CAV ORDER

Challenging order dated 19.08.2024 passed by XVIII Additional City Civil and Sessions Judge, Bengaluru (‘trial Court’), on IA no.4 in OS no.3700/2024 (‘suit’) filed under Order VII Rule 11 of Code of Civil Procedure, 1908 (‘CPC’), CRP no.614/2024 is filed, while challenging order dated 19.08.2024 passed on IAs no.1 and 2 filed under Order XXXIX Rules 1 and 2 R/W Section 151 of CPC, MFA no.7600/2024 is filed. Since both matters arise out of same suit, they were clubbed together, heard and disposed of by this common order. For sake of convenience, parties will be referred to as per their ranks in Suit.

Submissions in CRP no.614/2024

2. Sri Vinay N. appearing for Manmohan PN Associates, Advocates for Revision Petitioner submitted, petitioner herein was defendant, while respondent - plaintiff in OS no.3700/2024 filed for decree of permanent injunction restraining defendants from infringement and passing off of its registered trademark 'MR GOLD', rendition of accounts and recovery of profits, delivery-up and destruction of infringing materials and other consequential reliefs etc.

3. In plaint, it was stated, plaintiff was engaged in manufacture and trade of premium quality sona masoori rice under trademark 'MRN GOLD', along with its variants 'MRN CHAND', 'MRN COPPER' and 'MRN PLATINUM', claiming continuous and uninterrupted use of 'MRN GOLD' since 13.03.2001. Originally business was run by partnership firm. In 2016, it became proprietorship and trademarks along with goodwill were assigned to it under Assignment Deed dated 15.06.2016. It was stated ‘MRN’ mark was derived from initials of head of family and was inherently distinctive and formed essential part of plaintiff's trading style. And through continuous and uninterrupted use, extensive sales turnover, substantial expenditure on advertisement and sales promotion and strong distribution network, it had acquired immense goodwill, reputation across South India and also won awards and recognitions. That apart from direct sale, plaintiff marketed and sold its goods on E-Commerce platforms/websites with domain name “”, “” and “” etc. and ‘MRN’ mark had acquired secondary meaning in market associated with plaintiff’s goods. And plaintiff held subsisting registration of trademark ‘MRN Gold’ under Class 30 for rice under Application no.1752294 and others, while application for 'MRN SILVER' was pending. Plaintiff had also got copyright registrations for artistic features of labels and packaging of ‘MRN Chand’, ‘MRN Gold’ and ‘MRN Daiwik’.

4. It was stated plaintiff was prior ‘adoption and user’ of mark ‘MRN Gold’, from 2001, but in respect of identical goods i.e. rice and with dishonest intention, defendant adopted deceptively similar mark 'MR GOLD' with cosmetic omission of letter ‘N’. In fact in 2015-16 when defendant applied for registration of its mark, when plaintiff opposed it, application was withdrawn. But began using it again in September 2023. And in fresh application filed in 2022 continuous usage from 2008 was claimed. As defendant’s goods sold in markets within jurisdiction of Court led to confusion among consumers with average intelligence and imperfect recollection of plaintiff’s mark ‘MRN Gold’ to believe defendant’s product ‘MR Gold’ was manufactured by plaintiff and adoption of identical mark was with intention to tap on goodwill, a cease-and-desist notice was got issued by plaintiff on 19.09.2023. In reply dated 29.09.2023, defendant refused to comply and admitted continued use of mark, constituting infringement of plaintiff’s registered trademark under Section 29 of Trade Marks Act, 1999 (‘TMA’), and also passing off under Section 27 (2) of TMA and causing confusion in market, diluting plaintiff’s brand value tarnishing its reputation and also caused irreparable loss and injury, suit was filed.

5. It was stated, cause of action arose initially in 2001 upon adoption of mark, subsequently in 2013 on its registration and in 2015–2016 on gaining knowledge of defendan