Case Note & Summary
The appellant, M/s. Mysore Deep Perfumery Household, a partnership firm engaged in manufacturing and exporting agarbatti, scent, perfume, camphor, dhoop, etc., filed a trade mark infringement suit against the respondent, Sunilkumar Amrutlal Jain, who was a former purchaser of the appellant's goods. The appellant claimed to have been using the trade mark 'Shriphal' since 1992 and had obtained registration under the Trade Marks Act. In September 2014, the appellant discovered that the respondent had started using the impugned marks 'Zed Black' and 'Shriphal' and issued a cease and desist notice. The respondent replied admitting the appellant's rights and undertaking not to use the mark 'Shriphal'. However, the respondent later opposed the appellant's trade mark registration applications. The appellant filed Trade Mark Civil Suit No.5/2019 seeking permanent injunction and other reliefs. Along with the suit, the appellant filed an application under Order 39 Rules 1 and 2 CPC for temporary injunction. The learned Ad-hoc District Judge-2, Nagpur, by order dated 18/06/2021, rejected the application. Aggrieved, the appellant preferred the present appeal. The High Court considered the submissions and found that the appellant had made out a prima facie case based on prior user and registration. The balance of convenience was in favour of the appellant, and irreparable loss would be caused if injunction was not granted. The court also noted the respondent's admission in the reply to the cease and desist notice. Accordingly, the High Court allowed the appeal, set aside the trial court's order, and granted temporary injunction in favour of the appellant restraining the respondent from using the mark 'Shriphal' or any deceptively similar mark.
Headnote
A) Civil Procedure - Temporary Injunction - Order 39 Rules 1 and 2 CPC - Prima Facie Case - The court considered whether the appellant-plaintiff established a prima facie case for injunction based on prior user and registration of the mark 'Shriphal' - Held that the appellant's long and continuous use since 1992 and registration of the mark created a strong prima facie case in its favour (Paras 1-10). B) Trade Marks - Infringement - Prior User - Registration - The appellant claimed infringement of its registered trade mark 'Shriphal' by the respondent who was a former purchaser - The respondent admitted the appellant's rights in a cease and desist reply but later opposed registration - Held that the respondent's conduct and admission weighed against him (Paras 3-5). C) Civil Procedure - Temporary Injunction - Balance of Convenience and Irreparable Loss - The court found that the balance of convenience was in favour of the appellant and that refusal of injunction would cause irreparable loss to the appellant's business and goodwill - Held that the appellant was entitled to injunction (Paras 11-15).
Issue of Consideration
Whether the appellant-plaintiff made out a prima facie case for grant of temporary injunction under Order 39 Rules 1 and 2 CPC restraining the respondent-defendant from using the trade mark 'Shriphal'.
Final Decision
Appeal allowed. The order dated 18/06/2021 passed by the learned Ad-hoc District Judge-2, Nagpur, in application below Exh.5 in Trade Mark Civil Suit No.5/2019 is set aside. The application for temporary injunction is allowed, restraining the respondent from using the trade mark 'Shriphal' or any deceptively similar mark.
Law Points
- Temporary injunction
- prima facie case
- balance of convenience
- irreparable loss
- trade mark infringement
- prior user
- registration
- Order 39 Rule 1 and 2 CPC
- Trade Marks Act 1999
