VALMIKI J. MEHTA, J

1. The present appeal has been filed with a prayer to set aside the order passed by the learned Single Judge of this court on 23.4.2010 disposing of an application for injunction filed by the appellant/plaintiff in a suit for infringement of trademark, passing off, dilution etc., and by which order the learned Single Judge dismissed the injunction application of the plaintiff. By the impugned order, the learned Single Judge also allowed the application of the respondent/defendant for vacation of the injunction and vacated the ex parte interim order dated 28.8.2009. By the impugned order the learned Single judge has held that no case for infringement is made out on account of the use of the expression “LOW ABSORB” by the respondent-defendant which was alleged to be deceptively similar to the registered trademarks “LOSORB” and “LO-SORB” of the appellant-plaintiff. The learned Single Judge also held that use of the expression “LOW ABSORB” by the defendant will not amount to passing off although the plaintiff also claimed a right in the unregistered trademark “LOW ABSORB”.

2. The relevant facts of the case are that appellant-plaintiff got registered the Trademarks “LOSORB” and “LO-SORB” for different products in class-29 viz Oil, Ghee etc. effective from 28.05.2001. The appellant claimed that it coined the word marks which have been registered by it. The registered marks were used in relation to edible oil inasmuch as the edible oil contained an ingredient/anti foaming agent by which less or low oil was consumed by the product made by use of the edible oil. The edible oil sold also used the trademarks “Sweekar” & “Saffola” besides the subject registered trademarks “LOSORB” and LO-SORB”. The appellant in the plaint has referred to its extensive sales of the product by using of the registered trademarks and also reference has been made to large amounts spent towards advertisements. The relevant paras of the plaint are paras 11 and 12 which read as under:

“11. Given below are the sales figures for the edible oil on which LOW ABSORB and/or LOSORB marks(s) were used for the period October 2001-Quarter I of FY 2010:

FINANCIAL YEAR MONTHS VOLUME VALUE (IN CRORES)

2001-02 April to March 21898 102.48

2002-03 April to March 19665 92.41

2003-04 April to March 20865 120.86

2004-05 April to March 19797 116.10

2005-06 April to March 31414 195.55

2006-07 April to March 46554 323.49

2007-08 April to March 54097 424.11

2008-09 April to March 57235 515.43

2009-10 Quarter I 16766 131.10

The above figures have been taken from the books and records maintained by the Plaintiff in the ordinary course of business and have been verified to be correct.

12. The Plaintiff has incurred huge amounts in promoting its edible oil bearing trademarks LOW ABSORB and/or LOSORB and in popularizing the said trademarks. Given below are the sales promotional figures incurred by the Plaintiff in advertising its edible oil bearing the aforesaid trademark(s) for the period October, 2005-March, 2009:

FINANCIAL YEAR MONTHS TELEVISION ADVERTISEMENTS TOTAL (IN LAKHS) POS MATERIAL AND VISIBLITY TOTAL (IN LAKHS)

2005-06 October to March 390 49

2006-07 April to March 999 83

2007-08 April to March 891 383

2008-09 April to March 954 559

The above figures have been taken from the books and records maintained by the Plaintiff in the ordinary course of business and have been verified to be correct.”

3. The defendant is selling its edible oil/Sunflower seeds oil under the trademark “Sundrop” and since this edible oil also contains an anti-foaming agent, which in turn, retards the absorption of oil during the process of frying food stuffs, therefore, the packaging also contains the expression “WITH LOW ABSORB TECHNOLOGY”.

4. Two basic issues arise for decision in the present appeal along with incidental and related issues. The first issue is on the aspect of infringement i.e. whether the appellant's reg