1 company. The defendants are trying to use goodwill
generated by the plaintiff company over a period of time by using a
deceptively similar trade mark “ORIENTO TILES” for it's tiles;

(c) the word ‘ORIENT’ is an integral part of the corporate name of the plaintiff
company since 1977. The plaintiff company adopted a trade mark
“ORIENT TILES” and is continuously and uninterruptedly using it since the
year 1982 and the same was registered as Trade Mark no. 1374747 dated
01.08.2005 vide trade mark registry no. 720695. The plaintiff company is
also within its rights under the Copyright Act, 1957 to seek legal remedy
against infringement of its copyright. The plaintiff company has grown to
become one of the leading manufacturers of tiles in India which was used
in kitchens, bathrooms, homes and offices and the trade mark
“ORIENT TILES” is printed on the reverse side of each tile and plaintiff
company has spent a large amount of money on
publicity and advertisement of the trade mark “ORIENT TILES” to
popularize the same and said tiles are designed by internationally
acclaimed Spanish Designers and involved huge amount in
research and development and advertisement and people have come to
believe that any product manufactured by the plaintiff company bearing
the Trade Mark “ORIENT TILES” would be of excellent quality and material;

(d) in the month of March it was observed by the plaintiff company in Trade
Mark Journal No. 1411 dated 01.03.2009 that defendant no. 1 had applied
for Trade Mark under the deceptively similar trade name “ORIENTO
TILES”. In this regard, the plaintiff company contacted its Registration
agents “Bharti Registration Service” New Delhi and asked them to inquire
into the matter. In the meantime, the plaintiff company also directed its
agents to file its opposition under section 21, 64, 66, 73 Rules 47(1),
131(1) and 138(1) of the Trade Marks Act, 1999 against the grant of Trade
Mark to defendant no. 1. Thereafter, the sales and marketing personnel of
the plaintiff company inquired and made queries in the local market at
 Delhi and other areas of operation of the plaintiff company across the
country and it came to the knowledge of the plaintiff company that the
defendant no. 1 recently put up advertisement hoardings at these
places and has recently clandestinely started selling the tiles under trade
mark “ORIENTO”;

(e) the malafide intent on part of the defendants can be established from the
fact that the defendant had tried to cleverly take advantage of Trade Mark
“ORIENT” and simply reversed the letter “E” used in word ORIENT. Since
there is no such word in English Language, therefore, the same would be
read as ORIENT only. Further, he has added word “O” at the end of word
“ORIENT” and also added a symbol “C” to it and therefore gave a look as if
“O” is separate of ORIENT which would create deception and confusion in
the minds of the prospective purchasers of the tiles. The defendant is also
using email ID for contact as [email protected] in
which orient word is clearly visible and that email ID is holding substantive
part of the advertisement, sufficient enough to give
deception and confusing impression to the consumer that Orient brand is
related to it. The defendants are deliberately using predominantly green,
black and white combination which is used by the plaintiff in depicting its
brand name “ORIENT” in blatant and open violation of the copyright
granted to the plaintiff company; hence this suit.

2. The defendants were proceeded ex-parte even before framing of issues,

therefore evidence by way of affidavit was filed by the plaintiff company. The
plaintiff has duly proved that it has been continuously and uninterruptedly using
the trademark ‘ORIENT TILES’ since 1982 and the trademark was registered as
Trademark no. 1374747 dated 01.08.2005 vide trademark registry no.
720695 and the same is exhibited as Exhibit PW 1/3. The trademark
‘ORIENT TILES’ is printed on the reverse side of each tile and the sample
photograph of the said tile is exhibited as Ex PW 1/4. The plaintiff has also
devised an artistic logo of the company titled as ‘ORIENT TILES’ and has thus
claimed copyright in both the artistic work and the same are original and the
copyright Registration no. bearing A-68840/2005 dated 14.03.2005 for
‘ORIENT TILES’ is exhibited as PW-1/7. Since by the extensive sale of tiles under
the trademark ‘ORIENT TILES’, the plaintiff has done high quantum of
business and the sale invoices are exhibited as Ex. PW-1/5 [Colly.] and as such
the plaintiff company had spent huge amount on expenditure, the photographs
of hoardings depicting the trademark ‘ORIENT TILES’ is exhibited as PW-1/6. The
trademark ‘ORIENT TILES’ is associated with the goods of the plaintiff
exclusively and people know that the plaintiff company is the
manufacturer and promoter of the said trademark. Due of adoption of the trade
name in 1977 and the trademark ‘ORIENT TILES’ in 1992, the said trademark is
exclusively associated with the plaintiff company.

3. The plaintiff also proved that when the defendant no. 1 in the month of
March applied in the trademark Journal No. 1411 dated 1.03.2009 for
deceptively similar trademark “ORIENTO TILES”, the plaintiff company filed
opposition under the provisions of the Trademarks Act against the grant of
Trademark to the defendant no. 1 company. Photograph of the hoarding of the
defendant company depicting the use of mark “ORIENTO” is exhibited as PW-1/8
[Colly]. Further the defendants are deliberately using green, black and white
combination which is used by the plaintiff company thereby causing confusion in
the mind of the prospective buyers which can be evident from the photograph
of the reverse side of defendant's tiles exhibited as Ex. PW-1/9 and the sample
brochures of the plaintiff company exhibited as Ex PW 1/10 [Colly]. It was for the
first time in 2009 the plaintiff observed the defendants are trying to obtain legal
sanction by obtaining trademark which by any means cannot be granted to the
defendant because the defendant been guilty of infringement of registered
trademark, per section 29 of the Trademarks Act 1999 and the plaintiff's having
filed objections to the same before registry of trademarks. The plaintiff also
served a legal notice dated 16.12.2010 requiring the defendants to
restrain and refrain from passing off their goods as that of the plaintiff by using
deceptively similar trademark exhibited as Ex PW-1/11 and the postal receipts as
Ex PW-1/12.

4. Hence, it can clearly be inferred that the defendants have infringed the
registered trademark of the plaintiff by adopting a deceptively similar trademark
which has been in continuous and uninterrupted use by the plaintiff company
since 1977. This trademark and name, because of the widespread
use and association with the quality products and services emanating from the
plaintiff company, has acquired a high degree of selling power thereby
becoming a target for commercial infringers intending to profit on the
goodwill and reputation connected with the mark for their own benefit, by
deceiving consumers as regards the source and origin of the goods and services.

5. The trademark ‘ORIENT TILES’ is proved to be associated distinctively with

the business and trade of the plaintiff company. The suffix by the defendant of
the word ‘O’ after the word ‘ORIENT’ is certainly of no significance in as much as
the word ‘ORIENT is distinctive of the business and trade of the plaintiff
company. There can be no manner of doubt that use by defendant is likely to
cause confusion and the same has propensity of diverting
customers and business of the plaintiff to the defendant. It is well settled that
honesty and fair play are required to be the basic policies in
business and trading and no person has right to carry on his business in such a
way as would lead the public into believing that the goods or services belonging
to someone else are his or associated therewith.

7. Therefore in view of aforesaid circumstances, a decree of permanent

injunction is passed in terms of the plaintiff restraining the defendants, their
directors, agents, assignees, distributors, servants or any other persons claiming
under or through them from in any manner dealing with, manufacturing,
exporting, selling, offering for sale, exhibiting, advertising, directly or indirectly
dealing with tiles or cognate/allied goods under the trade mark of the plaintiff
company “ORIENT” or any other identical/deceptively similar mark of the
plaintiffs mark/trade name/corporate name “ORIENT” including deceptively
similar name “ORIENTO” amounting to passing off the defendant's goods
as and those of the Plaintiffs; or from doing any other thing as is likely to lead
confusion/and or deception thereby resulting in passing off defendant's goods
as those of the plaintiff;

8. Further a decree of permanent injunction is also passed restraining the

Defendants, their directors, agents, assignees, distributors, servants or any other
persons claiming under or through them from in any manner dealing with,
manufacturing, exporting, selling, offering for sale, exhibiting, advertising,
directly or indirectly dealing with deceptively similar Trade name/mark
“ORIENTO” or any other identical or deceptively similar word to the Plaintiffs
copyright in the artistic work and colour scheme titled as “ORIENT”;

9. Further an order is passed for delivery up and the defendants are directed

to destroy all copies of promotional and advertising material including labels,
blocks, dies, strips, cartoons, stationery, literature or any other printed matter
bearing the impugned mark for the purpose of destruction or/and erasure of
deceptively similar Trade name/mark “ORIENTO”.

10. Qua the damages, it has been well settled by this Court in Hero Honda
Motors Ltd. v. Shree Assuramji Scooters [2006 (66) DRJ 113]

“a defendant who chooses to stay away from the proceedings of the Court
should not be permitted to enjoy the benefits of evasion of Court proceedings. Any
view to the contrary would result in a situation where a defendant who appears in
Court and submits its account books would be liable for damages, while a party
which chooses to stay away from the court proceedings would escape the liability
 of damages as stated and set out by the plaintiff. It is also well settled that where
a defendant deliberately stays away from the proceedings with the result that an
enquiry into the accounts of the defendant for determination of damages cannot
take place, the plaintiff cannot be deprived of the claim for damages as that
would amount to a premium on the conduct of such defendant. The result would
be that parties who appear before the court and contest the matter would be
liable to damages while the parties who choose to stay away from the court after
having infringed the right of the plaintiff, would go scot-free.”

11. In Jockey International Inc v. R. Chandra Mohan 211 (2014) DLT 757 the

court noted as under:—

“43. I am in agreement with the aforesaid submission of learned counsel for

the plaintiffs that damages in such cases must be awarded and a defendants,
who chooses to stay away from the proceedings of the Court, should not be
permitted to enjoy the benefits of evasion of court proceedings. Any view to the
contrary would result in a situation where a defendants who appears in
Court and submits its account books would be liable for damages, while another
defendants who, chooses to stay away from court proceedings would escape the
liability on account of failure of the availability of account books. A party who
chooses not to participate in court proceedings and stays away must, thus, suffer
the consequences of damages as stated and set out by the plaintiffs. There is a
larger public purpose involved to discourage such parties from indulging in such
acts of deception and, thus, even if the same has a punitive element, it must be
granted. R.C. Chopra, J. has very succinctly set out in Time Incorporated's
case (supra) that punitive damages are founded on the philosophy of corrective
justice.”

12. In Rajendra Pawar (Supra) while awarding a sum of Rs. 20 lakhs as

damages against the defendants the Court has held as under:—

“The Defendants have not only infringed the copyright and trademark of the

plaintiff but have tried to pass off their products as that of the plaintiff by riding
on its goodwill and reputation. However, inasmuch as the defendants have
chosen not to appear it may not be of any use to pass a decree of rendition of
accounts. The Plaintiff will nevertheless be entitled to damages in the light of the
judicial dicta observed in Times Incorporated (supra) and the other aforesaid
cases.”

13. Though the plaintiff has filed the copy of the balance sheets of the
defendant company for the year ending 31st March, 2011 till 31st March, 2015 but
has not proved the same. However, since the plaintiff has been able to show
prima facie violation of the plaintiff's exclusive right by the defendants and since
the conduct of the defendant is deplorable inasmuch as despite committing
serious violation of the plaintiff's right, the defendants have chosen not to
appear before this Court which indicates the tendency of the defendants to
indulge in illegal activities and since the intention of the defendants was to
deceive the plaintiff and obtain wrongful advantage of the
Trademark and literary work of the plaintiff, hence to preserve the exclusive
work and reputation/goodwill of the plaintiff and considering the balance sheet
of defendant for the year ending from 31 st March, 2011 till 31st March, 2015,
though not proved, the Plaintiff is awarded damages to the tune of Rs. 10.00 Lac
against the defendants, payable jointly and severally. The cost of the suit also
awarded in favour of plaintiff and against the defendants.

14. Decree Sheet be drawn.

15. At last, in view of the nature of disputes between the parties, Registry is
directed to re-number it as a ‘Commercial Suit’ and while doing so retain both
the numbers. Needless to state the decree sheet shall contain the new numbers.

11. Geepee Ceval Proteins and Investment Pvt. Ltd. v.

Saroj Oil Industry, 2003 SCC OnLine Del 534
The Judgment of the Court was delivered by

 MAHMOOD ALI KHAN, J.:— In a passing off action suit, the plaintiff has filed this
application for grant of ad-interim injunction restraining the defendants from
manufacturing selling, offering for sale or advertising directly or indirectly in
dealing in edible oil under the trade mark “CHAMBAL” or any other trade mark
or packing material amounting to passing off the trademark of the plaintiffs or
amounting to association with the plaintiffs.

 2. Briefly the facts are that the plaintiff has filed a suit alleging that it is a
company incorporated under Indian Companies Act and has engaged in the
business of manufacture of edible oil. It was selling its various oil products under
the trade mark CHAMBAL and its turn-over in the year 1997–98 was about Rs.
113 crores and at present it is Rs. 240 crores. The trade mark CHAMBAL has
acquired distinctiveness over the years because of extensive advertisement in
print and electronic media over which the plaintiff had spent a huge amount. In
February, 2003 the plaintiff came to know that the defendant is also
selling oil manufactured by it under the trade mark CHAMBAL using identical
packaging and label. The defendant did not desist from doing so despite service
of notice. In the reply contrarily it claimed to be prior user of this trade mark
since 1980. The defendant contested the application raising objections (1) the
word CHAMBAL being geographical name was not entitled to protection; (2) this
Court had no territorial jurisdiction to try the present suit; (3) the trade mark
used by the defendant was CHAMBAL DEEP, which is sufficient to distinguish it
with the trade mark of the plaintiff and lastly (4) that the defendant was prior
user of the trade mark since 1980.

 3. As regards the first objection of the defendant it has been argued on behalf
of the plaintiff that the plaintiff is selling its oil products under the trade name
CHAMBAL since 1997. Referring to the sale turnover and the money spent on the
advertisement it was contended that the trade mark and the label have become
distinctive of the plaintiff. Counsel also submitted that a search in the office of
the Registrar of the Trademarks revealed that there was only four applications
for registration of the trade mark CHAMBAL and out of them three were of the
plaintiff and one was filed by the defendant. No other party has applied for
registration of the word CHAMBAL as trade mark. Under Section 9(1)(d) of the
Trademark and Merchandise Act, 1958 (hereinafter the Act) a geographical name
cannot be registered in Part-A of the Register but under sub-section (2) of the
said provision the geographical name could be registered as trademark upon
evidence of distinctiveness. Counsel also argued that the present suit was a
passing off action and was covered by Section 27(2) of the Act. This section
provided that the provision of the Act would be affect the right of an action for
passing off goods as the goods of another person and the remedy in respect
thereof. Referring to Bharat Tiles & Marble Pvt Ltd. v. Bharat Tiles Manufacturing
Company, 1978 Gujarat Law Reporter 518; Hindustan Radiators Co. v. Hindustan
Radiators Ltd., 1987 PTC 73; Khetu Ram Bishambar Das v. Bhim Sain Yash Pal, 1983
PTC 313; Shri Jawaharlal v. Bharat Tobacco Manufacturing Co., 1984 PTC 110; Bajaj
Electricals Ltd. v. Metals & Allied. Products, AIR 1988 Bombay 167; order of this
Court in Grasim Industries Ltd. v. Shri Radh Texind Pvt Ltd. dated 01.05.1989 in IA.
3310/89 in Suit No. 1170/89; order dated 03.2.1987 passed in IA 622/87 in Suit
No. 271/87 in Grasim Industries Ltd. v. Deven Textile Industries Pvt. Ltd. and a
number of other orders in different suits which involved trademark
“Gwalior” and trademark “Oxford”, South India Textiles v. Govt. of A.P., AIR 1989 AP
55; Sunder Nagar Association Regd. v. Welfare Cultural Club (Regd.), 1995 PTC
270; Banwari Lal Sham Lal v. R.T.M., AIR 1955 NUC 737 (Vol. 42)
(Punjab); Mahendra & Mahendra Paper Mills Ltd. v. Mahendra & Mahendra Ltd.,
(2002) 24 PTC 121; in support of his contention that the geographical words can
be registered as trade marks and passing off action based on this was
maintainable.

 4. Counsel for plaintiff has distinguished the case law cited by the defendant
that the geographical names are not entitled to be registered as trade mark. It
was contended that The Imperial Tobacco of India Ltd. v. The Registrar of Trade
Marks, AIR 1997 Calcutta 413; R.S.K.V. Raghavan Trading as R.S. Krishna &
Co. v. G.R. Gopal &Co., AIR 1981 Madras 262; Surya Agro Oils Ltd. v. Surya
Coconut Oil Industries Ltd., AIR 1995 Delhi 72 : 1995 (15) PTC 129 (Del); Hindustan
Pencils Pvt. Ltd. v. Universal Trading Co., 2000 PTC 561 related to the registration
of trademark whereas the present suit is filed for passing off; as such those
cases are distinguishable. It was also contended that even the word
“SURYA” and “SUN” have been protected by this Court in various judgments.
Accordingly, it is submitted that the first objection of the defendant has no merit.

 5. On behalf of the defendant it is vehemently canvassed that the industry of

the defendant is situated on the bank of river Chambal whereas the
plaintiffs industry is far off from this place, therefore, the defendant has superior
right to use the word ‘Chambal’ for selling its products in comparison to the
plaintiffs. It is also argued that Section 9(1)(a) of the Act prohibits the registration
of the geographical name as trademark and ‘Chambal’ is the name of river which
flows through the ‘Chambal’ ravines and as such it is a geographical name to
which the plaintiff cannot claim exclusive right. Certain judgments as referred to
in the argument of the counsel for plaintiff have been referred in support of this
contention.

 6. The suit is for passing off the goods manufactured by the defendant in the
name of ‘Chambal Deep’ as that of the goods manufactured and sold by the
plaintiff under the trademark ‘Chambal’. It is not a case of the infringement of a
registered trademark. The applications of the plaintiff and the defendant for
registration of their respective trademark ‘Chambal’ and ‘Chambal Deep’ are
pending. According to plaintiffs allegation it is using trademark ‘Chambal’ for
selling its edible oil products since 1997. It has also referred to the figures of sale
turn over since 1997 which showed that its sale turn-over had tremendously
increased over the years from Rs.
113 crores in 1997–98 to Rs. 240 crores in the years 2001–02. The plaintiff also
mentioned the amount incurred on the advertisement of its product under the
trade name ‘Chambal’ in print and electronic media, which is substantial.
  7. The word ‘Chambal’ is a geographical name and a geographical name can
be registered as a trade mark if its distinctiveness is proved. Therefore, Section 9
of the Act does not put a blanket ban on the registration of a geographical name
as a trademark. Moreover, the present case is based on passing off the goods of
the defendant as that of the plaintiff's goods, therefore, Section 27 of the Act
would save the action of the plaintiff.

 8. In Bharat Tiles & Marbles Pvt Ltd. (supra) the trademark involved was

“Bharat” and it was held that mere fact that geographical descriptive name is
adopted is not always a defence in passing off action and an injunction was
granted. In Hindustan Radiators Co. (supra) the trademark involved was
“Hindustan”, which is a geographical name, and an injunction was granted.
In Khetu Ram Bishambar Das (supra) the disputed trademarks were
“Himalaya” and “Himachal”, both geographical names and were registered was
trademark and the injunction was granted. In Shri Jawaharlal (supra) the
trademark ‘Bharat’, which was a geographical name and an injunction was
granted. In Bajaj Electricals Ltd. (supra), the trademark was. ‘Bajaj’ which was a
surname and was registered as a trademark. In a number of other suits which
have been referred on behalf of the plaintiff the trademark was
‘Gwalior’ and ‘Oxford which are geographical names and the injunction was
granted. In South India Textiles (supra) the trademark was ‘South India’ and it was
held that it does not affect the Emblem Act. In Sunder Nagar Association
Regd. (supra) it was held that ‘Sunder Nagar’, a geographical name, can be a
trademark Same view was taken in Banwari Lal Sham Lal (supra) where ‘Landra’ a
geographical word was upheld as trademark in Mahendra & Mahendra Paper
Mills Ltd. (supra) the word “Mahendra” was accepted as a registered
trademark and an injunction was granted. All these judgments would show that
geographical name, if it had acquired distinctiveness, can be used as a
trademark and may even by registered under sub-section (2) of Section 9 of the
Act.

 9. In Imperial Tobacco of India Ltd. (supra) the registration of the trademark

‘Shimla’ was involved and case arose out of the proceedings before the Registrar
of Trade Marks. It was not a case of passing off so does not apply to the facts of
the case in hand. In R.S.K.V. Raghavan Trading as R.S. Krishna & Co. (supra) the
case related to Thennamarakkudi oil. Thennamarakuddi is a village in Tamil
Nadu, which was famous for manufacturing a particular type of oil. The case
arose out of the registration of the trademark which was being used by a
number of traders for selling Nilgiri Oil and it was held that the word
‘Thennamarakkudi’ could not be appropriated
by any one trader since it was not distinctive of the plaintiff so registration of the
said trademark was declined. In Surya Agro Oils Ltd. (supra) it was held that the
word ‘Surya’ cannot be registered as a trademark. The decision turns on its own
facts because in a number of other cases the word ‘Surya’ and ‘Sun’ have been
protected as registered trademark where they have become distinctive of the
plaintiff. In Hindustan Pencils Pvt. Ltd. (supra) the word ‘Nataraj’ was not protected
but the judgment showed that it was decided on its own peculiar facts which are
inapplicable to the present case since it is not a case of the registration of
trademark. In fact, the counsel for plaintiff has mentioned a number of well
known trademarks like Gwalior Suitings, Ganga Mineral Water, Taj Mahal Tea, Lal
Quila Rice, Charminar Cigarette, Hindustan Petroleum, etc. etc., which are
geographical names and action based on them has been upheld. Having regard
to the case law cited and the fact of the present case, prima facie, it may be held
at this stage that Chambal, although it is a geographical name, is capable of
becoming a trademark and action for passing off based on it could be
maintained.

 10. As regards territorial jurisdiction of the court the argument of the

defendant is that the defendant is not manufacturing the goods or carrying on
its business within the territorial jurisdiction of this Court. It is also contended
that no relief under Section 62 of the Copyright Act on the infringement of the
Copyright has been claimed in the suit. In the plaint it is alleged that the plaintiff
became aware of the sale under the identical trademark Chambal in Gwalior
market which is beyond the territorial jurisdiction of this Court, as such, no
cause of action had arisen in Delhi for maintaining the suit in a Delhi Court. This
Court would not have jurisdiction on the basis of the allegation that the
defendant sells, distributes or market its oil with the trademark Chambal Deep
all over India based on the reply to the notice dated 20.2.2003. It is, therefore,
argued that the court does not have any territorial jurisdiction to try the suit.

 11. On the other hand counsel for plaintiffs has vehemently argued that the
plaintiff claims jurisdiction on the ground (1) that the defendant in its own letter,
which was replied on the legal notice served on its by the plaintiff, it claimed that
its goods were sold all over India including Delhi i.e. within the jurisdiction of this
Court; (2) the defendant had submitted its application for registration of the
trademark Chambal for all over India; (3) defendant's products were available for
sale in Delhi, and (4) within the meaning of provision of Section 62(2) of the
Copyright Act the defendant is carrying on the business in Delhi.

 12. In P.M. Diesels Ltd. v. Patel Field Marshal Industries, AIR 1998 Delhi 255 :

1998 PTC (18) 260 (Del) (DB) a Division Bench of this Court held that for deciding
about the territorial jurisdiction of the Court at the preliminary stage only
the averment made in the plaint should be looked into and further that since the
plaintiff was carrying on the business and were advertising its trademark in the
trademark journal so the Court would have otherwise jurisdiction under Section
62(2) of Copyright Act. In Mohan Kumar v. Narendra Products, (1995) 2 Arb. L.R.
246 : 1995 (15) PTC 248 (Del) it was held that publication of the trade mark
application by the defendant in the trade mark journal issued from Delhi was an
infringement of plaintiff's trademark and would give jurisdiction to a Delhi Court.
In Jawahar Engineering Co. v. Jawahar Engineers Pvt Ltd., 1983 PTC 207 a Division
Bench of this Court held that the court had jurisdiction on account of
advertisement appearing in trade mark journal in Delhi. In Ruchi Pvt. Ltd. v. Indian
Lame Enterprises, 2001 PTC 876 it was held that for the purpose of grant of ad
interim injunction the court was required to look into the allegation made in the
plaint and not upon the defence set up by the defendant. In Dharam Pal Satya
Pal v. Janta Sales Corporation, PTC (Supp.) (2) 31, it was held that the objection to
the territorial jurisdiction could not deter the court from considering the
application for interlocutory injunction and at this stage the averment made in
the plaint that the infringed goods was being sold in Delhi was enough for the
court to assume jurisdiction.

 13. The case law referred above on behalf of the plaintiff would show that at
the time of deciding an ad interim injunction the court would only look into the
allegations made by the plaintiff in the plaint. In para 17 of the plaint it was
alleged that the defendant was selling, distributing and marketing oil in the trade
name Chambal all over India which means in Delhi also, as per the allegations
made in reply to the legal notice by it dated 20.2.2003. It is further alleged that
the court also has jurisdiction under Section 62(2) of the Copyright Act as the
plaintiff is carrying on its business within the jurisdiction of this Court. Counsel
for defendant does not dispute that the defendant is selling its products in the
name of Chambal Deep within the territorial jurisdiction of this Court. It has also
not been disputed that the plaintiff has submitted the application for
registration of the trademark Chambal Deep for selling its product all over
India and this has been published in the trade mark journal within the
jurisdiction of this Court. Since it is not a case based on infringement of
copyright, therefore, the court would not assume jurisdiction to try the suit by
virtue of Section 62(2) of the Copyright Act. But at this stage prima facie there are
allegations in the plaint and the facts which are not disputed which would show
that the defendant is selling its oil products in the name of Chambal Deep within
the territorial jurisdiction of this Court. So far the purposes of deciding an
application for interlocutory injunction order this Court may assume jurisdiction.
  14. Now the crucial question of passing off the goods by the defendant as that
of the goods manufactured by the plaintiff arises for consideration. Concisely
the allegation of the plaintiff is that it set up the oil manufacturing industry in
1997 and in the industry has developed and the sale turn-over has increased
from Rs. 113 crores for the year 1997–98 to the present Rs. 240 crores and that
it had incurred substantial expenditure on the advertisement on
print and electronic media to built up a good reputation for its product in the
market and that its trademark ‘Chambal’ had acquired distinctiveness. It is
alleged that the defendant recently started selling its edible oil in the name of
Chambal Deep, which is deceptively similar to the trademark of the plaintiffs
‘Chambal’ and may confuse a buyer and the trader, not so vigilant, to assume
that defendant's goods is the goods of the plaintiff. The defendant in reply to the
interlocutory injunction application had contended that its industry is running
since 1980 and it is the prior user of the word ‘Chambal Deep’ for its oil products
from prior to 1997, therefore, the plaintiff has no case of passing off against it
Plaintiff has filed documentary evidence which is corroborative of its allegations
that the business of manufacturing and sale of the edible oils etc. under the
trade name ‘Chambal’ is running since 1997 whereas apart from the bald
allegation that the defendant is prior user of the trademark ‘Chambal Deep’ for
its edible oil product no documentary evidence worth the name has been filed.
Rather a copy of the application for registration of the trademark which was filed
by it in 2001 Before the Registrar, Trade Mark would show that the defendant
claimed user of the word ‘Chambal Deep’ for its goods since 2001. It falsified the
claim of the defendant that it was using the trade mark word ‘Chambal Deep’
since 1980 or at least from prior or 1997. Therefore, prima facie it appears that
the plaintiff is the prior user of the trade mark ‘Chambal’ since 1997 and the
defendant started using the trademark ‘Chambal Deep’ since 2001.

