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CASE NO.: Appeal (civil)  1407 of 2005

PETITIONER: Dhariwal Industries Ltd. & Anr.                          

RESPONDENT: M/s M.S.S. Food Products                                           

DATE OF JUDGMENT: 25/02/2005

BENCH: B.P. SINGH & P.K. BALASUBRAMANYAN

JUDGMENT: J U D G M E N T  ( arising out of SPECIAL LEAVE PETITION (CIVIL) NO. 14862 OF 2004)

P.K. BALASUBRAMANYAN, J.

               Leave granted. 1.              The defendants in Civil Suit No. 8A of 2004 on the file of the  District court of Mandaleshwar are the appellants.   That suit was filed by the  respondent herein for a declaration that the defendants do not have any right  to sell Pan Masala, Gutkha, Supari and Supari Mix or any other goods under  the trade mark ’Manikchand’ which is deceptively similar to the mark  ’Malikchand’ used by the plaintiff, for a perpetual  injunction restraining the  defendants from dealing in or selling the above articles under the name/brand  ’Manikchand’ and to confiscate and destroy the above goods in the custody  of the defendants and for other consequential reliefs.  The plaintiff also filed  I.A. No. 2 of 2004 under Order XXXIX Rules 1 and 2 of the Code of Civil  Procedure, 1908 (for short the "C.P.C.")  seeking an interim injunction  pending suit, restraining the defendants from selling the products referred to  above under the name ’Manikchand’.   The trial court passed an ad-interim  order of injunction as sought for by the plaintiff.  The defendants appeared  and filed their objections.  They also filed an application, I.A. No.5/2004,  under Order XXXIX Rule 4 of the C.P.C. seeking to get vacated the ad- interim injunction granted by the trial court.   Various documents were  produced by the parties and the genuineness and validity of the documents  produced, were mutually challenged.  The trial court, by order dated  06.04.2004, held that the plaintiff has made out a prima facie case for an  interim injunction and that the balance of convenience was in favour of the  grant of an interim injunction as sought for by the plaintiff.  Thus, the trial  court confirmed the ad-interim order of injunction granted by it earlier and  allowed I.A. No.2/2004 and dismissed I.A. No.5 of 2004.   The defendants  filed an appeal before the High Court of Madhya Pradesh under Order XLIII  Rule 1(r) of the C.P.C.  The High Court, on a consideration of the arguments  raised before it, came to the conclusion that the order passed by the trial court  could not be said to be incorrect, arbitrary or perverse, justifying interference  with the discretion exercised by the trial court to grant the interim injunction.   The High Court, thus, dismissed the appeal; but it directed the trial court to  conclude the trial of the suit expeditiously, and finally dispose it of,  preferably within a period of six months from the date of receipt of the copy  of the order which was passed on 11.05.2004.  The defendants have  challenged this order before this Court in this appeal.   

2.              It is seen from the pleadings, the other materials produced, the  orders passed and the arguments raised before us, that this is a passing off  action.  The case of the plaintiff is that the plaintiff and its predecessors were  using the mark  ’Malikchand’ in its packets containing Pan Masala, Supari,  Gutkha and Supari Mix kept for sale.  Its plea is that the defendants are seen

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to be marketing the same products under the name ’Manikchand’.  The  products are marketed in pouches that are deceptively similar to the ones  used by the plaintiff and this misleads the customers seeking to purchase the  products of the plaintiff.  The plaintiff along with its predecessors, being the  prior users of the mark ’Malikchand’, the plaintiff is entitled to prevent the  defendant from marketing their products under the name ’Manikchand’.   Since the action of the defendant would lead to the plaintiff suffering  irreparable injury and incurring monetary loss and loss of reputation as the  products marketed by the defendants were of sub-standard quality as could be  seen from various prosecutions launched against the defendants under the  Prevention of Food Adulteration Act, the balance of convenience was in  favour of the grant of an injunction in its favour.   The defendants challenged  the claim of the plaintiff of prior user.  The defendants also questioned the  three unregistered assignments relied on by the plaintiff, the basis on which  the right to use the mark ’Malikchand’ is claimed by the plaintiff and also the  claim of the plaintiff that the mark ’Malikchand ’ was being used from the  year 1960 or so as claimed by it.  It is also contended by the defendants that  the defendants market quality products, under the label ’Manikchand’ and  their products had gained great reputation in the market.  The defendants  were paying huge amounts by way of tax and excise duty.   The defendants  had been marketing the goods for a considerable time and the plaintiff as a  rival trader would have been aware of that fact and the approach of the  plaintiff to the court was highly belated and an order of injunction pending  suit was neither warranted nor justified.  The application for interim  injunction was liable to be dismissed.  The defendants were prepared to  maintain correct accounts of their sales pending final disposal of the suit.   The suit itself was a counter blast to the suit filed by the defendants on the  original side of the High Court of Bombay, inter alia, seeking a permanent  injunction against the present plaintiff from using the trade mark  ’Malikchand’ which was deceptively similar to the mark ’Manikchand’ used  by the defendants.   The suit was filed without bona fides and the forum for  action was chosen without bona fides.   The suit itself lacked merit.

