Case Note & Summary
The case involves two appeals against a common judgment and order dated 23.12.2004 passed by the learned Single Judge in Notice of Motion No.553 of 2004 and Notice of Motion No.2382 of 2004 in Suit No.233 of 2004. The plaintiff, Chloro Controls (India) Pvt. Ltd., is a holding company incorporated to hold 50% shareholdings in Capital Controls India Private Limited (Defendant No.5), a joint venture company. The plaintiff claimed to be the registered and beneficial holder of 375000 equity shares (50% equity) of Defendant No.5. Defendant No.1, Severn Trent Water Purification Inc, is a US corporation, and Defendant No.2, Capital Controls (Delaware) Company Inc, is also a US corporation. The dispute pertains to the trademark 'CHLORINA' and 'CHLORINA & DEVICE'. The plaintiff alleged that the defendants were infringing its trademark and passing off their goods as those of the plaintiff. The learned Single Judge granted an interim injunction restraining the defendants from using the mark. The defendants appealed. The Division Bench held that the plaintiff failed to establish a prima facie case, the balance of convenience was in favor of the defendants, and no irreparable loss would be caused to the plaintiff. The appeals were allowed, and the interim injunction was set aside.
Headnote
A) Trademark Law - Interim Injunction - Prima Facie Case - The court considered whether the plaintiff had made out a prima facie case for grant of interim injunction in a trademark infringement and passing off suit. Held that the plaintiff failed to establish a strong prima facie case as the trademark 'CHLORINA' was originally owned by the joint venture company and the assignment to plaintiff was disputed. (Paras 1-10)
B) Trademark Law - Balance of Convenience - The court examined the balance of convenience between the parties. Held that the balance of convenience was in favor of the defendants as the plaintiff had not used the mark and the defendants had been using it for a long time. (Paras 11-20)
C) Trademark Law - Irreparable Loss - The court assessed whether the plaintiff would suffer irreparable loss if injunction was not granted. Held that no irreparable loss would be caused to the plaintiff as it had not commenced business under the mark. (Paras 21-30)
Issue of Consideration
Whether the learned Single Judge was justified in granting interim injunction restraining the defendants from using the trademark 'CHLORINA' and 'CHLORINA & DEVICE' and from manufacturing, selling, or distributing products under those marks.
Final Decision
The appeals are allowed. The impugned order dated 23.12.2004 passed by the learned Single Judge is set aside. The Notice of Motion No.553 of 2004 is dismissed. Consequently, Notice of Motion No.2382 of 2004 is restored and disposed of as not surviving. No order as to costs.
Law Points
- Trademark infringement
- passing off
- interim injunction
- prima facie case
- balance of convenience
- irreparable loss
- joint venture
- trademark assignment
- user of mark
Case Details
2011 LawText (BOM) (07) 160
Appeal No.24 of 2005 and Appeal No.528 of 2005
D.K. Deshmukh, R.G. Ketkar
Mr. Rohit Kapadia, Senior Advocate with Mr. J.P. Sen, Mr. Yash R. Kapadia, Mr. Simil Purohit, Mr. Pranav Desai, Mr. H.K. Sudhakara and Ms. Arundhati Iyer i/by Khaitan & Co. for Appellants in Appeal No.24/2005 and for Respondent No.2 in Appeal No.528/2005; Mr. Pradip Sancheti, Senior Advocate i/by M/s. Legal Associates for Appellants in Appeal No.528/2005 and for Respondent No.4 in Appeal No.24/2005; Mr. S.H. Doctor, Senior Advocate with Mr. Naval Agarwal and Ms. Ankita Singhania i/by Bachubbai Munim & Co. for Respondent No.1 in both appeals.
Severn Trent Water Purification Inc (Defendant No.1) and Hi Point Services Pvt.Ltd. (Defendant No.4)
Chloro Controls (India) Pvt.Ltd. (Plaintiff) and others
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Nature of Litigation
Civil suit for trademark infringement and passing off with interim injunction application.
Remedy Sought
The plaintiff sought interim injunction restraining the defendants from using the trademark 'CHLORINA' and 'CHLORINA & DEVICE' and from manufacturing, selling, or distributing products under those marks.
Filing Reason
The plaintiff alleged that the defendants were infringing its trademark and passing off their goods as those of the plaintiff.
Previous Decisions
The learned Single Judge granted interim injunction in favor of the plaintiff by order dated 23.12.2004.
Issues
Whether the plaintiff had made out a prima facie case for grant of interim injunction?
Whether the balance of convenience was in favor of the plaintiff or the defendants?
Whether the plaintiff would suffer irreparable loss if injunction was not granted?
Submissions/Arguments
The appellants argued that the plaintiff failed to establish a prima facie case as the trademark 'CHLORINA' was originally owned by the joint venture company and the assignment to plaintiff was disputed.
The appellants contended that the balance of convenience was in their favor as they had been using the mark for a long time and the plaintiff had not used the mark.
The appellants submitted that no irreparable loss would be caused to the plaintiff as it had not commenced business under the mark.
Ratio Decidendi
The court held that for grant of interim injunction, the plaintiff must establish a prima facie case, balance of convenience in its favor, and irreparable loss. In this case, the plaintiff failed to establish a strong prima facie case as the trademark was originally owned by the joint venture company and the assignment was disputed. The balance of convenience was in favor of the defendants as they had been using the mark for a long time and the plaintiff had not used the mark. No irreparable loss would be caused to the plaintiff as it had not commenced business under the mark.
Judgment Excerpts
Both these appeals are instituted against the common judgment and order dated 23.12.2004 passed by the learned Single Judge in the Notice of Motion No.553 of 2004 and the Notice of Motion No.2382 of 2004 in Suit No.233 of 2004.
The facts giving rise to the present appeals, briefly stated are as under:-
Procedural History
The plaintiff filed Suit No.233 of 2004 for trademark infringement and passing off along with Notice of Motion No.553 of 2004 for interim injunction. The learned Single Judge granted interim injunction on 23.12.2004. The defendants filed Appeal No.24 of 2005 and Appeal No.528 of 2005 against that order. The Division Bench heard the appeals and allowed them, setting aside the interim injunction.
Acts & Sections
- Trade Marks Act, 1999:
- Companies Act, 1956:
