Rajasthan High Court: In a case wherein, an appeal was filed under Section 104 read with Order 43 Rule 1(r) of Civil Procedure Code, 1908 (‘CPC’) to challenge the order dated 20-3-2021, whereby the application for temporary injunction filed by the plaintiff and counter-application for temporary injunction filed by the respondent was dismissed, Sudesh Bansal, J., affirmed the Trial Court’s decision that no prima facie case was proved in the appellant’s favour to restrain the respondent from using its registered trade mark and accordingly, dismissed the present appeal.
Background
The appellant was in use of the trade mark ‘ORNATE JEWELS’ in respect of Gold, Diamond, Precious and Semi-Precious Jewellery. The appellant got this trade mark with the logo registered on 11-09-2020 and claimed the use of this trade mark since 01-02-2012. Further, the respondent was also using the same trade mark ‘ORNATE JEWELS’ but with a different logo in the same field and the respondent’s trade mark was registered on 10-05-2016.
Since, both the parties had their trade mark and logo registered, they claimed temporary injunction against each other to not use the trade mark ‘ORNATE JEWELS’ during the course of the suit, claiming to be an inventor and prior user of the trade mark. The fact that both trade marks were registered in different class and had different logo was not in dispute in the present case.
The Trial Court vide impugned order dated 20-03-2021 dismissed the stay application of both the parties and opined that at the stage of temporary injunction, it was not possible to decide as to who was the prior user of the impugned trade mark as there was no sufficient material on record. The Trial Court referred to Section 28(3) of the Trade Mark Act, 1999 and observed that since both the parties had registered trade mark, it was not permissible to grant injunction against either of the party, but both might claim protection against the third party.
Further, the Trial Court observed that during the course of the appellant’s trade mark registration, the Registrar of Trade Mark raised an objection that similar name of trade mark was already registered and thus, sought explanation from the appellant. The appellant replied that the respondent’s trade mark was wholly different and not similar to the appellant’s trade mark. The Trial Court observed that the appellant’s reply at the time of the registration estopped him to take a different stand, and now he could not be permitted to state that the respondent’s trade mark was similar as it was contrary to his own stand. Thus, the appellant filed the present appeal.
Analysis, Law, and Decision
The Court opined that the Trial Court had noticed that the appellant did not approach the Trial Court with clean hands while filing the application for temporary injunction along with the suit for permanent injunction on 02-01-2021 as the appellant had nowhere disclosed about the reply filed before the Registrar of Trade Mark.
The Court opined that this Court did not find any illegality or perversity in the impugned order and further opined that “impugned order passed on the application for temporary injunction is discretionary in nature and reasonably possible view, until and unless the same suffer from any vice of arbitrariness, perversity or grave illegality or irregularity, which leads to miscarriage of justice, such order does not warrant interference by the Appellate Court.”
The Court relied on Wander Ltd. v. Antox India Pvt. Ltd. 1990 Supp SCC 727; Mehtab Khan v. Khushnuma Ibrahim Khan, (2013) 9 SCC 221 and Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545 and affirmed the Trial Court’s decision that no prima facie case in the appellant’s favour was proved to issue temporary injunction restraining the respondent from using its registered trade mark. Further, no balance of convenience and irreparable injury was found in the appellant’s favour.
The Court further clarified that the suit and counter claim filed by the defendant should be considered and decided by the Trial Court, according to the respective evidence adduced by the parties on its own merits and without being influenced by the observations made in the impugned order or in the present order.
[Ornate Jewels v. Wow Overseas Pvt. Ltd., 2023 SCC OnLine Raj 1885, Order dated 18-09-2023]
Advocates who appeared in this case :
For the Appellant: Arnav Goyal and G.D. Bansal, Advocates;
For the Respondent: Pratush Choudhary, Ragindra S. Rajawat, Deepak Chauhan, Advocates
Buy Trade Marks Act, 1999 HERE
