Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2024 Supreme(All) 1016

IN THE HIGH COURT OF ALLAHABAD
HON'BLE KSHITIJ SHAILENDRA, J.
M/S MMI Tabacco Pvt Ltd And Another
Versus
Iftikhar Alam – Respondent
FIRST APPEAL FROM ORDER No. : 411 of 2024
Decided on : 05-07-2024

Advocates:
Advocate Appeared:
For the Appellant : Arvind Srivastava, Mohammad Waseem
For the Respondent: Santosh Kumar Tripathi

The court emphasized the necessity of establishing a prima facie case, balance of convenience, and irreparable injury for granting injunctions in trademark disputes.

Headnote:(A) Trade Marks Act, 1999 - Sections 29, 134, 135; Copyright Act, 1956 - Section 62 - Appeal against rejection of injunction application - Plaintiffs claimed exclusive rights to the trademark 'Musa-Ka-Gul' since 1974, supported by registered trademarks and copyrights - Defendant contested based on prior user and pending rectification of plaintiffs' trademark - Court emphasized the need for prima facie case, balance of convenience, and irreparable injury in injunction applications. (Paras 2, 12, 30)

(B) Injunction - Principles governing grant - Court must assess prima facie case, balance of convenience, and irreparable injury - Temporary injunctions preserve status quo until final adjudication. (Paras 13, 14)

Facts of the case:
Plaintiffs, M/s M.M.I. Tobacco Pvt. Ltd. and its director, claimed exclusive rights to the trademark 'Musa-Ka-Gul' based on historical use and registrations, while the defendant claimed prior user and contested the validity of the plaintiffs' trademark.

Findings of Court:
The trial court's rejection of the injunction was found unsustainable; plaintiffs established a prima facie case and balance of convenience favored them.

Issues: The main issues included the validity of the plaintiffs' trademark, the defendant's prior user claim, and the appropriateness of granting an injunction.

Ratio Decidendi: The court ruled that the plaintiffs had established their rights to the trademark and the defendant's claims were insufficient to deny the injunction.

Result: Appeal allowed; injunction granted against the defendant.

JUDGMENT :

HON'BLE KSHITIJ SHAILENDRA, J.

1. Heard Shri T.P. Singh, learned Senior Counsel assisted by Shri Arvind Srivastava and Shri Mohammad Waseem, learned counsel appearing on behalf of plaintiff-appellants and Shri Shashi Nandan, learned Senior Counsel assisted by Shri Santosh Kumar Tripathi and Shri Udyan Nandan, learned counsel appearing for defendant-respondent.

THE APPEAL

2. The instant appeal under Order XLIII Rule 1(r) of Code of Civil Procedure, 1908, has been preferred by the plaintiffs-appellants of Original Suit No. 20 of 2022 (M/s M.M.I. Tobacco Pvt. Ltd. and another vs Iftikhar Alam) challenging the order dated 30.01.2024, whereby the District Judge, Varanasi has rejected their injunction application (Paper No. 6-C). Further prayer made is to allow the injunction application dated 25.08.2022.

PLAINTIFFS’ CASE

3. The said Original Suit was filed by M/s M.M.I. Tobacco Pvt. Ltd. through its Director Mohd. Nazish, as plaintiff No.1 and Mohd. Nazish in his personal capacity, as plaintiff No.2, against the defendant--respondent Iftikhar Alam under Sections 29, 134, 135 of the Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1956 with the averments that plaintiff No.1 was a private limited company, well established in India and was engaged in the production and sale of tooth power, namely, “Musa-Ka-Gul” by wholesale and retail activity. It was further alleged that plaintiff No.1 company and its predecessors had been lawfully selling the said product since 04.03.1974 and that copyright office at New Delhi had issued Registered No. A0131294/2010 on 04.10.2019, Label and Registered No.140586/2021 dated 21.11.2021, Musa Gul and Registered No. 140586/2021 dated 21.11.2021 and GST No. 19AAHCM7286L1ZN. It was further alleged that plaintiff No.1 company had been registered on 16.12.2011 and its trade mark had been registered on 15.01.1994 at Registration No. 616611, Certificate No.733679, which would be valid upto 15.01.2024. In paragraph No. 14 of the plaint, it was pleaded as follows:-

4. The cause of action for filing suit was alleged to have accrued on 16.08.2022 when the plaintiffs came to know about defendant selling the same product by the same name and, therefore, suit was instituted claiming a decree alongwith an application 6-C seeking temporary injunction pending suit, to the effect that the defendant may be restrained, either himself or through any camouflaged company, assignee, nominee, employee or agent from producing, selling or trading tooth powder “Asli Musa-Ka-Gul” and not to write “Asli Musa-Ka-Gul” on the container and wrappers or name of the company, i.e. Mohd. Musa and sons or M.M.I and Company.

5. The case of the plaintiffs-appellants, in a nutshell, is that they have exclusive right to use “Musa-Ka-Gul” with man device and photographs of Mohd. Musa and Mohd. Subedar for selling the product manufactured by them. The plaintiff No. 1 claims to be a reputed Company manufacturing tooth powder in the name of “Musa-Ka-Gul” with the aforesaid design and colour from the time of its predecessor-in-interest since 04.03.1974. They claim to have registered their trade mark No. 616611 with such description. They also have copyrights having registration No. A131294 of 2019 (Paper No. 12-Ga), A140586 of 2021 (Paper No. 13-Ga) and A140587 of 2021 (Paper No. 14Ga) of the exclusive design and colour to be exclusively used by them on the wrapper and container of the product sold by them.

DEFENDANT’S CASE

6. The defendant contested the claim for injunction by filing objection (Paper No. 40-C) supported by affidavit (Paper No. 41-C) stating therein that the registered trade mark No. 616611 was pending for rectification before the Registrar of Trade Marks; that the product “Musa-Ka-Gul” had been adopted by Mohd. Musa and sons, whose partners were Mohd. Subedar and Mohd. Islam; that Mohd. Musa and sons applied for registration of trade mark vide application No. 354633, in which the user was described since 04.03.1974. Mohd.