The court ruled that a suit for trademark infringement and passing off is maintainable even when both parties hold identical trademarks in different classes, emphasizing the need for adjudication on merits.

JUDGMENT :

Vinit Kumar Mathur, J. - With the consent of the learned counsel for the parties, the present appeal is being heard and decided finally at this stage by this judgment.

2. The present first appeal has been filed by appellant- Kutbuddin against the order dated 02.09.2022 passed by Additional District Judge No.1, Udaipur (for short "the trial Court"), whereby, the application preferred by defendant-respondent No.1- Zakir Hussain under Section 28(3), Section 29 and Section 30 (2)(e) of the Trademark Act, 1999 (hereinafter referred to as "the Act") had been allowed and the suit preferred by the appellant-plaintiff as well as the counter claim filed by the defendant-respondent No.1 had been dismissed.

3. Briefly, the facts necessary to be noted in the present first appeal are that on 01.01.1979, a partnership firm namely M/s. Z.A. Kanorwala was founded by the partners Mr. Zakir Hussain Kanorwala (respondent No.1 in the instant appeal) and Mr. Abbas Ali Kanorwala, who adopted a distinctive trade mark "ZK" (label) in respect of business of manufacturing, trading, marketing, offering for sale and selling of all kinds of spices falling in class 30 for the goods-spices vide Registration No.481894 on 30.11.1987.

4. In the month of April, 2005, Mr. Abbas Ali retired from the partnership firm and the present appellant-plaintiff- Kutbuddin Kanorwala was inducted as a partner of the partnership firm M/s. Z.A. Kanorwala vide partnership deed dated 01.04.2005.

5. On 31.08.2006, the partnership firm M/s. Z.A. Kanorwala was dissolved. The dissolution deed dated 31.08.2006 clearly shows that Kutbuddin Kanorwala would continue the said business as a sole proprietor under the same name and style i.e. M/s. Z.A. Kanorwala; Kutbuddin Kanorwala would be entitled to sole and exclusive ownership and can use trade mark "ZA", the partnership firm's name M/s. Z.A. Kanorwala and trade marks alongwith goodwill; the outgoing partner Zakir Hussain Kanorwala would have no right, title and interest in the firm M/s. Z.A. Kanorwala and/or the partnership firm's trade marks.

6. After the said dissolution of the erstwhile partnership firm, as a consequence, the erstwhile partner Mr. Zakir Hussain Kanorwala, the respondent-defendant No.1 had written an application dated 01.09.2006 under his signature to the Commercial Tax Officer, Udaipur to cancel Sales Tax Licence in the name of the erstwhile partnership firm. He had also written a letter dated 02.09.2006 to the Manager, Punjab National Bank, Chetak Circle, Udaipur for closure of the current account in the name of partnership M/s. Z.A. Kanorwala. The respondent-defendant- Zakir Hussain Kanorwala also addressed a communication dated 03.02.2010 to the Secretary, Krishi Upaj Mandi Samiti, Udaipur for changing the permanent licence and an affidavit dated 06.03.2010 to provide 'No Objection Certificate' for changing of shop licence. In these circumstances, the appellant-plaintiff continued with his business of proprietor firm M/s. Z.A. Kanorwala with the trade mark "ZK (label)". Thereafter, the present appellant-plaintiff filed two more applications for grant of trade marks and the same were allowed by the official respondents as "ZK" and "Upkar Spices".

7. In the year 2013, the defendant-respondent No.1- Zakir Hussain Kanorwala filed a suit for dissolution and rendition of accounts against the present appellant-plaintiff in the District Court, Udaipur, which was transferred to the Additional District Judge No.1, Udaipur being Civil Suit No.125/2013 and the same is pending consideration till today. No interim order in the said suit with respect to the trade marks of the erstwhile partnership firm has been passed.

8. In the year 2017, one more suit was filed by the respondent No.1- defendant Zakir Hussain Kanorwala against the present appellant for permanent injunction in the District Court, Udaipur which stands transferred to the court of Additional District Judge No.2, Udaipur. In the said suit, an application for tem