Gauhati HC: Appellate Court Won't Lightly Interfere With Trial Court's Discretion in Granting Ex-Parte Injunction If Not Arbitrary; Upholds 'ARHAM' Trade Dress Protection Under Copyright Act & Commercial Courts Act - 2025-06-16

Gauhati High Court Upholds Temporary Injunction in 'ARHAM' Rice Trade Dress Dispute

Guwahati , Assam – The Gauhati High Court, in a significant judgment dated June 16, 2025, dismissed an appeal filed by Jay Baba Bakreswar Rice Mill Private Limited against a temporary injunction order. The injunction, granted by the Civil Judge (Sr. Division) No.1, Kamrup(M), restrained Jay Baba Bakreswar from infringing the registered copyright and trade dress of Lunia Marketing Private Limited's "ARHAM" brand rice products. Hon’ble Mr. Justice Robin Phukan affirmed the trial court's decision, emphasizing that an appellate court should not interfere with the trial court's discretionary power in granting injunctions unless exercised arbitrarily, capriciously, or perversely.

Case Background: The "ARHAM" vs " JAY BABA " Rice Branding Tussle

Lunia Marketing Private Limited (Respondent No.1/Plaintiff), established in 1998, has been marketing cereal products, including rice, under the trademark "ARHAM" since 2001. They developed a distinctive trade dress for their packaging – featuring a specific color scheme (green, black, red), artistic elements like a two-line black border, a red Swastik, the word "ARHAM" in red, and other unique visual features. This artistic work is registered under Copyright No.A-89471/2010.

In June 2024, Lunia Marketing received complaints about poor-quality rice being sold under a similar trade dress with the brand " JAY BABA ." They alleged that Jay Baba Bakreswar Rice Mill Private Limited (Appellant/Defendant) was infringing their copyright and passing off their goods by using a deceptively similar packaging, including color scheme and wording like "100% Pure" and "SORTEX B.P.T. RICE."

Consequently, Lunia Marketing filed Commercial Suit No.07/2025 and sought a temporary injunction. The trial court, on January 10, 2025, granted an ad-interim injunction restraining Jay Baba Bakreswar from using the allegedly infringing trade dress. Aggrieved by this order, Jay Baba Bakreswar appealed to the Gauhati High Court.

Arguments Before the High Court

Appellant's Contentions (Jay Baba Bakreswar Rice Mill): The appellant, represented by Senior Advocates Mr. G.N. Sahewalla and Mr. Debnath Ghosh, raised numerous grounds, arguing that: * The trial court's order suffered from non-appreciation of documents and erroneous findings. * The appellant is a registered proprietor of its mark and copyright, making an infringement suit non-maintainable. * There was no urgency to grant an ex-parte injunction, especially without complying with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, given the prior exchange of correspondence. * The respondent's mark "ARHAM" and artistic work were allegedly unregistrable, being generic, a dictionary word ("merciful" in Arabic), or based on common religious symbols (Jainism), lacking distinctiveness. * There was no similarity between the essential features of the two marks; the appellant's mark prominently featured "SWASTIK" (related to Hinduism) and " JAY BABA ," distinct from the respondent's Jainism-inspired symbol. * The respondent suppressed material facts regarding disclaimers on the Swastik palm device. * The suit was filed in Guwahati to avoid the natural jurisdiction of Kolkata courts, where both parties had offices and where the appellant had lodged caveats, indicating forum-shopping. * The trial court erred in finding a prima facie case, balance of convenience, and irreparable loss in favor of the respondent.

Respondent's Submissions ( Lunia Marketing ): Senior Advocate Mr. Sayantan Basu, representing Lunia Marketing , countered that: * The appeal was against an ex-parte order, and the appellant had the option to file an objection in the trial court. * The urgency of the matter justified the trial court's waiver of pre-institution mediation under Section 12A of the Commercial Courts Act. * The injunction was granted based on trade dress infringement, not just trademark. A visual comparison of the rice sacs showed clear similarities in arrangement and color. * The appellant offered no explanation for adopting a getup so similar to the respondent's copyrighted design. * The trial court's order was not erroneous and was based on established principles for granting injunctions.

