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IN THE HIGH COURT OF JUDICATURE AT BOMBAY, NAGPUR BENCH
A.S. CHANDURKAR, J.
M/s. Orange City Mobile Collection – Appellant
Versus
M/s. City Collection – Respondent
Appeal against Order No. 81 of 2014
Decided On : 28-02-2017
The plaintiffs filed the trade mark suit in April, 2014. The trial Court allowed the application for temporary injunction on 12th June, 2014 that has been challenged in the present appeal filed under provisions of Order XLIII, Rule 1(r) of the Code. The scope of the present appeal would be to examine the correctness of the order passed by the trial Court under provisions of Order XXXIX, Rules 1 and 2 of the Code. The subsequent developments sought to be relied upon are the grant of trade mark certificate to the plaintiffs during pendency of the suit.
It is to be noted that when the suit was filed, the plaintiffs had sought to restrain the defendant from passing-off its goods as those of the plaintiffs. These subsequent developments have not been brought on record by the plaintiffs by amending the plaint in the trial Court. Similarly, no permission has been sought in that regard under provisions of Order XLI, Rule 27(1) of the Code. Merely by filing an affidavit, the said fact is sought to be relied upon the appeal. Considering the scope of an appeal under provisions of Order XLIII, Rule 1(r) of the Code which is limited to examining the correctness of the order passed by the trial Court under provisions of Order XXXIX, Rules 1 and 2 of the Code, the plaintiffs merely by filing an affidavit cannot seek to rely upon any subsequent event without amending the plaint or by seeking permission to produce additional evidence.
It would not be permissible while entertaining the present appeal, to take into consideration the subsequent events relied upon by the plaintiffs as the same have not been brought on record either by amending the plaint before trial Court or by seeking permission under provisions of Order XLI, Rule 27(1) of the Code. The appeal would have to be decided on the basis of the material that was placed on record before the trial Court.
Trade Marks Act, 1999 - Section 27(2)-Civil Procedure Code, 1908, Order XXXIX, Rules 1 and 2-Grant of temporary injunction.-Failure of plaintiffs to prove that they had suffered loss due to alleged use of deceptively similar trade name by defendant, disentitled plaintiff for grant of temporary injunction.
The variety of services provided by the plaintiffs as contrasted with the services provided by the defendant, use of the word `mobile` in the trade name of the defendant which is prima facie found relevant in the passing-off action and absence of any material to indicate customers being misled or deceived are relevant aspects resulting in absence of making out a prima facie case. These factors would also have a bearing on the comparable strength of the plaintiffs` case which has also to be taken into account while considering the prayer for grant of temporary injunction. There is further no prima facie material placed on record by the plaintiffs that there has been some fall in their sales as a result of the alleged passing-off acts of the defendant which aspect has been found relevant by the Division Bench in Shelke Beverages Pvt. Ltd. (supra). This factor has also been considered in M/s. AZ Tech (India) (supra) that was relied upon by counsel for the plaintiffs.
The trial Court while passing the impugned order failed to take into consideration the aforesaid settled principles of law regulating grant of temporary injunction. On said count, by following the ratio of the decision in Wander Ltd. v. Antox India (P) Ltd., 1990 (Supp.) SCC 727 that has been reiterated in Ramdev Food Products P. Ltd. and Skyline Education Institute (Pvt.) Ltd. (supra), a case for interference with the discretion exercised by the trial Court has been made out.
A.S. CHANDURKAR, J.
1. An order of injunction passed in the Trade Mark Suit filed by the respondents temporarily restraining the appellant from using the trade mark or trade name “City Collection” in any manner, whatsoever, for business purposes during pendency of the suit is the subject-matter of challenge in this appeal filed under Order-XLIII, Rule 1 (r) of the Civil Procedure Code, 1908 [for short “the Code”].
Parties in the appeal are being referred to by their original status in the suit.
2. It is the case of the plaintiffs that it is a Partnership Firm, duly registered and carrying on business since the year 2001 using the trade name “City Collection.” It carries on business of sale of mobile phones, cameras, perfumes etc. The said trade name has been registered under the Copy Right Act, 1957, on 29th August, 2013. Its application for registration of the trade mark “City Collection” under the Trade Marks Act, 1999 (for short “the said Act”) made on 28th December, 2011 was pending. According to the plaintiffs, their brand name was well recognized in business circles and that they had acquired immense goodwill and reputation in that regard. On account of prior adoption, long and continuous use, the said trade mark was solely associated with the plaintiffs. The plaintiffs found that the defendant, by using a deceptively similar mark, had started its business in the name “Orange City Mobile Collection” and was in the field of mobile distribution. The trade mark logo of the plaintiffs was copied and this was done with a view to cause confusion amongst the public, thereby affecting the goodwill of the plaintiffs and violating its rights. It is on this basis that in April, 2014, the plaintiffs filed Trade Mark Suit No. 2 of 2014 seeking to permanently restrain the defendant from using its trade name and passing off its goods as those of the plaintiffs. In the said suit, the plaintiffs filed an application for temporary injunction seeking relief of restraining the defendant from using the said trade name for its business purpose during pendency of the suit.
3. The defendant filed its reply to the application for temporary injunction and opposed the same. It was stated that it was doing business of sale of mobile phones in the name and style of “Orange City Mobile Collection” by using common words being “City” and “Collection” It was denied that this was done with a view to mislead the members of the public and that no customer could be confused or misled by adoption of said name, as alleged by the plaintiffs.
4. The trial Court, after hearing both sides, prima facie found that the nature and character of the goods of the plaintiffs and the defendant were similar and that phonetic similarity between the two trade names was likely to deceive or cause confusion amongst customers. On that premise, by order dated 12th June, 2014, the trial Court allowed the application for temporary injunction and restrained the defendant from using the trade name “City Collection” for its business purpose during pendency of the suit.
5. The defendant being aggrieved by the aforesaid order has filed the present appeal. On 13th August, 2014, this Court granted ad interim stay to the order of temporary injunction passed by the trial Court which order was subsequently confirmed.
6. Shri R.L. Khapre, learned counsel for the appellant, submitted that the trial Court was not justified in allowing the application for temporary injunction. He submitted that the words “City” or “Collection” were generic words and the plaintiffs could not claim exclusive user of the same. According to him, the said words were not separately sought to be registered and that the application for registration of the trade mark was made under Clause 35 of the Fourth Schedule to the Trade Marks Rules, 2002. According to him, the defendant was using the trade name “Orange City Mobile Collection” and the words “City” and “Collection” were prefixed by different words. Any customer
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