 15. The plaintiff has filed the photographs of the oil tin with labels of the
plaintiff and the defendant. They are at pages 123 to 125 of the document file.
Both the tins are identical and the colour of the label is also same-yellow. The
word ‘Chambal’ is written in bold letters. The word ‘Chambal’ is written in Hindi
also in the label of the plaintiff whereas under the word ‘Chambal’ in small print
word ‘Deep’ is written in the defendant's label. Though in the label of the plaintiff
there the words ‘Perfect Health’ in green strips are written above the word
‘Chambal’ which in the label of the defendant a flame of green colour has been
printed at that place. The two labels at the first sight may look deceptively
identical. I need not dwell further into the similarities of the two labels which, in
fact, are not to be compared by keeping them side by side while deciding
whether the product of one party can be passed off as that of the other but it is
sufficient to mention here that the counsel for defendant has fairly stated that
the label of the defendant shown in these
photographs is not used by the defendant. He has, in fact, produced another
label which had a different colour scheme, design and artistic work which has no
resemblance with the colour scheme, design and artistic work in the label of the
plaintiff shown at pages 123 to 124.

 16. In view of the above submission made on behalf of the defendant,

controversy between the parties now is confined over the use of word ‘Chambar.
There is no force in the contention of the counsel for defendant that as the
industrial unit of the defendant is situated on the bank of river Chambal or in
the area near Chambal ravines from which the word ‘Chambal has been taken
by the plaintiff, so the defendant had a superior right to use the word ‘Chambal’
as trade mark of its product in’ comparison to the plaintiffs, whose industrial
unit is located far away from this area in Bundi in Rajasthan State. It has already
has been observed that the word ‘Chambal’ when it has acquired distinctiveness
of the plaintiff could be used as a trademark by the plaintiff for its product and a
passing off action could be maintained against the defendant.

 17. One of the contention of the counsel for defendant is that the trademark
of the plaintiff is ‘Chambal’ while the trademark used by the defendant for its
products is ‘Chambal Deep’ and, therefore, both of them are so distinguishable
as no trader or consumer would confuse them. On the other hand contention of
counsel for plaintiff is that trademark ‘Chambal’ is distinctive of the
plaintiff and addition of the word ‘Deep’ would not come to the rescue of the
defendant since the word ‘Chambal’ is the main and predominant word and it is
sufficient to create confusion in the mind of an unwary customer, who has not a
very sharp memory, to be confused and assume the goods sold under the
trademark ‘Chambal Deep’ to be that of the plaintiff. Counsel for plaintiff has
referred to Ruston & Hornsby Ltd. v. Zamindara Engineering Co., PTC (Suppl) (1) 175
(SC) where the plaintiff's trade mark was ‘Ruston’ and the defendant started
selling its product in the trade name of ‘Rustam India’ and the Supreme Court
held that the words ‘Raston’ and ‘Rustam’ were phonetically and deceptively
similar and that mere addition of the word ‘India’ to the respondent's trademark
is inconsequential. Counsel for plaintiff has also referred to Metropol India
(P) Ltd. v. Praveen Industries India (Regd.), 1997 PTC (17) (DB) where the trademark
of the plaintiff was ‘Claenzo’ and the defendant started selling its product under
the trademark ‘Praveen Cleanjo’ and it was held that the word ‘Claenjo’ was
deceptively similar to the word ‘Cleanzo’ and pre-fix of ‘Praveen’ is of no
consequence and that the trademark used by the defendant may have an affect
of creating confusion in the mind of the consumers so as to pass off the goods
of the defendant as that of the plaintiffs goods in B.K. Engineering
Company v. Ubhi Enterprises, 1986 PTC 291 the court rejected defendant's
argument that the addition of figure ‘81’ as suffix to letters ‘BK’ was suffice to
distinguish it from the plaintiffs
trademark. In Godrej Agrovet Ltd. v. Rohit Agrovet Pvt Ltd., 2002 (25) PTC 573 (Bom)
the plaintiff's trademark was ‘Milk More’ and the court held that the defendant's
trademark ‘Milk Much More’ was phonetically deceptively similar to that of the
plaintiff's trademark.

 18. In an action for passing off in order to establish a prima facie case for
grant of interim injunction order it is incumbent of the plaintiff to show (1) that
the plaintiff was using the trademark in question for quite a long period and the
defendant started using a deceptively similar trademark recently; (2) the plaintiff
has brought the action without undue delay; (3) the plaintiffs trademark has
acquired distinctiveness of the plaintiff; (4) the products sold under the
trademark is similar and the activity of the market and the consensus of the
goods of the parties are similar; (5) the trademark of the defendant may pass off
or likely to pass off or it may enable all others to pass off its business or product
as that of the plaintiff and lastly; (7) the consumers of the products of the
plaintiff are capable of being deceived or confused or mislead in buying the
goods of the defendant as that of the plaintiff. The Supreme Court in Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 : 2001 PTC (21) 300
(SC) summed up the proposition of law regarding tests to determine a passing
off action with the following observation.

 19. It the background of the above proposition of law, now the facts of the
present case may be recapitulated. While the plaintiff is using the word
‘Chambal’ and the defendant is using the word ‘Chambal Deep’. Both the parties
are dealing in edible oils whether it is soya bean or vegetable oil. The products
are identical they are selling their products all over India, therefore, their sphere
of activity and business is also identical. Phonetically the word
‘Chambal’ and ‘Chambal Deep’ are similar. The same class of
purchasers and consumers are using the products of the plaintiff and the
defendant. Plaintiff is using the word ‘Chambal’ on its trademark since 1997
whereas defendant, as per its allegation in the application for registration of the
trademark, started using the trademark ‘Chambal Deep’ since 2001 i.e. much
after plaintiffs. The sale turn-over of the plaintiffs goods had increased from Rs.
113 crores in the first year of its production i.e. 1997–98 to a whopping Rs. 240
crores in the year 2001–02. The defendant could not produce the figures of its
turn-over of the goods sold in the trade name ‘Chambal Deep’ during this period.
Plaintiff has filed photographs of the labels affixed over similar tins
of oil showing the trademarks of the plaintiff and that of the defendant. They are
deceptively similar and there was likelihood of deception or causing confusion in
the mind of unwary consumer with not very good memory to confuse the
product of the defendant to be that of the plaintiff's. Though the counsel for
defendant has produced a copy of the label of the defendant's which is
strinkingly different from the photographs which appears on pages 123 to 125
but the word ‘Chambal’ is prominent on it. Since the word ‘Chambal’ has
acquired distinctiveness of the plaintiff, therefore, addition of the word ‘Deep’
with it would not be of any consequence.

 20. The Supreme Court in Wander Ltd. v. Antox India P. Ltd., 1990

Supp SCC 727 : 1991 (11) PTC 1 (SC) on the question of grant of interlocutory
injunction order, held as follows:—

“‘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
which he could not be adequately compensated. The court must weigh one
need against another and determine where the ‘balance of convenience’ lies.”

 21. The plaintiff prima fade has raised a bona fide contention and a serious

question which needed investigation and trial. The word ‘Chambal’ used by the
plaintiff and the word ‘Chambal Deep’ used by the defendant are
phonetically and deceptively similar and they are likely to cause
confusion and deception in the mind of the consumers and others in the trade
so as to pass off the goods of the defendant as that of the product of the
plaintiff. Plaintiff is likely to suffer greater inconvenience than that of the
defendant if ad interim injunction prayed for by it is declined at this stage.
Plaintiff is using the trademark ‘Chambal’ since 1997 whereas the defendant has
started using it very recently in 2001, according to its own averment in the
application for registration of the trademark.

 22. The balance of convenience is, therefore, in favour of the grant of

interlocutory injunction. Plaintiff may also suffer irreparable loss and
injury if the defendant is allowed to continue to sell its products also in the trade
name of ‘Chambal Deep’ during the pendency of this suit.

 23. Applying the law laid down by the Supreme Court in above cited cases, it is
held that the plaintiff has been able to establish it case for grant of interlocutory
injunction, as prayed for in the application. Accordingly, the application is
allowed and the defendants themselves, their servants, agents, dealer, shop
keepers and all other persons on their behalf by way of ad interim injunction
order are restrained from manufacturing, selling, offering for sale or advertising
directly or indirectly in dealing in order oil under the trade mark ‘CHAMBAL’ or
any other trade mark or packing material amounting to pass off of the trade
mark ‘CHAMBAL’ of the, plaintiff or any other trade mark or packing material
amounting to association with the plaintiffs.

 24. The application is disposed of.

13. Sholay Media and Entertainment Pvt. Ltd. v. Parag

Sanghavi, 2015 SCC OnLine Del 11644
MANMOHAN SINGH, J.:— The plaintiffs have filed the present suit for
permanent injunction restraining infringement of registered trademarks,
infringement of copyright, passing off, rendition of accounts,
damages and delivery up etc against the defendants.

2. The plaintiffs are private limited companies engaged in the business of

producing, exhibiting and distributing cinematograph films.

3. The plaintiffs are the copyright owners and administer all intellectual

property in respect of 32 cinematograph films, including the iconic and eternal
hit film “SHOLAY”. The other hits in the Sippy repertoire of films include films
such as ‘Johar Mehmood in Goa’, Bhramachari’, Bandhan’, Andaz’, ‘Seeta Aur Geeta’,
‘Shaan’, ‘Saagar, Patthar Ke Phool’, Sheshensha Hameshaa’ etc.
4. The defendants have distorted and mutilated the original copyright work of the

plaintiffs. The defendants have also infringed the moral rights of the plaintiffs as under

Section 57 of the Copyright Act, 1957. As the said defendants have similar name of

characters under the music, lyrics and dialogues from the original work of the plaintiffs

which was created by them for the first time and were author and owner of the same,

the defendants are thus also guilty of passing off. They are not able to assign any valid

reason for the same. Despite of statement made in the Court for change of the name of

the movie, when the same was released, still it appears that the defendants' movie have

similar name of the characters and they have used the lyrics and dialogues in material

form in their movie. The movie was produced and released without authorisation from

the owner and author i.e. plaintiffs.

5. In view of the facts of the present case, the plaintiffs are granted a sum of
Rs. 10,00,000/- as punitive damages against the defendant Nos. 3 to 6 i.e. Mr.
Ram Gopal Varma, Mr. Madhu Varma, M/s. RGV Productions Pvt. Ltd. as well as
Varma Corporation Limited against the prayer made in para 44(vii) of the plaint.
The other reliefs are rejected as not pressed except the costs for which the
defendant No. 3 to 6 are burdened with the costs of Rs. 50,000/- which shall be
deposited by them with Prime Minister Relief Fund within four weeks from
today.

6. The suit for permanent injunction is decreed of the judgment.

8. Decree be drawn accordingly.

9. The suit is disposed of.

13.Carlton and United Breweries Ltd. v. Harmohan Singh

Chandhok, 2005 SCC OnLine Del 973
SWATANTER KUMAR, J.— The plaintiff is a company organised and existing under
the laws of the commonwealth of Australia having its office at 16 Bouverie
Street, Carlton, State of Victoria, Australia. Mr. Surinder Singh is the constituted
attorney and is duly authorised to sign and verify the pleadings and institute the
present suit on behalf of the plaintiff company.

 2. The plaintiff company, which is into the business of beverage, is dedicated

to delivering quality beer, wine, spirits and leisure products to millions of
consumers across the world.

 3. It is the case of the plaintiff that it is engaged in a world-wide business

together and through its subsidiaries of manufacturing and marketing of the
said products. These products are stated to be subject to stringent quality
testing with a focus on technical excellence and superior brand marketing. The
goods of the plaintiff are sold in more than 150 countries including India. The
company is the proprietor of, inter alia, the trademark FOSTER'S and distinctive F
device, which was adopted by the plaintiff's predecessors in or around the year
1889. The plaintiff has the registered trademark Foster's in Australia way back in
1909 and has grown to be a truly global corporation. The world-wide annual
retail sales of FOSTER'S beer are in excess of $6 million. They have 20
plants and sale of over 8 million hacto-litres.

 4. In order to acquire statutory protection and recognition for the mark

FOSTER'S and provide better protection against piracy, the plaintiff has obtained
registered and/or applied for registration of the mark FOSTER'S and the
distinctive F device in many countries of the world. In India the trademark
FOSTER'S with F Device has been registered in Clause 32 under No. 387335B of
the Fourth Schedule of the Trade Marks Act with effect from 15th July, 1993.
Thus, the registration confers on the plaintiff the exclusive right to use the
mark and to restrain use of any identical or deceptively similar mark by
unauthorised persons.

 5. It is further the case of the plaintiff that due to their excellent quality of
product, advertising and promotion of the brand, they have become a well
known and widely recognised beer brand all over the world including India. They
enjoyed international reputation. Somewhere in the first week of March, 2002,
the plaintiff's subsidiary in India was informed that an application was made by
the defendant No. 2 with the office of the Commissioner of State Excise, Mumbai
seeking excise licence/clearance to manufacture and market ‘Vodka and gin-n-
lime’ under the mark FOSTER. On receiving this information, the plaintiff made
inquiries in the market and was told that no such product is currently being
manufactured and marketed by the defendants. The plaintiff proceeded
immediately to file a complaint at the office of the Commissioner of State Excise
on 8th March, 2002.

 6. Defendant No. 3 has obtained registration of a label mark ‘FOSTER

LONDON DRY GIN’ in Class 33 under No. 530071 wherein the defendants
specifically given up their rights over the trademark ‘FOSTER’. Hence the
defendants have stated to have no right pertaining to the trademark ‘FOSTER’.

 7. It is further averred by the plaintiff that the defendants have infringed
trademark and has been passing of the goods as if the goods manufactured by
them were manufactured by the plaintiff. Therefore, the plaintiff has brought
the present suit for permanent injunction restraining the defendants from
infringing the trademark, copyright and from passing of their goods as goods of
the plaintiff and also for rendition of accounts. There is a specific prayer made
by the plaintiff for delivery up of all goods, dies, blocks, cartons, labels and any
other material printed by the defendant in that behalf.

 8. Summons in the suit were issued to the defendants. The defendants were
served. They appeared before the Court and even filed the written statement.

 9. In the written statement they had taken up a preliminary objections in

regard to territorial jurisdiction of the Court, delay in bringing the action and that
the goods of the defendants are totally different and are nowhere similar to the
goods of the plaintiff. It is stated that goods of the answering
defendants viz. Vodka and Gin-n-lime are very different. The plaintiff cannot
claim any exclusive monopoly over the rights for the use of the impugned
trademark as the registered trademark is restricted to the goods in connection
with which it is being used. According to the defendants they have been using
the mark FOSTER since 1990 while the plaintiff started sale of such goods only in
the year 2001 and as such the suit of the plaintiff need to be rejected.

 10. Replication was filed reiterating the facts stated in the plaint as well as by
giving additional facts and along with that documents were filed to establish the
plea that there is no distinction between the goods and the defendants are
taking advantage of reputation of the plaintiff and are causing infringement
actionable in law.

 11. From the record of the file it appears that on 9th February, 2004, the
representative of defendant had appeared in person and an adjournment was
prayed for, which was granted and the suit was ordered to be listed on 22nd
April, 2004 for framing of issues and arguments on the injunction application.
On that date, again a request was made on behalf of the defendant, which was
allowed, subject to payment of cost of Rs. 5,000/-. Vide order dated 24th August,
2004, the Court noticed that there was no specific denial of the averments made
in para 14 of the plaint and also the fact that none was present on behalf of the
defendants. The injunction prayed for was granted and the defendants were
restrained from using the mark FOSTER for the sale of cognate products and in
particular ‘Vodka and Gin-n-lime’ by the name and mark of Foster. As nobody
was appearing on behalf of the defendants, vide order dated 13th September,
2004, the plaintiff was granted opportunity to file evidence by way of
affidavit. Vide order dated 20th January, 2005, the case was fixed for ex
parte evidence and the plaintiff was granted last opportunity to file ex
parte evidence by way of affidavit and if evidence was not filed the evidence of
the plaintiff would stand closed. On 1st September, 2005, the following order
was passed:

“Arguments heard. Judgment reserved.

Learned Counsel for plaintiff states that the plaintiff does not press the relief
for claim of damages.”

 12. The plaintiff in furtherance to the orders of the Court have filed evidence
by way of affidavits. There are two affidavits on record. One is of Mr. Owen John
Malone, Vice-President of the plaintiff company and the other of Mr.
Surinder Singh. The power of attorney in favour of Mr. Surinder Singh is marked
as Exh. PW1/1. The affidavit of Mr. Surinder Singh is exhibited as Exh. PW 1/A. In
the affidavit of Mr. Own John Malone, the entire literature and brochure of the
plaintiff's company has been marked as Exh. PW 1/1. The sale invoices of the
plaintiff company in India is marked as Exh. PW 1/2. The annual report of the
plaintiff company for the year 2000 is marked Exh. PW 1/3 while the registration,
which the plaintiff has obtained in the mark FOSTER and distinctive F device in
many countries of the world and the list of countries is annexed to the affidavit
as Exh. PW 1/4. PW 1/5 is the legal proceeding certificates showing that the
registration confers on the plaintiff the exclusive right to use the mark and to
restrain use of any identical or deceptively similar mark by unauthorised
persons. In Paragraph 17 of this affidavit it is stated as under:

“17. I say that further inquiries indicate that defendant No. 3 has obtained
registration of a label mark “FOSTER LONDON DRY GIN” in Class 33 under No.
530071 with a disclaimer of the word ‘FOSTER’. A copy of the advertisement
of the mark from Trade Marks Journal No. 1203 (Supply) dated July 21, 1999
 page No. 127 is submitted herewith and marked as Ex. PW 1/7 original
trademark journal is in possession of plaintiff which may be seen and return”

 13. In addition to the above evidence, the plaintiff has heavily relied upon the
vague averments in the written statement and there being no specific denial.
Exh. PW 1/3 is the certificate issued for trade mark No. 387335 in Class
32 in relation to FOSTER'S (DEVICE) by the Examiner of Trade Marks,
Government of India. During the course of hearing, learned Counsel for the
plaintiff, though the matter was being heard ex parte, heavily relied upon the
judgments of the Supreme Court and this Court in support of his contentions
that the delay alleged to have been caused is inconsequential so far as the
plaintiff can establish the infringement of his trademark and copyright.

 14. In the case of Swarn Singh v. Usha Industries, AIR 1986 Delhi 343, a Division
Bench of this Court took a view that delay normally would not be fatal to grant of
an injunction as exclusive right is granted by the registration to the holder of a
registered trademark and such statutory right cannot be lost by delay.

 15. In the case of Hindustan Pencils v. India Stationery, AIR 1990 Delhi 19, again
the Court took the view that where infringement is deliberate and wilful and the
defendant acts fraudulently that he is violating plaintiff's rights, essential
elements of estoppel are lacking and in such a case the protection of plaintiff's
right by injunctive relief never is properly denied.

 16. In regard to the fact that the plea of the defendants that goods of the
defendant are different to the goods produced by the plaintiff, Counsel while
relying upon the judgment of the Supreme Court in the case of Corn Products
Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, argued that the
wrongs of the defendants give definite right to the plaintiff in view of the
following dictum of the Supreme Court.

 17. In the present case the defendants have specifically pleaded that their
goods are not similar and, thus, they are not infringing the trademark of the
plaintiff. It is not disputed that they are manufacturing, selling and offering for
sale ‘Vodka and Gin-n-lime’ while the trademark the plaintiff is using for beer,
etc. The two sets of goods are of same description.

 18. The plaintiff is well established company and is having world-wide

reputation with the trademark FOSTER with F device and as such the defendant.
cannot be permitted to infringe the trademark of the plaintiff which the plaintiff
is using since 1889. They are also infringing the copyright of the plaintiff with F
device and are passing of their goods as they were the goods of the plaintiff if
not exactly at least deceptively. Learned Counsel for the plaintiff has already
given up the claim of the damages.

 19. In view of the above discussion, a decree is passed in favour of the

plaintiff and against the defendants for permanent injunction restraining the
defendants, their partners or proprietors, their officers, servants,
agents and representatives from manufacturing, selling and offering for sale
‘Vodka and Gin-n-lime’ or any other spirits or liquor products under the mark
FOSTER or under any other mark deceptively similar to the plaintiff's trademark
FOSTER'S and F device and pass off their goods as those of the plaintiff. The
plaintiff shall be entitled to his costs in the suit.

 20. The suit stands disposed of.

14. Pepsico, Inc. v. Savior Paper and Polymer Pvt. Ltd., 2018
SCC OnLine Del 11280
The Judgment of the Court was delivered by

MANMOHAN, J. (Oral):— Present suit has been filed for permanent injunction
restraining infringement of trademark and copyright, and passing off.

2. The prayer clause in the present suit is reproduced hereinbelow:—

“18. In the circumstances, the Plaintiff respectfully prays for:

(i) Trade Mark Infringement

A decree and order of permanent injunction to restrain the defendant,

by itself, its directors, its agents, representatives, servants, men,
distributors and all those acting in concert with it or on its behalf or
claiming under or through it or otherwise howsoever, from using upon or
in relation to its products the Impugned Marks and/or any other marks
which may be identical and/or deceptively similar to the plaintiff's
registered PEPSI marks and from infringing the plaintiff's statutory rights in
the said PEPSI marks;

(ii) Passing off:

An order of permanent injunction to restrain the defendant, by itself, its

directors, its agents, representatives, servants, men, distributors and all
those acting in concert with it or claiming under or through it or otherwise
 howsoever, from using the Impugned Marks and/or any other mark which
may be identical and/or deceptively similar to the plaintiff's well-known
PEPSI marks and from in any manner, passing off or attempting to pass off
or causing, enabling or assisting others to pass off its
business and products as and for the business and products of the
plaintiff;

(iii) Copyright Infringement:

An order of permanent injunction to restrain the defendant, by itself, its

directors, its agents, representatives, servants, men, distributors and all
those acting in concert with it or claiming under or through it or otherwise
howsoever, from infringing the plaintiff's copyright in the Three Field Device
mark;

(iv) Dilution

A decree and order of permanent injunction to restrain the defendant,

by itself, its directors, its agents, representatives, servants, men,
distributors and all those acting in concert with it or on its behalf or
claiming under or through it or otherwise howsoever, from indulging in any
activity which dilutes the distinctive character of the plaintiff's PEPSI marks;

(v) Delivery Up

An order for delivery for destruction upon oath of all products

including paper cups, packing material, stationery, carry bags, price
stickers, visiting cards, billboards, brochures, promotional material, point
of sale material, letter heads, cash memos, sign boards, sign posts, leaflets,
cartons or any other times of whatsoever description and nature, bearing
the Impugned Marks and/or any other marks which may be
identical and/or deceptively similar to the plaintiff's PEPSI marks which
would offend against the foregoing injunction;

(vi) For an order and final decree of damages to the tune of Rs. 1,00,05,000/-

in favour of the plaintiff and against the defendant;

(vii) For costs of this suit;

(vii) Any other and further reliefs as this Hon'ble Court may deem

fit and proper to meet the ends of justice.”

3. On 15th February 2018, this Court granted an ex parte ad interim injunction

in favour of the plaintiff and against the defendants. The relevant portion of the
said order is reproduced hereinbelow:—
 “Consequently, till further orders, the defendant, its agents, representatives,
servants, men, distributors and all those acting in concert with it or on behalf of it
or claiming under or through it or otherwise howsoever, are restrained from using
upon or in relation to its business and products the impugned marks including
POPSI and/or any other mark or device which may be identical and/or deceptively
similar to the registered mark PEPSI of the plaintiff in any manner whatsoever.”

4. At the outset, learned counsel for plaintiff gives up prayers (v) and (vi) of
the plaint. The statement made by learned counsel for plaintiff is accepted by
this Court and plaintiff is held bound by the same.

5. Since the defendants have neither appeared nor filed a written statement,
they are proceeded ex-parte.

6. Learned counsel for the plaintiff states that in view of the judgment of this
Court in Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd., the present suit
should be decreed qua the reliefs in paragraph 18 (i) to (iv) and (vii) of the plaint
of the plaint. The relevant portion of the judgment in Satya
Infrastructure Ltd. (Supra) relied upon by learned counsel for the plaintiffs is
reproduced herein.

7. The contentions and submissions advanced by the learned counsel for the

plaintiff are as under:—

(i) The plaintiff is a corporation duly incorporated and existing under the laws

of the State of North Carolina, USA and is in the business of
manufacturing and distributing (on its own and through
affiliates and subsidiaries across the world) non-alcoholic beverages,
packaged drinking water and snack foods and is today one of the world's
premier consumer products company. Its products include refreshment
beverages; sports drinks; fruit juices and salted snacks and foods which
are sold in almost every country in the world under various marks such as
PEPSI, 7UP, MOUNTAIN DEW, AQUAFINA, SLICE, LAY'S, CHEETOS etc.

(ii) The plaintiff's products under the PEPSI marks have been sold
internationally since 1911 and in India since mid-1950's and that the
plaintiff's marks have acquired reputation and high public recognition. It is

further stated that the three field device mark   was adopted by the
plaintiff for the first time in 1950's and has been used
extensively and continuously since 1975. It is stated that the device mark
 constitutes as an original artistic work within the meaning of Section2 (c)
of the Copyright Act, 1957.

(iii) The plaintiff is the owner of 4600 registration/applications

worldwide and is the registered proprietor of the mark PEPSI in India in
various classes under the Trademark Act, 1999. The earliest registration of
the plaintiff in India dates back to 1943 and has been recognized as well
known trademark by the Trademark Office in India. Plaintiff's also operate
the website www.pepsi.in, which is accessible to users of the internet, all
over the world including in India.

(iv) The annual sales of soft drinks under PEPSI marks in India from 2013 till
date has been in excess of INR 2743 crores and that the plaintiff has spent
in excess of INR 998 crores since 2013 till date, for
advertising and promoting its products under the PEPSI marks.