High Court's Reasoning and Application of Legal Principles

Justice Robin Phukan meticulously examined the arguments and the legal precedents governing ex-parte injunctions and appellate interference.

Principles for Granting Ex-Parte Injunction: The Court referred to Morgan Stanley Mutual Fund v. Kartick Das (1994) , which lays down factors like irreparable mischief, greater injustice in refusal, plaintiff's promptness and good faith, and the limited period of such injunctions. It also cited Shiv Kumar Chadha v. Municipal Corpn. of Delhi (1993) , emphasizing the need for courts to record reasons for granting ex-parte injunctions.

Power of Appellate Court: The judgment reiterated the principle from Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel & Ors. (2006) and Wander Limited and Another v. Antox India Pvt. Ltd. (1990) , stating: > "An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material."

Trial Court's Findings Affirmed: The High Court noted that the trial court found Lunia Marketing to be the owner of the "ARHAM" copyright and trade dress, which had gained significant public recognition. The trial court observed that Jay Baba Bakreswar was using a similar trade dress, leading to potential customer confusion and damage to Lunia Marketing 's reputation, especially concerning the sale of allegedly inferior quality rice under a look-alike packaging. The High Court's own appreciation (Para 17.2 included a visual comparison) confirmed similarities: > "The symbol and trade dress have been copied, including the color scheme and wording such as '100% Pure' and 'SORTEX B.P.T RICE' and is using this symbol in the same color and company style which constitutes a violation of the respondent No.1’s ‘trade dress’ and ‘artistic design’..."

The High Court agreed with the trial court's assessment that a prima facie case existed for Lunia Marketing , the balance of convenience tilted in their favor, and they would suffer irreparable injury if the injunction was not granted. These "three golden principles" were found to be satisfied.

On Section 12A of the Commercial Courts Act (Pre-Institution Mediation): The appellant argued that non-compliance with Section 12A vitiated the proceedings. The High Court, however, noted the exchange of cease and desist notices between June and July 2024, where the appellant refused to comply. The respondent contended this foreclosed mediation. The Court referred to Yamini Manohar v. T.K.D. Keerthi (2024) , which clarified that Section 12A does not always require a formal application for exemption if urgent interim relief is sought; pleadings and oral submissions can suffice. The trial court's observation on urgency and the need for interim protection was deemed sufficient application of mind, even if Section 12A wasn't explicitly named for waiver. > "[T]he observation made by the learned trial court in the impugned order dated 10.01.2025, viz.-‘If the O.Ps are not restrained through an ad-interim temporary injunction, the purpose of filing this Misc. Case may become futile, leading to multiple proceedings’... goes to show that the learned trial court had applied its mind while granting the relief."

Territorial Jurisdiction: Regarding the appellant's claim of forum-shopping, the Court, citing Indian Performing Arts Society vs. Sanjoy Dalia & Anr. (2015) , found no fault with Lunia Marketing instituting the suit in Guwahati , as they had an office and conducted business there. Section 62 of the Copyright Act and Section 134 of the Trade Marks Act allow a plaintiff to sue where they reside or carry on business.

Final Decision and Implications

The Gauhati High Court concluded that the trial court had not exercised its discretion arbitrarily, capriciously, or perversely in granting the temporary injunction. > "Thus, having examined the impugned injunction order, dated 10.01.2025 so passed by the learned trial court in exercising its discretionary power, this Court is unable to derive satisfaction that the discretion was exercised arbitrarily, capriciously and perversely, ignoring the settled principles of law."

Consequently, the appeal (FAO No. 8/2025) and the associated interlocutory application (I.A.(Civil) No.325/2025) were dismissed. The interim order of the High Court dated 10.02.2025 (which likely stayed the trial court's injunction) was vacated. The matter was remanded to the trial court with a direction to dispose of the pending injunction application within the stipulated period after hearing both parties. The trial court's ad-interim temporary injunction dated January 10, 2025, thus continues to be in effect, restraining Jay Baba Bakreswar Rice Mill Private Limited from using the disputed trade dress.