Case Note & Summary
The appellant/defendant, S.V.T Products, challenged an interim injunction order passed by the XVIII Additional City Civil Judge, Bengaluru, in O.S. No. 710/2023. The respondent/plaintiff, S.S Pandian and Sons, had filed a suit for trademark infringement and passing off, alleging that the defendant's use of the mark 'SVT HOTEL SPECIAL' for asafoetida was deceptively similar to its registered trademark 'HOTEL SPECIAL'. The trial court allowed the plaintiff's applications under Order XXXIX Rules 1 and 2 CPC, restraining the defendant from using the impugned mark. The defendant appealed under Order 43 Rule 1(r) CPC read with Section 5 of the Karnataka High Court Act, 1961. The High Court, after hearing arguments, upheld the interim injunction, finding that the plaintiff had made out a prima facie case of infringement and passing off. The court noted that the dominant feature 'HOTEL SPECIAL' was common to both marks, and the addition of the prefix 'SVT' did not sufficiently distinguish the defendant's mark. The balance of convenience was in favour of the plaintiff, and irreparable loss would be caused if the injunction was not granted. The appeal was dismissed.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Section 29 Trade Marks Act, 1999 - The plaintiff's registered trademark 'HOTEL SPECIAL' for asafoetida and the defendant's mark 'SVT HOTEL SPECIAL' are deceptively similar as the dominant feature 'HOTEL SPECIAL' is common, and the addition of the prefix 'SVT' does not sufficiently distinguish the marks. The court held that the trial court correctly found a prima facie case of infringement and passing off, and the balance of convenience favoured the plaintiff. (Paras 1-10)
B) Civil Procedure - Interim Injunction - Order XXXIX Rules 1 and 2 CPC - The appellate court upheld the interim injunction granted by the trial court, noting that the plaintiff had established a prima facie case, balance of convenience, and irreparable loss. The court held that the defendant's use of a deceptively similar mark was likely to cause confusion and damage the plaintiff's goodwill. (Paras 2-12)
Issue of Consideration
Whether the trial court was justified in granting an interim injunction restraining the defendant from using the mark 'SVT HOTEL SPECIAL' for asafoetida, allegedly deceptively similar to the plaintiff's registered trademark 'HOTEL SPECIAL'.
Final Decision
The High Court dismissed the appeal and upheld the interim injunction order passed by the trial court.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- interim injunction
- prima facie case
- balance of convenience
- irreparable loss
- Order XXXIX Rules 1 and 2 CPC
- Section 29 Trade Marks Act
- 1999
Case Details
2024 LawText (KAR) (04) 53
MFA NO.2680 OF 2023 (IPR)
Justice Anant Ramanath Hegde
Sri Jayakumar S Patil, Senior Counsel a/w Smt Priya, Advocate for appellant; Sri Sivaraman Vaidyanathan, Advocate for respondent
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Nature of Litigation
Appeal against interim injunction order in a suit for trademark infringement and passing off.
Remedy Sought
The appellant/defendant sought to set aside the interim injunction order restraining it from using the mark 'SVT HOTEL SPECIAL'.
Filing Reason
The appellant/defendant challenged the trial court's order granting interim injunction in favour of the respondent/plaintiff.
Previous Decisions
The trial court allowed I.A. Nos. 2 and 3/2023 in O.S. No. 710/2023, granting an interim injunction restraining the defendant from infringing the plaintiff's registered trademark 'HOTEL SPECIAL' and from passing off.
Issues
Whether the trial court was justified in granting an interim injunction restraining the defendant from using the mark 'SVT HOTEL SPECIAL' for asafoetida, allegedly deceptively similar to the plaintiff's registered trademark 'HOTEL SPECIAL'.
Submissions/Arguments
The appellant/defendant argued that the mark 'SVT HOTEL SPECIAL' is not deceptively similar to 'HOTEL SPECIAL' as it contains the distinctive prefix 'SVT'.
The respondent/plaintiff contended that the dominant feature 'HOTEL SPECIAL' is common and the addition of 'SVT' does not avoid deception.
Ratio Decidendi
The court held that the plaintiff's registered trademark 'HOTEL SPECIAL' and the defendant's mark 'SVT HOTEL SPECIAL' are deceptively similar as the dominant feature 'HOTEL SPECIAL' is common, and the addition of the prefix 'SVT' does not sufficiently distinguish the marks. The plaintiff established a prima facie case of infringement and passing off, and the balance of convenience favoured the plaintiff.
Judgment Excerpts
Asafoetida, (Hing) though bitter in taste is a food additive.
The plaintiff claims that ‘asafoetida’ sold by him, under the registered trade mark “HOTEL SPECIAL” in addition to adding to the taste and the flavor of the food, has also enhanced the goodwill and the reputation of his business.
However, the asafoetida, sold by the defendant under the trade mark “SVT HOTEL SPECIAL”, which according to the plaintiff deceptively similar to his registered trade mark, is making his business experience bitter.
Procedural History
The respondent/plaintiff filed O.S. No. 710/2023 before the XVIII Additional City Civil Judge, Bengaluru, seeking a permanent injunction against the appellant/defendant for trademark infringement and passing off. The trial court allowed I.A. Nos. 2 and 3/2023 filed under Order XXXIX Rules 1 and 2 CPC, granting an interim injunction. The appellant/defendant filed MFA No. 2680/2023 under Order 43 Rule 1(r) CPC read with Section 5 of the Karnataka High Court Act, 1961, challenging the said order. The High Court heard the appeal and reserved judgment on 04.03.2024, pronouncing it on 05.04.2024.
Acts & Sections
- Code of Civil Procedure, 1908 (CPC): Order XXXIX Rules 1 and 2, Order 43 Rule 1(r), Section 151
- Karnataka High Court Act, 1961: Section 5
- Trade Marks Act, 1999: Section 29
