In an action for passing off, the Court must assign reasons and give the defendant an opportunity to be heard before granting an ex-parte ad interim injunction order. The principles of natural justice, equity, and fair play require that the defendant be given an opportunity to present their case before an injunction is granted.

Ashim Kumar Banerjee, J.

Backdrop:

The respondent filed a suit alleging passing off action as against the appellant for using the mark “SUNSHINE” for the product that both parties would deal with. Soon after filing of the suit, the respondent moved an application for interim protection. The learned single Judge passed the following Order:

“This is a passing off action. It is moved ex parte, according to the existing practice.

The mark involved is “Sun Shine”. The plaintiffs use this mark in sewing machines. They are using this mark, according to Mr. Bose, learned Counsel, from 1994. They have applied for registration. The application is pending.

The defendant is trying to sell identical products with the same mark. He claims user from 2007.

Prima facie the plaintiffs have been able to establish prior user.

Let notice of this application be served upon the defendant. I make this application returnable on17th April, 2014.

Order in terms of prayer (b) of the Notice of Motion till 30th April, 2014 or until further orders whichever is earlier”.

The prayer (b) of the notice of motion was as follows:

“An order injunction restraining the respondent, his men, servants, agents, employees and/or assigns from using the trade mark “Sun Shine” and/or any other mark which is phonetically and/or structurally similar and/or identical with and/or deceptively similar to or fraudulent imitation of your petitioners’ trade mark “Sun Shine” in any manner whatsoever.”

The matter was returnable on April 17, 2014. We were told, the parties mentioned the matter before His Lordship however, we are not sure what transpired at the mentioning as there was conflicting version. Fact remains, the interim Order expired on April 30, 2014. His Lordship did not extend the same in view of pendency of the present appeal. The appellant filed the instant appeal on April 25, 2014 that we heard on the above mentioned dates.

ISSUE WHERE THE PARTIES WOULD JOIN:

Normally, the Court of Appeal would not interfere with the ad interim Order of injunction passed at the initial stage. The present case would have a distinction that we would be discussing little later. We heard the parties at length on the scope of passing of the ex-parte ad interim Order in a passing off action. The appellant would contend, the learned Judge passed the Order ex-parte without requiring the plaintiff to serve a copy of the petition upon the appellant hence; the appellant would not get any opportunity to place their version before the Court, before the Order was passed. They would also contend, normally they would have a right to pray for vacating of the Order under Order XXXIX rule 4 of the Code of Civil Procedure. However, such power would not preclude the appellant to come straight to the Court of Appeal making a grievance of non-service and denial of hearing before passing off the Order.

Per contra, the respondent would contend, the learned Judge limited the interim Order for a brief period and directed notice to be served, immediately the respondent served the notice. The appellant could have applied for vacating of the Order under Order XXXIX rule 4 or wait till the returnable date and pray for vacating or oppose extension of the same as the said Order would spend its force after April 30, 2014 if the same was not continued.

The learned Counsel would also contend, without exhausting the remedy as prescribed in the Code referred to above, the appeal would not be maintainable. The parties wanted us to go into merits of the matter, we however, did not permit them to argue on merits. We feel, the learned Judge should be given opportunity to deal with the issue on merit. We would only examine as to whether the situation would warrant passing of the ex-parte ad interim Order on the strength of the material available on record and if so, whether the learned Judge should have explained the situation in the Order itself instead of describing it as “existing practice”.

The learned Senior Counse