JUDGMENT :

I.P. MUKERJI, J.

SUMMARY OF FACTS

1. This is a trademark appeal in this court’s Commercial Division.

1. It is from a judgment and order dated 15th March, 2021 read with the order dated 17th March, 2021, in terms of prayers (a), (b), and (c) of the petition, made by the learned Interlocutory judge on an interim application filed by the respondent plaintiffs, in the suit, inter alia, complaining of infringement of their registered word mark “Ganesh” by the appellant/defendants.

Prayers (a), (b) and (c) are inserted below:-

“a) The respondents their men, servants, agents, assigns, dealers, distributors and/or any one claiming on their behalf be restrained from infringing the petitioners’ registered trademark “GANESH” by selling, manufacturing, marketing, advertising and/or otherwise dealing in any goods or services under the mark “Shree Ganesh” or under any other mark which is identical with or deceptively similar to the petitioners’ registered trademark “Ganesh” in any manner whatsoever;

b) The respondents, their men, servants, agents, assigns, dealers, distributors and/or any one claiming on their behalf be restrained from infringing the petitioners’ registered trademark “Ganesh” by carrying on business under the name and style of SHREE GANESH BESAN MILL or under the mark “Shree Ganesh” or any business name or trading name which is identical with or deceptively similar to the petitioners’ registered trademark “GANESH” as part of their trading name in any manner whatsoever;

c) The respondents, their men, servants, agents, assigns, dealers, distributors and/or any one claiming on their behalf be restrained from passing off their goods and business as that of the petitioners by selling, manufacturing, marketing, advertising and/or otherwise dealing in goods or services under the mark “Shree Ganesh” or carrying on business under the mark “Shree Ganesh” or under any other mark which is identical with or deceptively similar to the petitioners’ registered trademark “GANESH” in any manner whatsoever.”

2. The respondent No. 1 manufactures and markets within India and exports out of the country, flour products like wheat, besan and so on. It has substantial sale in West Bengal and some market in neighbouring states. At the present point of time the appellant No.1 is also a manufacturer of similar products from Raipur in Chattisgarh and have substantial sale in Chattisgarh, Orissa, Jharkhand, Bihar and Madhya Pradesh but not in West Bengal. This respondent has a turnover in excess of Rs.500 crores per annum. The turnover of the appellant No.1 is much smaller. The facts of this case from the pleadings and documents in short are like this.

3. Ganesh Flour Mills was manufacturing and marketing flour using the mark “Ganesh” since 1936. At that time, the forefathers of the second respondent ran the business. Eventually, the business was acquired by the father of the second respondent Brij Ratan Mimani who ran it from 88, Burtolla Street, Kolkata. Thereafter, the second respondent took over the business and as a promoter incorporated a private limited company “Ganesh Flour Mills Private Ltd.” on 19th March, 2000. The name was changed to that of the first respondent on 5th February, 2011. From time to time the first respondent made several applications for registration of the mark “Ganesh” or label marks or device marks with the word “Ganesh” imprinted on it and marks which are variations of “Ganesh”. Most of these applications are pending. It enjoys registration of two label marks containing the mark “Ganesh” in Class 30, one with the restriction that the sale of the goods could only be confined to West Bengal and the other with the limitation that sale would be restricted to eastern India.

4. By a certificate dated 28th October, 2005 the word mark “Ganesh” was registered by the trademark registry at the instance of the respondents without any geographical limitation. This is the subject matter of the suit and appeal. The trade dress of the re