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2012 Supreme(Guj) 739

IN THE HIGH COURT OF GUJARAT
J.C. Upadhyaya, J.
Rangoli Chemfoods Pvt. Ltd. and Ors. - Appellants
Versus
Indo Brine Industries Ltd. - Respondent
Appeal From Order No. 119 of 2012 with Civil Application No. 4120 of 2012 in Appeal From Order No. 119 of 2012
Decided On : 06-07-2012

Advocates Appeared:
For the Respondent:Saurabh Soparkar, Sr. Advocate with Y.J. Jasani for Pratik Y. Jasani, Advocates

Headnote:

Copyright Act, 1957 - Section 55 - Trade Marks Act, 1999 - Section 135 - Civil Procedure Code, 1908 - Order 39 Rules 1 and 2 - Challenge in this appeal from order is to the order passed by Addl.District Judge, below temporary injunction application - Addl. District Judge, by impugned order confirmed earlier order of exparte ad-interim injunction till the final disposal of the suit - Earlier ex-parte ad-interim injunction order came to be passed by trial Court against appellants herein, who were original defendants in the above-mentioned suit - Respondent herein, who was original plaintiff had filed above suit against the appellants defendants for perpetual injunction and for damages and/or rendition of accounts u/s.135 of the Trade Marks Act, 1999 and Section 55 of the Copyright Act, 1957 - Appellants and the respondent herein shall be referred to hereinafter as the defendants and the plaintiff respectively - Held, Court is the opinion that there is no reason whatsoever to interfere with the impugned order passed by the trial Court - The instant appeal, therefore, deserves to be dismissed - However, considering the facts and circumstances of the case, this Court is of the opinion that the trial Court is required to be directed to expedite the disposal of the suit and to dispose of the suit in accordance with law at the earliest preferably the time that shall be fixed by this Court - Trial Court is directed to decide the Regular Civil Suit in accordance with law as expeditiously as possible - It is hereby made clear that the trial Court shall decide the aforementioned suit in accordance with law on the basis of the evidence that shall be adduced by both the sides before the trial Court, uninfluenced by any observations made by this Court in this judgment - Application disposed of

Judgement Key Points

Based on the provided legal document, the key points are as follows:

  1. The suit involves a dispute over the use of the trade mark 'Dandi Namak' / 'Dandi Salt' in the context of passing off, with the plaintiff claiming prior user and ownership rights since June 1998 (!) (!) .

  2. The plaintiff is engaged in manufacturing and selling iodized salt under the mark 'Dandi Namak' / 'Dandi Salt' and has taken steps to register the trade mark, although registration proceedings faced opposition and stay orders (!) (!) (!) .

  3. The defendant company, purportedly through an assignment deed, claims to have acquired the disputed trade mark from the original owner, M/s. Kunvar Ajay Foods Pvt. Ltd., which allegedly had not used the mark actively since early 2004 due to financial difficulties and legal restrictions (!) (!) (!) .

  4. The defendant's case hinges on the validity of the assignment deed, the actual use of the trade mark by the predecessor in title, and the legitimacy of the prior user claimed by the plaintiff. Evidence such as invoices, affidavits, and correspondence are heavily contested and scrutinized (!) (!) (!) (!) (!) (!) (!) (!) .

  5. The plaintiff's reliance on invoices and affidavits to establish prior use since June 1998 is challenged on grounds of credibility, authenticity, and the circumstances under which these documents were produced, especially considering destruction of records due to a natural calamity and alleged fabrication (!) (!) (!) .

  6. The defendant asserts that the plaintiff was merely a job worker and not the owner of the trade mark, citing admissions in criminal complaints and statutory notices, which suggest the plaintiff processed salt on behalf of others rather than being the proprietor of the mark (!) (!) .

  7. The order emphasizes that the suit is primarily a passing off action, which requires the plaintiff to prove prior user. The court recognizes the importance of establishing actual use and ownership rights, and notes that the evidence at this stage appears to favor the defendant's case that the trade mark was not in active use by the plaintiff before the alleged date of prior use (!) (!) .

  8. The court acknowledges that the registration of the trade mark was stayed by an order of the appellate authority, and that the initial registration does not conclusively establish the plaintiff’s exclusive rights, especially considering the ongoing legal challenges (!) (!) .

  9. The court highlights that the defendant’s evidence, including advertisement and media reports, do not substantiate actual sales or use of the trade mark 'Dandi Salt' by the defendant or its predecessors, whereas the plaintiff has produced invoices indicating use since 1998 (!) (!) .

  10. The court underscores that the appeal from the order is limited in scope, primarily examining whether the trial court's discretion was exercised arbitrarily or perversely. It emphasizes that the appellate court should not reassess all evidence but only determine if the trial court's decision was justified based on the prima facie case and balance of convenience (!) (!) (!) .