(v) In September, 2016, the plaintiff became aware about use of the PEPSI
marks by the defendant. Further, enquiries conducted by the plaintiff
revealed that the defendant is in the business of
manufacturing and supplying disposable paper cups under the impugned
marks. Photographs of the said paper cups are reproduced hereinbelow:
—

(vi) The plaintiff addressed a legal notice dated 20 th October, 2016, to the
defendant, however the same could not be delivered. The Plaintiff's
representative hand-delivered the legal notice on January 21, 2017.
However, the defendants have not complied with the same. On further
enquiries conducted by the plaintiff's in July, 2017 and September 2017
revealed that defendants continue to infringe the rights of the plaintiff
under PEPSI marks.
 (vii) The adoption and use of the impugned marks by the defendant is
motivated by mala fide/dishonest intention to trade
upon and commercially benefit from the reputation and goodwill enjoyed
by the plaintiff in its PEPSI marks.

(viii) Use of the impugned marks which are virtually identical to the plaintiff's
PEPSI marks, is motivated with a view to falsely portray that the products
of the defendants is associated with the plaintiff's and to deceive the
consumers into believing that the products of the defendant enjoy
endorsement of the plaintiff.

8. In the opinion of this Court, the defendants have no real prospect of
defending the claim as they have neither entered appearance nor filed their
written statement or denied the documents of the plaintiffs. Further, the
plaintiffs are the prior registered user of the trade marks and logo in question.

9. In view of the above, the suit is decreed in favour of the

plaintiffs and against defendants in terms of paragraph 18 (i) to (iv) and (vii) of
the plaint. The costs shall amongst others include the lawyer's fees as well as the
amount spent on Court-fees. Registry is directed to prepare a decree sheet
accordingly.

10. Consequently, the present suit and applications stand disposed of.

15. Asian Paints (India) Ltd. v. Balaji Paints and

Chemicals, 2006 SCC OnLine Del 318

The Judgment of the Court was delivered by

 SANJAY KISHAN KAUL, J.—The plaintiff has filed the suit for permanent
injunction, infringement of trademark and copyright, passing off,
damages and delivery up in respect of the packing material (Annexure A to the
plaint) for its products. ASIAN PAINTS, APCOLITE, APEX and TRACTOR.

 2. The plaintiff is a company incorporated and registered and the suit is

instituted through Shri Sunil Jaifalkar. The Power of Attorney in his favour dated
27.1.2003 has been proved as Ex. P1.

 3. The plaintiff is engaged in the business of manufacturing and marketing

of paints, varnishes, enamels and other like products and colour concentrates
for the last more than 50 year and is stated to be the market leader in its field.
The products of the plaintiff are stated to be marketed under distinctive brand
names in containers and packaging bearing a distinctive trade dress and getup.

 4. The plaintiff's device, the image GATTU has a mischievous little boy with the
lopsided grin as its mascot. This mascot is stated to have been originally created
in the year 1954 by India's top cartoonist, R.K. Laxman.

 5. The plaintiff is the registered proprietor of the trademark

APCOLITE, ASIAN PAINTS (DEVICE) UTSAV, TRACTOR and the TRACTOR (DEVICE).
The plaintiff is also the proprietor of the trade mark (device) of Gattu registered
in Class 2 as on 27.11.1963. The plaintiff has proved as Ex. P2 and Ex. P3, the
certificates of registration of trademark for APCOLITE and packing material of
plaintiff for sale of different enamels and paints as Ex. P4 to Ex. P6.

 6. The plaintiff claims original artistic work within the meaning of Section 2(c)
of the Copyright Act in respect of its container and packaging material as the
same are stated to have distinctive colour scheme layout and getup. The
trademark of the plaintiff is also stated to be written in a distinctive manner.

 7. The plaintiff has set forth in the plaint its sales figures running into crores
of rupees and the advertising expenses itself run into about Rs. 69 crores for the
year 2004-2005.

 8. In the last week of July, 2005, the plaintiff came across persons in
Delhi and adjoining areas who had commenced the use and started marketing
synthetic enamel by adopting the trademarks of the plaintiff such as APCOLITE,
APEX and TRACTOR. Defendant No. 1 was found to manufacture and defendant
No. 2 was found to be the retailer. On further inquiries, the plaintiff found that
the defendants were also manufacturing the look alike products by using the
trademarks SUPER ASIAN, GREAT ASIAN, ASIAN GOLD in the same manner as the
trademark of the plaintiffs and the packaging material used by the defendants
was identical to that of the plaintiff giving impression as if the product of the
defendants is that of the plaintiff. Defendant No. 3 is apparently the shopkeeper.

 9. Defendant Nos. 2 and 3 appeared before the Court on 9.12.2005 and their

statement was recorded in terms whereof they agreed to suffer a decree in
terms of prayers (a) to (d) of para 33 of the plaint and to pay costs to the plaintiff
of Rs. 10,000/- each. However, defendant No. 1 failed to appear despite
service and was proceeded ex parte and the plaintiff has led ex parte evidence by
way of affidavit. The affidavit has been filed by Shri Jaifalkar who has affirmed to
the contents set out in the plaint and has proved the documents referred to
aforesaid. The said witness has also proved as Ex. P7 to Ex. P9, the Notary's
reports regarding purchase of the goods of the defendants and has proved the
photographs of the defendant's products as Ex. P10 to Ex. P15.

 10. Learned Counsel for the plaintiff has taken me through the

pleadings and the documents as well as the affidavit of evidence filed by the
plaintiff. The same show that the defendants have been adopting the trade
marks of the plaintiff and trying to package their goods with the object of
deceiving the public into believing that the goods sold by the defendants are
those of the plaintiff. It cannot be lost sight that the purchaser of such material
is not only the educated class and thus the chances of deception are even
higher. The use by the defendants of the trademark cannot be said to be bona
fide and there is infringement of the rights of the plaintiff. The defendant No. 1
being the manufacturer is primarily liable but has failed to enter appearance.

 11. Learned Counsel for the plaintiff states that apart from the relief claimed
for in paras (a) to (d) of para 33 of the plaint, the plaintiff is also entitled to
damages. In this behalf, learned Counsel has relied upon the judgments of this
Court in Relaxo Rubber Limited v. Selection Footwear, 1999 PTC (19) 578; Hindustan
Machines v. Royal Electrical Appliances, 1999 PTC (19) 685 and CS (OS)
2711/1999; L.T. Overseas Ltd. v. Guruji Trading Co., decided on 7.9.2003. In all
these cases, damages of Rs. 3 lakh were awarded in favour of the plaintiff.
In Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del.), apart from
compensatory damages even punitivedamages were awarded to
discourage and dishearten law-breakers who indulge in violation with impunity.
In a recent judgment in Hero Honda Motors Ltd. v. Shree Assuramji Scooters, 125
(2005) DLT 504, this Court has taken the view that damages in such a case
should be awarded against defendants who chose to stay away from
proceedings of the Court and they should not be permitted to enjoy the benefits
of evasion of Court proceedings. The rationale for the same is that while
defendants who appeared in Court may be burdened with damages while
defendants who chose to stay away from the Court would escape such damages.
The actions of the defendants result in affecting the reputation of the
plaintiff and every endeavour should be made for a larger public purpose to
discourage such parties from indulging in acts of deception.

 12. A further aspect which has been emphasised in Time Incorporated

case (supra), is also material that the object is also to relieve a pressure on the
overloaded system of criminal justice by providing civil alternative to criminal
prosecution of minor crimes. The result of the actions of defendants is that
plaintiffs, instead of putting its energy for expansion of its business and sale of
products, has to use its resources to be spread over a number of litigations to
bring to book the offending traders in the market. In view of the aforesaid, I am
of the considered view that the plaintiff would also be entitled to damages which
are quantified at Rs. 3 lakh.

 13. A decree is passed in favour of the plaintiff and against defendant No. 1 in

terms of prayers (a) to (d) of para 33 of the plaint. The plaintiff is held entitled to
a decree for a sum of Rs. 3 lakh against defendant No. 1. The plaintiff is also held
entitled to costs including the amount spent on the fee of the Local
Commissioner. The decree sheet be drawn up accordingly.

16. Tea Board of India v ITC Ltd. C.S. No. 250 of 2010
The two parties have locked horns over "Darjeeling" in Calcutta. The claimant asserts
exclusivity over "Darjeeling" and insists that it may not be used by the defendant without
leave; the defendant extols the virtues of the sights and sounds of the idyllic crucible of
nature's bounty that answers by that lilting description and maintains that there is more to
"Darjeeling"- its misty mornings, alluring snow caps in the distance and the innocence of
its apple-cheeked children - than the tea that is grown thereabouts.

The plaintiff is a statutory body set up under the Tea Act, 1953. The plaintiff is the
registered owner of the two sets of trade marks. The marks are word "Darjeeling" and a
round device featuring the exquisite profile of a lady to the right holding the easily
recognisable two-leaves-and-a-bud in her left hand and the word "Darjeeling" spelt out on
the edge running from 9 o'clock to 12 o'clock. The word and device marks are
independently registered under the Geographical Indication of Goods (Registration
& Protection) Act 1999 and the Trade Marks Act, 1999.

The plaintiff's grievance here is in the defendant naming a section of its luxurious ITC
Sonar Hotel in the city as the "Darjeeling Lounge." The plaintiff has run its case at
several levels: first claiming that the use of "Darjeeling" in the name of the exclusive
lounge amounts to infringement of the plaintiff's "Darjeeling" geographical indication
mark and certification mark; that, at any rate, it amounts to passing-off; and, that it leads
to dilution of the "Darjeeling" brand which is only the plaintiff's to exploit.

The defendant attempts to cut the plaintiff's case at the very root. The defendant says that
before discrediting the claim on the basis of what can and does go on at the defendant's
"Darjeeling Lounge," it is the very foundation of the claim which is flawed. The
defendant reads the Geographical Indications (GI) Act to permit a grievance relating to
the breach of a right conferred by the registration of a mark thereunder to be restricted to
goods. It suggests that since the GI Act is concerned with goods and seeks to protect only
goods that have an element of distinctiveness on account of quality or reputation or other
characteristic which is attributable to their geographical origin, the registration thereunder
permits a complaint by a proprietor against any person or persons connected with the
goods complained of; but does not stretch the rights conferred by registration thereunder
to proceed against any service or persons connected with the service complained of.

The merits of the plaintiff's complaint - the prima facie case that is the lot of the
interlocutory court - would not much detain the assessment; it is the more deep-rooted
criticism by the defendant of the plaintiff's perceived cause of action that may. The
defendant wants the GI Act understood as providing protection only to goods against
goods and persons connected therewith and not having room enough to allow a complaint
by a registered proprietor against any service or persons connected with the impugned
service.

The GI Act announces in its preamble that it provides for the registration and better
protection of geographical indications relating to goods. In its statement of objects and
reasons, the bill that preceded the Act proclaimed that unless a geographical indication
was protected in the country of its origin, there would be no obligation under the
agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) for other
countries to extend reciprocal protection and that would be to the detriment of goods
bearing Indian geographical indications in the international market. Section 2(1)(f) of the
GI Act defines "goods" to mean any agricultural, natural or manufactured goods or any
goods of handicraft or of industry including foodstuff. The following sub-section gives an
inclusive definition of "indication" to imply any name, geographical or figurative
representation or any combination of them conveying or suggesting the geographical
origin of the goods to which it applies. Section 2(1)(e) of the GI Act is of the very essence
of this statute:

"2. Definitions and interpretation. - (1) In this Act, unless the context otherwise
requires,- ...
(e) "geographical indication", in relation to goods, means an indication which identifies
such goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of such goods is essentially attributable to
its geographical origin and in case where such goods are manufactured goods one of the
activities of either the production or of processing or preparation of the goods concerned
takes place in such territory, region or locality, as the case may be.
Explanation.- For the purposes of this clause, any name which is not the name of country,
region or locality of that country shall also be considered as the geographical indication if
it relates to a specific geographical area and is used upon or in relation to particular goods
originating from that country, region or locality, as the case may be;"

After the preliminary chapter of the GI Act that includes the title and definition sections,
the second chapter deals with the registry and the conditions for registration. The
following chapter deals with the procedure for and duration of registration and the fourth
chapter deals with the effect of registration. Chapter IV has five sections: Section 20 is
equivalent to Section 27 of the Trade Marks Act and recognises an action for
infringement to be brought only on the basis of a registered geographical indication. Sub-
section (2) keeps the world of passing-off beyond the pale of the statute. Sections
21 and 22 detail the rights conferred by registration under the Act and what would
amount of infringement, respectively. Section 21 of the Act and Section 22 (1) thereof are
relevant for the present purpose:

"21. Rights conferred by registration. -(1) Subject to the other provisions of this Act, the
registration of a geographical indication shall, if valid, give,-
(a) to the registered proprietor of the geographical indication and the authorised user or
users thereof to obtain relief in respect of infringement of the geographical indication in
the manner provided by this Act;
(b) to the authorised user thereof the exclusive right to the use of the geographical
indication in relation to the goods in respect of which the geographical indication is
registered.

(2) The exclusive right to the use of a geographical indication given under section (b) of
sub-section (1) shall be subject to any condition and limitation to which the registration is
subject.

(3) Where two or more persons are authorised users of geographical indications, which
are identical with or nearly resemble each other, the exclusive right to the use of any of
those geographical indications 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 anyone of those persons as against any other of those persons merely by registration of
the geographical indications, but each of those persons has otherwise the same rights as
against other persons as he would have if he were the sole authorised user."

"22. Infringement or registered geographical indications.- (1) A registered geographical

indication is infringed by a person who, not being an authorised user thereof,-

(a) uses such geographical indication by any means in the designations or presentation of
goods that indicates or suggests that such goods originate in a geographical area other
than the true place of origin of such goods in a manner which misleads the persons as to
the geographical origin of such goods; or

(b) uses any geographical indication in such manner which constitutes an act of unfair
competition including passing off in respect of registered geographical indication.

Explanation 1. - For the purposes of this clause, "act of unfair competition" means any act
of competition contrary to honest practices in industrial or commercial matters.

Explanation 2. - For the removal of doubts, it is hereby clarified that the following acts
shall be deemed to be acts of unfair competition, namely:-

(i) all acts of such a nature as to create confusion by any means whatsoever with the
establishment, the goods or the industrial or commercial activities, of a competitor;
(ii) false allegations in the course of trade of such a nature as to discredit the
establishment, the goods or the industrial or commercial activities, of a competition;
(iii) geographical indications, the use of which in the course of trade is liable to mislead
the persons as to the nature, the manufacturing process, the characteristics, the suitability
for their purpose, or the quantity, of the goods;
(c) uses another geographical indication to the goods which, although literally true as to
the territory, region or locality in which the goods originate, falsely represents to the
persons that the goods originate in the territory, region or locality in respect of which
such registered geographical indication relates."

Section 23 of the GI Act, like Section 31 of the Trade Marks Act, recognises registration
of a geographical indication to be prima facie evidence of its validity. Section 24 of the
GI Act prohibits assignment, transmission, licensing, pledge, mortgage and the like of the
rights in respect of the registered geographical indication. Such provision is a departure
from the general right of assignment and transmission of a registered mark under the
trade mark law. In a sense, such bar may be a complete answer to one of the major planks
of the plaintiff's contention that the defendant may use the word "Darjeeling" only upon
licence in such regard being obtained from the plaintiff.

Chapter V of the GI Act contains two sections that prohibit the registration of a
geographical indication as a trade mark and accord protection to certain trade
marks. Section 26(4) which falls in this chapter has been referred to in great detail by the
parties and needs to be noticed in the context :

" 26. Protection to certain trade marks. - ...

(4) Notwithstanding anything contained in the Trade Marks Act, 1999 or in this Act, no
action in connection with the use or registration of a trade mark shall be taken after the
expiry of five years from the date on which such use or registration infringes any
geographical indication registered under this Act has become known to the registered
proprietor or authorised user registered in respect of such geographical indication under
this Act or after the date of registration of the trade mark under the said Trade Marks
Act subject to the condition that the trade mark has been published under the provisions
of the said Trade Marks Act, 1999 or the rules made thereunder by that date, if such date
is earlier than the date on which such infringement became known to such proprietor or
authorised user and such geographical indication is not used or registered in bad faith."

The four other chapters of the GI Act cover rectification and correction of the register;
appeals to the appellate board; offences and penalties; and, miscellaneous provisions.
These chapters have not been placed with any great emphasis by the parties
though Section 37 thereof, which is the first section in Chapter VIII that deals with
offences, penalties and procedures, may be of some interest as it stresses on "goods" in its
every limb in spelling out the meaning of applying geographical indications. Such
provision may be juxtaposed against the corresponding Section 101 under the Trade
Marks Act that extends the deeming provision thereunder to both goods and services.

Apart from the plaintiff's claim on the basis of its geographical indication, "Darjeeling",
the plaintiff also asserts its rights as the owner of the certification marks that confer
special rights under Chapter IX of the Trade Marks Act. Such stand-alone chapter of
the Trade Marks Act has 10 Sections. Section 69 precludes the applicability of certain
statutory provisions relating to general trade marks to certification trade marks. The next
five sections deal with the registribility of certification trade marks, applications for such
purpose, the considerations relevant for registration, the procedure for opposition to an
application for registration and the filing of regulations governing the use of a
certification trade mark. It is such regulations relating to the use of certification trade
marks that set certification trade marks apart from regular trade marks. "Certification
trade mark" is defined in Section 2(1)(e) of the Act and contemplates the proprietor
authorising the use of the certification trade mark by others in accordance with the
regulations governing the use thereof which have to be statutorily filed with the trade
marks registry. Certification trade marks apply to both goods and services as would be
evident from its definition and from Sections 70 and 75 of the Act. Sections 2(1)
(e), 70 and 75 of the Trade Marks Act are relevant in the context:

"2. Definitions and interpretation.- (1) In this Act, unless the context otherwise
requires,- ...
(e) "certification trade mark" means a mark capable of distinguishing the goods or
services in connection with which it is used in the course of trade which are certified by
the proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics from goods or services
not so certified and registrable as such under Chapter IX in respect of those goods or
services in the name, as proprietor of the certification trade mark, of that person;"
"70. Registration of certification trade marks.-A mark shall not be registrable as a
certification trade mark in the name of a person who carries on a trade in goods of the
kind certified or a trade of the provision of services of the kind certified."
"75. Infringement of certification trade marks.-The right conferred by section 78 is
infringed by any person who, not being the registered proprietor of the certification trade
mark or a person authorised by him in that behalf under the regulations filed
under section 74, using it in accordance therewith, uses in the course of trade, a mark,
which is identical with, or deceptively similar to the certification trade mark in relation to
any goods or services in respect of which it is registered, and in such manner as to render
the use of the mark likely to be taken as being a use as a trade mark."

One needs must address the fundamental point of principle raised by the defendant: that
the rights of the plaintiff in respect of its registered marks are only to protect goods and
cannot be extended to any form of services. The first part of such contention is that in so
far as the plaintiff is the registered proprietor of a geographical indication and the GI Act
is confined only to goods, the plaintiff cannot have any cause of action against any
service that may use the identical geographical indication. The second part of the
submission on such score implies that if a certification mark is in respect of any goods, a
complaint of infringement may be brought against any other goods or persons connected
therewith; or if a certification trade mark is in respect of any services, a complaint may be
brought against any other service or persons connected therewith: but a complaint may
not be brought by the registered proprietor of a certification trade mark relating to goods
against any service or persons connected therewith; and, the registered owner of a
certification trade mark relating to any service may not complain against any infringing
goods or persons connected therewith. The point raised as to the cross-category
impermissibility of a complaint, in case of both a geographical indication and a
certification trade mark, does not have to be conclusively answered at this stage. There is
no application for rejection of the plaint on the ground that it does not disclose any cause
of action. But since the point has been urged, a tentative view has to be expressed for, if a
cross-category objection cannot be maintained, there is no question of entering into the
merits of the matter any further.

The objection as to the tenability of a cross-category complaint has to be dealt with

differently for the two species of rights that the plaintiff canvasses. In respect of
certification trade marks, registration may be obtained both in respect of goods and
services. Just as there could be products which are certified on the basis of their origin,
material, mode of manufacture or other characteristics, types of services may also be
certified on the basis of the quality, accuracy or other special features. It would then defy
reason that an unauthorised used of a certification mark relating to any goods is used by a
service provider without the registered proprietor of the certification mark having any
right to complain. Say, cooks from Lucknow are permitted to use the "Lucknavi"
certification mark as indicative of their services. If then, a packet of biriyani claims to be
"Lucknavi", it cannot be said that the proprietor or authorised user of the certification
service mark would have no cause of action against the impugned mark in respect of the
goods complained of.

In the case of geographical indication, however, the matter may be slightly different. The
focus of the GI Act is on goods; so much so, that in the chapter relating to offences, there
does not appear to be a direct recourse against any service wrongfully appropriating a
registered geographical indication. Yet, both in the deeming provision of Section 22(1)(b)
of the GI Act and in recognising other forms of passing-off in Section 20(2) thereof, the
GI Act may not altogether preclude a cross-category complaint.

The matter at hand need not be assessed on the abstract underlying principle of the GI
Act. Though the plaintiff has referred to several authorities none is apposite in the
context. The plaintiff has relied on a judgment reported at AIR 1968 Cal 582 (Imperial
Tobacco Co. of India Ltd v. Registrar of Trade Marks) for the proposition that long
before the GI Act, Section 9 of the Trade Marks Act, 1958 prohibited the registration of a
trade mark with a geographical name. The plaintiff has also placed a judgment reported at
(2008) 13 SCC 30 (Entertainment Network (India) Ltd v. Super Cassette Industries Ltd)
for the applicability of international conventions in Indian law. In dealing with the
defendant's contention that the claim may be barred under Section 26(4) of the GI Act,
the plaintiff has relied on the judgments reported at (1994) 2 SCC 448 (Power Control
Appliances v. Sumeet Machines (P) Ltd) and AIR 1998 Cal 261 (Allergan Inc v. Milment
Oftho Industries) to suggest that the acquiescence on the plaintiff's part should have
amounted to acceptance of the defendant's use of "Darjeeling" in connection with its
lounge for the bar under Section 26(4) of the GI Act to operate. The plaintiff has also
relied on a recent, yet unreported, decision of the Supreme Court rendered on March 3,
2011 in Civil Appeal Nos. 6314-15 of 2001 (T.V. Venugopal v. Ushodaya Enterprises
Ltd) for the submission recorded therein as to the dilution of a mark. The plaintiff has
placed McCarthy on Trademarks and Unfair Competition to emphasise on the dilution
doctrine, particularly on dilution by blurring. As to the legal meaning of "good faith", the
plaintiff has relied on a judgment reported at (2007) 11 SCC 407 (Asstt Commr, Anti-
Evasion Commercial Taxes v. Amtek India Ltd). The plaintiff has cited the Scotch
Whisky case reported AIR 1992 Bom 294 (The Scotch Whisky Association v. Pravara
Sahakar Shakar Karkhana Ltd) for the recognition therein that the assertion by the
defendant that its whisky was blended with Scotch amounted to misrepresentation or
actionable wrong of passing-off. The plaintiff has also relied on the decision to meet the
objection on the ground of delay raised by the defendant. Another judgment reported at
AIR 1996 Bom 149 (Kirloskar Diesel Recon Pvt. Ltd v. Kirloskar Proprietary Ltd) has
been carried by the plaintiff for the principle that a case of dishonesty does not have to be
made out while complaining of infringement. A judgment reported at 25 PTC 438
(Caterpillar Inc v. Mehtab Ahmed) has been placed on the doctrine of dilution. A
judgement reported at (2002) 3 SCC 65 (Laxmikant V Patel v. Chetanbhai Shah) has been
cited for the general principles relating to the grant of interlocutory relief on the basis of
likelihood of damage rather than actual damage. The plaintiff has also referred to a
judgment rendered by a Court in France where it restrained the use of the word
"Darjeeling" together with a teapot in connection with stationery goods.

The defendant applied for registration of "Darjeeling" lounge as a trade mark and the
plaintiff claims that it came to know of such application upon it being advertised. The
plaintiff says that upon enquiries, it discovered that a part of the ground floor in the
defendant's hotel had been named "Darjeeling Lounge." The plaintiff claims that the
lounge is rather like a restaurant where food beverages are served. The plaintiff caused a
letter to be issued to the defendant in June, 2005 asserting the plaintiff's exclusive rights
in the geographical indication for the name "Darjeeling" and called upon the defendant to
refrain from using the mark. In July, 2005, the plaintiff filed its opposition to the
defendant's application for registration. In September, 2005 the defendant replied to the
plaintiff's letter of June, 2005 and refused to discontinue the name of its lounge. The
plaintiff claims that following its opposition, the defendant abandoned its application for
registration. In February, 2006 and May, 2008 the plaintiff issued two further letters to
the defendant complaining of impropriety on the defendant's part in using "Darjeeling" as
part of the name for its lounge.

The defendant contends that its lounge is named "Darjeeling" to give its hotel in Calcutta
a flavour of Bengal. It says that its banquet hall at the hotel is called "Pala," another
lounge is named "Bay of Bengal" and the lawn at its hotel is known as "Sundarbans." The
plaintiff is quick to point out, however, that the various portions of the defendant's hotel
do not bear references exclusively to this state or its history or geography as a Dublin bar
or Dumpukht and Peshawari restaurants thereat would not otherwise have figured.

The defendant says that its "Darjeeling Lounge" has been functional from the inception of
its hotel in January, 2003 and prior to the GI Act coming into force on September 15,
2003. The defendant asserts that its lounge is restricted to the guests at its high-end rooms
and it is not open to any one walking in to the hotel since it can be accessed only by the
room-cards of a certain category of rooms. The defendant serves beverages and drinks of
all types at such lounge and says that there is no possibility of any misrepresentation in
the name of the lounge or in the services rendered thereat. The defendant relies on
Section 26(4) of the GI Act and says that since the plaintiff claims to have been aware of
the defendant's "Darjeeling Lounge" in April, 2005 and the suit was lodged more than
five years thereafter, the defendant is entitled to the protection accorded by the relevant
provision. The plaintiff offers several answers to such ground of defence. The plaintiff
says that it has protested the defendant's use of the word "Darjeeling" in connection with
its lounge and nothing in its conduct would amount to acquiescence therein. The plaintiff
says that it has a continuing cause of action and Section 26(4) cannot be read to prescribe
a period of limitation. In any event, the plaintiff asserts that it has alleged the defendant's
use of "Darjeeling" in connection with the lounge to be mala fide and that has to be
assessed on evidence since the final limb of Section 26(4) of the GI Act protects
a claimant's right to complain if the geographical indication is used by another in bad
faith.

The defendant's use of "Darjeeling" is not in connection with the designation or

presentation of any goods. The first limb of Section 22(1) of the GI Act is not available to
the plaintiff. The second limb conceives of the use of any geographical indication which
would constitute an act of unfair competition including passing-off. The expression
"unfair competition including passing off" would not, by reason of the explanations in the
relevant sub-section, imply that every kind of passing-off would amount to unfair
competition. The expression has to be understood to mean that certain kinds of passing-
off, not all, would amount to unfair competition as defined. The phrase used is "unfair
competition" and not "unfair practice" or "unfair trade practice," though it seems to have
been borrowed from the TRIPS agreement and not uniquely coined. If every kind of
passing-off amounted to unfair competition, Section 20(2) of the GI Act would be otiose.

