Greenmount Spices Private Limited vs Wipro Enterprises Private Limited

“27.

No action for infringement of unregistered trade mark.—(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2)

Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

28.

Rights conferred by registration.—(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2)

The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

29.

Infringement of registered trade marks.—(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2)

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-

(a)

its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b)

its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c)

its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3)

In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4)

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-

(a)

is identical with or similar to the registered trade mark; and

(b)

is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c)

the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5)

A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

(6)

For the purposes of this section, a person uses a registered mark, if, in particular, he-

(a)

affixes it to goods or the packaging thereof;

(b)

offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c)

imports or exports goods under the mark; or

(d)

uses the registered trade mark on business papers or in advertising.

(7)

A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8)

A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a)

takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b)

is detrimental to its distinctive character; or

(c)

is against the reputation of the trade mark.

(9)

Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

30.

Limits on effect of registered trade mark.- (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-

(a)

is in accordance with honest practices in industrial or commercial matters, and

(b)

is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark

(2)

A registered trade mark is not infringed where-

(a)

the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

(b)

a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;

(c)

the use by a person of a trade mark—

(i)

in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

(ii)

in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark;

(d)

the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;

(e)

the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.

(3)

Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of-

(a)

the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(b)

the goods having been put on the market under the registered trade mark by the proprietor or with his consent.

(4)

Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.

*** *** *** ***

135. Relief in suits for infringement or for passing off.-

(1)

The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

(2)

The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:-

(a)

for discovery of documents;

(b)

preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;

(c)

restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff…………………………………”

“22.

The Indian formulation, adopting the American Cyanamid language, is found in Wander Ltd. & Anr. (supra), where this Court held that the interlocutory remedy is intended "to preserve in status quo the rights of the parties which may appear on a prima face case." This preservative purpose is echoed in the structure of the statute itself: Order XXXIX R.1(a) speaks of property "in danger of being wasted, damaged or alienated," and S.94 of the Code speaks of preventing "the ends of justice from being defeated." This Court (Zenit Mataplast Pvt. Ltd. v. State of Maharashtra & Ors., (2009) 10 SCC 388) explained that an interim order is intended to protect the subject - matter of the proceedings until disposal of the case, so that the ultimate relief, if the party succeeds, is not rendered meaningless.

VIII. PRIMA FACIE CASE: A SERIOUS QUESTION TO BE TRIED

24.

The threshold for a prima facie case is a modest one. It does not require proof of title; it requires only that the claim not be frivolous or vexatious - a serious question to be tried. A prima facie case does not mean a case proved to the hilt but a case which can be said to be established if the evidence which is led in support of the same were believed. While determining whether a prima facie case had been made out, the relevant consideration is whether on the evidence led it was possible to arrive at the conclusion in question and as to whether that was the only conclusion which could be arrived at on that evidence (Martin Burn Ltd. v. R. N. Banerjee, AIR 1958 SC 79).

25.

The classic modern statement is Dalpat Kumar v. Prahlad Singh, (1992) 1 SCC 719:

"The existence of the prima facie right and infraction of the enjoyment of his property or the right is a condition for the grant of temporary injunction. Prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide which needs investigation and a decision on merits."

26.

This Court elucidated the meaning of expression 'prima facie case' in Gujarat Bottling Co. Ltd. & Ors. (supra) to mean that the Court should be satisfied that there is a serious question to be tried at the hearing, and there is a probability that of plaintiff obtaining the relief at the conclusion of the trial on the basis of the material placed before the Court. The expression 'prima facie case' means a substantial question raised bona fide which needs investigation and decision on merits and the Court, at the initial stage, cannot insist upon a full proof case warranting an eventual decree (Anand Prasad Agarwalla v. Tarkeshwar Prasad & Ors.; (2001) 5 SCC 568, Ramakant Ambalal Choksi v. Harish Ambalal Choksi & Ors.; (2024) 11 SCC 351 and State of Kerala v. Union of India; (2024) 7 SCC 183).

IX. BALANCE OF CONVENIENCE

28.

The Court, while dealing with the prayer for injunction has also to advert itself to the second essential ingredient for grant of injunction viz. 'balance of convenience'. In order to determine whether the balance of convenience lies, the Court must weigh two matters. The first is to protect the plaintiff against injury by violation of his rights for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were to be resolved in his favour. The second matter is that the defendant's need to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated by an undertaking if the uncertainty were to be resolved in defendant's favour at the trial (Halsbury's Laws of England, Fourth Edition, Vol– 24, para 856, American Cynamid Co. and Ethicon Ltd.; (1975) 1 All ER 504 and Fellowes and Son v. Fisher; (1975) 2 All ER 829).

29.

The aforesaid principle has been reiterated with approval by this Court in Wander Ltd. & Anr. (supra) and it has been held that need to protect the plaintiff against the injury by violation of his right for which he cannot be compensated in damages recoverable in the action if the uncertainty were to be resolved in his favour has to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his legal rights for which he would not be adequately compensated. The Court, therefore, must weigh one need against another and determine where the 'balance of convenience' lies.