3.              It is seen that at the relevant time, neither party had a registered  trade mark for the respective marks claimed by them, though it appears that  both of them have subsequently applied in that behalf and their applications  are pending.

4.              The trial court held that the plaintiff has prima facie established  prior user of the mark ’Malikchand’ by itself and its predecessors.  It  observed that the question whether the assignments relied on from its  predecessors by the plaintiff were genuine and are proved to be  genuine was  a question that could be decided at the trial and at this prima facie stage there  was no reason to discard those documents.  The documents relied on by the  plaintiff, prima facie showed prior user.   After referring to some of the  decisions brought to its notice, it held that the plaintiff has established a  prima facie case for interim injunction.  It was further found by that court that  the balance of convenience was in favour of the grant of interim injunction in  favour of the  plaintiff restraining the defendants from using the mark  ’Manikchand’ till the final disposal of the suit.   On appeal by the defendants,  the appellate court reconsidered the relevant aspects in the light of the  arguments addressed before it and came to the conclusion that the trial court  was justified in granting an order of injunction and the grant of interim  injunction by the trial court could not be said to be in exercise of discretion  which was either arbitrary or perverse.   The appellate court observed that the  trial court at this stage was not wrong in coming prima facie to the conclusion  that the prior user of the mark was by the predecessors of the plaintiff and the  plaintiff.  Regarding the argument based on delay and latches and  acquiescence, the appellate court took the view that the present action was  triggered off by the filing of a suit by the defendants in the High Court of  Bombay seeking to restrain the user of the mark "Malikchand" by the  plaintiff and under the circumstances the claim for interim injunction could  not be rejected on the ground of delay and latches when both sides seemed to  agree that the marks were similar.   The appellate court also took note of the  number of prosecutions initiated against the defendants under the Prevention

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of Food Adulteration Act in respect of Pan Malsala and Gutkha  sold under  the name ’Manikchand’ and indicated that the plaintiff would be seriously  prejudiced and its reputation affected, if the defendants are allowed to carry  on their trade in these products under the name ’Manikchand’.  Thus, finding  no reason to interfere with the grant of interim injunction by the trial court,  the lower appellate court dismissed the appeal filed by the defendants, but  directed the trial court to try and dispose of the suit within a period of six  months from the date of receipt of a copy of its order.

5.              Before proceeding to consider the appeal, we may observe that in  this appeal, various documents, not produced before the trial court or before  the lower appellate court, have been produced and elaborate arguments  addressed based on those documents.   The present proceeding is an appeal  by special leave against an order passed by the High Court in an appeal under  Order XLIII Rule 1(r) of the C.P.C. and normally the appeal here must be  considered based on the material that was produced before the trial court or  before the appellate court in terms of the permission granted by that court  under Order XLI Rule 27 of the C.P.C.    At this interlocutory stage it would  not be proper for this Court to enter into an adjudication based on the various  documents produced before this Court which are not of undoubted  authenticity and the genuineness, acceptability and value of which are  mutually questioned.  Generally, the arguments based on genuineness,  admissibility and so on, are ones to be raised at the trial, though no doubt  they could be raised at the interlocutory stage in respect of a prima facie case  or in opposition thereto.  In other words, we think that it will be proper to  confine ourselves to the materials available before the trial court and those  made available before the lower appellate court with the permission of that  court while considering this interlocutory appeal.

