The court modified the stay order to prevent consumer deception due to the defendant's imitation of the plaintiff's trademark packaging.

Order :

1. This Order will dispose of the application (IA No.2/2024) filed by and on behalf of respondent-plaintiff- M/s Hari Industries (Hari Oil Mill), pursuant to the liberty granted by the Hon'ble Supreme Court, praying for variation of the stay order dated 05.10.2016 passed by this Court.

2. Heard respective Senior Counsels, appeared for and on behalf of appellant-defendant & respondent-plaintiff.

3. The present first appeal has been preferred by the defendant, impugning the final judgment & decree dated 12.05.2016 passed by the Additional Distinct Judge No.1, Bharatpur in Civil Suit No.9/2009, whereby and whereunder the suit for permanent injunction filed by respondent-plaintiff under the provisions of Trade Marks Act, 1999, has been decreed and the appellant-defendant has been restrained by the decree of permanent injunction in following terms:-

3. It is undisputed fact on record that the first appeal has been admitted for hearing and during course of hearing of the first appeal, execution & implementation of the final judgment &decree has been stayed vide order dated 05.10.2016.

4. Respondent-plaintiff moved an application dated 25.08.2020, seeking to vacate the stay order dated 05.10.2016, stating inter alia that recently in the year 2020, appellant has started red colour new packaging for its brand of edible mustard oil, just to confuse the customers, who want to purchase the mustard oil made by the respondent-plaintiff.

5. Indisputably, respondent-plaintiff has registered trademark to use trade-name "ENGINE" for his business of manufacturing and selling the mustard oil and this trade-name is allegedly being used by respondent-plaintiff since 1959. The appellant-defendant claims to do the business of selling and manufacturing mustard oil under the different trade name i.e. "Metro ENGINE". It is further an undisputed fact that appellant-defendant is not the registered trade-mark holder for trade-name "Metro ENGINE" nor claims to be prior user of this trade name, rather has taken a plea that the brand name of "Metro ENGINE" and its packaging, are entirely different in all respect, having no match/ similarity with the plaintiff's trade-name "ENGINE". Moreover, the defence of the appellant-defendant is that the picture of a train engine, reflected in the packaging of plaintiff's product, is a type of steam engine, shown in a circle, whereas in the packaging of defendant's product, it is an electric engine and not a steam engine.Be that as it may, respective case of both the parties on merits, factually as well as legally, is to be re-considered, while hearing and deciding the first appeal on merits.

6. In the application dated 25.08.2020, filed by respondent- plaintiff, for vacation of stay order dated 05.10.2016, it was pleaded inter alia that the appellant has started to use new packaging of mustard oil in red colour theme, which is deceptively similar to plaintiff's packaging of mustard oil, although on such packaging, defendant is using the trade-name "Metro ENGINE" with a picture of electric engine, but such development of using the red colour on packaging, has been done by the defendant, recently in the year 2020 and in that way, appellant has gone a step ahead, in order to imitate the colour scheme of plaintiff as well, just to pass off its goods, hence for such reasons, the stay order dated 05.10.2016 be vacated.That application came to be disposed of by this Court vide order dated 06.07.2023 on the request of respondent-plaintiff allowing for expeditious hearing of the appeal.

7. It appears that thereafter, hearing of first appeal could not take place despite moving application for early hearing by respondent-plaintiff twice, hence respondent-plaintiff preferred one Special Leave Petition (Civil) Diary No. 15756/2024 before the Hon'ble Supreme Court