The court upheld the trial court's discretion to decline interim injunctions for trade marks based on the need for evidentiary substantiation of prior use and goodwill.

JUDGMENT

Navin Chawla, J. (Oral)

1. This appeal has been filed by the appellant challenging the order dated 13.08.2019 passed by the learned Additional District Judge- -02, South West District, Dwarka Courts (hereinafter referred to as the `Trial Court'), in suit filed by the respondent being TM No.8/2019 and the counter claim of the appellant being CC No.21/2019, disposing the application filed by the respondent under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (in short `CPC') and application filed by the appellant under Order XXXIX Rule 4 of the CPC; and application under XXXIX Rules 1 and 2 of the CPC filed by the appellant in its counter claim, while directing the parties to file an affidavit disclosing the exact stock and valuation of the product packaging with their respective marks HYLUFRESH and HYLOFRESH within a period of four weeks.

BRIEF FACTS:

2. The respondent had filed the above suit claiming itself to be the registered proprietor of the marks HYLUFRESH used for manufacturing and selling of eye drops. The respondent is aggrieved of the adoption of the trade mark HYLOFRESH by the appellant herein for the identical product, that is, eye drops.

3. An ex parte ad interim order of injunction was passed in favour of the respondent by the learned Trial Court on 28.05.2019. The appellant filed an application under Order XXXIX Rule 4 of the CPC seeking vacation of this order. The appellant also filed a counter claim along with an application Order XXXIX Rule 1 and 2 of the CPC, claiming itself to the prior user, and praying for an interim injunction against the respondent from using the mark HYLUFRESH.

4. The learned Trial Court has disposed of the above applications by way of the impugned order.

SUBMISSIONS OF THE APPELLANT:

5. The appellant has challenged the impugned order to the limited extent that the application of the appellant under Order XXXIX Rules 1 and 2 of the CPC has not been allowed and the respondent has not been restrained from using the mark HYLUFRESH for its product that is, eye drops.

6. The learned counsel for the appellant submits that the learned Trial Court, having found the marks of the appellant and the respondent to be deceptively similar to each other and being used for the same pharmaceutical product, that is eye drops, as also that the appellant was the prior user of its mark, applying the test of triple identity, an ad interim injunction in favour of the appellant and against the respondent should have been granted.

7. He submits that there are contradictory findings of the learned Trial Court, inasmuch as, while the learned Trial Court accepts the claim of the appellant being the prior user of the mark for purposes of vacating the ad-interim injunction against the appellant, holds that the same shall have to be proved for denying the ad-interim injunction in favour of the appellant and against the respondent. In this regard, he draws my reference to the observations of the learned Trial Court in paragraphs 95 and 96 of the impugned order, reproduced hereinunder:

"95. The suit of the plaintiff is based on a registered trade mark HYLUFRESH and whereas, the counter claim of the defendant/counter claimant is on the basis of an unregistered trade mark. The defendant/counter claimant has sought inter alia relief of passing off against the plaintiff. In passing off, the first and foremost issue that deserves adjudication is the question of prior use and thereafter, reputation and goodwill. I am of the considered view that a prima facie proof of validity of a trade mark is different from prima faci