Passing-off as in Section 20(2) of the GI Act has to be seen in the light of what it implies
in trade mark law. As to whether any goods or services are passed off as some other
goods or services would depend on a variety of factors ranging from the nature of the
marks, their resemblance, the nature of the goods and services, the similarity of the
character of the goods and services, the mode of accessing the goods or services and other
surrounding circumstances.

The word "Darjeeling" - as precious to tea as it may be as champagne to sparkling wines

of that province in France - cannot be exclusively claimed by the plaintiff by virtue of its
registration as a geographical indication or as a certification trade mark. Even for a case
of passing-off, the use of "Darjeeling" by a person other than the plaintiff can be
complained of if the word or the geographical indication has any nexus with the product
with which it is exclusively associated upon the registration. It is not necessary to
consider whether a "Darjeeling Tea Stall" selling only hot cups of tea can entitle
the plaintiff to carry a complaint in respect thereof or a "Darjeeling Tea House" selling all
varieties of packaged tea can be said to be in derogation of the plaintiff's rights. The
defendant's "Darjeeling Lounge" is an exclusive area within the confines of its hotel
which is accessible only to its high-end customers. The lounge is a place where such
customers and accompanying visitors may frequent, and even sip Darjeeling tea or any
other beverage or drink, but there is scarcely any likelihood of deception or confusion in
the lounge being named "Darjeeling" for the plaintiff to be granted to any order that it
seeks.

As to the case of dilution, the name "Darjeeling" has been extensively used in trading and
commercial circles for decades before the GI Act was enacted. In a case of dilution by
blurring, it is the uniqueness of a mark which is protected even in a case where there is no
likelihood of confusion. But the word "Darjeeling" has been and continues to be so
widely used as a business name or for like purpose for so long that the plaintiff's recent
registration would, prima facie, not entitle it to enjoy the kind of exclusivity that it
asserts.

GA No. 3137 of 2010 is dismissed without any order as to costs.

Urgent certified photocopies of this judgment, if applied for, be supplied to the parties
subject to compliance with all requisite formalities.

(Sanjib Banerjee, J)

18. Super Cassette Industries limited v. Bathla Cassette

Industries PVT Limited
 MUKUL MUDGAL, J.— This is an application for interim injunction in a suit
asserting rights under Section 52(1)(j) of the Copyright Act (hereinafter referred
to as the Act). The plaintiff company is the manufacturer, producer and
marketeer of pre-recorded audio cassettes and other records under the logo T
Series. The plaintiff produced a sound recording under its banner T Series which
was inter alia based on the song ‘Chalo Dildar Chalo’ from the film ‘Pakeezah’ by
giving notice to the original producer Mahal Pictures under Sections 52(l)(j) &
Rule 21(2)(b) of the Copyright Act. Such a recording is known in the music
business as a version recording and inter alia involves the singing of a well-
known song by a lesser known singer. The plaintiff gave prescribed royalty of Rs.
400 for producing 10,000 copies to the original owner. When the defendant
attempted to produce a version recording of the version recording of the
plaintiff by treading the path carved out by the plaintiff, the plaintiff has come to
this Court for an injunction restraining the defendant from what is averred to be
a copyright violation of its version recording. The dispute in the present suit inter
alia pertains to a song ‘Chalo Dildar Chalo’ from the film ‘Pakeezah’, for which the
original owners of the musical works were M/s. Mahal Pictures Pvt. Limited. This
song forms part of two audio cassettes produced by the plaintiff called Yadein
Vol.I and Yadein Vol.II. The plaintiff has further averred that it has produced this
song under the provisions of Section 52(1)(j) of the Copyright Act, 1958
(hereinafter referred to as the ‘Act’) read with Rule 21 of the Copyright Rules,
1958. By the letter dated 10th June, 1986 the plaintiff claims to have paid a sum
of Rs. 400/- to Mahal Pictures the original owner of the musical work ‘Chalo
Dildaar Chalo’ for producing 10,000 records of Chalo Dildar Chalo. The said letter
dated 10th June, 1986 also stated in para (b) as under:

“(b) We do not propose to make any alteration in or omission from the work
unless such alteration and omissions are necessary for the adaptation of
the work to the record in question.”

19. Amar Nat Sagal v. UOI

The Court termed the Moral rights as the soul of the author’s works. "The author has a right to
preserve, protect and nurture his creations through his moral rights. A creative individual is
uniquely invested with the power and mystique of original genius, creating a privileged
relationship between a creative author and his work."
The Court elucidated on the moral rights that flow from art and literary work. They are
identification right or attribution right, right to dissemination, Right to integrity that is to maintain
the purity of work and right to withdraw from the publication of the work. The language of the
Section 57 makes it possible to legally protect the cultural heritage of India through the moral
rights of the artist. "Intellectual property and knowledge are interconnected. Intellectual property
embodies traditional thought and knowledge with value addition. Thus, physical destruction or
loss of intellectual property has far reaching social consequence. Knowledge which has grown
with it is also lost." Court ruled that moral rights in the work of art acquire the status of the cultural
heritage of the nation and India being a signatory to many conventions , it would be the
obligation of the state to protect such work.
Further, Section 57 of the Copyright Act, 1957 includes destruction of a work of art as a ground
as it is the extreme form of mutilation and reduces the volume of the author’s creative corpus and
affects his reputation prejudicially as being actionable under said section. Further, in relation to
the work of an author, subject to the work attaining the status of a modern national treasure, the
right would include an action to protect the integrity of the work in relation to the cultural heritage
of the nation.
The Court held that the plaintiff has a cause to maintain an action under Section 57 of the
Copyright Act, 1957 even though the copyright in the mural stands vested in the defendants. It
was further held that the defendants have not only violated the plaintiff's moral right of integrity in
the mural but have also violated the integrity of the work in relation to the cultural heritage of the
nation. The Court ordered the defendants to return to the plaintiff the remnants of the mural
permanently with no rights vesting with the defendants henceforth and ordered the defendants to
pay damages with costs.

20. Toyota Kabushiki Kaisha v. M/s Prius Auto Industries

Ltd AIR 2018SC 167
Judgment
Thus, the Supreme Court held that "likelihood of confusion" would be a better test of
proving a passing off action, which can only be established from evidentiary documents,
which the Appellants failed to provide. In furtherance of this, the Supreme Court also
insisted on the Trinity Test as laid down by Reckitt & Colman Products Ltd. v Borden Inc3 :

 The goods or services have acquired goodwill or reputation in the marketplace

that distinguishes such goods or services from competitors;
 The defendant misrepresents his goods or services, either intentionally or
unintentionally, so that the public may have the impression that the offered
goods or services are those of the claimant; and
 The claimant may suffer damages because of the misrepresentation.

These seven years of clash between the Toyota and Prius automobile company came to
an end and the Supreme Court concluded that trademark rights are territorial and not
global, thus one has to prove that one has acquired its reputation and goodwill in a
territory, only through actual evidence, thereby rejected the trade mark case brought by
Toyoto jidosha kabushiki kaisha.

Analysis
The Hon'ble Supreme Court has reiterated the much-needed revision of foundational
basis of Trade Mark law, which has also very well described and explained the two most
important Doctrine of the Trade Mark law that helps in determining the right owners –
Universality Principle and Territoriality Doctrine. Also, Division Bench of High Court has
played a very significant role in highlighting the groundbreaking principle and it was
very consistent with its view towards the territorial aspect of the Trade Mark law. (which
can be seen Exide case). Moreover, the Court Aptly relied on Trans Tyres India Pvt. Ltd vs.
Double Coin Holdings Ltd & Anr., which observed that Universality Doctrine (which posits
that a mark signifies the same source all over the world) has not been accepted by the
courts. Modern day trade; globalization have brought in multi-channel modes of sale in
the market and therefore it is the territoriality Doctrine (trade mark being recognized as
having a separate existence in each sovereign country) would hold the field.

Thus, it is time to also look into the territorial character of the Trade Mark above the
rights of prior user and Trans-border reputation.
21. Starbucks (HK) Limited & Anr v British Sky
Broadcasting Group plc & Ors [2015] UKSC 31

The Supreme Court has considered the difficult question as to when an

overseas business can rely upon the goodwill in its name to restrain acts of
passing off in the UK. 
The Appellants ran a very successful TV subscription service under the name
“NOW TV” in Hong Kong. That service enjoyed a reputation amongst
members of the Chinese speaking community in the UK and was accessed
and enjoyed for free in the UK via the internet. In 2012, the Respondents
launched their “NOW TV” service in the UK. The Appellants sued for passing
off. The key issue was whether the Appellants could establish goodwill in the
jurisdiction.
The Supreme Court reaffirmed the rule that to succeed in a passing off action
it is necessary for a claimant to establish a goodwill in the jurisdiction and, to
do so, it must demonstrate the presence of clients or customers in the
jurisdiction for the goods and services concerned. It was held that the
Appellants could not rely upon the reputation that they enjoyed in the UK.
Whilst people in the UK accessed the Appellants’ services in the UK such
people were not “customers” within the jurisdiction because they received the
services for free. 
Michael Silverleaf QC and Kathryn Pickard appeared for the Appellants. Iain
Purvis QC appeared for the Respondents.

21. ITC Limited v. Green India Rice Millers and Exporters

Private Limited, 2017 SCC OnLine Cal 5859
SOUMEN SEN, J.:— The Court : The plaintiff is the registered owner of the word
mark ‘AASHIRVAAD’ in class 30. The plaintiff holds several registration for word
device ‘AASHIRVAAD’ which is evident from the Certificates of Registrations
annexed to the petition being annexures c, c1 and c2. Apart from the aforesaid
trade mark registrations, the petitioner has also obtained registration and made
applications in respect of various trade dresses, get up, packaging, labels bearing
the trade mark ‘AASHIRVAAD’. The petitioner claims that since the adoption of
the mark ‘AASHIRVAAD’ in the year 2002, the petitioner has been
continuously and consistently manufacturing and marketing a variety of
products in the food segment in India and abroad through an unparalleled
network or authorized distributors, stockists, dealers and retailers. The
petitioner has given the turn over of its products including the expenses
incurred towards advertisement and promotion of ‘AASHIRVAAD’ in paragraph 8
to 14 of the petition. The petitioner contends that the petitioner's trade mark
‘AASHIRVAAD’ has become distinctive of the petitioner's good and it is exclusively
associated in the midst of dealers, salespersons, purchasing consumers and all
other persons in the relevant trade and mark solely with the petitioner.

2. In or about January, 2017 the petitioner came to know that the respondent

no. 1 is marketing and selling rice under the trade mark ‘AASHIRWAD’
in and around Delhi. The petitioner also came across hoarding in New Delhi
advertising rice product under the trade mark ‘AASHIRWAD’, a spelling variant of
the impugned mark. On conducting a search on the website maintained by the
Ministry of Corporate Affairs, the petitioner found that the respondent no. 1 was
incorporated as a company on August 1, 2016 with Mr. Sajjan Kumar Garg
(respondent no. 3) and Mrs. Sangeeta Garg as Directors of the said company.
The record available on the website of the Ministry of Corporate Affairs shows
that the proprietorship firm of Sajjan kumar Garg was taken over by respondent
no. 1 pursuant to an agreement dated December 2, 2016. The search carried out
by the petitioner on the internet search engine Google shows that the
respondent no. 1 is selling rice under the trade mark ‘GREEN INDIA’ in the wave
page ‘https : //www.indiamart. com/greenindiaoverseas/profile.html’. The
respondent no. 1 claims ‘GREEN INDIA’ to be its flagship brand recognized
in India with a strong presence in the market. The aforesaid webpage also
indicates that the respondent no. 1 deals in other brands like ‘Kitchen Champion’
besides the impugned mark. The petitioner after further search on the internet
ascertained that apart from Green India ‘Basmati Rice’ which is a principal brand,
the said respondents also use other trade marks like ‘Kitchen Champion’,
‘Kinoni’ and ‘Hans Cook’ besides the impugned mark. Though the respondents
claim to be using ‘AASHIRWAAD’ since in the year 1988 on some of its products
no trade mark application relating to such mark and/or its spelling variations has
been filed by the respondents. The respondents on the contrary, proclaim the
trade mark ‘Green India’ to be their principal and primary page as would be
evident from the website of the respondent no. 1. The petitioner contends that
not only the respondents used/adopted the impugned mark and/or its spelling
variations which are phonetically identical to the Petitioner's trade mark
‘AASHIRVAAD’ for advertising and selling basmati rice, but in their
websites and in the online portals www.indiamart.com and www.tradeindia.com,
they have has also used the trade mark ‘AASHIRVAAD’, which is identical to the
petitioner's registered trade mark “AASHIRVAAD”, to refer to their products. This
in itself indicates the malafide intention of the Respondents to mislead the
consumers and pass off its goods as those of the Petitioner's.

3. The adoption and use of the impugned mark and/or any of its spelling

variations by the Respondents which is identical and/or deceptively similar to
Petitioner's registered trade mark ‘AASHIRVAAD’ amounts to infringement of the
Petitioner's statutory rights in the said trade mark which have been
continuously and extensively used by the Petitioner since the year 2002. The
Petitioner's rights are being violated.

4. The Petitioner states that the impugned mark and/or spellings variations

are slavish and colourable imitations of the Petitioner's immensely popular trade
mark “AASHIRVAAD”. Such adoption is clearly designed to sail as close as
possible to the Petitioner's immensely popular and reputed brand/trade mark
“AASHIRVAAD” with the deliberate intention to create an impression that there is
a nexus between the Petitioner's products and that of the Respondents. The
Respondent is hereby seeking to pass off its goods as those of the
Petitioner's and to illegally and wrongfully trade upon the enormous
goodwill and reputation, which has accrued to the trade mark “AASHIRVAAD” of
the Petitioner.

5. Mr. S.N. Mookerjee, learned senior counsel appearing on behalf of the

petitioner submits that there is an infringement of registered trademark of the
petitioner. Learned senior counsel has referred to section 29 of the Trademark
Act, 1999 and submits that the use of Trademark ‘AASHIRWAD’ is similar, if not
identical to the registered word mark of the plaintiff and the identity and/or
similarity of goods are covered by the registration of the plaintiff's mark. Apart
from the phonetical similarity between the two marks, there has been a
substantial similarity with the word mark ‘AASHIRVAAD’ and use of the said mark
by the defendant is likely to cause confusion on the part of the public since the
goods are sold through the same channel. Mr. Mookherjee has relied upon an
unreported judgement of this Court in Panghat Sarees Pvt. Ltd. v. “Panghat”, G.A.
No. 3120 of 2015, G.A. No. 3120 of 2014, C.S. No. 358 of 2014 dated 14 th October,
2015 for the proposition that if the defence of prior use is taken it is incumbent
upon the defendants at the interlocutory stage to show that there has been an
extensive and continuous use of the said mark prior to the registration of the
mark of the plaintiff.

6. Per contra, Ms. Maya Kumar learned counsel appearing on behalf of the
respondents submits that initially one Kailash Garg used to run a provisional
store where he used to sell rice under the brand name ‘AASHIRWAD’, thereafter
the said business was taken over by the respondent No. 3 and subsequent
takeover agreement dated 2nd December, 2016 disclosed in the petition would
show that the defendants are selling their Basmati Rice under the trade name
‘AASHIRWAD’ continuously since 1988. In fact, respondent no. 1 had taken over
the lease of M/s. Green India Overseas which was a proprietorship concern of
the defendant no. 3 with effect from 1 st October, 2016 prior thereto the
defendant nos. 2 and 3 were carrying out on business under the trade mark
‘AASHIRWAD’ which would be evident from the invoices and balance sheet of the
defendant no. 2 which would be disclosed if an opportunity is given to file an
affidavit.

7. It is submitted that the word ‘AASHIRWAD’ is a common dictionary

word and is not liable for registration. Learned counsel has referred to
advertisements and/or products using phonetically similar trademark with
spelling variations and submits that these disclosures show that the plaintiff has
no right over the said mark. The learned counsel has relied upon a Single Bench
Judgement of the Bombay High Court in International Foodstuffs Co. v. Parle
Products Pvt. Ltd. reported in 2016 SCC OnLine Bom 2038 for the proposition that
the phonetical similarity is not only test to be applied in such a case. It is
submitted that the defendants are not selling the products to the retailers. The
products are sold in 25 kg packets to the wholesalers who in turn sell  rice to the
retailers after opening the packets and/or packages unlike the sale of the
products by the petitioner to retailers and/or directly to consumers in small
packages of 5 kg or 8 kg. It is further submitted that the plaintiff is not selling
Basmati rice under the trademark ‘AASHIRVAAD’ and as such the question of any
confusion would not arise as the packages of the defendants is
clearly and prominently display the name of the defendants. The learned
counsel has referred to a judgement of the Hon'ble Supreme Court in Skyline
Education Institute (India) Private Limited v. S.L. Vaswani reported in (2010)
2 SCC 142 for the proposition that when the mark devoid of any distinctive
character and it is found that the said mark is being used widely by various
identities and/or companies no injunction should be granted. It is submitted that
the word ‘AASHIRVAAD’ is a common dictionary word and being used by many
companies across the country as part of their trade name or business
activity and, accordingly, the plaintiff cannot claim any absolute right over and in
respect of the said word mark ‘AASHIRVAAD’ and, accordingly, is not entitled to
any order of injunction. It is submitted that the defendants are using the said
mark since 1988 and hence the balance of convenience lies in favour of the
defendants and against the plaintiff.
 8. Section 2(m) of the Act gives an inclusive definition of ‘mark’. ‘Mark’
includes amongst others ‘word’. Section 2(h) defines “deceptively similar”. It
states that a mark shall be deemed to be deceptively similar to another mark if it
so nearly resembles that the other mark as to be likely to deceive or cause
confusion. Under Section 29 a registered trade mark is infringed, if—

(a) the mark is identical and is used in respect of similar goods or services; or

(b) the mark is similar to the registered trade mark and there is an identical

or similarity of the goods or services covered by the trade mark; or

(c) the trade mark is identical and is used in relation to identical goods or

services;

9. And that such use is likely to cause confusion on the part of the public or is
likely to be taken to have an association with the registered trade mark.

10. This clause further lays down that in cases falling in category (c) above,
there will be a legal presumption of likelihood of confusion on the part of the
public.

11. The ingredients of Section 29(1) are as follows:—

1. The plaintiff's mark is registered.

2. The defendant's mark is identical with, or deceptively similar to the

plaintiff's registered mark.

3. The defendant's use of the mark is in the course of trade in respect of

goods/services covered by the registered trade mark.

4. The use by the defendant is in such manner as to render the use of the
mark likely to be taken as being use as a trade mark.

5. The defendant's use of the mark is not by way of “permitted

user” and accordingly unauthorized infringing use.

12. The function of a trade mark is to distinguish the goods of one person

from others.

13. As was said by UPJOHN, J., “A man infringes the mark of another if he
seizes upon some essential feature of the plaintiff's mark. That essential feature
may be ascertained by the eye or by the ear in this sense, that goods bearing
that mark may be likely to become known by a certain name …. Furthermore
evidence is admissible to establish what is or has become an essential feature,
but evidence is not essential if the Court feels satisfied on inspection in coming
to the conclusion that some particular feature is a distinguishing feature of the
Mark allegedly infringed”. (Cluett Peabody & Co. Inc. v. McIntyre Hogg Marsh & Co.
Ltd.; 1958 RPC at 351)

14. A trade mark is undoubtedly a visual device; but it well-established law

that the ascertainment of an essential feature is not to be by ocular test alone.
Since words can form part, or indeed the whole, of a mark, it is impossible to
exclude consideration of the sound or significance of those words. Thus it has
long been accepted that, if a word forming part of a mark has come in trade to
use to identify the goods of the owner of the mark, it is an infringement of the
mark itself to use that word as the mark or part of the mark of another trader,
for confusion is likely to result. It is sufficient to refer to the words of Lord
Cranworth L.C., in Seixo v. Provezende (1866 LR 1 Ch. 192) ‘If the goods of a
manufacturer have, from the mark or device he has used, become known in the
market by a particular name, I think that the adoption by a rival trader of any
mark which will cause his goods to bear the same name in the market, may be
as much a violation of the rights of that rival as the actual copy of his device’. The
likelihood of confusion or deception in such cases is not disproved by placing the
two marks side by side and demonstrating how small is the chance of error in
any customer who places his order for goods with both the marks clearly before
him, for orders are not placed, or are often not placed, under such conditions. It
is more useful to observe that in most persons the eye is not an accurate
recorder of visual detail, and that marks are remembered rather by general
impressions or by some significant detail than by any photographic recollection
of the whole”.

15. The function of the trade marks is to identify the source of manufacture

of goods. It is an indicia of origin. In the market the chief value of the trade mark
is its power to stimulate sales. In law, the fundamental theory upon which the
interest in the trade mark is protected is that a trade mark identifies the goods
coming from a particular source, and that an infringing designation tends to
divert customer from that source by falsely representing that other goods come
from it. (See Ellora Industries v. Banarasi Dass gupta; AIR 1980 Del 254).

16. The defendants also cannot take advantage of prior user as available to

them under Section 34 of the Act as the defendants are unable to produce any
evidence at this stage even though the matter was adjourned on an earlier
occasion to enable the defendants to come prepared with all documents. The
few scrapes of papers produced on behalf of the defendants at the time of
hearing only shows certain scribbles in Hindi which is insufficient for this Court
to form even a prima facie opinion that in the year 1988 the defendants have
adopted the trade mark on the ‘AASHIRVAAD’ in relation to goods and/or
services in mentioned in class 30.

17. In this regard the observation of the Division Bench of the Madras High
Court in Amaravathi Enterprises v. Karaikudi Chettinadu reported at 2008 (36) PTC
688 (Mad.) paragraph 21 where Their Lordships have held that when a defence
of prior user is taken, burden lies on such trader/manufacturer to prove the
continuous use of the said trade name and in that regard the volume of sales
also assumes significance is apposite.

18. The defendants have failed to establish even prima facie continuous use
of the said trade name and volume of sales prior to 2001 when the petitioner
filed the application for registration of the word as well as device mark
‘AASHIRVAD’ or even thereafter.

19. In Skyline (supra) the Hon'ble Supreme Court was considering an action

for passing off and not an infringement of a trade mark. The plaintiff in the said
case did not have the required approval or affiliation whereas the defendants
are affiliated to statutory bodies. It was noticed in the said judgment in
paragraph 26 that the word ‘skyline’ is being used by various companies/or
organizations as also for describing different types of institutes/institutions. The
voluminous record produced by the respondents before the Hon'ble Supreme
Court also shows that in India as many as 117 companies including
computer and software companies and institutions are operating by using the
word ‘skyline’ as part of their name/nomenclature.

21. The word ‘London’ was disclaimed. In any case, it is not the mere phonetic
similarity but the trade dressing as well as get-up that are required to be taken
into consideration. Phonetic similarity also cannot be ignored. The said
judgment has been relied upon essentially to impress upon this Court that
phonetic similarity is immaterial inasmuch as the plaintiff is not selling
‘Basmati Rice’ and accordingly, the protection cannot be extended to every single
item in class 30 when the fact remains that the plaintiff is not at all
selling rice under the trade name ‘AASHIRVAAD’.

22. The said judgment is distinguishable on facts.

23. Turning to the two marks, it is obvious that the two marks are
phonetically similar and operates in the same field. On the first impression, it is
obvious that there is every likelihood of deception or confusion by the user of
the mark of the respondent. It is not the requirement of law that the plaintiff
would be required to establish actual deception. It is now well-settled that the
Court while considering the likelihood of deception or confusion must make
allowance for imperfect collection. The trade channels are same. It is often said
that an ordinary purchaser is not gifted with the powers of observation of a
Sherlock Holmes. The question of deception and confusion has to be
approached from the point of view of an unwary purchaser. The marks must be
looked at from the first impression of a person of average
intelligence and imperfect recollection and must be compared as a whole
microscopic examination being impermissible. The statute does not require
actual deception or confusion in order to found an action based on
infringement. It is also significant to mention that the defendant is also using the
alphabet “AA” being first two letters of the impugned word mark “AASHIRWAD”
which is similar to the registered word mark of the plaintiff “AASHIRVAAD” in
which the first two alphabets are “AA”. There is no explanation offered for using
the alphabets ‘AA’ as the first two letters apart from the phonetic similarity of the
two marks.

25. The judgment of a Single Bench of the Delhi High Court in Walter Bushnell
Pvt. Ltd. v. Miracle Life Sciences reported at 2014 (59) PTC 339 (Del) lays down that
when the defendant has not challenged the registered trade mark of the
plaintiff and there is no materials on record to show that it is a generic name,
the Court must recognize that a registered trade mark holder is enjoying an
exclusive and statutory rights which should be adequately protected. In the
instant case, no application has been filed by the defendant before the Registrar
for cancellation of the trade mark adopted by the plaintiff. It was held
in Walter (supra) that unless the trade mark challenged by the defendant is
cancelled or ratified it is not the practice to infringe the same in an action for
infringement of the trade mark.

26. The learned single Judge has quoted with approval the views expressed in
Express Bottlers Service Pvt. Ltd. that to establish the plea of common use, the
use by the other persons should be shown to be substantial. The mere use of
the name is irrelevant because a registered proprietor is not expected to act on
filing suits or proceedings against infringers who are of no consequence.

27. There is nothing on record to show that the defendant has filed any
application for rectification of the trademark of the plaintiff. Even if an
application is filed, mere pendency of an application for rectification would not
be a ground to hold that the person who is having his trade mark registered has
no right to seek ad interim injunction.
 28. In Gold Star Co. Ltd. v. Gold Star Industries reported at 1995 PTR 78 it was
held that “what would happen to the rectification proceedings nobody can
predict. As of today prima facie evidence establishes plaintiff's exclusive rights
regarding the trade mark… Plaintiff cannot be deprived the fruit of registered
trade mark nor can the defendant be allowed to use the trade mark of the
plaintiff for passing off its goods… If the defendants are allowed to use the trade
mark of the plaintiff it would adversely affect the business of the plaintiff,
internationally as well as in India”.

29. Similar was the view expressed by the Delhi High Court in the case of Avis
International Ltd. v. Avi Footwear Industries reported at AIR 1991 Del. 22.

30. The respondents also resist the application on the ground of delay or

laches. The plaintiff stated in the petition that they became aware of the
existence and presence of the respondents' trademark “AASHIRWAD”
in and around Delhi in January, 2017 and immediately thereafter has filed this
suit and has taken out this interlocutory application. Accordingly, it cannot be
said that there has been any delay. In any event, delay does not defeat grant of
injunction in case of infringement of a registered trademark. In Midas Hygiene
Industries P. Ltd. v. Sudhir Bhatia reported at (2004) 3 SCC 90 it was held that “the
law on the subject is well settled. In cases of infringement either of the 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.”

