The main legal point established in the judgment is that registration under the Copyright Act and Excise Act does not permit infringement of a registered trade mark. The significance of disclaimer in trade mark registration and the impact of deceptive similarity on the public were also emphasized.

ORAL ORDER DICTATED IN OPEN COURT : – This Miscellaneous appeal is filed by the plaintiff under Order 43, Rule 1(r) of the Code of Civil Procedure, 1908 being aggrieved of order dated 14-3-2022 passed by the learned 16th District Judge, Jabalpur in R.C.S. 146-A/2022 (Hindustan Bidi Manufacturing vs. Mr. Sunderlal Chhabilal and another).

2. The appellant’s grievance is that vide impugned order, the trial Court has rejected an application under Order 39, Rule 1 and 2, Civil Procedure Code and has refused to grant injunction in favour of the plaintiff.

3. Plaintiff’s case is that they are registered trade mark holder of ‘Calcutta Bidi’, which is registered under IV schedule of category 34 of the Trade Marks Act 1999 bearing registration No. 736773 and 1780832.

4. It is plaintiff’s case that plaintiff is registered under the provisions of Excise Act since 5-10-1994 and also under the Copyright Act since 2005.

5. It is submitted that defendant who is a manufacturer and seller of the identical product namely tobacco filled bidis obtained a copyright registration on 24-5-2021 claiming himself to be a user of that artistic work since 12-10-1999, Annexure R-3 and started selling his product which is deceptively similar to the trade mark of the present appellant under the name of “New Calcutta Bidi”.

6. It is submitted that this use of deceptively identical trade mark has caused dent to the business of the appellant/plaintiff who is a prior registered trade mark. It is further submitted that the learned trial Judge has ventured to carry out a detailed scrutiny which is not permissible under the law. It is submitted that the striking features of the trade mark registered for the appellant/plaintiff is that there is a mention of word ‘Calcutta Bidi’.

7. This is mentioned in three languages i.e. English, Hindi and Bangla. On the right hand side in a circle, a photo of child is affixed and then “numerals 95” are mentioned, below which, Howrah bridge is depicted.

8. It is submitted that the trial Court has held that disclaimer part i.e. use of word ‘Calcutta’ is not an exclusive prerogative of the plaintiff and then venturing into fine details like the mark used by the defendants contain sun rays below which Howrah bridge is depicted and then there is mention of words “New Calcutta Bidi” in English, Hindi and Bangla.

9. Besides this, a photo is that of an adult and not of a child and the cover makes a mention in English that ‘smoking kills’ and in Hindi that ^/kweziku tku ysok gSA^ On the left hand side, No. 20 in Hindi and on right hand side, No. 20 in English is mentioned. The photograph of an adult is within a circle. Mentioning all these features, it is held by the learned trial Court that neither there is a photo of a child nor No. 95 is mentioned or there is no mention of sun rays on the trade mark of the plaintiff and taking these to be distinctive features has held that since defendant is having a registered copyright and is also registered under the provisions of the Excise Act, there is no infringement of the trade mark and has refused to grant injunction.

10. Learned counsel for the appellant has placed reliance on various judgments of the different High Courts and a Supreme Court.

11. Placing reliance on the judgment of the Bombay High Court in the case of Pidilite Industries Ltd. vs. S. M. Associates and others, 2003(5) Bom.C.R. 295, it is submitted that in para 45, 46 and 47, the issue of disclaimer has been dealt with and placing reliance on the earlier judgment in the case of GRANADA Trade Mark, (1979) 13 RPC 303, it is observed that a disclaimer per se effects the question of whether or not confusion of the public is likely when that question is for determination under section 12(1), a context other than one that is concerned solely with the exclusive rights of a proprietor.

12. In para 47, it is held that regard should be taken to the whole of the plaintiffs mark including the disclaimed matter while deciding the question o