A registered trademark must be protected against infringement if it has established goodwill, even in the face of claims regarding dissimilarity of packaging.

JUDGMENT

Vibhu Bakhru, J.

1. The appellant has filed the present appeal impugning an order dated 30.03.2021 (hereafter `the impugned order') passed by the learned Commercial Court, whereby the application filed by the respondent under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure (hereafter `the CPC') was allowed and the appellant's application under Order XXXIX Rule 4 of the CPC, seeking vacation of the ad interim order, was rejected.

2. The appellant has been restrained from using the trademark "Gulab" in connection with namkeen, roasted and baked products (ready to eat snacks). The learned Commercial Court, prima facie, found that the use of the trademark by the appellant in respect of the said product would constitute infringement of the respondent's trademark "Gulab Ka Phool" registered under Class 30 (hereafter also referred to as `TM-639') and passing off.

FACTUAL CONTEXT

3. The respondent (carrying on business as Shiv Nath Rai Sumer Chand) and Lala Shivnath Rai Sumer Chand Confectioner Pvt. Ltd., arrayed as plaintiff nos. 1 and 2 respectively, had filed the suit [being CS(COMM) No.1724/2020], inter alia, seeking a permanent injunction, restraining the appellant from infringing its trademark/copyright, passing off, damages and rendition of accounts amongst other reliefs. Plaintiff no.2 was deleted from the array of the parties and the said suit is being pursued by the respondent (plaintiff no.1).

4. The respondent claims to be carrying on the business of manufacturing and selling packaged namkeens, salted, roasted and baked products under the following trademark (TM-639); "".

5. The respondent alleges that she became aware, from certain market sources, that the appellant (a company incorporated and registered on 16.11.2019) was also selling namkeen and baked snacks, peanuts, roasted and flavoured cashew nuts, and several other products mentioned in the plaint, under the impugned trademark "Gulab". The appellant was selling various types of edible oil, agricultural products and raw materials under the said trademark; however, the respondent is, principally, concerned with the sale of namkeen, roasted and baked products, ready to eat snacks under the impugned trademark. The respondent claims that the same infringes the registered trademark (TM-639) and also constitutes passing off.

6. The respondent (plaintiff no.1 before the learned Commercial Court) claims that she acquired the proprietary rights in the said device mark "" through her husband - Late Shri Subhash Rai Gupta. The respondent claims that late Lala Shiv Nath Rai commenced the business in Indian traditional sweets and confectioneries (Rewari and Gajjak) in the year 1910. On 04.04.1944, he applied for registration of the wordmark "GULAB KA PHOOL" under Class 30 in relation to "confectionary, especially reoris, Indian sweet", by trademark application no. 94636, claiming use since 01.12.1910. The respondent claims that the said business was subsequently expanded to introduce new products including rewaris, namkeens, papads, breads, biscuits and other confectionaries.

7. The respondent states that subsequently the said trademark (Gulab Ka Phool) was registered under different classes. Further, the respondent also secured copyright registration in respect of the said mark/label, its unique artistic work of the picture of `Gulab', i