6.              Section 27 of The Trade Marks Act, 1999 provides that nothing  in that Act shall be deemed to affect the right of action against any person for  passing off goods or services as the goods of another person or as services by  another person or the remedies in respect thereof.    Therefore, the fact that  neither party has a registered trade mark as on the date of the suit cannot  stand in the way of entertaining the claim of the plaintiff and granting the  plaintiff an injunction in case the plaintiff is in a position to show prima facie  that it was the prior user of its mark, that it had a prima facie case and that the  balance of convenience was in favour of the grant of an interim injunction.    It is provided in Section 39 of the Act that an unregistered trade mark may be  assigned or transmitted with or without goodwill of the business concerned.    It is, therefore, possible for a plaintiff or a defendant to show that an  unregistered trade mark that was being used by another person earlier had  been assigned to it and that it can tack on the prior user of its predecessor.

7.              At the threshold, learned senior counsel appearing for the  respondent - the plaintiff, submitted that the trial court and the appellate court  had considered the relevant aspects from the proper perspective and have  exercised their discretion to grant an order or interim injunction and normally  this Court exercising jurisdiction under Article 136 of the Constitution of  India should not interfere with it  and interference generally should be  confined to cases where an order has been passed which can be termed either  perverse or grossly unjust.   Counsel submitted that in the case on hand, it  could not be said that the order of injunction passed was perverse or was so  unreasonable, that no court trained in law could have passed it.   He  submitted that a correct approach had been made by the courts below and in  the situation obtaining, the direction given by the appellate court to the trial  court to try and dispose of the suit itself within a period of six months, would  suffice to protect the interests of the defendants-appellants and interference  by this Court would not be justified.   Learned counsel for the appellants, on  the other hand, contended that the order of interim injunction was granted  without proper application of mind to the relevant aspects arising for  consideration and the order could be termed perverse so as to enable this  Court to correct the same in exercise of its jurisdiction under Article 136 of  the Constitution of India.   Counsel further submitted that the irreparable  injury that would be caused to the defendants has been ignored by the courts

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below clearly justifying interference by this Court.   We think that there  cannot be any absolute rule regarding interference or non-interference by this  Court with an order on an application for interim injunction.   But certainly  these arguments addressed on behalf of the rival contenders have to be kept  in mind while this Court considers whether this is a fit case for interference in  an appeal of this nature.   Suffice it to indicate that while considering all the  relevant aspects this would also be an aspect to be borne in mind by this  Court.  At the same time, this Court must guard against finally pronouncing  on any aspect, lest it prejudices a fair trial of the issues involved in the suit.   

8.              The principles governing the grant of interim injunction are well  settled and do not require to be repeated.   The interim injunction has been  granted in favour of the plaintiff in this case mainly on the finding that there  was prior user of the mark "Malikchand", if not by the plaintiff, by his  assignors and the use of the mark "Manikchand" by the defendants in respect  of Pan Masala and Gutakha  and Supari  commenced only at a later point of  time.   This prima facie finding of prior user was arrived at by the trial court  relying on the deeds of assignments produced by the plaintiff and some  documents and affidavits produced in support of its claim.   Some  inconsistencies in the claim of the defendants were also referred to.   The  High Court, in appeal, appreciated that the main contention on behalf of the  defendants regarding prior user claimed by the plaintiff was based on a  challenge to the assignments relied on by the plaintiff and the documents  filed in support.   The High Court noticed that the plea was that the entire  series of documents were forged or manufactured for the purpose of litigation  and hence were not reliable.   The High Court felt that a wholesale  condemnation of the documents produced by the plaintiff as forged or got up,  could not be made at this interlocutory stage and this question seriously  raised on behalf of the defendants has to be decided only at the trial.   In other  words, the High Court took the view that at this stage there was no reason for  it to discard the various documents relied on by the plaintiff to establish prior  user, first by its predecessors and then by itself, on the ground that they were  not genuine.

9.              Before us also, learned counsel for the defendants made a  strenuous attempt to argue that the documents were forged or  manufactured and they could not be relied on.   In fact, considerable  time was taken up by the appellants in challenging the genuineness of  the documents and the respondents in supporting the genuineness of the  documents.   We are inclined to agree with the High Court that it is not  possible for this Court to decide at this stage, even prima facie, whether  these documents have been got up or manufactured for the purpose of  this litigation.   Prima facie, it appears to us that at least one of the prior  documents relied on by the plaintiff was allegedly seized during an  income tax raid sometime in the year 2001 and prima facie a document  is produced in support of acknowledgement of such seizure.   The other  assignments are challenged essentially on the ground of discrepancy in  the alleged sale of stamp paper by a licensed stamp vendor, the date of  execution and the question whether the alleged stamp vendor had a valid  licence on the relevant date, to sell those stamp papers.   These aspects,  we also feel, have to be decided at the trial and it will be pre-mature to  take a view on the contentions thus raised by the defendants.   The said  approach adopted by the trial court and the first appellate court, in the  circumstances, cannot be said to be perverse or so unreasonable  as to  warrant correction by this Court, considering that this Court is sitting in  appeal by special leave, at an interlocutory stage.  Suffice it to say, prima  facie on the materials produced, it could not be said that the trial court  and the High Court committed such an error in prima facie accepting the  case of prior user of the mark "Malikchand" set up in the plaint so as to  warrant interference by this Court.

