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2021 Supreme(Online)(Guj) 6751
GUJARAT HIGH COURT
VAIBHAVI D. NANAVATI, J
TRUPTI GROVER – Appellant
Versus
R G MIR SANANDWALA EDUCATIONAL CHARITABLE TRUST THROUGH BILKIS M MIR – Respondent
R/APPEAL FROM ORDER NO. 143 of 2020 | CIVIL APPLICATION (FOR STAY) NO. 1 of 2020
For the Appellants/Petitioners: KAMAL J UPADHYAYA
For the Respondents: MR FB BRAHMBHATT
The court upheld the interim injunction to prevent trademark passing off, affirming the plaintiff's status as the prior user of the trademark.
Headnote:(A) Civil Procedure Code, 1908 - Order 43 Rule 1 - Appeal from Order challenging interim injunction granted in a trademark dispute - Ad interim injunction was granted to the plaintiff restraining the defendant from using a similar trademark and logo until resolution of suit. The court finds a prima facie case in favor of the plaintiff being the prior user of the trademark "ANANT" established through various documents. (Paras 10, 26)
(B) Intellectual Property Laws - Passing Off - Comparison of trademarks and prior use critical in passing-off actions - The court articulated the importance of examining evidence of prior use and established goodwill of the parties involved prior to granting injunctions. The appellant failed to substantiate claims of being the prior user. (Paras 27, 9)
Facts of the case:
The respondent-plaintiff filed a suit seeking permanent injunction against the appellant for using the trademark "ANANT" and its logo, claiming to be the original user since 2018, while the appellant's trademark registration was noted as "proposed to be used". (Par 4)
Findings of Court:
The respondent established a prima facie case of prior use of the trademark and likelihood of passing off leading to potential market confusion. (Par 10)
Issues: The main questions revolved around the determination of prior use of the trademark and whether the injunction was warranted.
Ratio Decidendi: The court found the evidence more persuasive for the respondent-plaintiff as the prior user and ruled that the appellant did not establish a prior claim. (Paras 9, 8)
Result: Appeal dismissed, maintaining the interim injunction.
| Table of Content |
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| 1. background and submission on trademark use. (Para 4) |
ORDER
1. This Appeal from Order under Order 43 Rule 1 of the Civil Procedure Code, 1908 (for short ‘the CPC ’) challenging the judgment and order dated 10.11.2020 passed below Exh.6/7 in Regular Civil Suit No. 653 of 2019 by the Additional District Judge, Court No. 28, City Civil Court, Ahmedabad.
2. The respondent herein is the original plaintiff, whereas, the appellant herein is the original defendant. The appellant – original defendant being aggrieved by the order passed by the Court below dated 10.11.2020 has filed the present Appeal from Order. The Court below allowed the application below Exh.6/7 (Notice of Motion) filed by the orig. plaintiff – respondent herein, seeking ad- interim injunction against the appellant – original defendant, their agents, servants, dealers, distributors from using, acquiring, providing and / or offering services qua business to others, advertising, marketing and / or exposing his services with identical and deceptively similar name “ANANT” and its logo and committing the act of passing off the brand name “ANANT” with its logo of the plaintiff.
3. The Court below passed the order on 10.11.2020 in Regular Civil Suit No. 653 of 2019 below Exh.6/7. The operative para reads thus:
- “1). Present application preferred by the plaintiff seeking ad interim injunction against defendant is allowed.
2). The defendant, their agents, servants, dealers, distributors are hereby restrained from using, acquiring, providing and / or offering services qua business to others, advertising, marketing and / or exposing his services with identical and similar name “ANANT” with it’s logo till the final disposal of the Suit.
3). No order as to costs.”
4. The brief facts leading to the filing of the present Appeal from Order are summarized thus:
4.1. The respondent – original plaintiff filed the Trade Mark Civil Suit No. 653 of 2019 seeking the following reliefs:
- “(A) To pass an order of Permanent Injunction restraining the defendant their agents, servants, dealers, distributors from using, acquiring, providing and/or Offering services qua business to others, advertising, Marketing and/or exposing his services with Identical and Deceptively similar Name 'ANANT' and its Logo and by that way committing the act of Passing Off of the Brand Name 'ANANT' with its Logo of the Plaintiff.
- (B) To pass an order for Damages of and Account of Profit to goodwill of the Plaintiff by the act of Passing off by the defendant by using the identical and deceptively similar name as of the Brand Name 'ANANT' with its Logo of the Plaintiff as calculated and decided by Hon'ble Court.
- (C) To grant any other relief deem fit and just looking to the facts and circumstances of the case.
- (D) To award cost in favor of the Plaintiff.”
4.2. Pending the Civil Suit, the respondent- original plaintiff filed an application for interim injunction below Exh.6/7 under Order-39 of the CPC , seeking the following reliefs:
- “(A) To pass an order of Ad-Interim Injunction restraining the defendant their agents, servants, dealers, distributors from using, acquiring, providing and/or Offering services qua business to others, advertising, Marketing and/or exposing his services with Identical and Deceptively similar Name 'ANANT' and its Logo and by that way committing the act of Passing Off of the Brand Name 'ANANT' with its Logo of the Plaintiff.
- (B) To grant any other relief deem fit and just looking to the facts and circumstances of the case.
- (C) To award cost in favor of the Plaintiff.”
4.3. The respondent- orig. plaintiff is a trust registered under the Trust Act vide registration No. E/22209/Ahmedabad carrying-on its activity in the field of education under the name ‘ANANT PRE & PRIMARY SCHOOL WITH MONTESSORI METHOD’ and doing the activity of providing services of educatio
