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KARNATAKA HIGH COURT
G. Narendar and Vijaykumar A. Patil, JJ.
Matra Mobili Private Limited – Appellant
versus
Madanapalle Retail Private Limited – Respondent
Commercial Appeal No.321 of 2023
Decided on 11.9.2023
Commercial Courts Act, 2015 – Code of Civil Procedure, 1908 – Order XXXIX Rule 3 –Trademark – Infringement –Injunction – Grant of –Commercial Court has committed grave error in granting exparte injunction without assigning any reason whatsoever for dispensation of notice as contemplated under Order XXXIX Rule 3 of CPC – Commercial Court has failed to consider fact that appellant is carrying on business from 2020 in same name and style as ‘Sunday’ and ‘Sunday Design’ and respondent has filed suit in 2023 –Commercial Court has not assigned any reason whatsoever, except recording finding that respondent has been using mark since 2015 and appellant has applied for registration of its mark in 2021, mark used by the appellant is similar, customer & general public would easily confuse about mark and if same is allowed to continue, it would adversely affect interest of respondent-plaintiff and has come to conclusion that respondent has made out primafacie case – Commercial Court has not recorded any finding with regard to balance of convenience and irreparable injury likely to be caused to parties – Impugned order is required to be set aside – Matter remanded to Commercial Court to re-consider applications after providing opportunity to both parties to proceedings. [Paras 10, 11, 12, 13]
Result: Appeal partly allowed.
JUDGMENT
Vijaykumar A. Patil J.—This appeal is filed under Section 13(1A) of the Commercial Courts Act, 2015 read with order XLIII of the Code of Civil Procedure, 1908, assailing the order dated 17.08.2023 passed on I.A.Nos.1/2023 to 4/2023 in Com.O.S.No.909/2023 on the file of the LXXXIX Addl. City Civil and Sessions Judge, Bengaluru (for short, ‘the Commercial Court’).
2. The parties are referred to as per their respective ranking before the Commercial Court.
3. Brief facts giving rise to filing of this appeal are that the respondent-plaintiff has filed commercial suit seeking following prayers:—
“A. An order for permanent injunction restraining the Defendant, its officers, servants, agents, and all other persons claiming through or under them from, in any manner whatsoever, infringing, adopting and/or using the Plaintiff’s registered trademarks ‘Sunday’ and ‘Sunday Life’, or any other mark identically or deceptively similar thereto;
B. An order for permanent injunction restraining the Defendant, its officers, servants, agents, and all other persons claiming through or under them from, in any manner whatsoever, passing off their furniture and home furnishings as the furniture and home furnishings provided by the Plaintiff by adopting and/or using the Plaintiff’s registered trademarks ‘Sunday’ and ‘Sunday Life’, or any other mark identical or deceptively similar thereto, including by way of using the Plaintiff’s registered trademarks ‘Sunday’ and ‘Sunday Life’ as part of their trade name or in any manner whatsoever;
C. An order for permanent injunction restraining the Defendant, its officers, servants, agents, and all other persons claiming through or under them from, in any manner whatsoever, passing off their products as the products offered by the Plaintiff by using the domain name “http://www.sundaydesign.in/” or any other domain name incorporating the Plaintiff’s registered trademarks ‘Sunday’ and ‘Sunday Life’ or any other mark identical or deceptively similar thereto;
D. An order for permanent injunction restraining the Defendant, its officers, servants, agents, and all other persons claiming through or under them from , in any manner whatsoever, passing off their products on various social media pages including on Facebook, Twitter, Instagram, LinkedIn, as products offered by the Plaintiff by incorporating the Plaintiff’s registered trademarks ‘Sunday’ and Sunday Life’, or any other mark identical or deceptively similar thereto;
E. An order for deliver-up to the Plaintiff by the Defendant, its officers, servants, agents, and all other persons claiming through or under them, of all infringing goods, advertising materials, memorabilia, printed matter, publications, including brochures, pamphlets, stationery and any other materials bearing the trademarks ‘Sunday’ and ‘Sunday Life’, or any other mark identical or deceptively similar thereto for the purposes of erasure or destruction;
F. An order directing the Defendant to render honestly and faithfully true accounts of the profits that the Defendant has derived by promoting its products the Plaintiff’s registered trademarks ‘Sunday’ and ‘Sunday Life’ or any other mark identical or deceptively similar thereto and directing payment of such profits to the Plaintiff by way of damages for infringing and passing off the trademark of the Plaintiff.”
4. It is averred that the plaintiff company is into the businesses of manufacturing and selling of home furniture specifically mattresses and accessories such as pillows and mattress covers including cots and desks. The plaintiff is selling its products under the brand name ‘Sunday’ in several cities across the country from 2015. The plaintiff for protection of its right has registered four trademarks ‘Sunday’ in Class 20, ‘Sunday’ in Class 24, ‘Sunday Life’ in Class 20 and Class 24. It is further averred that the products of the plaintiff has been widely recognized for high quality, affordability and unique features. It i
Injunction – Grant or refusal of interim injunction is absolutely discretionary power of Commercial Court keeping in mind material available before it.
A plaintiff must use their registered trademark to claim infringement; failure to do so undermines the basis for an injunction.
The court emphasized the importance of weighing the interests of contesting parties and the limited scope for interference with the trial court's discretion in granting or refusing temporary injuncti....
Point of Law : Section 27 of Trade Marks Act provides that no action for infringement will lie in respect of an unregistered trade mark.
In trademark infringement actions, a presumption of confusion arises if the defendant's mark is identical to that of the registered trademark, fostering the entitlement to interim injunction.
A plaintiff must prove prior use of a trademark to obtain a temporary injunction, and delays in seeking relief can adversely affect the case.
The court upheld the plaintiff's rights as the prior user and registered owner of the trademark, granting an injunction against the defendant's use of a similar mark due to the likelihood of consumer....
A plaintiff cannot file multiple suits for the same cause of action concurrently in different jurisdictions; it constitutes forum shopping and is impermissible under Order II Rule 2 CPC.
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