10.             As has been noticed already, the prima facie establishment  of prior user goes a long way in enabling the plaintiff to claim an  injunction in a passing-off action.   In that context, learned counsel for  the defendants raised certain aspects for consideration.   He submitted

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that the plaintiff has not come to court with clean hands and has, in fact,  come to court with a false case of date of knowledge of the user of the  mark "Manikchand" by the defendants and this fact has been found by  the High Court itself.   He further submitted that once the story of the  plaintiff that he came to know of the user of the mark by the defendants  only the previous day to the filing of the suit was discarded, obviously, it  was a case where the plaintiff had not come to court promptly to object  to the user of the mark by the defendants and this delay and latches,  disentitle the plaintiff to an injunction.    Counsel submitted that the  High Court has not properly appreciated the effect of its own finding on  the question of delay and the finding on the arising of the cause of action  as set up by the plaintiff, on the bona fides of the claim for injunction  itself.   Counsel submitted that the defendants had been using the mark  "Manikchand" for quite some time; that it has attained popularity; that  the mark was being widely used and advertised and there was no reason  to interfere, with an interim injunction, preventing such use by the  defendants.   Counsel in this context also submitted that the present suit  was really a counter-blast to the action initiated by the defendants in the  High Court of Bombay seeking to restrain the plaintiff from using the  mark "Malikchand", being deceptively similar to the mark  "Manikchand" being used by the defendants.   In answer, learned  counsel for the plaintiff submitted that the filing of the suit by the  present defendant in the High Court of Bombay, though not against the  real owner of the mark, created apprehension in the mind of the plaintiff  about the user of its mark "Malikchand" and that resulted in the filing of  the suit by the plaintiff in the trial court.   It was submitted that there was  no proper plea of delay and latches either in the objection to the  application for injunction or in the petition filed under Order XXXIX  Rule 4 of the C.P.C. so as to warrant denial of injunction on the ground  of delay and latches by this Court.   It was submitted that even in the  written submissions filed, a case of delay and latches had not been set  out and in any event, there was no adequate plea of delay and latches  based on which the plaintiff could be denied relief.   It was submitted  that the defendants may be having a large volume of trade, but that does  not mean that the big fish should be allowed to swallow the small fish in  circumstances like the present.   While considering the balance of  convenience, the question of delay and latches might be a relevant aspect  to be considered, but once that aspect has been adverted to and an  interim injunction granted by the trial court and confirmed by the High  Court in appeal, this Court may not be justified in refusing the grant of  interim injunction on the ground of delay and latches.   In any event, this  was a case where both sides were trying to assert their respective rights  and the litigations were the result of such attempts.   The High Court had  adverted to this aspect while confirming the order of injunction.   We see  no reason to interfere on this ground at this prima facie stage.

11.             Prima facie, it appears to us that the mark "Malikchand" was  being used, though not much publicized by the original user, leading to  the alleged acquisition of the right to use the mark by the plaintiff.  The  defendants appear to have started the use of the mark "Manikchand" in a  large scale at a subsequent point of time.  As noticed by the High Court,  both sides had used their respective marks for some time.  The litigation  arose when the defendants herein approached the High Court of Bombay  seeking to prevent the use of the mark "Malikchand" by suing what they  thought was the proprietor of the business.   It was then that the present  plaintiff came forward with the suit seeking an injunction against the  user of the mark "Manikchand" by the defendants.  To some extent it  may be possible to conceive that the present suit by the plaintiff was a  counter-blast to the suit filed by the defendants in the High Court of  Bombay;   but at the same time, the point made by the High Court that  the plaintiff probably was apprehensive of its mark being annihilated,  had approached the trial court for relief based on its prior user of the  mark.  It was in this context that the High Court took the view that the  application for interim injunction could not be rejected on the ground of  delay and latches.   We also feel, that we cannot completely brush aside

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the argument of counsel for the plaintiff, that the case of delay and  latches has not been properly projected on behalf of the defendants in  their pleadings either in the trial court or in the appellate court, though  no doubt that aspect has been projected seriously before us by learned  counsel for the defendants and to some extent is covered by the  pleadings in the written statement.

