Allahabad High Court: In an appeal under Order 43 Rule 1(r) of the Code of Civil Procedure, 1908 (‘CPC’) against the order passed by the Additional District Judge, wherein the Court has allowed the application seeking temporary injunction, and restrained the appellants, till disposal of the suit, from manufacturing or selling product namely, ‘Musa Ka Gul Super’ or any product with the deceptively similar name and logo by which any common man could be deceived. Kshitij Shailendra, J. while dismissing the appeal said that the injunction application has been dealt with the findings on all the three ingredients, based upon cogent analysis of material available on record. Thus, it said that once the court below was satisfied that the registered trade mark has been prima facie infringed by the appellants, in absence of anything substantial which can persuade the Court to take a different view, there is no good ground to interfere in the order passed. Further, the Court directed the Trial Court to frame issues before 31-12-2023 and to decide the suit before 31-03-2025
Background:
A suit was filed under Sections 29, 134, 135 of the Trade Marks Act, 1999 and Section 62 of Copyrights Act, 1956. The respondent company (M.M.I. Tobacco Pvt. Ltd.) is involved in manufacturing and wholesale business of ‘Musa Ka Gul Super’, a toothpaste, in State of Uttar Pradesh, Bihar, Bengal and other States of India since 1994. The respondent company contended that it has earned a very high goodwill being a registered company manufacturing ‘Musa Ka Gul Super’ which is famous all over India. It is further pleaded that the copyright office has issued a registered number conferring the right to use the label over the box for the product ‘Musa Ka Gul Super’ and similar rights have been conferred in relation to use of wrapper also. Further, it has also registered its trade mark. When the respondents came to know about identical production and sale of ‘Musa Ka Gul Super Marka’, ‘Shahi Taj Marka Musa Ka Gul’ and ‘Moti Marka Musa Ka Gul’ by the appellant and they contacted them and requested not to use the said products, but they showed arrogance and did not stop manufacturing and selling the products, due to which the entire goodwill of the respondents in the market was being adversely affected.
The Trial Court, by an ex-parte ad-interim injunction order dated 08-07-2021, restrained the appellant from manufacturing and selling product ‘Musa Ka Gul’ or any other product of deceptively similar name till the next date fixed in the suit. Thereafter, a few appeals were filed before this Court, and the said appeals were decided by order dated 02-11-2021 directing the Trial Court to decide the objections expeditiously. The order impugned in the present appeal has been passed thereafter. The appellant stated that the entire business was a family business being run by the members of the same family, and it was agreed in between the parties that every member of the family would use the same name and goodwill associated with Musa Ka Gul product and that the appellant had not infringed any trade mark or copyright of the respondent and the product being manufactured and sold by the appellant was totally different.
Issue: Whether any inter se arrangement amongst the family members, in violation of the injunction order dated 03-10-2018 passed by Calcutta High Court, could at all operate to the detriment of the interest of the registered trade mark owner, particularly, when Section 31 of Trade Marks Act, 1999 clearly provides that registration is prima facie evidence of its validity.
Analysis:
The Court took note of the proceedings before the Calcutta High Court, wherein an order restraining the paternal uncle from running a parallel business of manufacturing or dealing with or selling ” Musa Ka Gul” or “Tobaco Gul”, by the name of M. S. Industries or in any manner until the publication of the arbitral award, was passed on an application under Section 9 of the Arbitration and Conciliation Act, 1996. The applicants before the High Court were the mother of the respondent Company’s director and the opposite party was his paternal uncle.
Further, it said that once the Calcutta High Court restrained the paternal uncle from running a parallel business, any arrangement made by the paternal uncle, either in terms of entering into partnership or dissolving partnership or making assignment etc. would be against the order of injunction which is still operative, irrespective of the fact that dissolution of partnership has been approved in the proceedings referred above.
As per the Court, the dissolution of partnership is one aspect and its effect on carrying on business by making different arrangements to defeat rights of a registered trade mark owner, is altogether a different thing. Once no final award has been passed, the injunction order dated 03-10-2018 which was made effective until publication of the arbitral award, is still operative. Therefore, the Court reposed full faith in the injunction order passed by the High Court as per Constitutional mandate of Article 261 of Constitution of India.
The Court further said that the District Court has recorded cogent findings on all the three ingredients by observing that the registered trade mark of the respondents is valid upto 15-01-2024 and that the appellants have failed to establish any registered trade mark or copyright with them. The Court below has further observed that any activity of manufacturing and sale of product which is deceptively similar to ‘Musa Ka Gul Super’ would be contrary to law. Regarding pecuniary and territorial jurisdiction of the district court, it has been observed by the court below that at the time of registration of the suit, the pecuniary jurisdiction was found to have vested in the court and the said issue along with an issue of territorial jurisdiction would be decided after framing the issues in the suit. Thus, the Court found no illegality in the view taken by the district court in this regard and said that there was no factual or legal impediment in entertaining and deciding the injunction application by the court below.
The Court said that the injunction application has been dealt with, the findings on all three ingredients based upon cogent analysis of material available on record. Even if, it is assumed that a very detailed discussion of various documents has not been made, after perusing the entire record of the present appeal, the documents which were sufficient to form an opinion regarding grant or denial of injunction, have been dealt by the court below and, even otherwise, it was not required for the District Court to hold a mini trial at the time of consideration of the injunction application.
The Court said that once the court below was satisfied that the registered trade mark has been prima facie infringed by the appellants, in absence of anything substantial which can persuade the Court to take a different view, there is no good ground to interfere in the order passed by the court below. Further, the Court directed the Trial Court to frame issues before 31-12-2023 and to decide the suit before 31-03-2025.
[Salik Mukhtar v M.M.I. Tobacco Pvt Ltd, 2023 SCC OnLine All 2010, Order dated 13-10-2023]
Advocates who appeared in this case :
Counsel for Appellant: Senior Advocate S.M. Iqbal Hasan
Counsel for Respondent: Advocate Mohammad Waseem, Advocate Arvind Srivastava
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