Case Note & Summary
The appellant, M/s. Cothas Coffee Co., a registered partnership firm, filed a suit for permanent injunction against the respondents, M/s. Cotha Associates and its partners, for trademark infringement. The appellant claimed that it had been using the trademark 'Cothas' since 1995 and had obtained registration in 2008. The respondents started using the mark 'Cotha' in 2015, which was deceptively similar. The trial court dismissed the appellant's application for temporary injunction under Order 39 Rules 1 and 2 CPC. Aggrieved, the appellant filed this appeal. The High Court held that the appellant had made out a prima facie case as the marks were structurally and phonetically similar, and the appellant was the prior user and registered proprietor. The balance of convenience was in favor of the appellant, and irreparable loss would be caused if the injunction was not granted. The court set aside the trial court's order and granted temporary injunction restraining the respondents from using the mark 'Cotha' or any deceptively similar mark pending disposal of the suit.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Sections 28, 29 of the Trade Marks Act, 1999 - The court considered whether the mark 'Cotha' is deceptively similar to the registered mark 'Cothas' and whether the appellant made out a prima facie case for temporary injunction. Held that the marks are structurally and phonetically similar, and the appellant's prior registration and use established a prima facie case. (Paras 5-10)
B) Civil Procedure - Temporary Injunction - Prima Facie Case - Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 - The court examined the principles for grant of temporary injunction, including existence of a prima facie case, balance of convenience, and irreparable loss. Held that the appellant satisfied all three conditions, and the trial court erred in dismissing the application. (Paras 11-15)
C) Trademark Law - Prior User - Registration - Sections 28, 31 of the Trade Marks Act, 1999 - The court noted that the appellant's trademark 'Cothas' was registered in 2008 and used since 1995, while the respondents' mark 'Cotha' was applied for later. Held that prior registration and use give a superior right, and the respondents cannot claim concurrent use. (Paras 6-8)
Issue of Consideration
Whether the appellant-plaintiff is entitled to a temporary injunction restraining the respondents from using the trademark 'Cotha' which is deceptively similar to the appellant's registered trademark 'Cothas'
Final Decision
The appeal is allowed. The impugned order dated 07.03.2017 passed by the XVIII Additional City Civil Judge, Bengaluru City is set aside. The respondents are restrained from using the trademark 'Cotha' or any other mark deceptively similar to the appellant's trademark 'Cothas' pending disposal of the suit.
Law Points
- Trademark infringement
- deceptive similarity
- temporary injunction
- prima facie case
- balance of convenience
- irreparable loss
- Order 39 Rules 1 and 2 CPC
Case Details
2017 LawText (KAR) (07) 10
Sri Udaya Holla, Senior Counsel for Sri Thomas Vellapally (for appellant); Sri Aravind Kamath K. (for respondents)
M/s. Cotha Associates, Mr. Cothas K Prakas, Mr. C. P. Chandan
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Nature of Litigation
Appeal against dismissal of temporary injunction application in a trademark infringement suit
Remedy Sought
Appellant sought temporary injunction restraining respondents from using the mark 'Cotha' or any deceptively similar mark
Filing Reason
Respondents started using the mark 'Cotha' which is deceptively similar to appellant's registered trademark 'Cothas'
Previous Decisions
Trial court dismissed I.A. Nos. 2, 3, and 5 in O.S. No.5165/2015 on 07.03.2017
Issues
Whether the appellant made out a prima facie case for grant of temporary injunction
Whether the balance of convenience lies in favor of the appellant
Whether the appellant would suffer irreparable loss if injunction is not granted
Submissions/Arguments
Appellant argued that it is the prior user and registered proprietor of the mark 'Cothas' since 1995, and the respondents' mark 'Cotha' is deceptively similar
Respondents contended that the marks are not deceptively similar and that they have been using the mark 'Cotha' since 2015
Ratio Decidendi
The court held that for grant of temporary injunction, the plaintiff must establish a prima facie case, balance of convenience in its favor, and irreparable loss. In this case, the appellant's trademark 'Cothas' was registered in 2008 and used since 1995, while the respondents' mark 'Cotha' was applied for later. The marks are structurally and phonetically similar, leading to a likelihood of confusion. Therefore, the appellant made out a prima facie case, and the balance of convenience was in its favor. Irreparable loss would be caused if the injunction was not granted.
Judgment Excerpts
Aggrieved by the order dated 07.03.2017, passed by the XVIII Additional City Civil Judge, Bengaluru City (CCH-10), whereby the learned Judge has dismissed the temporary injunction application, filed under Order 39 Rules 1 and 2 CPC, by the appellant-plaintiff, the appellant has approached this Court.
The appellant, M/s. Cothas Coffee Company is a registered partnership firm. The respondent No.1, M/s. Cotha Associates, is also a partnership firm, and the respondent Nos.2 and 3 are the partners of the said firm.
Procedural History
The appellant filed O.S. No.5165/2015 before the XVIII Additional City Civil Judge, Bengaluru City, seeking permanent injunction against the respondents for trademark infringement. The appellant also filed I.A. Nos. 2, 3, and 5 for temporary injunction under Order 39 Rules 1 and 2 CPC. The trial court dismissed the applications on 07.03.2017. Aggrieved, the appellant filed this appeal under Order 43 Rule 1(r) CPC before the High Court of Karnataka. The High Court reserved judgment on 11.07.2017 and pronounced on 31.07.2017.
Acts & Sections
- Code of Civil Procedure, 1908: Order 39 Rules 1, 2; Order 43 Rule 1(r)
- Trade Marks Act, 1999: Sections 28, 29, 31
