JUDGMENT

SANJEEV NARULA, J. (Oral):

I.A. No. 20717/2022 (u/Order XXXIX Rules 1 and 2 r/w Section 151 of Code of Civil Procedure, 1908)

1. The Plaintiffs have filed the instant suit seeking, inter alia, permanent injunction against passing off and restraining infringement of registered trademark and copyright, delivery up and damages, among other ancillary reliefs. By way of above-captioned application, Plaintiffs seek an interim injunction against Defendants, pending adjudication of the suit. After being afforded an opportunity vide order dated 08th December, 2022, Defendants have filed a reply to the application along with relevant documents, however, pleadings in the suit are yet to be completed.

FACTS

2. Plaintiff No. 1 is engaged in the business of manufacturing and trading in chewing tobacco, zarda, mouth fresheners etc. under its registered copyright and trademark “COOL LIP” and “LIP” and other variations thereof. Plaintiff No. 2 is utilising “COOL LIP” mark under a license from Plaintiff No. 1. Details of registrations in India and other countries have been listed in the plaint at paragraphs No. 7 and 12, respectively. Besides these registrations, several registrations of variations of “COOL LIP” and “LIP” are pending before the Trade Marks Registry.1

3. The packaging and trade dress of Plaintiffs’ products is as under:

1MentionedinparagraphNo.9oftheplaint.

4. Plaintiffs claim that “COOL LIP” has been in long continued use since 2009 and they have expended heavily towards advertisement/ promotion of the marks and generated considerable revenue, as is seen from yearly sales figures from the year 2010-11 onwards, mentioned in paragraph No. 17 of the plaint and documents annexed therewith.

5. On the other hand, Defendant No. 1 and its partners (Defendants No. 2 to 4) are registered proprietors of trademark “ICE FEEL”. Defendant No. 5 is registered owner of the mark “LIP LOCK”, which has been assigned in favour of Defendant No. 1/ firm. Impugned marks of Defendants are as follows:

6. Parties have been aware of each other’s presence since 2019. Plaintiffs first came across Defendant No. 1’s trademark application No. 4037026 for the mark “ICE LIP” and opposed the same. Since then, Plaintiff No. 1 and Defendant No. 1 have filed notices of opposition and rectification petitions against each other’s trademarks. In 2022, litigation saga commenced, with Defendant No. 1 filing Original Suit No. 6260/2022 before Additional City Civil Judge, Bangalore seeking, inter alia, permanent injunction against Plaintiff No. 1 from infringing “ICE FEEL” and “LIP LOCK” marks and trade dress [hereinafter, “Bangalore suit”]. Therein vide order dated 28th September, 2022, an ex-parte interim injunction was granted restraining Plaintiff No. 1 from using “COOL LIP”. Later, on an application filed by Plaintiff No. 1,2 injunction was vacated on 19th November, 2022 and Defendant’s interlocutory application was dismissed. The parties are now in appeal, but reportedly, there is no stay on the dismissal order.

2I.A.No.7inO.S.6260/2022.

7. This time, it is the Plaintiffs (who are Defendants in the Bangalore suit), seeking an interim injunction against Defendants from infringing their registered marks.

CONTENTIONS On behalf of Plaintiffs

8. Mr. Saurabh Kirpal, Senior Counsel for Plaintiffs, argues that this is a clear case of infringement as the impugned marks are deceptively similar to Plaintiff’s registered marks, an incontrovertible and admitted fact, duly acknowledged by Defendant No. 1 in its plaint in Bangalore suit. He makes it clear that although Plaintiff No. 1 (Defendant therein) has successfully opposed the injunction application, it did not dispute the deceptive similarity between the competing marks; it succeeded by proving prior use than that of Defendant No. 1. Indeed, Plaintiff No. 1 is the prior adopter and user of the marks and has been using its registered marks since 2009, when Defendant No. 1/ firm did not even exist. Defendants have dishonestly and