  11. Ultimately, the court dismisses the appeal, affirming that the trial court's order granting temporary injunction was justified. It directs the trial court to expedite the disposal of the main suit and decide it in accordance with law, based on the evidence adduced, without being influenced by observations in the judgment (!) (!) .

  12. The decision reinforces that the burden of proof for prior user and ownership rests with the plaintiff, and that the defendant’s evidence, including the assignment deed and advertisements, require thorough examination during the trial to establish their validity and relevance (!) (!) .

  13. The order also notes that the suit's foundation is primarily a passing off action, and the plaintiff must demonstrate prior use, which at this stage appears to be supported by invoices and affidavits, despite challenges and disputes over their authenticity (!) (!) .

  14. The court emphasizes the limited scope of appellate intervention in discretionary orders and confirms that the trial court’s decision was within its discretion, provided it was not arbitrary or capricious (!) (!) .

  15. The case demonstrates the importance of credible evidence regarding actual use, ownership rights, and the validity of transfer documents, especially when registration and legal orders are contested or stayed (!) (!) (!) .

In summary, the court upheld the trial court’s decision to grant a temporary injunction, found that the plaintiff had established a prima facie case of prior user, but also acknowledged the need for a thorough trial to conclusively determine ownership and rights over the trade mark. The main suit is to be decided expeditiously, based on evidence, and the appeal was dismissed accordingly.


JUDGMENT :

J.C. Upadhyaya, J.

The challenge in this appeal from order is to the order dated 6.3.2012 passed by learned Addl. District Judge, Kutch below temporary injunction application, Exh.5 in R.C.S.No.2 of 2011. The learned Addl. District Judge, Gandhidham, Kutch (hereinafter referred to as the 'trial Court') by impugned order dated 6.3.2012 confirmed the earlier order of exparte ad-interim injunction till the final disposal of the suit. The earlier ex-parte ad-interim injunction order came to be passed by the trial Court against the appellants herein, who were original defendants in the above-mentioned suit. The respondent herein, who was original plaintiff had filed the above suit against the appellants defendants for perpetual injunction and for damages and/or rendition of accounts u/s.135 of the Trade Marks Act, 1999 and Section 55 of the Copyright Act, 1957. Under such circumstances, for the sake of convenience, the appellants and the respondent herein shall be referred to hereinafter as the defendants and the plaintiff respectively.

2. The short facts leading to the suit as well as to the temporary injunction application, Exh.5 filed by the plaintiff are that the plaintiff is the company incorporated under the Companies Act having its registered office at Gandhidham and salt factory at Village Chopadava, District Kutch. The plaintiff is engaged in the business of manufacturing, selling and exporting 'iodized free-flow salt for human consumption' under the trade mark and label of 'Kohinoor' as well as under the trade mark and label containing and consisting of the name 'Dandi Namak' in Hindi script as also 'Dandi Salt' in English since the month of June 1998. Thus, the plaintiff is the prior user and lawful owner and proprietor of the trade mark 'Dandi Namak' and is entitled to use the same exclusively and also entitled to restrain others from imitating and/or violating the vested property rights in the said trade mark by others in any manner and by passing off their goods under such imitated mark or label as those of the goods of the plaintiff.

    2.1 The defendant No.1 is a Company incorporated under the Companies Act having its factory and office at Village Bhachau in Kutch district engaged in the business of manufacturing and selling salt for human consumption under the identical and/or deceptively similar mark 'Dandi Namak' in Hindi and 'Dandi Salt' in English and selling the same through the defendants No.2 and 3. The defendant No.3 is a company engaged in the business of advertising and publicity and the defendant No.2 is a company very recently started business of selling salt manufactured by defendant No.1. The plaintiff used and adopted the said trade mark 'Dandi Namak' in Hindi as also 'Dandi Salt' in English and the artistic work thereof on the packagings and packing of iodised free-flow salt since the month of June 1998. The plaintiff has also earned reputation and goodwill of its trade name 'Dandi Namak' and 'Dandi Salt' and the plaintiff is also approached by the other large business enterprises of India like Hindustan Lever Ltd. and Tata Salt to get manufactured the iodised salt. The goods of the plaintiff sold under the said trade mark have picked up the market very shortly and earned good name and fame. It is the case of the plaintiff that on account of massive earthquake on 20.1.2001 in Kutch region, the plaintiff's factory plant was heavily damaged and records were also destroyed and, therefore, the records pertaining to the sale of free-flow iodised salt under the trade mark/artistic work of 'Dandi Namak'/'Dandi Salt' for the period from the month of June 1998 to the date of earthquake is not available with the plaintiff.

2.2 It is the case of the plaintiff that in the month of January 2000 many more traders came forward to market the products of the plaintiff and amongst such traders, one Mr.Suresh Chandra Agrawal, a trader primarily engaged in the business of sarees having his place of business at "Kunv

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