JUDGMENT :

(Harish Tandon, J.) :

1. The instant appeal arises from an Order no. 20 dated 17.9.2021 passed by the Commercial Court in Title Suit no. 9 of 2020 disposing an application for injunction restraining the appellants or anyone claiming on his behalf from passing of his goods and business as that of the respondent by using the mark “GREEN SIGNAL” and/or any other mark which is identical with and/or deceptively similar to the respondents trade mark “SIGNAL” till the disposal of the suit.

2. There does not appear to be any dispute that the respondent is using the said mark “SIGNAL” for manufacturing, trading and selling of ZARDA since 1948. Initially, the said mark was used by a partnership firm in the name styled “R. A. Perfumery Works Pvt. Ltd.” by two persons namely, Md. Israil and Md. Alam. In order to protect the said mark which the said partnership firm perceived to have acquired good reputation and goodwill in the market, an application was made for registration of the said mark “SIGNAL” under Clause 34 since its use i.e. 23rd July, 1948 and the registration was obtained. Subsequently, one of the partners namely Md. Alam retired from the said partnership firm on and from 11th April, 1989 and the said partnership firm was reconstituted by introduction of one Nusrat Parveen. Thereafter, the said partnership firm decided to alter and modify the nature of their business and decided to manufacture and dealing in ZARDA as a General Merchant and Commission Agent which would be evident from the reconstituted partnership deed entered upon 24th March, 1993. Later on, the said partnership firm was converted into a private limited company w.e.f. 1st July, 1998 and the assets, liabilities as well as the goodwill, including the intellectual properties be transferred to the newly constituted private limited company.

3. It is alleged that an application for change of the name in the Trade Mark Registration Certificate was applied under Form 24 which was accepted and necessary orders were passed by the Trade Mark Registry. The plaintiff thus claimed the exclusive right over the mark “SIGNAL” which have acquired distinctiveness in relation to ZARDA which is commonly known as chewing tobacco having acquired great reputation and the goodwill in the market not only on the product but its quality and the fragrance used therein. The respondents claimed to have sold its product under the trade name “SIGNAL”, “SIGNAL 350”, “SIGNAL 127”, “SIGNAL 364” and “SIGNAL ZARDA” in the distinctive packaging containing the unique and prominent colour scheme, colour combination and the design of the logo prominently showing the mark “SIGNAL”. The artistic work both on the container as well as the packaging is alleged to be an original artistic work within the meaning of the Copyrights Act, 1957 and being a prior user and adoption of the said artistic work, the respondent acquired a right under the Copyright Act as well.

4. The appellant is also the registered proprietor of the trade mark “GREEN SIGNAL” in respect of a tobacco, chewing tobacco and smokers’ articles under Clause 34 and dealing the said product since 2017. It is a specific stand of the appellant that since its adoption and user the trade mark “GREEN SIGNAL” have acquired a high reputation in the market and its exclusivity associated with the appellant and is well known in the market. It is further alleged that there has been a gross suppression of the fact that one Ramzaan Ali filed an application before the Trade Mark Registry to delete the name of the trade name i.e. R.A. Perfumery Works Private Ltd. and, therefore, the exclusivity over the said mark has been acquiesced and/or abandoned. It is further averred that adoption of the mark “GREEN SIGNAL” is honest and the trader name depicted therein coined after the name of the father of the proprietor of the said trade mark. It is further alleged that there is no similarity in the visual descriptions printed on the container as well as the pac