Case Note & Summary
The plaintiffs, Siddhant Ice Creams Pvt. Ltd. and two others, filed a suit for trademark infringement, passing off, and copyright infringement against the defendants, M/s. Thanco Enterprises and two others, in respect of the mark 'NATURAL' used for ice cream and related products. The plaintiffs claimed to be the registered proprietors of the trademark 'NATURAL' since 1996 and had extensively used and promoted the mark. On 15th April 2011, a learned single Judge granted an interim injunction restraining the defendants from infringing the plaintiffs' registered mark, copyright, and from passing off their goods as those of the plaintiffs, and also restrained the defendants from transferring the registration of the impugned domain names. The defendants initially filed an appeal, but the Division Bench left it open to them to move the learned single Judge with an appropriate application. Instead of filing a review petition, the defendants filed a Notice of Motion under Order XXXIX Rule 4 CPC seeking to set aside, discharge, or vary the injunction order. The court held that the Notice of Motion was not maintainable under Order XXXIX Rule 4 as it was in substance a review petition, and the defendants had not placed any new facts or documents that were not available at the time of the original hearing. The court further held that the plaintiffs had made out a prima facie case for trademark infringement and passing off, as the word 'NATURAL' was distinctive of the plaintiffs' goods and the defendants' mark was identical. The balance of convenience was in favor of the plaintiffs, and irreparable loss would be caused if the injunction was not continued. The court dismissed the Notice of Motion with costs of Rs. 25,000.
Headnote
A) Civil Procedure - Order XXXIX Rule 4 CPC - Maintainability of Notice of Motion to set aside injunction - The defendants filed a Notice of Motion under Order XXXIX Rule 4 CPC to set aside an interim injunction order, but the court held that the motion was in substance a review petition and not maintainable under that provision, as the defendants sought to re-argue the case on the same facts and documents that were available earlier. The court deprecated the stratagem of avoiding the same judge who passed the order. (Paras 4-6) B) Trademark Law - Descriptive Mark - Secondary Meaning - The word 'NATURAL' is prima facie descriptive of ice cream products, but the plaintiffs claimed acquired distinctiveness through extensive use and promotion. The court noted that the plaintiffs had a registered trademark and had used the mark since 1996, and the defendants' mark 'NATURAL' was identical, leading to a prima facie case of infringement. (Paras 7-10) C) Passing Off - Deception and Confusion - The plaintiffs alleged that the defendants' use of the mark 'NATURAL' for identical goods would cause confusion and deception among consumers. The court found a prima facie case of passing off as the marks were identical and the goods were of the same description. (Paras 11-12) D) Copyright Infringement - Artistic Work - The plaintiffs claimed copyright in the label containing the word 'NATURAL'. The court held that the defendants' label was deceptively similar and restrained infringement of the plaintiffs' copyright. (Para 13) E) Domain Name - Transfer Restraint - The court restrained the defendants from transferring the registration of the impugned domain names to prevent frustration of the injunction order. (Para 14)
Issue of Consideration
Whether the defendants' Notice of Motion under Order XXXIX Rule 4 CPC is maintainable to set aside an interim injunction order, and whether the plaintiffs have made out a prima facie case for trademark infringement and passing off.
Final Decision
The Notice of Motion is dismissed with costs of Rs. 25,000. The interim injunction order dated 15th April 2011 is confirmed.
Law Points
- Order XXXIX Rule 4 CPC cannot be used as a substitute for review
- Trademark infringement
- Passing off
- Copyright infringement
- Domain name transfer
- Descriptive mark
- Secondary meaning
- Prima facie case
- Balance of convenience
- Irreparable loss
