1. - Challenge in this appeal is to the order dated 4th September, 2009, whereby the learned Additional District Judge, No. 5, Jaipur City, Jaipur restrained the Appellant-Defendant himself from using the trade mark 'BERATI' for the purpose of manufacturing, selling and exporting the shoes", foot-wears etc. or through his any agent or servant till the suit is finally adjudicated.

2. The nub, of the Appellant's story is that the Respondent-Plaintiff filed a suit for permanent injunction along with the application for temporary injunction under Section 134 of Trade Mark Act, 1999 (hereinafter referred to as 'Act of 1999'). It is averred that the Plaintiff-Respondent is a registered Company and indulges in the manufacturing and sale of foot-wears in the name and style of trade mark 'BAIRATHI'. This trade mark was got registered under the provisions of 'Act of 1999'. The Plaintiff came to know from Registrar of Trade Mark that the Defendant applied to get a trade mark registered in the name of 'BERATI' for manufacturing and sale of foot-wears. The Plaintiffs business has been established since 1980 and the Defendant was taking the advantage of his goodwill, so inclined to carry out business in the name of trade mark 'BERATI', which was deceptively and phonetically similar.

3. Heard learned Counsel for the parties and carefully perused the relevant material on record including the impugned order dated 4th September, 2009.

4. Learned Counsel for the Appellant canvassed that the trade mark 'BERATI' of Appellant-Defendant is registered. Learned trial court by way of adjudicating the temporary injunction application has, in fact, decreed the suit by restraining him from manufacturing foot-wears, shoes, chappals etc. and selling them to customers. Learned trial court also focused on the phonetic and deceptive similarities with regard to trade mark but; did not take into consideration the dis-similarities in both the trade marks emerging on record. Hence, the impugned order cannot be said to be good order in the eye of law, which deserves to be set aside.

5. E Converso, learned Counsel for the Respondent defended the impugned order and stated the same to be just and proper. He further canvassed that the Respondent-Plaintiff has been running business in the name and style of trade mark 'BAIRATHI' since 1980 and the Appellant-Defendant deceptively got his trade mark 'BERATI' registered with a view to take the advantage of his goodwill. Learned Counsel took me through the judgment of Hon'ble Apex Court rendered in the case of Heinz Italia and Anr. v. Dabur India Ltd., (2007) 6 SCC 1 : 2007 (35) PTC 1 (SC) and canvassed that in this case, the Plaintiff-Appellant was the proprietor of the trade mark 'Glucon-D' which had been registered in India under the Trade and Merchandise Marks Act, 1958. This trade mark had earlier been registered in the name of Glaxo on 21.5.1975, but subsequently Glaxo Laboratories assigned their rights in the artistic work used on the packaging and Plaintiff-Appellant thereupon used the trade mark 'Glucon-D' and the 'packaging' from the year 1994 to 2002 without any Interference and established a very good name In the market. In July 2002, the Appellants learnt that the Defendant-Respondent, Dabur India had launched a similar product under the name 'Glucose-D' by using packaging which was deceptively similar to the packaging used for 'Glucon-D'. The Hon'ble Apex Court allowing the application for interim injunction held that in an action for passing off, the Plaintiff has to establish prior user to secure an injunction and the registration of the mark or similar mark in point of time is irrelevant. The Hon'ble Apex Court further held that the principle of similarity cannot be very rigidly applied and if it can be prima facie shown that there was a dishonest intention on the part of the Defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court is not