31. Under such circumstances, in view thereof, there shall be an order of

injunction of restraining the respondents, their men, servants, agents or
assigns and all others acting for and on their behalf from infringing the
registered trademarks of the petitioner being trade mark nos. 1063649,
1087266 and 1092701 by manufacturing, marketing, selling, distributing,
advertising, exporting, offering for sale, and in any other manner, directly or
indirectly, dealing in any product in packets, sachets, containers, boxes, cartons,
etc. bearing the trade marks ‘AASHIRWAAD’, ‘AASHIRWAD’, ‘ASHIRWAD’,
‘AASHIRVAAD’, ‘AASHIRVAD’, and/or ‘ASHIRVAAD’, or any other trade
name and/or trading style containing the said words in any manner whatsoever
for the period of twelve weeks or until further order whichever is earlier.

32. Affidavit-in-opposition shall be filed within three weeks from date; reply

thereto, if any, may be filed within a week thereafter. The matter shall appear
under the heading ‘Motion Adjourned’ after five weeks.
22. Dhiren Krishna Paul v. Health and Glow Retailing Private
Ltd., 2012

R. MALA, J.

O.S.A.No.183 of 2007 This appeal has been filed against the order dated 13.06.2007
made in O.A.No.310 of 2007 for granting an interim injunction restraining the
defendants, their servants and agents and others from using the words HEALTH &
GLOW or HEALTH AND GLOWor any other mark, name, logo, monogram or label.

O.S.A.No.184 of 2007 This appeal has been filed against the order dated 13.06.2007
made in O.A.No.311 of 2007 for granting an interim injunction restraining the
defendants, their servants, agents, dealers, stockists and others associated with them from
reproducing using as sign age or otherwise, printing, publishing or distributing any label,
printed matter, stationery which is colourable imitation or substantial reproduction of
Applicant's HEALTH AND GLOW(Device).

O.S.A.Nos.185 and 186 of 2007 These appeals have been filed against the order dated
13.06.2007 made in A.Nos.2941 & 2942 of 2007 to vacate the injunction granted in
O.A.Nos.311 & 310 of 2007 in C.S.No.236 of 2007.

O.S.A.No.187 of 2007 This appeal has been filed against the order dated 13.06.2007
made in A.No.2943 of 2007 in C.S.No.236 of 2007 to reject the plaint under Order 7 Rule
11 of Civil Procedure Code.

2.Respondent as a Plaintiff filed a suit stating that he is a registered Proprietor of the

Trade Mark as well as the Device Health and Glow and also claiming to be the Proprietor
of the Copyright in the style and manner in which the trade name and mark are artistically
written and used by the Plaintiff in Health and Glow Retailing Private Limited. Since
Appellants/Defendants have filed applications for registering trade name as Health and
Glow, Respondent/Plaintiff constrained to file a suit for the following reliefs viz.,: a) A
permanent injunction restraining the Defendants, their principal officers, servants, agents,
their assignees in business, dealers, stockists and others associated with them from using
the words Health & Glowor any other mark, name, logo, monogram or label that is or
may be identical with or deceptively similar to the registration 1) HEALTH & GLOW or
2)HEALTH AND GLOW (DEVICE) trademarks of the plaintiff, or to market, sell, offer
for sale, license, advertise, directly or indirectly deal in any goods and services online or
offline amounting to infringement of the plaintiff's registered trademark Nos.802306,
1315016 and 1315017 in classes 3 and 3 & 5 respectively;
b) A permanent injunction restraining the Defendants from using as a domain
name/website address, marketing, selling, offering for sale, licensing, advertising, either
directly or indirectly dealing in any goods using the words Health and Glowor any other
mark identical with or similar to the trade name, mark and device of the plaintiff, as may
cause or be likely to cause confusion or deception amounting to passing off of the
Defendants' goods and services as those of the plaintiff;

c) A permanent injunction restraining the Defendants, from reproducing, using as signage

or otherwise, printing, publishing or distributing any label, printed matter, stationery or
packaging which is a colourable imitation or substantial reproduction of the plaintiff's
Health & Glowlabel as depicted in paragraph 13 of this plaint, amounting to infringement
of plaintiff's copyright thereto;

d)A decree for delivery upto the plaintiff for destruction of all packaging, labels, block,
dyes, stickers, signage, advertising materials, all types of stationary and brochures and all
other infringing materials of the Defendants bearing the words Health & Glow;

e) A preliminary decree in favour of the plaintiff directing the defendants to render

account of profits made through use of the Health & Glow mark and a final decree
thereafter be passed in favour of the plaintiff for the amount of profits that have been
found to be made by the defendants after it had rendered accounts;

f)for a direction to the defendants to pay damages to the tune of Rs.25 lakhs.

3.Averments in the plaint are as follows:

(i)Respondent/Plaintiff is having registered Office at Chennai and carrying on business as

Retail Service Provider in beauty and health care merchandise, eversince 1997.

(ii)Respondent/Plaintiff has been using the trade mark and the trade device known as
'Health and Glow, written in a stylised manner with the image of a dancing girl inside the
letter 'G' eversince 1997. It was registered under the Trade Marks Act, in respect of goods
under Classes 3 and 5 bearing Registration Nos.802306, 1315016 and 1315017 and filed
two more applications for registration bearing Nos.1420632 and 804746 in respect of
services and goods under Classes 42 and 3 are pending before the Registrar of Trade
Marks.

(iii)Respondent/Plaintiff has 43 retail outlets in Chennai, Bangalore, Mumbai and

Hyderabad and has a good reputation and built up enormous goodwill for the chain of
retail stores run by them. They offer for sale, a wide range of Colour Cosmetics, Skin
Care, Hair Care, Herbal Products, Fragrances and Beauty Accessories, Aromatherapy
Products, Men's Cosmetics, Baby Care, Personal Care Items and Toiletries and
Pharmaceutical Products.

(iv)As a result of the enormous advertisement cost, over the year, the total annual
turnover of the Respondent/Plaintiff rose from Rs.7.25 crores in 1998-99 to Rs.52.83
crores in 2005-2006. One of the shareholders of the Plaintiff's Company maintains a
website providing information about the goods and services offered by the plaintiff. In
May 2006, Respondent/Plaintiff came across an advertisement in the Trade Marks
Journal dated 15.09.2005 showing that the first Appellant/first Defendant herein had filed
an application for registration of a Trade Mark containing the words Health and Glowin
respect of goods and services under Class 5. Respondent/Plaintiff immediately filed a
notice of opposition before the Registrar, which was pending.

(v) In March 2007, Appellants/Defendants run a cosmetic Homoeopathy Health Clinic

and they also have a website www.healthandglowclinic.com. Therefore,
Respondent/Plaintiff filed a suit for infringement of their registered trade mark, for
passing off the products and services of the Appellants/Defendants as those of the
Respondent/Plaintiff and for infringement of the copyright.

(vi)Along with the suit, Respondent/Plaintiff filed an applications in O.A.Nos.310 and

311 of 2007 for an interim injunction. On 23.03.2007, an interim injunction was granted.

4.The Appellants/Defendants herein have filed an application to vacate injunction (i.e.)

A.Nos.2941 and 2942 of 2007 to vacate the injunction granted in O.A.Nos.311 and 310 of
2007. Appellants/Defendants filed an another application in A.No.2943 of 2007 for
rejection of plaint under Order 7 Rule 11 C.P.C. The learned Single Judge after
considering both sides, allowed the applications in O.A.Nos.310 and 311 of 2007 and
dismissed the applications to vacate injunction in A.Nos.2941 and 2942 of 2007 in
O.A.Nos.311 and 310 of 2007 and also dismissed A.No.2943 of 2007, against which, the
present appeals have been preferred.

5.Learned senior counsel from Calcutta Mr.Pratap Chatterjee, appearing for the
Appellants/Defendants would submit as follows:

(i)This Court has no territorial jurisdiction to entertain the suit for entertaining the cases
on passing off. He fairly conceded that the suit can be filed in respect of infringement of
the trade before this Court.

(ii)Originally, Respondent/Plaintiff is 'RPG Guardian Private Limited'. They had changed

the name of their company as Health & Glow Retailing Private Limited, only on
02.03.2007 and filed a suit on 21.03.2007. But the Appellants/Defendants have filed an
application on 30.04.2004 itself for the trade mark of 'Health & Glow Clinic", Complete
Health With Homeopathy. So there is no infringement of registered trade mark of
Respondent herein.

(iii) Respondent/Plaintiff has not manufacturing any products in the name and style of
'Health and Glow" and they are only retailing/marketing the goods of reputed firms. Per
contra, Appellants/Defendants are doing their medical services in the name and style of
'Health and Glow Clinic" (i.e.) Homeopathic medicines. They are not selling their
products and they are giving only treatment to their patients.

(iv)Respondent/Plaintiff has no reputation of trade mark throughout India. But

admittedly, they are having only retail shops at Chennai, Bangalore, Secundrabad and
Hyderabad. So ingredients of Section 29(4) of the Trade Marks Act was not made out.
(v)Order of the Learned Single Judge is suffered by perversity, since he never raised a
plea for protection under Section 35 of the Trade Marks Act and the learned senior
counsel for the Appellants/Defendants has not advanced his argument in respect
of Section 29(5) of the Trade Marks Act. Hence, the learned Single Judge himself taken
the plea suo motu and rendered findings against the Appellants/Defendants herein and so
it suffers perversity. Hence he prayed for setting aside the order passed by the learned
Single Judge. To substantiate his arguments, he relied upon the following judgments.

23. Sony Corporation of America v. Universal City Studios

Inc, 1984 SCC OnLine US SC 14
Petitioner Sony Corp. manufactures home videotape recorders (VTR's), and
markets them through retail establishments, some of which are also petitioners.
Respondents own the copyrights on some of the television programs that are
broadcast on the public airwaves. Respondents brought an action against
petitioners in Federal District Court, alleging that VTR consumers had been
recording some of respondents' copyrighted works that had been exhibited on
commercially sponsored television, and thereby infringed respondents'
copyrights, and further that petitioners were liable for such copyright
infringement because of their marketing of the VTR's. Respondents sought
money damages, an equitable accounting of profits, and an injunction against
the manufacture and marketing of the VTR's. The District Court denied
respondents all relief, holding that noncommercial home use recording of
material broadcast over the public airwaves was a fair use of copyrighted works,
and did not constitute copyright infringement, and that petitioners could not be
held liable as contributory infringers even if the home use of a VTR was
considered an infringing use. The Court of Appeals reversed, holding petitioners
liable for contributory infringement and ordering the District Court to fashion
appropriate relief

Held: The sale of the VTR's to the general public does not constitute contributory
infringement of respondents' copyrights. Pp. 464 U. S. 428-456.

(a) The protection given to copyrights is wholly statutory, and, in a case like this,
in which Congress has not plainly marked the course to be followed by the
judiciary, this Court must be circumspect in construing the scope of rights
created by a statute that never contemplated such a calculus of interests. Any
individual may reproduce a copyrighted work for a "fair use"; the copyright
owner does not possess the exclusive right to such a use. Pp. 464 U. S. 428-434.
(b) Kalem Co. v. Harper Brothers, 222 U. S. 55, does not support respondents'
novel theory that supplying the "means" to accomplish an infringing activity and
encouraging that activity through advertisement are sufficient to establish
liability for copyright infringement. This case does not fall in the category of
those in which it is manifestly just to

Page 464 U. S. 418

impose vicarious liability because the "contributory" infringer was in a position

to control the use of copyrighted works by others and had authorized the use
without permission from the copyright owner. Here, the only contact between
petitioners and the users of the VTR's occurred at the moment of sale. And there
is no precedent for imposing vicarious liability on the theory that petitioners sold
the VTR's with constructive knowledge that their customers might use the
equipment to make unauthorized copies of copyrighted material. The sale of
copying equipment, like the sale of other articles of commerce, does not
constitute contributory infringement if the product is widely used for legitimate,
unobjectionable purposes, or, indeed, is merely capable of substantial
noninfringing uses. Pp. 464 U. S. 434-442.

(c) The record and the District Court's findings show (1) that there is a significant
likelihood that substantial numbers of copyright holders who license their works
for broadcast on free television would not object to having their broadcast time-
shifted by private viewers (i.e., recorded at a time when the VTR owner cannot
view the broadcast so that it can be watched at a later time); and (2) that there is
no likelihood that time-shifting would cause nonminimal harm to the potential
market for, or the value of, respondents' copyrighted works. The VTR's are
therefore capable of substantial noninfringing uses. Private, noncommercial
time-shifting in the home satisfies this standard of noninfringing uses both
because respondents have no right to prevent other copyright holders from
authorizing such time-shifting for their programs and because the District
Court's findings reveal that even the unauthorized home time-shifting of
respondents' programs is legitimate fair use. Pp. 442-456.

24. Himalaya Drug Company v. Sumit, 2005 SCC OnLine Del

1443
Judgment in the case:
1. The Court held that Sumit had misappropriated the effort, skill and
expense that had gone into the creation of Himalaya’s website.
Therefore, Sumit had copied the entire herbal database of the plaintiff
and had infringed the copyright of Himalaya.
2. The plaintiff has also been able to demonstrate that the defendants
have attempted to pass off its herbal database as and for that of the
plaintiff’s and have also violated the “trade dress” rights that exist in
respect of the plaintiff’s herbal database. The reason being that the
plaintiff’s herbal database is unique and, therefore, any similar herbal
database that appears on a different website is bound to create
confusion by causing a consumer to associate the website with that of
the plaintiff’s.
3. Because Sumit did not appear in this case it was impossible to assess
what kind of profits he had earned from the website and accordingly
difficult to calculate damages. Thus the court calculated the costs
involved in preparing and putting up the website. Those costs were
7.9 Lakhs and the court granted 7.9 Lakhs as compensatory damages
and an additional 7.9 Lakhs as punitive/Exemplary damages.

Significance: The judgment is noteworthy because it has used a novel

way of calculating damages and has awarded both compensatory as
well as punitive damages.

25. Conzerv Systems P. Ltd. v. T.K. Babu, 2008 SCC OnLine

Del 1720
RAJIV SAHAI ENDLAW, J

1. The defendants have applied under Order 7 Rule 11(d) of the CPC for rejection of the
plaint stating that this court does not have the territorial jurisdiction to entertain the same
and the institution of the suit in this court is an abuse of process and to harass the
defendants.

2. The plaintiffs have instituted the suit (i) for the reliefs of permanent injunction
restraining the defendants from using the IA.No. 848/2006 in CS(OS) 1567/2005 Page
no. 1 of 15 trademark ELECON, True RMS Logo and VAF or any other deceptively
similar trade mark in relation to Digital Panel Meters, Multi Function Load Managers,
Electrical/Electronic meters or any cognate or allied product so as to result in an
infringement of the plaintiff's registered trade mark and passing off of the plaintiff's
marks ENERCON, True RMS Logo and VAF; (ii) a decree for permanent injunction for
restraining the defendants from using the Elecon leaflets, brochures, circuit diagrams,
software etc or any other material of the plaintiff; (iii) for restraining the defendants from
using the confidential information gathered by them from the plaintiff; (iv) for restraining
the defendants from inducing breach of contracts between the plaintiff and its
suppliers/vendors and employees; and (v) for the relief of damages, rendition of accounts,
delivery etc.

3. The plaintiff has, in the plaint, averred that the defendants No 1, 3 and 5 were in the
employment of the plaintiff and have started the defendants No 2 and 4 companies. The
plaintiff has in para 17 of the plaint stated its various rights which have been infringed
and violated by the defendants and which include violation of registered trademark,
violation of copyright and the common law rights, misuse of material of the plaintiff,
rights of the plaintiff in design processes and procedures, rights of the plaintiff in model
numbers and breach of the confidentiality agreement of the defendants with the plaintiff.
The plaintiff has further in the plaint stated that in some of the confidentiality agreements
of the plaintiff with its employees, there exists a IA.No. 848/2006 in CS(OS) 1567/2005
Page no. 2 of 15 negative covenant that the said employee will not engage in any
competing activities and there is also an undertaking not to disclose any of the
confidential information.

4. Since the dispute is whether from a reading of the plaint itself it can be said that this
court has no territorial jurisdiction to entertain the suit, it must be noted that the plaintiff
in the memo of parties has given its address as that of Bangalore and at B-10A, South
Extension Part II, II Floor, New Delhi; the address of all the defendants given in the
memo of parties is of Bangalore.

5. The plaintiff has in para 50 of the plaint with respect to territorial jurisdiction stated as
under :

"This Hon'ble Court has the jurisdiction to try and entertain the present suit, as the
plaintiff's trademark ENERCON is a registered trademark. This is a composite suit for
infringement of trademark, infringement of copyright, passing off etc. The plaintiff
carries on business for profit and gain in New Delhi. The defendants are offering for sale
their products in Delhi through their website and also through their dealers in Delhi.
Thus, the cause of action arose within the jurisdiction of this Hon'ble Court. Both under
the Trade Marks Act, 1999 & under the Copyright Act, 1957 this Hon'ble Court has the
jurisdiction to try and entertain the present suit."

6. The defendants have filed the written statement and in which while objecting to the
territorial jurisdiction of this court they have stated (i) that the registered office of the
plaintiff is at Bangalore;

(ii) all the defendants are resident of and work for gain at Bangalore; (iii) that no part of
cause of action had accrued within the jurisdiction of this court; (iv) that the "Delhi office
of the IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 3 of 15 plaintiff is only a branch
office and the location of the branch office cannot confer jurisdiction on this Hon'ble
Court"; (v) that even assuming without conceding that in view of the provisions of
the Copyright Act and the Trademark Act, the present suit insofar as it pertains to the
allegation of infringement of trademark and copyright is maintainable in Delhi, the suit
insofar as it pertains to passing of, breach of contract, breach of confidential information,
damages/rendition of accounts is not maintainable in this court inasmuch as neither any
part of the cause of action accrued within the jurisdiction of this court nor any of the
defendants reside within the jurisdiction of this court; (vi) that the defendant No.1 was not
made to sign any confidentiality agreement when he joined the plaintiff but was
subsequently coerced at the threat of losing his job to sign the said agreement - the said
agreement contains an arbitration clause requiring any dispute arising out of the
agreement to be referred to arbitration, the venue of which would be at Bangalore and
thus, the present suit pertaining to breach of confidentiality clause is not maintainable.

7. The plaintiff was permitted to file a replication in which it reiterated the territorial
jurisdiction of this court for the reason that it carries on its business in Delhi and sells its
products in Delhi and the mark ENERCON is registered in favour of the plaintiff; that the
plaintiff has copyright in all the circuit diagrams; that the defendants advertised their
products in Delhi through their website; that the defendants had also appointed their
dealer for the products who was in Delhi. The plaintiff filed the said IA.No. 848/2006 in
CS(OS) 1567/2005 Page no. 4 of 15 dealership agreement alongwith its documents.

8. Needless to add that the defendants had no opportunity to reply to the additional points
with respect to the jurisdiction made in the replication. The defendants, however, in the
application under Order 7 Rule 11(d) of the CPC stated that (i) the plaintiff does not have
any manufacturing establishment within the jurisdiction of the court and the plaintiff only
has a place at B-10A, South Extension, Part II, Second Floor which is a residential colony
where from orders for its products are booked by it. It is stated that no business is carried
on by the plaintiff in Delhi; (ii) that they are not selling or advertising their products for
sale in Delhi; their website not being a e-Commercial website cannot be used for the
purpose of placing orders/transacting any business; (iii) that the defendant No.2 had
initially appointed a dealer in Delhi for the purpose of selling its products, namely, one
M/s Konark Marketing, however, the same was termintated by them when the defendants
came to know that the said dealer was also acting on behalf of other companies including
the plaintiff and no business was transacted through the said dealer.

9. The law on the subject has been well thrashed out in the judgment of the Single Judge
of this Court in Dabur India Limited v K.R. Industries 2006 (33) PTC 107 (Del), in the
Judgment of the Division Bench in appeal reported in 2006 (33) PTC 348 (Del) and of the
Apex Court in 2008(37) PTC 332 SC. In the said case also rejection of the plaint on the
ground of lack of IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 5 of 15 territorial
jurisdiction was in issue. In the judgment of the Hon'ble Single Judge, in para 3, the
relevant averment in the plaint has been reproduced as under:

"para 18: This Hon'ble Court has jurisdiction to entertain and try the present suit by virtue
of the provisions of the Section 62(2) of the Copyright Act, 1957 as the plaintiff carries
on its business activities in Delhi. The defendant is also selling its goods in Delhi i.e.
within the territorial jurisdiction of this Hon'ble Court."
The Hon'ble Single Judge also noted that in that case also (as in this case) there was no
dispute that for the relief of infringment of copyright this court will have jurisdiction
inasmuch as the plaintiff in that case had its office in Delhi and was carrying on business
at Delhi. The Hon'ble Single Judge, however, in para 7 of the judgment noted that the
plaintiff in that case could not point out any sale by the defendant of its products in Delhi.
Applying Dhodha House and Patel Field Marshal Industries v S.K. Maingi & P.M. Diesel
Ltd 2006 (32) PTC 1 (SC) the Hon'ble Single Judge held that the cause of action for
infringement of registered trademark and copyright, over which this court had territorial
jurisdiction, could not be combined with the cause of action for passing off and ordered
the plaint to be returned. The Division Bench in appeal also noted that in that case there
was no documentary evidence to show that the defendants in the case were selling goods
in Delhi. The Division Bench while upholding the order of the Hon'ble Single Judge
modified it to the extent that IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 6 of 15 the
plaintiff in that case was left free to sue in Delhi with respect to relief of infringement of
copyright.

The Apex Court also noted the finding of the Division Bench that there was no
documentary evidence to show that the defendnat was selling goods in Delhi and
dismissed the appeal.

10. In the present case also, as aforesaid, the defendants have not disputed that this court
would have territorial jurisdiction insofar as the relief of infringement of registered
trademark and copyright is claimed by the plaintiff. The objection is to the territorial
jurisdiction of this court for the other reliefs of passing off breach of contract, breach of
agreement. The matter being at the stage of adjudication of Order 7 Rule 11, it is only the
plaint which is to be looked at and nothing else.

11. The plaint in this case, if seen, invokes jurisdiction of the courts at Delhi for the other
reliefs, for the reason of the defendants carrying on business at Delhi. But so was the
averment in Dabur India Limited. Notwithstanding the said averment, in Dabur India
Limited it was held that the courts at Delhi would have no jurisdictin to entetain the suit
for the relief of passing off. It was held so in that case because the Single Judge held that
the plaintiff had not been able to point out any sale by the defendants of its product in
Delhi and the Division Bench finding that the plaintiff had not placed a single document
to show that the IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 7 of 15 defendants were
carrying on business at Delhi. Can the same be said to be the position in this case also? I
find in the negative.

12. Though the defendants have denied carrying on business in Delhi but, as aforesaid, in
the application under Order 7 Rule 11(d) CPC, upon the plaintiff in the replication
referring to the agreement with a distributor entered into by the defendants in Delhi, the
defendants were forced to admit the execution of the said agreement with M/s Konark
Marketing, New Delhi; though stated that the same had been terminated and no business
had been carried on thereunder. The plaintiff has filed a copy of the said agreement before
the court. Of course, the said copy is purported to be signed by the defendant No.1 only
and does not have the signature of the dealer; the same being a photocopy was not subject
to admission/denial. However, the date of the said agreement is 9th June, 2005 i.e., of
prior to the institution of the present suit. Thus, there is in this case an admission of the
defendant of having entered into an agreement with a distributor at New Delhi and copy
of such agreement has been filed, all unlike as in Dabur India Ltd.

13. It is settled position in law that at the stage of Order 7 Rule 11 CPC the plaint and the
plaint alone is to be looked into. From a bare look of the plaint in the present case, it
cannot be said that the same does not disclose this Court to be having territorial
jurisdiction. The Senior Counsel for the defendants has also not argued that even if the
defendants were to be carrying on business IA.No. 848/2006 in CS(OS) 1567/2005 Page
no. 8 of 15 at Delhi, this court would still not have jurisdiction over the reliefs to which
objection has been taken (there being admission with respect to the relief qua
infringement of registered trademark and copyright). The senior counsel for the
defendants on the contrary sought to draw support from Nedungadi Bank Ltd. v Central
Bank of India Ltd. AIR 1961 Kerala 50 to urge that even if the defendants were carrying
on business within the jurisdiction of the court but if no cause of action accrued within
the jurisdiction of that court, that court would still not have territorial jurisdiction over the
dispute. Arguments were also addressed that the office of the plaintiff at Delhi was in a
residential locality wherefrom no business activity could be carried on. Support was also
sought to be drawn from the explanation to Section 20 of the CPC.

14. As far as the jurisdiction for the relief of infringment of registered trademark and
copyright is concerned, not only Dabur India Limited but also Justice A.P. Shah (as his
Lordship then was) speaking for the Division Bench in Wipro Limited v Oushadha
Chandrika Ayurvedic India Pvt Limited AIR 2008 Madras 165 has held that after the
radical change introduced by Section 134 of the Trademark Act and Section 62 of the
Copyright Act, insistence on satisfaction of the requirements of Section 20 of the CPC to
invoke jurisdiction was misplaced. Thus, this court has the jurisdiction to entertain the
suit insofar as with respect to infrigement of registered trademark and copyright. At this
stage the question also arises that when the court admittedly has jurisdiction to entertain
the plaint in part or vis-à-vis some of the IA.No. 848/2006 in CS(OS) 1567/2005 Page no.
9 of 15 reliefs, can the provisions of Order 7 Rule 11 CPC for rejection of the plaint,
which can only be in whole, be invoked. Should in such cases, the courts reject the plaint
in part, and call upon the plaintiff to amend the plaint or reject the application under
Order 7 Rule 11 and leave the question of jurisdiction to be decided at the time of final
decision of the suit. The purpose of Order 7 Rule 11 CPC is to nip an action, which the
court is of the definite opinion is ultimately to doom, in the bud. However, when so
cannot be said with respect to the entire claim, should Order 7 Rule 11 be permitted to be
invoked. However, I am, at this stage, not entering into this controversy feeling bound by
the judgments in Dabur India Limited as well as Dodha House though I respectfully state
that the said question was not gone into in either of the said cases.

15. The counsel for the plaintiff has also relied upon Laxman Prasad v Prodigy
Electronics Ltd & Anr 2008(37) PTC 209 (SC) which was also a suit in relation to
trademark/copyright against an ex employee. In that case the address of the defendant
was of Gaziabad outside Delhi. However, the Apex Court held that the suit could be
instituted in Delhi as part of the cause of action had accrued within the territorial
jurisdiction of Delhi owing to the defendant having used the trademark/trade name in
Delhi and because in the plaint it was specifically alleged by the plaintiff company that
the defendant committed breach of terms and conditions of agreements at Delhi and the
said averments were held sufficient to entitle the plaintiff to institute the suit in Delhi,
notwithstanding the agreement being executed between the IA.No. 848/2006 in CS(OS)
1567/2005 Page no. 10 of 15 parties outside Delhi and notwithstanding the defendants
being resident outside Delhi. The Apex court emphasised that since the cause of action
had arisen within the local limits of Delhi as averred in the plaint by the plaintiff, the
question has to be considered on the basis of such averment and the institution of the suit
at Delhi was held in order.

