JUDGMENT :

Rajesh H. Shukla, J.

The present Appeal from Order has been filed by the appellant-original defendant M/s. Bahuchar Gruh Udyog challenging the impugned order passed by the learned Principal District Judge, Sabarkantha at Himatnagar, below Exh. 5 in Civil Suit No.5 of 2011 dated 27th December 2011 on the grounds stated in the memo of the Appeal from Order.

2. The facts giving rise to the present Appeal from Order, briefly stated, are that the aforesaid Regular Civil Suit No.5 of 2011 came to be filed by the present respondent, original plaintiff, M/s. Talod Gruh Udyog with application Exh. 5 for temporary injunction under Order 39, Rule 1 & 2 r/w section 151 of the Code of Civil Procedure and also under Section 135(2) of the Trade Marks Act, 1999 for the prayer that the plaintiff's trade mark "Talod" has become distinctive and distinguishable in respect of its instant mix products by virtue of extensive and uninterrupted use since the year 1988 and therefore it requires statutory protection as per section 17 r/w section 18(1) of the Trade Marks Act, 1999 and had filed a suit for infringement of registered trade marks No.659930 and 1378012 and infringement of the copyright in the trade dresses of the trade mark labels and artistic works on the grounds stated in detail.

3. It has been contended that due to the popularity and distinctive reputation of the trade mark of the plaintiff, the original defendant has used an identical and/or deceptively similar mark "Talod" in the wrappers of "Mona Instant" in respect of the same products of instant mix deliberately, wilfully and with a mala fide intention and therefore has prayed for injunction. It is contended that such illegal, unlawful and unjustified acts of infringement of trade mark of the plaintiff is likely to cause prejudice and damage to the well-established trade and reputation and goodwill of the plaintiff which it has acquired since 1988 and therefore the statutory rights of the registration of the trade mark 'Talod' cannot be used by the defendant. It is also contended that the defendant has continued its illegal act of imitation and infringement of the trade mark in spite of the civil suit filed by the plaintiff and though the defendant in their Notice of Opposition dated 13.9.2010 has categorically admitted that the disputed label mark Mona Instant Mix with the name Talod in logo form and the expression Vernacular Matter with the Gujarati script as adopted and used is identical and/or deceptively similar to the plaintiff's prior used and registered trade mark Talod would cause deception or confusion in the minds of public and may lead to passing off the goods of the defendant as that of the plaintiff.

4. The learned Principal District Judge, Sabarkantha at Himatnagar, on the basis of the material and after considering the rival submissions, passed an order dated 27th December 2011 granting injunction which has been assailed in the present Appeal from Order on the grounds stated in the memo of the Appeal from Order.

5. It has been contended, inter alia, that the trial court has erred in granting the injunction and passed the order disregarding the basic principles of trade mark law with regard to the geographical names, distinctiveness of a trade mark, concept of disclaimer in respect of a trade mark, associated trade marks, principles of comparison of trade marks and infringement and passing off in respect of a trade mark. It is contended that the trial court ought to have held that earlier Civil Suit No.5/2008 filed by the respondent was for the same prayer and having the same subject-matter in respect of infringement of trade mark for the same relief and therefore on the principles of res judicata the second suit is barred. It is contended that the trial court committed a grave error in not appreciating that the issue directly and substantially involved in the previous suit Civil No.5/2008 between the same parties was withdrawn and therefore no relief could have b