12.             It is one thing to say that this Court, if it were exercising its  original jurisdiction, might have refused an interim injunction on the  ground that the plaintiff was not prompt in approaching the court for  relief or that having allowed the defendants to use the mark for some  time, no occasion had arisen for preventing the user by the defendants by  way of  an interlocutory injunction.  But this Court is not exercising  its  original jurisdiction and is, in fact, exercising only the jurisdiction under  Article 136 of the Constitution of India in a case where both the trial  court and the appellate court have granted the injunction, considering the  circumstances available in the case.  In such a situation, the question is  whether this Court ought to interfere with the grant of interim injunction  on the ground of delay and latches, as canvassed for by counsel for the  defendants.   It appears to us that it may not be proper for this Court, in  an appeal of this nature and on the facts of this case to interfere with the  discretion  exercised by the trial court and the appellate court in that  behalf  on this ground.  The argument in that behalf raised on behalf of  the defendants is left open for decision in the suit itself.   Learned  counsel for the defendants then contended that this was not a case where  the balance of convenience was in favour of the grant of an interim  injunction and that this was a case where the defendants could be called  upon to maintain separate accounts in respect of their transactions of sale  regarding the products in question so as to protect the plaintiff, if  ultimately the plaintiff succeeds.   Counsel contended that the defendants  had offered to maintain proper accounts in the trial court and in the High  Court and those courts should have accepted the said submission and  refused the injunction.   Learned counsel for the plaintiff, on the other  hand, submitted that the interim injunction granted has been in force  from 16.03.2004 and the defendants had, pursuant to the injunction,  changed the format of their wrapper and were continuing to sell their  products under the brand "R.M.D." and there was no reason to interfere  with the orders, by directing the defendants at this stage to maintain  separate accounts of their sales of the products in question and on that  basis dissolving the injunction.   Counsel also pointed out that the High  Court had directed that the suit be tried and disposed of within a period  of six months from the date of receipt of a copy of the order of the High  Court and interests of justice would be met by the said direction being  complied with by the trial court.   In fact, counsel pointed out that the  suit should have been tried and disposed of by the trial court by this time  and the said court had made some progress, and in such a situation, it  was not just and proper to accede to the submission of the defendants  that they be permitted to keep separate accounts of the sales of their  products under the name of "Manikchand" and on that basis, vacate the  interim order of injunction.   Now that the trial court had granted the  interim injunction which had been affirmed by the High Court and the  same had been in force for at least seven months or more, we do not  think that it will be appropriate to modify the order by permitting the  defendants to keep separate accounts of their sale of these products  especially since the products are being marketed under a different name,  subsequent to the order of injunction passed by the trial court.

13.             In the broader context of this case, we cannot also ignore  what has been noticed by the High Court in its order.   The High Court  has noticed that a number of  cases under the Prevention of Food  Adulteration Act have been registered against the defendants on the  basis of alleged adulteration of the products marketed by the defendants.    Even otherwise it is stated, that Gutakha and Pan Masala that are  marketed are harmful to health.   If they are harmful as claimed, what  would be the consequence, when they are adulterated, is an aspect that

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requires anxious consideration by the authorities concerned.  The State  cannot ignore the mandate of Article 47 of the Constitution.  Any way,  that aspect is referred to us only for the purpose of reinforcing the  conclusion that ultimately, in the exercise of discretion by this Court, it  may not be necessary to interfere with the order of interim injunction   granted by the courts below.

14.             Thus, on the whole, we are satisfied that the courts below  cannot be said to have erred in thinking that the balance of convenience  was in favour of the grant of interim injunction in favour of the plaintiff.    In any event, we are satisfied that a case for interference under Article  136 of the Constitution of India is not made out in this case.   We,  therefore, decline to interfere with the order of the High Court and  dismiss this appeal.   We direct the trial court to comply with the  direction of the High Court and complete the trial and disposal of the  suit, in any event, within a period of six months from this date.