16. Applying the aforesaid law, since the plaint in the present case also avers of the
defendants carrying on business at Delhi, it cannot be said that the plaint does not
disclose any territorial jurisdiction of this court vis-à-vis the reliefs claimed besides the
reliefs of infringement of registered trade mark and copyright. This is more so in the face
of the admission of the defendant of having entered into an agreement with a
dealer/distributor in Delhi for sale of products in Delhi. The termination pleaded by the
defendant of the said agreement is a matter of evidence. The plaintiff by entering into the
agreement with a dealer at Delhi for sale of its products at Delhi, would cause passing off
and breach of contract at Delhi, conferring jurisdiction on this court. The denial by the
defendant of the said averments is of no avail at this stage and it cannot be said that the
plaint and the documents filed do not disclose this court to be having territorial
jurisdiction. This aspect distinguishes the present case from Dabur India Limited. I may
also record that the Senior Counsel of the plaintiff was quick to point out that the Apex
Court in Laxman Prasad was guided by the principles of, justice being brought as near as
possible to every man's hearthstone and of the IA.No. 848/2006 in CS(OS) 1567/2005
Page no. 11 of 15 defendant not being put to the trouble and expense of travelling a long
distance in order to defend himself and urged that situation was converse in the present
case; the defendants are at Bangalore and will have to travel long distance in order to
defend themselves. Once it is found that the defendants had given cause of action to the
plaintiff within the jurisdictin of this court, the said principles cannot bar the jurisdiction
of this court, at least at the stage of Order 7 Rule 11 of the CPC. We cannot also forget
the legislative change in Section 134 of the Trademark Act and Section 62 of the Copy
Right Act which, in any case, compel the infringer to travel to the place of business of the
plaintiff.

17. Not only is there an admission as aforesaid of the defendants having appointed a
dealer/distributor at Delhi, it is also the admitted position that the defendants are at least
advertising their goods on their website which can be seen from Delhi. The question
whether it is an interactive website or not or whether it amounts to sale/ offering for sale
in Delhi is a matter of evidence and cannot be adjudicated at this stage. The views
expressed in Casio India Co Limited v Ashita Tele Systems Pvt Limited 2003 (27) PTC
265 (Del) relied upon by the counsel for the plaintiff were also at the interim stage. The
territorial jurisdiction of the court is to be tested vis-à-vis the said fact also and the plaint
cannot be thrown out for this reason also. In the present day when more and more people
are preferring to shop from their living rooms/office via Internet which knows no
boundaries, the question of website being interactive or not having any relevance is also
to IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 12 of 15 be tested. After knowing of
the product through website, whether the sale is affected through website or via contact
particulars on website may not be so relevant. All these questions are outside the domain
of Order 7 Rule 11 CPC.
18. The counsel for the plaintiff has also drawn attention to Pfizer Products, INC v Rajesh
Chopra & Others 127 (2006) DLT 783 to urge that a threat that the offending goods could
be sold at a particular place would definitely give jurisdiction to the court in such a place.
In the present case as aforesaid not only was there a threat but in fact an agreement was
entered into which is claimed to have been terminated. The plaintiff cannot be non- suited
on the statement of the defendant of having terminated the agreement and cannot be
compelled to keep a continuous watch.

19. There is yet another aspect of the agreement between the pliantiff and the defnedant
No.1 stated to be containing a clause for exclusive jurisdcition of the courts at Bangalore.
The plaintiff has filed the orignal of the said agreement and the defendants at the time of
admission/denial of documents have made an endorsement "content denied signature
admit" on the same. Clause 7 of the said agreement is as under:

"That any dispute arising out of or in relation to this agreement shall be referred for
arbitration to a person to be nominated by the company, whose decision shall be final and
binding upon all the parties hereto and such reference shall be deemed to be a submision
to arbitration under the Arbitration and Conciliation Act. The venue of arbitration shall be
at Bangalore."
The court in Bangalore shall have exclusive jurisdiction to the exclusion of all other
courts."

IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 13 of 15

20. It is the plea of the defendants that they were coerced into entering the agreement. In
my view, the defendants who have denied the contents of the agreement and who claim to
have been coerced into entering the agreement cannot be permitted to at the same time
rely upon one clause of the agreement, at least not at the stage of Order 7 Rule 11 CPC.
The same would amount to permitting the party to blow hot and cold and to reprobate and
approbate. Moreover, the aforesaid clause is a clause of arbitration. The defendants did
not opt to enforce arbitration. Upon the defendants submitting to the jurisdiction of the
court, the agreement of arbitration became otiose. The aforesaid clause, prima facie, does
not represent an agreement vesting exclusive jurisdiction in the courts in Bangalore over
disputes between the parties. The parties had agreed to arbitration and to the jurisdiction
of the courts at Bangalore over the said arbitration proceedings. However, once the
arbitration was given a go bye, at this stage, it cannot be said that owing to the said
clause, the plaint can be rejected.

21. I may also refer to the Division Bench judgment of this court in Intas Pharmaceuticals
Ltd v Allergan Inc 2006 (32) PTC 272. In that case also there was an averment in the
plaint that the offending product was sold by the defendant in and around Delhi within the
jurisdiction of this court. The Division Bench held that the said averment in the plaint
attracted Section 20 of the CPC, vesting jurisdiction in courts at Delhi to entertain the
suit. IA.No. 848/2006 in CS(OS) 1567/2005 Page no. 14 of 15

22. I therefore, do not find any merit in the application. The same is dismissed, however,
without any order as to costs. It is further clarified that whatever has been said therein is
for the purpose of decision of Order 7 Rule 11 of the CPC and will not come in the way
of any decision on any issue as to territorial jurisdiction if pressed by the defendants.

26. Prem Chand Gupta v. Hindustan Pencils (P) Ltd., 1982

SCC OnLine Del 419
1. This is plaintiff's suit for-perpetual injunction restraining the defendants
from munufacturing and selling mathematical boxes etc. under the trade mark
and/or device of ‘Natraj’ Restraint is also sought from passing of the goods by
other indentical and/or deceptively similar mark. It is claimed that the plaintiff
has been using the trade mark and device of Natraj from January 1974 with
respect to the mathematical instruments/boxes manufactured and marketed by
him. This trade-mark was as well got registered on 6.4.1977 under the Trade and
Merchandise Marks Act. Boxes with specified colour scheme, get-up lay-out and
writing style in this process are claimed to be used and they were also got
registered in 1980 and 1982 under the Copyright Act.

2. It has next been claimed that due to the continuous use of the said trade-
mark for more than 8 years, the same has acquired unique reputation and
goodwill in public and trade and come to be exclusively identified and associated
by them with the plaintiff. The plaintiff's sales it is stated run into several lacs of
rupees. The defendants it is alleged have recently started manufacturing and
marketing mathematical boxes under the identical and/or deceptively similar
Trade Mark ‘Natraj’ in conjunction with the device ‘Natraj’. This is pleaded to be
unwarranted and amounts to infringment of the plaintiff's trade-mark. Earlier
when the plaintiff had applied for registration of his trade-mark, the defendants
opposed the registration and filed objections. That opposition of the defendants
was however later abondoned and/or was deemed to be so abondoned, and the
registration in favour of the plaintiff granted. The plaintiff claims that thereafter
he has successfully prosecuted several offenders/infringers and has taken
adequate relief from different courts.

3. Along with the suit, the plaintiff moved an application for an interim
injunction bearing I.A. 2357 of 1982. Notice of this was issued to the defendants
and in the meanwhile they were restrained from marketing mathematical
instrument boxes under the name and device of ‘Natraj’.
 4. Defendants on appearance vehementally disputed the claim of the plaintiff
and have sought the vacation of the interim injunction They have in their written
statement denied that the plaintiff has been using the trade-mark ‘Natraj’ in
respect of mathematical instrument boxes and colour boxes since 1974. Rather
according to them, the registration of the trade mark was obtained by the
plaintiff by committing fraud upon the trade-mark registry by making mis
statements etc. It is also pointed out that the plaintiff's counsel had in a reply to
the notice received from Atul Trade-Mark Company Delhi admitted that the
mark Natraj was the exclusive property of Babu Lal and sons.

5. The defendants have claimed that the trade-mark ‘Natraj’ is used by them
from 1961 and it was got registered under the Trade & Merchandise Marks Act
in Dec. 1964 with respect to writing pencils. Is November 1969 the same trade-
mark and device were got regis-tred in respect of pencils, refilles, sharpners,
fountain-pens, erasers pin-clips and supples.
It was similarly registered again in Oct. 1972 Copyright registrations were
obtained in 1979 In the circumstances it is contended that the plaintiffs are
guilty of passing off their goods as those of the defendants.

6. The defendants claim that their yearly sales amount to more than a crore
of rupees and that they have been having wide publicity about their trade-mark
and device. It is the plaintiff who is stated to be taking advantage of the
defendants reputation, goodwill and long standing. The de???endants geo,???y
boxes are claimed to be sold at Rs. 118/- per dozen for their good quality while
those of the plaintiff Rs. 48- and 54/- per dozen for their inferior quality. Further
more, it is pointed out that the plaintiff is not proprietor in respect of the
geomatrical boxes and/or instruments and articles contained in them. No
registration about them has been obtained by him Mathematical instruments
are stated to be too wide and vague term and in any case cognate with the
goods for which defendants hold registration of ‘Natraj’

7. The defendants have therefore raised a counter-claim on payment of

court-fee in the written statement seeking perpetual injunction against the
plaintiff from Manufacturing and selling geomatrical and colour boxes bearing
trade-mark and device ‘Natraj’. They have also sought rendition of accounts.

8. Defendents have also moved a petition under Order 39 Rule 1 and 2 read
with Sec. 151 C.P.C. seeking an interim injunction against the plaintiff's from
merkating their goods under the name and device of ‘Natraj’.

9. Defandents have further prayed that the suit be stayed and they be
granted time under Sec. 111 of the Trade and Merchandise Marks Act to seek
rectification of the trademark got registered by the plaintiff. They have also
sought under sub-section-5 that while staying the suit an interlocatery order be
made restraining the plaintiff from using the trademark ‘Natraj’.

10. The defendants have also pointed out that the yearly figures of sales now
sought to be represented in this suit by plaintiff are far-inflated then those
submitted by him in the office of Registrar of Trade-marks.

11. The plaintiff has in his replication assorted that the trade-mark

registration of ‘Natraj’ with regard to pencils, erasers, refills, sharpners, fountain-
pens etc. obtained by defendants does not entitle them to claim the same trade-
name with regard to other goods not so specifically got registered. Mathematical
and colour boxes are pleaded to- not cognate items with those dealt with by the
defendants, and there is abundant prima-facie ???ce on recard to show that the
plaintiff has been using the trade-mark ‘Natraj’ for these boxes h??? ???4. As
against that, the defendants as per their own admissions while
seeking registration of trade-mark with regard to mathematical boxes have
started using that trade-mark for these boxes from 19???2. They have thus
attempted to take over the trade-mark and goodwill of the plaintiff. These
defendants it is further pointed out have clandestinely started using the
alphabet (R) with the word ‘Na???raj’ on the mathematical boxes representing as
if the same has been got registered. The plaintiff claims that he has been widely
publicising in newsp???pers, periodicals and otherwise his mathematical boxes
under the name ‘Natraj’. A number of documents and affidavits from dealers in
Madras, Calcutta, Bombay. Cochin, Banglore etc. have been filed in order to
show that the mathematical boxes under the name ‘Natraj’ are being extensively
marketed by the plaintiff.

12. As regards M/S Babu Lal & Sons to whom the trade-name ‘Natraj’ was
said to belong, a photo copy of the letter of Babu Lal & Sons surrendering that
name in Plaintiff's favour of the date 5.1.1977 has been filed. It was thereafter
on 6.1.1977 than the plaintiff proceeded to get the trade-mark registered under
the Trade & Merchandise Marks Act.

13. The plaintiff has also pointed out that the defendant filed opposition
before the Registrar of Trade marks against the registration of the plaintiff's
trade-mark, and inspite of a number of opportunities allowed to them to lead
evidence in support of their opposition, they failed to do so and ultimately their
opposition was treated as abondened and the plaintiff was allowed costs. The
registration of the plaintiff's trade-mark is therefore pleaded to be perfectly
valid. Plaintiff's annual sales now are stated to be around Rs. 40 lacs.
 14. I have given my utmost and prolong consideration to the entire matter.
The Court has at this stage to consider prima facie view of the matter, balance of
convenience and irreparable injury likely to be caused. The circumstances so far
brought on record show that the plaintiff has been marketing mathematical
boxes which are also known as geomatrical boxes from 1974 and has got trade-
mark ‘Natraj’ registered in his favour from 1977. Copyright registrations were
also obtained in 1980 and 1982. Under Section 31 of the Trade and Marchandise
Marks Act, registration of a trade-mark is prima facie evidence of the validity
thereof. This registration in plaintiff's favour was obtained inspite of opposition
by the defendants, and on their inability to substantiate the same before the
Registrar. Till such time the registration is revoked, there prima facie is no
reason to deprive the plaintiff the benefit of the registration. The word ‘Natraj’ is
not inventive or original connotation of any of the parties. It has come from
times in memorial. Similar is the position of the device or ‘Natraj’. Furthermore
the registration of the plaintiff's trade-mark under-clause-16 of the 4th schedule
may not alone justify ignoring the same or treating that as invalid. According to
the plaintiff this was in consonance with the international classifiation. It is also
pointed out that the defendants too have now sought registration for their
mathematical boxes under the same clause-16,

15. Defendants no doubt a reputed concern marketing Natraj pencils, etc. on

wide-scale and have been advertising extensively. Their registration of the trade-
mark ‘Natraj’ of the pencils was obtained in 1964 with user commencing from
1961. This registration was later got extended to refills, sharpners, fountain-
pens, erasers etc. However significantly the defendants did not obtain
registration of this trade-mark with respect to mathematical and geomatrical
boxes. They have now in the year 1982 started manufacturing and marketing
them and sought registration of the trade-mark ‘Natraj’ qua them. Thus the user
of this trade-mark qua mathematical and geomatrical boxes by the defendants
is much later and almost 8 years after the user claimed by the plaintiff.

16. Whether the mathematical boxes are cognate with pencils, refills,

sharpners, fountain-pens etc. as marketed by the defendants is a moot point
and can only be determined or any prima-facie opinion expressed when the
defendants move a petition for rectification of the plaintiff's trade-mark under
Sec. 111 of the Trade and Merchandise Marks Act. Prima facie registration of a
trade-mark of certain types of goods of a particular class does not essentially
extend the same to all goods of the same class.

17. As regards the colour scheme, style and device on the cartons both the
sides have registration in their favour under the Copyright Act. It will suffice
however to mention here that so far as pencils, sharpners, fountain-pens,
erasers etc., when they are sold to stray retailers, they seldom go with cartons.
The device, lable colour-scheme etc. are of course relevant in mathematical
boxes. In the light of these observations, I am of the opinion that the interim-
injunction already issued does not call for vacation at this stage. At the same
time, since the defendants have been using the trade-mark ‘Natraj’ extensively
for their number of stationery articles, I am inclined to permit them to move for
seeking invalidity of the registration of the plaintiff's trade-mark on the ground
of cognate goods and such other grounds as the defendants may choose to
agitate. An issue in this regard is allowed to be raised to the following effect:

“Is the registration of the trade-mark ‘Natraj’ with regard to mathematical

and colour boxes in plaintiff s favour invalid?”

18. The suit shall stand aa???rned for a period of three months to enable the
defen dants to apply for rectification of the registration. The suit De???isted on
21st march 1982.

27. Puneet Industrial Controls (P) Ltd. v. Classic

Electronics, 1996 SCC OnLine Del 1003
The Judgment of the Court was delivered by

K. RAMAMOORTHY, J.:— IA 11853/94 has been filed by the plaintiffs under

Order 39 Rules 1 and 2 for injunction. Ad interim injunction was granted by this
Court on 19.12.1994. IA 1563/95 had been filed by the defendants under Order
39 Rule 4 CPC for vacating ad interim injunction. The plaintiffs have filed the suit
claiming for injunction on the basis of the Copyright held by the plaintiffs in the
electronic relays manufactured by the plaintiffs. The reliefs prayed for by the
plaintiffs are as follows:

“a) For permanent injunction restraining the Defendants, their servants,

agents and all other persons on their behalf from manufacturing and
selling the infringing materials and infringing the copyright of the plaintiffs
in the aforesaid “artistic works” and “literary works”.
 b) For permanent injunction restraining the Defendants, their servants,
agents and all other persons on their behalf from passing on to any other
person in any form or material the confidential proprietary information
regarding electronic circuits encompassed in the EPOXY sealing”.

2. The parties have indulged in prolixity in pleading though the point

ultimately lies in a very narrow compass. Because I am dealing with the
Interlocutory application, it is not necessary to refer to the pleadings in detail.
The case of the plaintiffs very briefly stated in a condensed form is as follows : In
or about 1975 the plaintiff No. 1 (and/or its predecessor in interest) started
manufacturing and selling broad range of electronic relays used for the
protection and automation of electrical installations used by major chemical
plants, thermal power stations and defence electronic installations. The plaintiffs
are also manufacturing electronic relays for Diesel generating set panels. The
plaintiffs are also manufacturing reverse power relays, engine relay, alternator
voltage monitor relay, mains voltage monitor relay, over voltage relay for load
protection, D.C. Timer, A.C. Timer, over frequency relay for engine speed
protection, earth-fault relay, over load relay, auto booster controller, self priming
timer and electronic timer. The products of the plaintiffs are highly superior in its
working to other products available in the market and enjoyed very high
reputation in the market. The plaintiffs have been improving upon the products
and the design, lay out and the unique electrical/electronic circuits and
drawings/photographs depicting the same constitute “artistic work” within the
meaning of Section 2(c)(i) of the Copyright Act, 1957. The electronic/electrical
circuits are encompassed within the component call ‘EPOXV’ and this is a “trade
secret” and “confidential proprietary information” of the plaintiffs.

3. The second plaintiff Mr. Prem Dua is the Managing Director of the first
plaintiff Company claimed to be qualified Electrical and Electronics Engineer
from ITT
Delhi, and he is well versed in this field. Further development was made and the
second plaintiff has been maintaining high degree of quality. The products of the
plaintiffs are sold under the trade mark “PIC”, which was duly registered vide No.
525234 B dated 26.2.1990, under the Trade Mark Act, 1958.

4. In para 11 of the plaint the plaintiffs would state that the second defendant
Mr. Sanjay Channana is the first cousin of the second plaintiff. He had passed
only a Diploma in (Machanical Engineering). He was doing some business and he
could not do well in the business and the parents of the second defendant
requested the second plaintiff to help him and the second plaintiff made him set
up an industry for the manufacturing oi voltage regulators and shock protectors,
under the trade name of Hi-Tech Controls. As is said earlier the second
defendant could not run effectively and again he sought the help of the second
plaintiff. With a view to helping the second defendant during the period from
April 1991 to April 1992 the manufacture of electronics relays was divided
approximately equally between Hi-Tech controls (of the defendant No. 2) and a
new firm set up by the second plaintiff with the trade name “Dua
Power Controls”. The two concerns under the control of the second plaintiff
manufactured the electronics relays from the factory of the second plaintiff
under the Trademark “PIC”.

5. In April 1992 Punnet Industrial Control Pvt. Ltd the first plaintiff was

incorporated under the Companies Act, 1956, as Private Limited Company,
taking over the manufacturing operations of Dua Power Control which was shut
down. The resultant position in April 1992 was that the manufacturing
operations of the plaintiffs were segregated or divided for the sake of business
in the name of Hi- Tech Controls and Puneet Industrial Control Pvt. Ltd. It is
significant to mention that the entire manufacturing was done at the factory of
the second plaintiff and all the products were sold under the trade name PIC
and the products manufactured under Hi-Tech Controls were also billed only
under the Company Puneet Industrial Pvt. Ltd with the trade name PIC

6. The second defendant a close relation was trusted by the second plaintiff
and he was fully trained in the business and the second plaintiff sent the second
defendant to attend the product exhibitions which were held in other cities like
Bangalore. During such business relationship the second defendant, acquired
knowledge of the confidential nature of the electrical/electronics circuits
particularly that encompassed in EPOXY sealing and the second defendant was
clearly instructed that the said information shou???nt only be disclosed but also
ought not to be misused.

7. In or about May 1994, the second plaintiff came to know the attitude of the
second defendant by letter dated 20.5.1994 by one Shri R. Sarvana of Bangalore
and 23.5.1994 by one Shri A.S. Rangnanath from Bangalore. The second plaintiff
came to know in mid - November 1994 that the second defendant has set up a
concern in the name of Classic Electronics (defendant No. 1 father of defendant
No. 1 being Pro
prietor). The Classic Electronics started manufacturing the products which are
exact copy or replica of the plaintiffs' products.

8. On 15.11.1994, there was a letter from M/s Inditex India, New Delhi, to the
plaintiffs. In para 17 of the plaint the case of the plaintiffs is put thus:
 That it is respectfully submitted that the Plaintiffs have carefully studied in
details the products made by the Defendants and have come to the firm
conclusion that:

a) the internal electrical/electronic circuit on the printed circuit board used

by the D???endants is exactly identical and/or substantially and
materially similar to that used by the plaintiffs:

b) the ele???nic circuit encompassed in the EPOXY sealing is identical to

that used the plaintiff; (c) the external features and design of the
product are i???ntical and/or substantially, materially and deceptively
similar to that of it??? plaintiffs.

9. According to the plaintiffs the defendants are guilty of infringment of the

plaintiffs Copyright under Section 51 of the Copyright Act, 1957.

10. The plaintiffs for the purpose of explaining the products have issued a
descriptive literature and that is also copied by the defendants. According to the
plaintiffs the descriptive literature constituted literary work within the meaning
of Section 2(0) of the Copyright Act, 1957. Section 2(o) of the Copyright Act, 1957
reads as follows:

Section 2(o) “literary works” includes tables, compilations and computer

programmes….”

11. The plaintiffs would also state that the second defendant is not really
equipped to deal with the electronics/electrical products and taking advantage
of his acquaintance the second defendant is now trying to pass off the products
of the plaintiffs by committing infringement of the artistic and literary works of
the plaintiffs.

12. The defendants have filed a very detailed written statement stating, inter
alia, that the second defendant is an Engineer Group, taking the help of Mr.
Vivek Channana who is an Electronics Engineer from ITT Delhi is doing the
business and the defendants are well equipped to do the business. As a matter
of fact, the case of the defendants is, it is the second plaintiff who is trying to
take advantage of the good products of the defendants. It is admitted by the
defendants that “said Integrated Circuit being the Central Component, is
encompassed in the epoxy sealing and the said sealing is put to protect the said
IC and to keep it away from the eyes of the competitors.” Therefore, this aspect
of the matter being of a confidential nature is admitted by the defendants. It is
also stated by the defendants that the designs claimed by the plaintiffs were
capable of Registration under the Designs Act, 1911 and the same have not been
registered, and therefore, they cannot claim any right It is also stated that
thousands of such pieces have already been manufactured and even if the
plaintiffs had any right in such designs the same does not survive any more.

13. About parting company with the plaintiffs in May 1994 the defendants
Would give a different version. The second Plaintiff according to the second
defendant did not pay him for the products manufactured by him and there are
larger amounts due from the second plaintiff to the second Defendant. Under
those circumstances the second defendant thought the best way to survive in
the field was to severe all connections with the plaintiffs. It is asserted by the
defendants that there is no infringment of artistic or literary works of the
plaintiffs. The whole case of the plaintiffs is misconceived and the plaintiffs are
not entitled to any reliefs.

28. Ishi Khosla v. Anil Aggarwal, 2007 SCC OnLine Del 126

The Judgment of the Court was delivered by

 A.K. SIKRI, J.:— As per the averments made in the plaint, the plaintiff
Mrs. Ishi Khosla founded ‘M/s. Whole Foods’, which is a sole proprietorship firm
of the plaintiff. It is engaged in the business of producing and retailing ‘healthy
and healing food products’ in India. It carries on business through various
franchise outlets located at Gurgaon and Chandigarh. The plaintiff claims that
she is a leading Health Counsellor and a former Senior Nutritionist with the
Escorts Heart Institute and Research Centre, New Delhi. She feels pride in
bringing forth a unique concept of “one-stop shop” which makes available and
sels a wide range of ‘healthy and healing foods’ to consumers through its ‘Whole
Foods Shop’ outlets located in major cities such as New Delhi, Chandigarh and
Gurgaon. These foods include all foods that provide good nutrition and promote
good health using minimum additives, preservatives and chemicals and are not
restricted to just low fat foods. Based on this belief she started retailing health
food items like rice, pulses, wheat, oils, roasted namkeens, bakery products like
whole wheat bread, cookies and a range of other food items to various
authorised select franchise outlets. It is also stated those who are suffering from
certain common lifestyle-related diseases like, hypertension, obsesity, diabetes,
osteoporosis are specially recommended to take these foods. In this manner,
she is providing vast range of guaranteed organic, chemical-free, adulteration-
free foods. The plaintiff also has its registered website,
namely, www.wholefoodsindia.com. She is also a brand ambassador of ‘Equal’, a
low-calorie sweetener of Merisant India Pvt. Ltd. She also has numreous articles,
on going columns in leading newspapers and publications on health related
issues in various leading magazines, newspapers. She has also authored a book
“The Cholesterol Facts”. She extensively delivers lectures and conducts regular
workshops for corporates, schools, hotel and airline industry.

 2. In respect of the trademark “Whole Foods” it is stated that she started using
this trademark in the year 2001. Since then it has been voluminously,
continuously and extensively used by her in the course of trade/business to the
extent that the trademark “Whole Foods” has always
been perceived as indicative of the source of the plaintiff with respect to food
items, so much so that those who buy or are keen on buying ‘health foods’
bearing the trademark “Whole Foods” always associate the same with the
plaintiff and none else. She, therefore, states that she is the proprietor of the
trademark “Whole Foods” in India by virtue of priority in adoption, long,
continuous and extensive use and the reputation consequently accruing thereto
in the course of trade and is acknowledged to be a standard bearer of excellence
in quality and business ethics. She has also applied for registration of this
trademark on 27.7.2004 vide Application No. 01298649 in Class 30.

 3. It is further the case of the plaintiff that she is also the owner of copyright in
‘artistic work’ comprised in the style of writing and representation of the
trademark “Whole Foods”, as also in the get-up, layout, arrangement of features,
colour scheme and appearance of the packaging within the meaning of Section
2(c) of the Copyright Act, 1957 and is, therefore, entitled to copyright protection
under Section 13 of the aforesaid Act. She states that she has made its
packaging unique and distinctive in order to distinguish the goods from those of
others.

