IMPORTANT POINT
The judgment established that the shape of a product can be registered as a trademark if it has acquired a secondary meaning and is identifiable with the source of the product. It also emphasized that descriptive marks indicating the kind, quality, or other characteristics of the product may not be infringed under Section 30(2)(a) of the Trade Marks Act, 1999.

JUDGMENT

Amit Mahajan, J. - The appellant(s), M/s. Suman International, has filed the present appeal being aggrieved by the order dated 28.10.2021, (hereafter 'impugned order') passed by the learned Commercial Court, in CS (COMM) 251 of 2021, whereby the learned Commercial Court has allowed the Respondents'/Plaintiffs' Application under Order XXXIX Rules 1 & 2 of Code of Civil Procedure, 1908 ('CPC') and dismissed the Appellants/Defendants' application under Order XXXIX Rule 4 CPC, thereby restraining the Appellants and their dealers from manufacturing, exporting, selling offering for sale advertising, exhibiting directly or indirectly dealing in goods bearing impugned mark amounting to infringement of registered trademark of the Respondent no.1 under no. 3470833 in Class 30 and passing off;

2. The Appellants/Defendants and Respondent no.1/Plaintiff both are engaged in the business of manufacturing confectionery items (non-medicated) including the hardboiled sugar candies, chocolates, lollipops, wafers biscuits etc.

Brief Facts

3. Mahendra Gulwani (Respondent no. 1) is the sole proprietor of M/s Mahendra Food Products. Respondent no. 2, M/s Kapur Confectioners, is stated to be the sole distributor appointed by Respondent no. 1 for Northern Region of India. (hereafter collectively referred to as 'respondents')

4. The respondents claim to be engaged in the business of various types of confectionary items. From the year prior to 1996, the respondents claim to be selling their products throughout the country through its dealers / distributors. It is claimed that the trademark 'MADHUR' was adopted by the predecessors of the respondents for the confectionery items. Respondent no.1 claim to have devised various trademarks / labels from time to time and have acquired registration of various trademarks in class 30, including the trademarks in dispute, which are 'MADHUR ROSE POP LOLLIPOPS' and three-dimensional rose shape in the class 30.

5. Respondent no.1 claims that trademark / label has original artistic works and he have also acquired copyright registration on the shape of rose.

6. The respondents also claim to have extensively sold their goods under the trademark in dispute. The sales figure of the confectionary products including the rose shaped lollipops under the trademark in dispute, sold by respondents for the year 2020-2021 is claimed to be Rs. 88,89,68,411/-. Respondent no.1, therefore, claims rights over the distinctive shaped lollipop, in a rose flower shape, where the colour of rose flower is red and the colour of the stem along with leaves is green. They claim to be selling the rose shaped lollipops under the trademark of 'Rose Pop' along with its house mark 'MADHUR' with the word 'ROSE' appearing in a red colour font and word 'POP' appearing in a green colour font in a distinct style with the word 'LOLLIPOPs' appearing after the words 'Rose Pop' with each letter in a different colour.

7. Respondent no.1 claims to have adopted the distinctive and novel rose shaped lollipop and the trademark / label 'Madhur Rose Pop' on 15.11.2016. It is claimed that the rose shaped lollipop is exclusively associated with the respondents.

8. As mentioned above, Respondent no.1 claims to be the proprietor of the registered word mark 'ROSE POP', label mark 'MADHUR ROSE POP LOLLIPOPS' and three-dimensional shape mark on a figure of rose, all in class 30. Respondent no.1 also claims to be registered proprietor of rose shaped lollipop under the Copyright Act, 1957 and claims that the rose shape of a lollipop is his invention and nobody prior to him had devised or sold a lollipop in the shape of a rose.

9. Respondent no.1 claims to be exclusively using the said marks since November, 2016 and to have acquired an unimpeachable reputation. The respondents claim that public and members of trade, associate the trademark as well as the shape of lollipop being the design of a rose with Respondent no.1. They also claim to have given wide publicity to their trad