In the High Court at Calcutta

Civil Appellate Jurisdiction

Appellate Side

The Hon’ble Mr. Justice Sabyasachi Bhattacharyya

And

The Hon’ble Mr. Justice Supratim Bhattacharya

FMAT No. 189 of 2024

IA No: CAN 2 of 2024

CAN 3 of 2024

Edible Products (India) Limited

-Versus-

Shalimar Chemical Works Private Limited

For the appellant : Mr. Rudraman Bhattacharya, Sr. Adv.,

Mr. Suvasish Sengupta,

Ms. Arunuima Lala,

Mr. Arindam Chandra,

Mr. Atish Ghosh,

Ms. Antara Dey, Ms. Neha Gupta

For the respondent : Mr. Ranjan Bachawat, Sr. Adv.,

Mr. Abhrajit Mitra, Sr. Adv.,

Mr. Soumya Ray Chowdhury,

Mr. Debayan Mondal,

Mr. Subhankar Nag,

Mr. Sanket Sarawagi,

Mr. Sanjiv Kumar Trivedi

Ms. Iram Hassan,

Ms. Mahima Cholera,

Mr. Himanshu Bhawsinghka,

Ms. Susrea Mitra,

Mr. Sagnik Bose

Heard on : 13.11.2025, 20.11.2025

& 27.11.2025

Hearing concluded on : 27.11.2025 Judgment on : 03.12.2025

Sabyasachi Bhattacharyya, J.:-

1. The present appeal has been preferred by the defendant in a suit for infringement of trademark and/or passing off, against an order granting temporary injunction in terms of Prayer (b) of the injunction application filed in respect of the said suit and, simultaneously, dismissing a vacating application in respect of an ad interim order previously granted in similar tune by the learned Judge, Commercial Court at Alipore.

2. The plaintiff/respondent filed the suit for a decree of perpetual injunction restraining the defendant/appellant and its men and agents from using, manufacturing, offering for sale, advertising, marketing, promoting and selling in electronic media or interactive websites or otherwise dealing in goods bearing the impugned trademarks/trade dress either in isolation or in conjunction with any other mark which is identical and/or deceptively similar to the plaintiff‟s registered trademarks/trade dress or its distinctive get-up, colour combination, packaging in any manner whatsoever, and ancillary reliefs.

3. In the said suit, an injunction application was filed in similar terms.

Initially, by an ex parte ad interim order dated August 16, 2023, the trial court granted injunction in terms of Prayer (b) of the injunction application, which is as follows:

“b ) An injunction restraining the respondent and/or its men, servants, agents, assigns, distributors, directors, dealers, licensees, subsidiaries and/or anyone claiming on its behalf from passing off its goods under the impugned trade mark/trade dress by manufacturing, offering for sale, advertising, marketing, promoting and selling through electronic media or interactive websites or otherwise dealing in goods bearing the impugned mark/trade dress either in isolation or in conjunction with other mark which is identical and/or deceptively similar to the petitioner’s mark/trade dress or its distinctive getup, colour combination, packaging in any manner whatsoever;”

4. Subsequen tly, an application for vacating the said ad interim order was filed by the defendant/appellant, which was taken up for hearing with the temporary injunction application itself. By the impugned order dated May 15, 2024, the injunction application was allowed, thereby making absolute the ad interim order granted earlier and dismissing the vacating application.

5. Learned senior counsel appearing for the defendant/appellant argues that the primary case made out in the plaint is that of infringement of trade mark, from which the plaintiff/respondent is now seeking to deviate to a passing off action.

6. Learned senior counsel argues that an action for passing off has to pass the classic Trinity Test inasmuch as the claimant must show:

(i) Goodwill in the goods or services;

(ii) A misrepresentation by the defendant leading to confusion; and (iii) Actual or likely damage to the claimant‟s goodwill.

7. Learned senior counsel places reliance on Reckitt & Colman Ltd v Borden Inc reported at [1990] RPC 340 (popularly known as the “Jif Lemon Case”) where the United Kingdom House of Lords placed reliance, inter alia, on the Trinity Test laid down by Lord