 4. It is claimed that because of superior quality of food products

manufactured and marketed by her under the trademarks “Whole Foods” the
products of the plaintiff are widely sought after by the general public and within
the trade circles and therefore, sales have been sharply increasing over the
years. In financial year 2001-2002 turnover was Rs. 24.69 lacs which rose to Rs.
62.39 lacs in 2003-2004. This shows that the plaintiff under the said trademark
has acquired enviable goodwill and reputation amongst the public at large so
much so that the mark “Whole Foods” has come to be exclusively identified and
associated with the plaintiff in India and none else.

 5. The plaintiff is aggrieved by the adoption of identical trademark “Whole

Foods” by the defendant no. 2 with identical/deceptively similar packaging when
she found such a product in the market in the month of November, 2004. It is
alleged that this adoption with a dishonest and male fide intention to ride upon
the goodwill and reputation of plaintiff's trade mark “Whole Foods” amounts to
an instrument of fraud in the market as they are nothing short of an
unmistakable and deliberate imitation of the plaintiff's corresponding products
and packaging. It is stated that some food items as ‘diet food’ with the same
name is going to confuse the buyer that the goods which are sold by the
defendants are that of plaintiff and, therefore, the defendants are guilty of
passing off as well as infringing the copyright of the plaintiff in its ‘Whole Foods’
packaging inasmuch as the plaintiff submits that

 6. Along with the plaint the plaintiff has filed IA. 1854/2005 and the suit with
this IA came up for preliminary hearing on 9.3.2005 when the Court granted ex-
parte ad interim injunction in terms of para 28(a) and (b) of the said application.
After the service of summons upon them, defendants moved application for
vacation of the injunction order which is IA. 2761/2005. It is for this reason that
both these applications were heard together and are being disposed of with this
order.

 7. In the written statement, reply to injunction application as well as

application for vacation of injunction, the defence of the defendant is that the
trademark of the defendant is “DIET WHOLE FOODS” which is different from
“Whole Foods”. It is further submitted that the plaintiff is not the registered
proprietor of the trademark “Whole Foods” and, therefore, case set up by the
plaintiff is that of passing off which the plaintiff has not been able to prove. For
the purpose of passing off the plaintiff has to establish prior use, distinctiveness
and reputation and the documentary evidence filed by the plaintiff does not
establish these ingredients of passing off. It is stated that no documentary
evidence has been filed to establish the claims that the plaintiff is in the business
since 2001. It is further stated that the documents filed by the plaintiff do not
support the sales figure as claimed. The plaintiff has also not filed on record any
advertisements, sale invoices or orders. It is alleged that the activities of the
plaintiff are very limited.

 8. The claim of the plaintiff is also contested on the ground that the mark
“Whole Foods” is an ordinary English word and cannot be protected as it is a
descriptive mark having direct reference to the character the quality
of the goods. It is also claimed that the expression “Whole Foods” is common to
trade and the said expression is being used by various businesses. Such a
trademark cannot be protected unless it has acquired secondary significance
which has not happened in this case.

 9. It is also the case of the defendant that trademark of the defendant which
is “DIET WHOLE FOODS” is not the same or identical or deceptively similar to the
trademark of the plaintiff and, therefore, no action for infringement can be
brought. It is argued that since the plaintiff's action is not for infringement, the
defendants can escape liability in case there are added matters in the
defendants' trademark/label which in fact is the case as the defendants have
used the additional word “DIET” as prefix along with the words “Whole Foods” in
their trademark.

 10. Vacation of the injunction order is also prayed for on the ground that the
plaintiff has made a misrepresentation as her trademark has not yet been
accepted for registration as falsely claimed by her.

 11. The plaintiff has filed affidavit dated 15.2.2006 along with which certain
documents are also filed. It is stated in this affidavit that she started this
business of producing and selling health food products through ‘Whole Foods-
the health food shop’ since 2001 and Web Pages from the Internet which refer to
her organization and products are filed in support. She has also filed copy for
application for Sales Tax Registration which has granted on 8.1.2002. Though
Sales Tax Assessment Form for the year 2001-2002 related to Crockery business
it is mentioned that it is a clearly typographical error as she was never engaged
in the business of Crockery. It is also explained in the affidavit that it was her
bona fide belief that her trademark/trade name was created by the combination
of words “WHOLE” and “FOODS” and was not aware of it connoting a primary
meaning. She has reiterated that food products under the trademark “Whole
Foods” are associated with her organization exclusively and that is how
consumers and trade associates perceive it.

 12. Counsel for both the parties advanced their respective submissions on the
lines of averments made in the plaint and written statement respectively, note
whereof is taken above.
  13. I have considered the arguments of both the parties and have also gone
through the plethora of judgments cited by them, reference whereof shall be
made in the course of my discussion.

 15. On the other hand the defendants claim to have filed an application for
trademark registration on 28.5.2004 wherein it is in the ‘proposed to be used
category’ which would indicate that till then the defendants had not commenced
use of their trademark. Therefore, prima facie it appears that the plaintiff is a
prior user of the trademark ‘Whole Foods’.

 16. The fore question is whether the adoption of the trademark ‘Whole Foods’
by the plaintiff is permissible. Whether it is a generic word and, if so, has
acquired secondary meaning? If the answer to this question is in the affirmative,
whether the adoption of trademark “DIET WHOLE FOODS” by the
defendants in mala fide and such dishonest adoption is likely to confuse the
public?

 17. The word ‘Whole Foods’ is an English word and its dictionary meaning is as
follows:

‘Whole-food’ — food that has not had any of its natural features taken
away or any artificial substances added. A whole food shop/cookbook/diet

Whole-foods — Whole foods are natural foods which have not been
processed : The children insist on eating only whole foods, like beans and
brown rice.

 18. What is the dictionary meaning ascribed to ‘Whole Foods’. Whole Foods

are natural foods which have not been processed. The natural foods would
necessarily be healthy and healing food products. Normally many whole foods
may fall in this category. Thus certain foods when taken in raw form and as
natural food may themselves be good for health. However, certain foods may
not necessarily be good for health even when they are not processed. On the
other hand, the adoption of trademark ‘Whole Foods’ by the plaintiff is with
emphasis on healthy and healing food products. She is a nutritionist and came
up with the idea that for better health people should take healthy foods which
provide good nutrition and promote good health. Her concept as explained in
the plaint is to promote the foods in a form which promote good health using
minimum additives, preservatives and chemicals. In other words her idea of
‘Whole Food’ is just low fat foods with nutritional value. Thus the products
marketed by the plaintiff like rice, pulses, oils, frosted namkeens, bakery
products are not necessarily natural foods which have not been processed.
Therefore, they do not subscribe to the dictionary meaning of word ‘Whole
Foods’. On the contrary, the plaintiff has conceptualied these foods which will be
processed and even some additives, preservatives or chemicals can also be
used. However, the use of these chemicals would be minimal so that they do not
lose their basic quality and ingredients of being healthy foods. Further,
according to her even those foods which are not just low fat foods can also be
processed in such a manner that they can be treated as “healthy foods”. It is
because of this reason that in addition to natural foods, the plaintiff has been
marketing products like roasted namkeen and even bakery foods which by no
stretch of imagination can be covered by the ordinary dictionary meaning of the
word ‘Whole Foods’. Thus the concept of ‘Whole Foods’ by the plaintiff with
adoption of this trademark is different from the meaning of ‘Whole Foods’ as
per the English dictionary. It, therefore, cannot be said that strictly the products
marketed by the plaintiff are descriptive of the meaning of English words ‘Whole
Foods’.

 19. The plaintiff has taken pains and has made strenuous effort to sell her
concept/idea of ‘Whole Foods’, through her Website and various articles written
by her which have appeared in magazines, newspapers and journals. Reading of
these articles would clearly show that her USP is her range of high-nutrient,
adulteration-free snacks, which are a tasty alternative to oil-rich ones and at the
same time maintaining the taste which one gets from some oil-rich ones. For
example, green pulses are processed pulses which can normally be taken in a
fried form i.e. fried in oil are sold by her in roasted from. Whereas as per the
dictionary meaning of the word ‘Whole Foods’, the form in which grains or pulses
should be taken is the one which can be taken as raw form, in contradistinction
the plaintiff is not selling the said products in raw form but in processed form.
However, concept of processing is different. Instead of selling it in fried form she
believes that to maintain it as a healthy food it should be taken in roasted form
without compromising on taste. Therefore, the product of the plaintiff does not
remain whole food as per the definition contained in English dictionary as it is
processed. At the same time she has adopted different techniques for
processing. The idea of her concept can be seen from one of the articles where
she states that dispelling the myth that health food equals low fat she has
stocked an organic chemical free range of grains and pulses, whole wheat bread
and bakery products made with olive oil. Thus her concept of good health as
spread by her is that tasty food like crispy potato, chips, papri, mathis, bhelpuri
and namkeens are not to be avoided as she knows that they are irresistible.
Thus she has packaged these very ‘goodies’ in a different form which is free from
oil with the motto of selling good food and wholesome as well. Adoption of the
trademark ‘Whole Foods’ with aforesaid hypothesis and concept has to be
viewed differently. If the public at large which is to consume the ‘Whole Foods’ as
envisaged by the plaintiff such a public would not go by the ordinary dictionary
meaning of the word ‘Whole Foods’ but would read behind it the concept
developed by the plaintiff. Therefore, in a matter like this it cannot be said that it
is mere adoption of the dictionary word ‘Whole Foods’ over which plaintiff
cannot claim monopoly.

 20. In a modern world where information is a key factor and the information
is available with the click of a mouse on a computer from the internet, its an era
of expansion. In today's world an ‘idea’ which may be unique and ‘out of box’ can
click and become popular overnight and within
no time. The plaintiff understood the psychology of today's generation which is
health freak. At the same time she knew it is difficult to avoid certain foods in
particular form which, because of their taste, are irresistible. Old fashioned
techniques of dieting, namely, advising obese, overweight and not so active
people to avoid such food has not worked. Experience has shown that even if a
person goes on strict diet and does not consume oily rich or those foods termed
as ‘bad’ and ‘unwholesome’, it may work for short period but such a dieting may
not last long. Therefore, most of such dietary plans have failed. It is because of
this reason that nutritionists have from time to time developed various diet
plans. Going by this stark reality and Indian food habits, if the plaintiff got the
idea to make the same food like bhujiya, crispy potato, chips, papri, mathis,
bhelpuri and namkeens by alternative method, namely, avoiding oil and instead
roasting it, preserving the same taste while ensuring that the calorie content is
significantly less and decided to call it ‘Whole Foods’ it can be treated as her
unique way of adoption of the words ‘Whole Foods’. Still, may be she could not
have claimed exclusive trademark over the same as it is an ordinary dictionary
word as well. However, the adoption of this trademark ‘Whole Foods’ with totally
different connotation than as provided in the dictionary and selling her meaning
of ‘Whole Foods’ to those who are likely users of this product would definitely
give it a distinctive meaning capable of distinguishing her products from those of
others. It can also be said that because of her untiring and relentless efforts in
projecting what she means by ‘Whole Foods’, it has acquired secondary
character and has come to be associated with the plaintiff's products. To acquire
secondary meaning/distinctive meaning it is not necessary that product is in the
market for number of years, as observed earlier. If a new idea is fascinating and
appeals to the consumers, it can become a hit overnight.
  21. It has been held by Division Bench of this Court in the case of Century
Traders v. Roshan Lal Duggar, PTC Suppl (1) (720) (Del) (DB) that for claiming relief
it is not necessary to show that the trademark had been used for a considerable
length of time. Even a single actual user with an intent to continue such use is
enough. The Court went to the extent of holding that in an action for passing off
registration of the impugned trademark is irrelevant and no actual proof of
damages or fraud is necessary. In that case the Court found that the appellant
was admittedly a prior user of trademark ‘RAJA RANI’ vis-a-vis the respondent.
The said trademark had some novelty and attractiveness is evident from the fact
that both the appellant and the respondents have applied for registration of that
mark in their favour. Applications of both the parties were pending. The Court in
these circumstances

was of the opinion that registration of the mark in favour of either party would
create a situation in which the action for infringment would be relevant and thus
found that prima facie was made out by the appellant.

 22. In the present case sales of plaintiff's products in the financial year 2001-
2002 was Rs. 24.69 lacs which rose to Rs. 62.39 lacs in 2003-2004. This shows the
reputation of the plaintiff's products. Another interesting aspect which is to be
noted is that the defendants have also applied for trademark registration using
the words ‘Whole’ and ‘Foods’. Thus the defendants themselves are attempting
to claim trademark significant in respect of ‘Whole Foods’. Therefore, in this view
of the matter they would be precluded from alleging the words of the plaintiff's
trademark ‘Whole Foods’ being incapable of trademark signification as held by
this Court in the case of Automatic Electric Limited v. R.K. Dhawan, 1999 PTC (19)
81 wherein the Court observed as under:

“……The fact that the defendant itself has sought to claim trade
proprietary right and monopoly in “DIMMER ROT”, it does not lie in their
mouth to say that the word “DIMMER” is a generic expression.”

 23. What is relevant is the admission on the part of the defendants in using

the word “DIET WHOLE FOODS” in respect of the same products which are
marketed by the defendants with same techniques and same benefits. As on the
date of filing of the application by the defendants for registration of this mark in
2004, they had not started marketing their products under this label. Even if it is
taken that the defendants' products hit the market in the year 2004, the plaintiff
had been marketing her products with trademark ‘Whole Foods’ since the year
2001. Obviously, the defendants could see through the benefits of products as
conceptualised by the plaintiff and they wanted their own share in the pie. It is
not to suggest that the plaintiff has monopoly over these products. Any other
person may enter the trade and be a competitor. Competition is healthy for not
only consumers but for manufacturer as well and is, therefore, in public interest.
However, what is to be discouraged in the dishonest adoption of somebody
else's trademark and trying to ride on the goodwill created by the competitor
who entered the market prior in time. This is what is sought to be done by the
defendants by clever manipulation, namely, adding the word ‘DIET’ in their mark
after adopting identically the entire trademark of the plaintiff i.e. ‘Whole Foods’.
This intention of the defendants becomes manifest as they have also adopted
same style of the trademark and same labels/packing etc. I may mention that
during
learned counsel for the defendant conceded this and offered to change the
writing style as he accepted that artistic feature could not be used. However,
what is emphasized is the manner in which the defendants adopted the
trademark ‘DIET WHOLE FOODS’. Addition of one word with same style in which
these letters are written explains the obvious, namely, dishonest adoption. With
such adoption, confusion is inevitable. In Ruston Hornsby v. Zamindara
Engineering, PTC (Suppl) (1) 175 SC, the Supreme Court deprecated the
defendant's adoption of plaintiff's trademark ‘RUSTON’ by adding word ‘INDIA’ to
its mark and held that mere addition of the word ‘INDIA’ could not be held to be
a distinguishing factor as the said word had no trademark value or signification.

 24. In the case of Munday v. Carey, 1905 RPC 273 the Court held:

“……I believe that it is a rank case of dishonestly, and where you see
dishonesty, then even though the similarity were less than it is here, you
ought, I think, to pay great attention to the items of similarity, and less to the
items of dissimilarity”.

 25. Further, in the case of Midland Counties Dairy Ltd. v. Midland Dairies Ltd.,

1948 PRC 429 it was held that:

“……For if the Court comes to the conclusion that the defendant was
actuated in adopting the style complained of by the dishonest motive of
filching some part of the plaintiff's reputation, then the Court will not be
astute to find that this nefarious design has failed.”

 26. In view of the aforesaid discussion, I do not accept the contention of the
defendants that the ingredients of passing off action are not established in the
instant case. The plaintiff has been able to show, prima facie, prior use,
distinctiveness as well as reputation which the plaintiff's trademark ‘Whole
Foods’ has acquired. Judgment of the Supreme Court in the case of American
Home Products Corporation v. Mac Laboratories Pvt. Ltd., (1986) 1 SCC 465 : AIR
1986 SC 137 would, therefore, be of no assistance to the defendants wherein the
Court held that before grant of injunction aforesaid requisites are to be
established. Learned counsel for the defendants had also cited the judgment in
the case of Jabbar Ahmed v. Prince Industries, (2003) 26 PTC 576 (Del) and made
the submission that as in the absence of any advertisement of the product it
could not be said that the plaintiff was using the said product or had acquired
distinctiveness. In that case the plaintiff had filed certain assessment orders on
the basis of which it had claimed use of trademark ‘BELL’ during the said period.
The Court observed that there was nothing in
these assessment orders which can even remotely indicate that the plaintiff had
been manufacturing scissors/nail clippers under the said trademark. However, in
the instant case the plaintiff has produced sufficient material which would show
user of trade name ‘Whole Foods’ in respect of her goods.

 27. Many judgments including the case of Vijay Kumar Ahuja v. Lalita

Ahuja, (2002) 24 PTC 141 (Del) were cited by learned counsel for the defendants
in support of the plea that when the Trademark is an English language word
nobody can claim proprietary rights over the same unless there is acquired
secondary signification. There is no quarrel about the proposition of law.
However, may discussion above shows that the plaintiff has been able to, prima
facie, show that ‘Whole Food’ is associated with her products in the instant case.
In the facts of this case, therefore, the judgment of Supreme Court in the case
of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR
1965 SC 980 and the case of Johnson & Johnson v. Christline Hoden India (P)
Ltd., 1988 PTC 39 cited by the defendants would have no application.

 28. The consequence of aforesaid discussion would be to confirm the ex-parte

injunction granted on 9.3.2005. Resultantly, IA, 1854/2005 moved by the plaintiff
is allowed and order dated 9.3.2005 is made absolute till the disposal of the suit
and IA. 2761/2005 preferred by the defendant is hereby dismissed. However, it
will not preclude the defendant to suitably modify the trademark and also the
manner in which the words are written so that they are not similar or
deceptively similar or confusing.

 29. CS(OS) No. 309 of 2005

Pleadings are complete.

List before the Joint Registrar for admission/denial of documents on

26.02.2007 and before Court for framing of issues on 26.03.2007.
29. Dhanam Textiles v. Gowri Textiles, 2019 SCC OnLine
Mad 28694
N. SATHISH KUMAR, J.:— The suit has been filed for

i) a permanent injunction restraining the defendants by themselves, their

directors/partners/proprietor as the case may be, legal representatives,
successors in business, assigns, servants, agents, transporters,
distributors, printers, stockists, wholesalers, dealers, retailers, advertisers
or any one claiming through or under them from infringing plaintiff's
registered trademarks 360 BRAND label and MUBARAK by manufacturing,
distributing, marketing, selling, offering for sale, advertising or in any
other manner dealing in lungies or any other product bearing the almost
identical trademark 060 BRAND label and trademark MUBARAK with
colour scheme, getup, layout which are almost identical to plaintiff's
registered trademarks in any manner whatsoever.

b) a permanent injunction restraining the defendants by themselves, their

directors/partners/proprietor as the case may be, their legal
representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers,
retailers, advertisers or any one claiming through or under them from
committing acts of copyright infringement by making substantial
reproduction of the plaintiff's registered copyright in the aristic works 360
BRAND label and THILLANA label and copyright in MUBARAK label by use
of deceptively similar colour scheme, get up and layout for their 060
BRAND label, RASAGULLA label and MUBARAK label or in any manner
whatsoever.

c) a permanent injunction restraining the defendants by themselves, their

directors/partners/proprietor as the case may be, their legal
representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers,
retailers, advertisers or any one claiming through or under them from in
 any manner passing off and enabling others to pass off the defendants'
lungies and other textile goods as and for the plaintiff's lungies, and other
textile goods by use of the trademarks 060 BRAND label, RASAGULLA label
and MUBARAK label or any other mark deceptively similar to the plaintiff's
trademarks 360 BRAND label, THILLANA Label and MUBARAK label in any
manner whatsoever.

d) the defendant be ordered to surrender to plaintiff for destruction of all

lungies, labels, dyes, blocks, moulds, screen prints, packing materials and
other materials bearing the identical/deceptively similar trademarks 060
BRAND label, RASAGULLA label and MUBARAK label or any trademark
similar to plaintiff's trademarks 360 BRAND label, THILLANA label and
MUBARAK label.

e) a preliminary decree be passed in favour of the plaintiff directing the

defendants to render account of profits made by use of trademarks 060
BRAND label, RASAGULLA label and MUBARAK label and a final decree be
passed in favour of the plaintiff for the amount of profits thus found to
have been made by the defendants after the latter have rendered
accounts.

f) the defendants be ordered and decreed to pay to the plaintiff a sum of Rs.
1,00,000/- as damages for acts of infringement of trademark and passing
off committed by the defendants by manufacture and sale of lungies
bearing the trademarks 060 BRAND lable, RASGULLA label and MUBARAK
label and for costs.

30. Acqua Minerals Ltd. v. Pramod Borse, 2001 SCC OnLine

Del 444
 J.D. Kapoor, J.

1. Through this suit the plaintiff has sought as decree fro permanent injunction restraining
the defendants, their partners from using the mark BISLERI and/or BISLARI.com as part
of their domain name or in any other manner whatsoever as for nay products, goods or
services so as to result in passing off, an infringement of copyright and directing them to
transfer the domain name BISLERI.com to the plaintiff.
2. The case of the plaintiff in brief is that it is the registered proprietor of the trade mark
BISLERI and is registered under the Trade and Merchandise Marks Act, 1958
(hereinafter referred t oas 'the Act') bearing No. 260716 dated 20th November,1969 and is
also the owner of the copyright in the BISLERI word and the unique manner in which it
is written. Its mark BISLERI is extremely well known in the indian market and was one
of the first marks introduced for bottled mineral water in India. The BISLERI water is
distributed in over 500 towns and cities of India and constitutes 70% of the branded
bottled mineral water in the country. That it has a huge distribution network all over the
country which ensures that the mineral water under the mark BISLERI is made available
to consumers all over the country.

3. That plaintiff has also spent huge sums of money on the advertisement and publicity of
its product BISLERI and its reputation has grown over the years as result of enormous
consumer confidence and trust in the mineral water and the mark BISLERI has come to
be associated exclusively with the plaintiff and, therefore, belongs to the plaintiff and no
one else has the right to use the said mark in relating to any product whatsoever.

4. That the word BISLERI has no dictionary meaning and is an Italian surname which is
entitled to the highest degree of protection like various other surnames which fall in this
category namely Colgate, Bata etc. One Mr. Felice Bisleri, an Italian entrepreneur has set
up business of mineral water in India and the business was bought by one of the plaintiff's
group companies and all the rights in the BISLERI marks now vest exclusively in the
plaintiff company.

5. In order to have easy access for the consumers, each and very manufacture, trader or
service provider is allotted one or more names by which the consumer can access the
information relating to the said manufacture or service provider. Such a name is called the
'Domain Name' and it is registered with the Registering Authority. One of such
authorities in Network Solutions Inc.

6. The plaintiff had applied for registration of its name as bisleri.com. However, in
January, 2000, the plaintiff came to know about the illegal and unlawful registration of
this domain name by the defendant on 11th December, 1999 and on visiting or searching
from the Website of the Authority it was found that it has been registered in the name of
defendant No.2 and defendant No.1 was the Technical Contact for defendant No.2.

7. That in view of the fact that the mark BISLERI is the property of the plaintiff and is
registered under the TMM Act confusion is bound to take place when a person wishes to
know about the product of the plaintiff. It will go to the website of the defendant which
has nothing to do with the plaintiff's goods for business. Thus this constitutes a mischief
of passing off by the defendants.

8. That the malafides and fraudulent intentions of the defendants came to the light to the
plaintiff when it was revealed that the defendants have already their own Domain Name
namely [email protected] and are merely using the domain name of the
plaintiff in order to trade in it and/or to pressurise the plaintiff to part with huge sums of
money for the same and as a blocking or trafficking tactic.
9. When the plaintiff called upon the defendants to immediately transfer the rights of the
said domain name in the name of the plaintiff the defendants demanded large sums of
money for doing the same.

10. The defendants were proceeded ex parte as inspite of having been served wit the
summons of the suit and the application under Order 39 Rule 1 & 2 seeking ad interim
injunction order it did not respond or put in appearance to contest the claim of the
plaintiff.

11. To prove its case, the plaintiff has filed the affidavit by way of evidence and has
proved the following relevant documents:-

(i) Ex.P-3 bearing Registration No. 260716 dated 20th November, 1997, 1997 is the
registration certificate of the mark BISLERI under the TMM Act.

(ii) Ex.P-4 is the registration certificate under the Copy Right Act.

(iii) Ex.P-5 is an extract of registration of the domain name of the defendants

BISLERI.com.

(iv) Ex.P-6 is the copy of the e-mail dated 22nd January, 2000 sent by the defendant in
response to the plaintiff's telephone call.

(v) Ex.P-7 is the letter by the plaintiff to the defendants informing the plaintiff to make
the domain name available to the plaintiff which is the domain name of the plaintiff for
the 20 years.

(vi) Ex.P-8 is the information received by the plaintiff from Network Solutions intimating
that they have de-activated the domain name of the defendants BISLERI.com pending the
result of this suit.

12. The reply sent by the defendants in response to the telephone of the plaintiff is highly
relevant and needs to be reproduced. It reads as under :-

"Please refer to telecom you had with us for your demand for the domain name.

After discussion with my partner and all my senior staff members, we mention following
We are a team of professional technocrats working hard. We are presently working on
following protals (under construction) We had done lot of ground work for designing
these sites and has put in may efforts to design the contents and have used lot of
technology. We were under impression that Bisleri meaning is mineral and we decided to
design the site to provide info on all the minerals on the site and e-commerce and get the
deals nationwide.

We don't know since when the name was available for registration but when the decided
to register it was available for more than 2 months before 13th December. The site is
ready for uploading.
After the cell, when we checked it in English dictionary, we didn't find anything and we
came to know that its brand name.

At the time of registing we had no different intention and today also we don't have any
bad intention.

In view of the above, we will be make the name available to you if we get the returns for
work done on this project after considering the future business.

Kindly convey your willingness so that we can plan our activities."

13. In order to project the element of bad faith in registration of the mark BISLERI by the
defendants, the plaintiff has referred to Rule 4 of the Domain Name Registering Policy of
the Registering Authority. Rule 4(b)(i & ii) provides :-

4(b) Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)
(iii), the following circumstances, in particular but without limitation, if found by the
Panel to be present, shall be evidence of the registration and use of a domain name in bad
faith :

(i) circumstances indicating that you have registered or you have acquired the domain
name primarily for the purpose of selling, renting, or otherwise transferring the domain
name registration to the complainant, who is the owner of the trademark or service mark
or to a competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered to domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that
you have engaged in a pattern of such conduct.

14. Now the question that falls for determinations is whether the domain name registered
with the Network Solutions Inc i.e. the Registering Authority has the same protection as
the trade name or trade mark registered under the TMM Act.