IRREPARABLE INJURY

31.

The Court, while dealing with the prayer for grant of injunction is required to consider the third essential ingredient viz. irreparable injury. This Court in Gujarat Bottling Co. Ltd. & Ors. (supra) has held that the Court is required to satisfy itself that the party seeking injunction needs protection from the consequences of apprehended injury and the injury is such which cannot be adequately compensated by way of damages. Thus, the Court is required to satisfy itself that in case an injunction as prayed for is not granted, the party seeking the same will suffer irreparable injury.

32.

A party is not entitled to an order of injunction as a matter of right. The grant of interlocutory injunction is a remedy which is discretionary in nature. However, such a discretion has to be exercised on the touchstone of trinity test viz. prima facie case, balance of convenience and irreparable injury (Shiv Kumar Chadha v. Municipal Corporation of Delhi & Ors., (1993) 3 SCC 161). It is equally well settled legal proposition that the temporary injunction being an equitable relief, the discretion to grant such relief will be exercised only when the plaintiffs conduct is free from blame and he approaches the Court with clean hands (Seema Arshad Zaheer & Ors. v. Municipal Corpn. of Greater Mumbai & Ors., (2006) 5 SCC 282).

33.

This is precisely the injury that is irreparable in the sense in which equity uses that word. Loss of controlling shareholding in family companies, or the creation of third - party rights in properties acquired with the proceeds of disputed transfers, that a subsequent decree cannot unwind, is the paradigm of such injury; it is not mere financial loss capable of computation and recovery from a solvent party, of the kind that courts, following Evans Marshall & Co. Ltd. v. Bertola SA ([1973] 1 WLR 349), have held to be adequately met by an award of damages. No decree for money could restore to the appellants the specific shareholding and properties in question, once alienated to third parties during the pendency of the suit.

XI. THE STANDARD OF APPELLATE INTERFERENCE

36.

An order on an application for temporary injunction is a discretionary one, and an appellate court does not ordinarily substitute its own discretion for that of the court of first instance, save where the discretion has been exercised arbitrarily, capriciously or perversely, or in ignorance of the settled principles governing the grant or refusal of such relief. The principle laid down in Wander Ltd. & Anr. (supra) which has been approved by subsequent decisions of this Court (Shyam Sel and Power Limited v. Shyam Steel Industries Limited, (2023) 1 SCC 634 and Ramakant Ambalal Choksi (supra)), has been guiding the appellate courts in the country for decades while exercising the appellate jurisdiction considering the correctness of the discretion and jurisdiction for grant or refusal of interlocutory injunctions. The order of the learned Single Judge, resting as it does on seven specific findings addressing the nature of the original plaintiff's interest under the Will, the doubt surrounding its finality, the plea of undue influence, and the alter - ego character of the defendant entities, cannot be said to be arbitrary, capricious or perverse, nor to have been passed in ignorance of settled principle. It is, on the contrary, an order squarely anchored in the three conditions that govern the grant of interim injunction. The Division Bench's substitution of its own appreciation of the Will, of the parties' conduct, and of the applicability of statutory provisions bearing on the final merits, for the exercise of discretion by the learned Single Judge, was not warranted on the standard it had itself correctly recited, and constitutes precisely the kind of interference that Wander Ltd. & Anr. (supra) forbids.

(emphasis given)

XII. THE VICE OF THE MINI – TRIAL

37.

Before parting with these appeals, we consider it necessary to record our disquiet at a recurring feature of orders passed under Order XXXIX of the Code, and of appellate orders reviewing them, that reach this Court. Such orders are, with increasing frequency, running into pages of close analysis of the rival documents, weighing the probable outcome of issues of title, undue influence or fraud, and expressing views, in substance, on which party is likely to succeed at trial. Orders become lengthy for a single reason: the court passing them has, whether consciously or not, entered upon the final merits of the controversy and conducted what is, in substance, a mini - trial upon affidavits and documents that properly await the leading of evidence.

38.

This is not what Order XXXIX requires, nor what the law permits - whether of the court of first instance or of an appellate court reviewing it. Lord Diplock's caution (American Cyanamid Co. v. Ethicon Ltd. [1975] AC 396), that the interlocutory stage is not the occasion to resolve conflicts of evidence on affidavit or to decide difficult questions of law calling for mature consideration, has been consistently accepted in India. This Court (Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd., (1999) 7 SCC 1), emphasised the court's reluctance to decide difficult questions of law or fact at the interlocutory stage. The scope of examination on an application under Order XXXIX - and, equally, of an appeal against an order made on such an application – is confined to the limited and threshold question whether the plaintiff has shown a serious dispute meriting investigation at trial; it does not extend to an examination of the final effect, probative value or ultimate merits of the documents annexed to the pleadings, which is the trial court's task, to be undertaken after evidence and not before.”