31. S. Gopi v. Meenu Cottage Industries, 2019 SCC OnLine

Mad 34480
The suit has been filed for

a) granting a permanent injunction to restrain the defendant, its servants, agents,

successors, heirs, representatives or anyone claiming through it from in any manner
infringing the plaintiff's registered Trademark GAYATHRI (LABEL) containing the
word GAYATHRI and the device of GODDESS GAYATHRI SITTING ON A PINK
LOTUS WEARING A RED SAREE registered under No.1317962 in class 3 by using the
offending Trademark/ label containing the word GAYATHRY and the device of
GODDESS GAYAHRI SITING ON A PINK LOTUS WEARING A RED SAREE or any
other mark or marks which ware identical and / or similar to and /or a colourble imitation
of the plaintiff's registered trademark,

b) granting a permanent injunction to restrain the the defendant, its servants, agents,
successors, heirs, representatives or anyone claiming through it from in any manner
infringing the plaintiff's copyrighted artistic work distinctive label containing the work
GAYATHRI and the device of GODDESS GAYATHRI SITTING ON A PINK LOTUS
WEARING A RED SAREE along  with various other aristic and literary features in a
unique arrangement and with distinctive colour scheme, get-up and lay-out, as graphically
laid out in Schedule-A to the plaint by using the impugned labels contained in Schedule-
B to the plaint or any other work or works which are identical and similar to or a
colourable imitation of the plaintiff's registered, well established and copyrighted artistic
work.

c) granting a permanent injunction to restrain the the defendant, its servants, agents,
successors, heirs, representatives or anyone claiming through it from in any manner
passing off its products under the impugned labels contained in Schedule B to the plaint
as and for products of the plaintiff under the prior adopted, well reputed and celebrated
trademark GAYATHRI and the device of GODDESS GAYATHRI SITTING ON A
PINK LOTUS WEARING A RED SAREE as graphically laid out in Schedule-A to the
plaint either by manufacturing or selling or offering for sale or in any manner advertising
the same.

d) directing the defendant to render a true and faithful accounts of the profits earned by
them through the sale of its products under the offending Trademark/label containing the
word GAYATHRI and the device of GODDESS GAYATHRI SITTING ON A PINK
LOTUS WEARING A RED SAREE and directing payment of such profits to the
plaintiff. 

e) direct the defendant to surrender the entire stock of unused offending labels, bill books,
stationery, promotional materials etc., bearing the offending Trademark/label containing
the words GAYATHRI and the device of GODDESS GAYATHRI SITTING ON A
PINK LOTUS WEARING A RED SAREE, together with blocks and dyes for destruction
and for costs.

2. The defendant filed his written statement, wherein it is stated that he is running a small
business for the past five years and his business never affected the business carried out by
the plaintiff. It is further stated that after receipt of summons and plaint copy, the
defendant had changed his trademark and the lable as " Sri Gadhambari Instant Cup
Samparani", to avoid court litigation and hence the plaintiff is not entitled for the reliefs
as prayed for in the plaint.

3. The statement of the defendant that after receipt of summons he has changed his
trademark and label clearly indicated that he had used the trademark of the plaintiff
GAYATHRY by infringment and therefore, subsequently he had changed his trademark
and lable as " Sri Gadhambari instant cup Samparani".
32. Lotus Green LLP v. Renowned Buildtech Private Limited,
2017 SCC OnLine Del 12066
YOGESH KHANNA, J.

1. This application (IA No. 8114/2017) under Order 39 Rule 4 CPC is moved by
the defendant for vacation of an interim order dated 30.05.2017 passed under
Order 39 Rule 1 & 2 of the CPC (IA No. 6829/2017) wherein the defendant was
restrained from advertising, offering of service/sale, adopting, using and/or
dealing in any manner with the plaintiff's registered trademarks/name “Lotus”
and logo of the plaintiff or any other trade mark identical or deceptively similar
to the plaintiff's above mentioned trademarks and further from representing in
any manner that they are connected with the plaintiff or by using the trademark
of Lotus Greens in its website till the next date of hearing.

2. During the course of the arguments by either counsels the controversy

was culled down to three issues-

(a) if the defendant had infringed the mark “Lotus” of the plaintiff;

(b) the effect of other users in the market using the mark “Lotus” and

(c) whether this court has jurisdiction to try and decide the dispute.

3. Qua contention (a) above, the defendant in its application IA No.

8114/2017 has alleged, a bare perusal of the plaint would reveal that though the
plaintiff claim to have a registered trademark “Lotus” in its name, but para 6 of
the plaint clarifies the following trademarks been registered in favour of the
plaintiff viz. “Lotus Arena” in class 36; “Lotus Arena” in class 37; “Lotus Greens
Sports City” in class 36; “Lotus Greens Sports City” in class 37; “Lotus Isle” in class
36; “Lotus Isle” in class 37; “Lotus Arascape” in class 37. The learned Senior
Counsel for the defendant argues that all the above trademarks show the word
“Lotus” has been used only as a prefix word alongwith an another word but
never the word “Lotus” individually has been registered in favour of the plaintiff
anywhere in India and hence the plaintiff cannot claim exclusive rights to the use
of word “Lotus” as its mark/label. Qua an alleged use of a website by the
defendant viz. www.lotusgreens.net.in, it is argued that it is a normal practice
where the plaintiffs themselves through their agents create a website in the
name of defendant just to make a cause of action for these types of suits and
the defendant herein is nowhere related to such website and rather invites the
court to take any penal action against the maker of such website. In support of
his contentions, the learned Senior Counsel for the defendant has heavily relied
upon Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Pvt. Ltd., 2017 (1) R.A.J.
558 (Delhi) wherein the division bench of this court has held as under.

4. On the other hand, the plaintiff has urged that it is a family owned
partnership firm of Mr. Nirmal Singh and his family. Currently, the entire capital
of the Plaintiff is contributed by Mr. Harkaran Singh Uppal, son of Mr. Nirmal
Singh. “Lotus” is used as a brand name by the Plaintiff and is a registered
trademark for its real estate business. The word “Lotus” as a trade/property
mark is associated with the family of the promoters of the Plaintiff dating back to
the year 2004, when Mr. Nirmal Singh, the father of Mr. Harkaran Singh Uppal.
established a senior Secondary school by the name “Lotus Valley International
School” in NOIDA, Gautam Budh Nagar and it has more than 4000 students.
Subsequently in year 2010, another school under the same name was opened in
Gurgaon having more than 2000 students.

5. In the year 2007, Mr. Nirmal Singh along with Mr. Vidur Bharadwaj and Mr.
Surpreet Singh Suri incorporated an entity under the name and style of M/s.
Three C Universal Developers (P) Ltd. under the brand “3 C Company” (3C) for
carrying on business in the real estate sector. It was decided the 3C will also use
“Lotus” as the trade name for its various projects.

6. Subsequently 3C launched and completed various commercial and

residential projects using “Lotus” as a prefix viz: “Lotus Boulevard”,
“Lotus Boulevard Espacia”, “Lotus Panache”, “Lotus Zing”, “Lotus 300” and
“Lotus City”. Notwithstanding the said usage of “Lotus” by 3C, it was agreed and
understood between the three above named promoters that the other two
promoters shall not have any objection of the same being used by Mr. Nirmal
Singh, the first user, in future. It was also agreed and understood that even
though “3C” could obtain registration of the trade names of its various projects,
it will never claim exclusivity in so far as usage thereby Mr. Nirmal Singh and his
family.

7. The list of group of companies where the Plaintiff is a holding company are
as follows: Lotus Greens Constructions Private Limited,
Bright Buildtech Private Limited and Three C Properties Private Limited. The
Plaintiff is alleged to have launched various projects with the word “Lotus” as
follows: Lotus Greens Sports City, Lotus Isle, Lotus Arena, Lotus Arena-
2, Lotus Arena-7 etc. In order to secure statutory rights in respect of trademarks
of the various projects, the Plaintiff has got registered the same and has been
granted registration certificates in respect thereof by the Office of the Registrar
of Trade Marks.

8. The cost of all the above projects of the plaintiff, allegedly, is more than Rs.
20,000 crore and most of these projects have since been completed. When
compared to the plaintiff's worth the defendant has projects worth Rs. 375 crore
as alleged in their written statement. The investments made by the plaintiff in
advertisement, publicity and in business/sales promotion has increased from Rs.
1,75,82,994 in the year 2013-14 to Rs. 3,24,56,974 in the year 2015-16 and when
compared to the investments made for the sales promotion by the defendant it
is only Rs. 1,18,000 for its Lotus Valley project; Rs. 9,00,000 for
its Lotus Parkscape project and Rs. 17,99,899 for its Lotus Shrishti project in the
year 2016-17. Thus is no comparison qua the worth of the projects undertaken
by the plaintiff and those by the defendant in terms of the investments made in
overall development of such projects and hence all these facts reveal the
defendant has been using the reputation of the plaintiff and in fact is infringing
the registered trade mark of the plaintiff and is passing of its own spaces/flats by
using the prefix Lotus in its projects. The law as it stands today, it is not at all
necessary to get the single word “Lotus” registered as a trademark for
maintaining action for infringment/passing of.

33. Colgate Palmolive Company Limited v. Patel, 2005 SCC

OnLine Del 1439
JUDGEMENT

MUKUL MUDGAL, J. (1.)A chromatic monopoly in respect of red and white colours
claimed by the plaintiff by virtue of the registration of its mark is the issue which arises in
this application for interim relief which affects not only the large tooth paste market in India
in particular but also the issue of exclusive rights to a particular colour scheme generally.
(2.)The plaintiff No. 1 Colgate Palmolive Co. Ltd. and Plaintiff No: 2 Colgate Palmolive (India)
Limited have filed the present suit for permanent injunction restraining infringement of
trade mark and copyright, passing off, unfair competition, damages, rendition of accounts
against the defendant No. 1, Director of Ajanta India Limited, and defendant No. 2, Ajanta
India Limited.

(3.)The plaintiffs have aveled that they are an undoubted international market leader in
the tooth paste trade and the plaintiff No. 2 is manufacturing and marketing Colgate
toothpaste in India since 1937. The core issue enumerated above arises in view of the fact
that the plaintiffs had always marketed their product with the red carton and the word
COLGATE was inscribed on the said red carton in white colour and the other small print on
the carton was also in white colour. The word COLGATE has been inscribed in a particular
font. The mark of the plaintiffs is registered in India since 1954. It is not in dispute that the
plaintiffs are not only the market leader internationally but are market leader in this country
also. For ready reference the registered mark of the plaintiffs, along with the details of
registration certificate is reproduced as under.

34. Rajeswari Fire Works v. Kaliswari Fire Works, 2010

SCC OnLine Mad 4965
Per S.K. Naik, Member This is a bunch of six revision petitions, which have been filed by
M/s Kaliswari Fire Works (the manufacturer), who was opposite party no. 3 before the
District Consumer Disputes Redressal Forum, Purulia, West Bengal (District Forum for
short), against the orders dated 20th of March, 2006 passed by the State Consumer
Disputes Redressal Commission, West Bengal (State Commission for short). The State
Commission has decided all the six appeals filed by the manufacturer before it by passing
identical orders in all the cases, the only variation being the amounts of transactions
between the parties. We, therefore, propose to dispose of all the six revision petitions by
this common order.

For the facility of easy reference, while facts from Revision Petition No. 1332 of 2006 are
being taken up for consideration, we will continue to call the parties as arrayed before the
District Forum i.e. M/s Kamal Enterprises / M/s Sree Ram Mahadeb Mishra would
continue to be called as the complainant, Jai Durga Grand Carriers (the transporter) as
opposite party no.1, Mr. S.B.M. Arumugachamy @ S.V.M.A. Swami (the agent) as
opposite party no.2.

At the outset, it may be stated that in all the six complaints, the District Forum, while
accepting the complaints, had directed all the opposite parties to refund the value of the
goods under consignment, including the cost of transit, and to pay compensation and cost
within one month from the date of the order. The opposite party no.2 i.e. the agent despite
notice had not appeared and was proceeded ex-parte. This order of the District Forum was
challenged in appeal only by the present petitioner i.e. the manufacturer before the State
Commission. Thus, the order of the District Forum qua opposite party no.1, the
transporter, and the opposite party no.2 i.e. the agent has acquired finality as they have
chosen not to challenge the District Forum order. Now, the only party aggrieved against
the order of the fora below is the manufacturer, the present petitioner, who is before us in
these six revision petitions.

Facts :-

The complainant, who was a dealer of fireworks, had placed six orders of different
values/amounts for purchasing fireworks from the petitioner-manufacturer through their
agent/opposite party no.2 during the agents visit to the complainants place at Purulia. The
complainant, however, sent the cost for the goods to the petitioner-manufacturer directly.
From a perusal of consignment notes/lorry receipts the complainant came to know that
fireworks had been handed over to the transporter/opposite party no.1 for being delivered
to him at Purulia. The complainant alleged that contrary to his dispatch instructions,
according to which the fireworks were to be delivered through Sri Durga Transport, the
petitioner-manufacturer chose the present transporter/opposite party no.1 for sending the
consignment to him. The complainant further alleged that it was obligatory on the part of
the transporter to have called for the waybill/road permit as well as transit insurance
policy certificate from him, but neither did he give any intimation in this regard nor
delivered the fireworks to him and when he contacted the transporter, he was informed
that due to non-availability of the vehicle having national permit the fireworks could not
be delivered and would be delivered in September, 1997. Allegedly, despite this, when
the complainant could not get delivery of the fireworks, he apprised the whole matter to
the petitioner-manufacturer who assured him of all help but even then the fireworks were
not delivered and the Deepawali festival, for which the fireworks were ordered to be
purchased, was over. The complainant sent various communications to the transporter
requesting for delivery of the fireworks at the earliest and even he himself visited the
transporters place twice and met his Manager as well as the agent of the petitioner-
manufacturer but all in vain. Finally, the complainant lodged a complaint before the
petitioner-manufacturer about the conduct of the transporter but he expressed his inability
in the matter and stated that he had assigned the fireworks to the transporter as per his
instructions. However, the complainant alleged that he had never given any such dispatch
instruction to consign the fireworks through the present transporter and the petitioner-
manufacturer was raising this contention just to evade his liability. To the dismay of the
complainant, even the manufacturer demanded 7% Central Sales Tax from him for the
goods which were never delivered to him.

In this background, the complainant filed six complaints before the District Forum,
praying for refund of cost of fireworks and transportation charges; interest @ 10% from
November, 1997 till realization; compensation for mental agony and harassment; and
litigation expenses in each of the complaints. The District Forum, on the basis of material
available before it and on appreciation of the evidence produced by the parties, accepted
all the complaints and directed the opposite parties to refund the value of the goods under
consignment, including the cost of transit and to pay compensation for loss of business
and harassment as well as litigation cost for the sums mentioned in each of its orders
within a period of one month, failing which the amounts were directed to carry interest @
8% per annum till realization.

Feeling aggrieved with this order of the District Forum, the petitioner-manufacturer filed
appeals before the State Commission, who too upheld the order of the District Forum and
dismissed the appeals.

Yet aggrieved with the order of the State Commission, that the manufacturer has filed all
these revision petitions.

We have heard Shri S. Aravindh, learned counsel for the petitioner-manufacturer, Shri
Sanjoy Kumar Ghosh for the complainant, and Shri B. Pugalendi for the transporter and
have carefully perused the records of the case. No one appears for the agent/opposite
party no.2, who is proceeded ex-parte.

The case of the complainant is that he placed six orders for the purchase of the fireworks
with the petitioner-manufacturer, through his agent/opposite party no.2, and sent the price
thereof along with the charges for transportation and also indicated the name of Sri Durga
Transport through whom the goods were to be dispatched. The petitioner-manufacturer
contrary to his instructions entrusted the goods to Jai Durga Grand Carriers (the
transporter), opposite party no.1, who not only did not deliver the goods at his destination
i.e. Purulia but admittedly disposed them of at Patna and Nawabganj, U.P.

The complainant, therefore, alleges deficiency on the part of

petitioner/manufacturer/opposite party no.3, the transporter/opposite party no.1 as well as
the agent/opposite party no.2.

The case of the petitioner-manufacturer on the other hand is that Sri Durga Transport and
Jai Durga Grand Carriers are one and the same transporter as they are interchangeably
known as such in the town of Sivakasi and keeping in view the instructions of the
complainant on the purchase order, they entrusted the goods/fireworks to the
transporter/opposite party no.1 and also passed on the balance amount after deducting the
value of the goods to the said transporter. According to them, their role ceases from this
point and any assistance and service rendered thereafter was only a goodwill gesture to
continue and maintain the harmonious business relationship of the past.

The case of the transporter/opposite party no.1 is that it received the consignment of
fireworks of the complainant from petitioner-manufacturer but the consignments were
dispatched to Patna and Nawabganj in U.P. as per the oral instructions of the complainant
on the ground that the West Bengal government had imposed certain restrictions with
regard to use of fire crackers at that time which was making his business in West Bengal
unviable.

In this background, the District Forum was faced with a situation to determine as to
whether the goods were duly delivered by the petitioner-manufacturer contrary to the
instructions of the complainant-purchaser to Jai Durga Grand Carriers/opposite party no.1
and whether the said transporter delivered the goods at Patna and Nawabganj on the
instructions of the complainant or otherwise. The opposite parties were not in a position
to convince the District Forum that they had acted in accordance with the instructions of
the complainant and, therefore, the District Forum made all the opposite parties liable.
This has been upheld by the State Commission.

In the present case, we have to examine as to whether the manufacturer, opposite party
no.3, was really responsible and liable for the alleged non-receipt of the consignment at
Purulia by the purchaser-complainant? In this regard, it would be relevant to look at the
purchase order and the terms and conditions laid therein. The extract of the relevant
portion is as under :-

From M/s KAMAL ENTERPRISES, FIREWORKS DEALER, R.S. BABU STREET

Place PURULIA Pin 733101 ORDER CONFIRMED Sri Kaliswari Fire Works Post Box
No. 133, 5-A, Chairman A. Shunmuga Nadar Road, SIVAKASI-626123 (TAMIL
NADU) Phone Fax :

20814, 72825 04562-72063 & 21614 ORIGINAL ORDER NUMBER MA/9/84 DATE
20.5.97 Explosive Licence No. 2/95-96 Quantity 450 (sic) T.N.G.S.T. Regn. No. 1168 A
(PR) C C.S.T.

DATE 15.2.95 Handling & Forwarding Charges at 3% Mahamai, Insurance Charges, One
Bank Commission, Ruling Central Excise duty and Sales Tax at 4% Extra.

All our prices are ex our Magazine.

DESPATCH INSTRUCTION Advance Rs. PERMANENT OCTOBER EACH BILL : 20

(sic) SRI DUGRA TRANSPORT NO INSURANCE Received by cash / Draft On
Despatching Station PNC GOODS TRAIN LORRY MAS / MDU / VNR SIVAKASI
Documents Through :

Send proforma direct All Prices quoted herein are tentative and approximate; the ruling
price as on date of Sale Invoice is final and binding Code No.

PRODUCT Office Use only Quantity Price Per Amount Rs.

TEMRS & CONDITIONS  

1. The term Sellers refers to Sri Kaliswari Fire Works, Sivakasi.

2. The term Buyers refers to your good-selves.

 
3. The fireworks licence particulars provided by the buyers are noted only upon their firm
assurance and if any dispute arises due to the irregularity of the licence only the buyers
are solely responsible for the consequences.

4. DUTY OR TAX INCREASE : It is hereby mutually agreed that if at any one time,
before delivery to Buyers of any of the said goods, (a) a new or an increased rate of
Excise duty or taxation whether levied by the Central Government of India or by the State
Government is imposed upon such goods or any part of them or the existing tariff
valuation applying to such goods is increased, Sellers may recover from Buyers as an
addition to the contract price, a sum equal to the amount which has been paid by Sellers
on account of the new Excise duty or taxation as the case may be.

5. POINT OF DELIVERY : (a) The rates booked overleaf is ex Sellers Magazine. Sellers
responsibility shall be at an end when the goods have been placed on rails or transports.
Any dispute due to damage or pilferage in transit must be settled between the Buyers and
the carriers. Anyhow, if proper Shortage/Damage Certificate is produced, the Sellers shall
put claim with Insurance Company on behalf of the Buyer, in case of Insurance Premium
recovered from the buyer.

6. The period stipulated for delivery of goods either of the whole order or any part thereof
are approximate. The sellers do not accept any responsibility and/or liability whatsoever
in respect of any loss or damage caused by any late delivery. Such late delivery shall not
afford any ground for refusal to accept further delivery of goods (sic) non payment of the
Bills.

(Emphasis added) X X X X     Referring to clause 5 & 6 of the terms and conditions of

the purchase order on the point of delivery, learned counsel for the petitioner-
manufacturer has submitted that his responsibility was over when the goods were handed
over to the transporter and he could not be held liable for any damage or pilferage in
transit or non-delivery at purchasers destination, which would be a matter of dispute
between the buyer and the carrier. In order to maintain business relationship, the
petitioner-manufacturer had dispatched the lorry receipts and the invoices issued by the
transporter to the complainant and, therefore, the petitioner-manufacturer had discharged
his responsibility to the deal and no blame or deficiency can be apportioned to him.
Further, as could be seen from the purchase order, the dispatch instructions given by the
complainant state the name of Sri Durga Transport and the destination was PNC, which
means Patna City as referred to in the order of the State Commission. Further, the
complainant had deliberately not insured the goods by stating NO INSURANCE on the
purchase order, which meant that the purchaser was willing to take the risk of such
fireworks being damaged or pilfered. It is the contention of the learned counsel for the
petitioner-manufacturer that Sri Durga Transport and Jai Durga Grand Carriers are not
different entities and the complainant himself was aware of it since the goods were
handed over to transporter/opposite party no.1 in the presence of his representative on the
3rd of July, 1997 and the said transporter had issued the necessary consignment notes and
lorry receipts to the complainant on 7th of July, 1997.

On this, we find that the petitioner-manufacturer in their written submissions before the
District Forum had taken the plea that Sri Durga Transport and Jai Durga Transport
Grand Carriers is commonly called in Sivakasi town as Sri Durga Transport, meaning
thereby that Sri Durga Transport and Jai Durga Transport Grand Carriers were one and
the same carrier. There was no rejoinder rebutting this contention of the petitioner-
manufacturer by the complainant. On the contrary, in his cross-examination by the
complainant, the petitioner-manufacturer had reiterated his stand that the original name of
Sri Durga Transport is Jai Durga Grand Carriers and is known as Sri Durga Transport
Company as well. From this explanation, the natural inference would be that Jai Durga
Grand Carriers and Sri Durga Transport were one and the same carrier. The complainant
has not produced any evidence thereafter to prove that Sri Durga Transport and Jai Durga
Grand Carriers were different entities. The State Commission, however, has failed to take
note of this piece of evidence and has erroneously held that the petitioner-manufacturer
had failed to obtain any confirmation from complainant that Sri Durga Transport and Jai
Durga Grand Carriers are same and identical.

That the complainant was aware of this and had accepted Jai Durga Grand Carriers to be
the transporter through whom the goods were to be dispatched is evident also from his
own complaint, in particular para 5 and 7, in which he refers his contacting the manager
of the transport company over telephone inquiring for the reasons not taking any step for
delivery of the goods.

Thereafter, he contacted the agent/opposite party no.2 over telephone. He does not appear
to have made any attempt to contact the petitioner-manufacturer to apprise him about the
non-dispatch of his goods. He wrote a letter to the transporter/opposite party no.1 on 26th
of May, 1998 followed by telegram on 3rd of August, 1998. Finally when he visited
Sivakasi, he met the manager of the transporter/opposite party no.1 and the
agent/opposite party no.2-Mr. Swami but returned to Purulia without even meeting the
petitioner-manufacturer. From this, it is abundantly clear that the complainant was from
the beginning aware of the arrangement to receive his goods through the present
transporter/opposite party no.1 and since the goods had been delivered to the transporter
by the petitioner-manufacturer in the presence of the complainants representative keeping
in view the terms of the purchase order, the plea of Sri Durga Transport and Jai Durga
Grand Carriers being different transport companies appears to be an attempt only to rope
in the petitioner-manufacturer albeit without any reason for some other motive.

Therefore, the contention of the petitioner-manufacturer that it had rightly entrusted the
consignment to Jai Durga Transport Grand Carriers/opposite party no.1, which was the
same as Sri Durga Transport, could not be rejected.

Once we hold that the manufacturer/opposite party no.3 had acted in accordance with the
dispatch instructions given by the purchaser and Jai Durga Grand Carriers in their
affidavit having admitted that they had received the complainants goods from the
petitioner, their liability would cease and the transporter/opposite party no.1 alone will be
responsible for the non-delivery/mis-delivery of the goods.

The petitioner in these revision petitions also seeks to challenge the orders of the fora
below on the ground that the complaints were barred by limitation and also that the
District Forum had no territorial jurisdiction to decide the matter and further that the
complainant was not a consumer since he was making the purchases for resale to earn
profit. These aspects have been dealt with in extenso by the fora below. On the point of
limitation, it has been rightly held that since there was no specific denial of the claim of
the complainant that he made repeated calls over the telephone and also visited them in
person between 1997 and 1999 and finally wrote a letter dated 19th of July, 1999 to the
transporter/opposite party no.1, all the six complaints which were filed on 14th of
October, 1999 were within the prescribed period of two years and, therefore, within time.
On the point of jurisdiction, it was held that since the agent of the manufacturer/opposite
party no.3 had approached the complainant in Purulia where he had placed the purchase
orders, a part of the cause of action had arisen at Purulia and the District Forum was
within its right to correctly entertain the complaints. On the objection that the
complainant was not a consumer, it has been rightly rejected as the rendering of service
pertained to the year 1997 and it is only after the amendment made in 2003 that services
rendered for commercial purposes have been excluded from the purview of the Consumer
Protection Act, 1986. All these grounds, therefore, are not tenable.

In conclusion, it may be held that as per the terms of the purchase order, the liability of
the petitioner-manufacturer/opposite party no.3 extended until the delivery of the goods
to the transporter/opposite party no.1 as per the dispatch instructions of the
purchaser/complainant and in the case in hand, the preponderance of evidence goes to
show that the petitioner-manufacturer had delivered the goods to the transporter as per the
dispatch instructions of the purchaser-complainant and that too in the presence of his
representative. Therefore, the fora below have erroneously held him liable along with the
other opposite parties.

The revision petitions under the circumstances deserve to be accepted, leaving the
complainant to get the award in his favour satisfied from the other opposite parties who
have chosen not to challenge the order of the fora below. However, under the facts and
circumstances of the case, there will be no order as to cost.

35. BCH Electric Limited v. Eaton Corporation, 2016 SCC

OnLine Del 3639
The Judgment of the Court was delivered by

V.G. BISHT, J.:— The appellant - original plaintiff has preferred the present
appeal against the order dated 18/06/2021 passed by the learned Ad-hoc District
Judge-2, Nagpur, in application below Exh.5 under the provisions of Order 39,
Rule 1 and 2 of the Code of Civil Procedure (for short, “the Code”) in Trade Mark
Civil Suit No. 5/2019, whereby the learned Judge was pleased to reject the
application.