Gauhati High Court
Birendra Prasad Sah vs Debendra Jalewal on 24 January, 2025
Author: Malasri Nandi
Bench: Malasri Nandi
Page No.# 1/13
GAHC010200732024
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THE GAUHATI HIGH COURT
(HIGH COURT OF ASSAM, NAGALAND, MIZORAM AND ARUNACHAL PRADESH)
Case : CRP(IO)/68/2024
BIRENDRA PRASAD SAH
S/O LT. PREM PRASAD SAH R/O SHIV NAGAR DARJEELING MORE NEAR
LOKNATH MANDIR SILIGURI 73403 DARJEELING WEST BENGAL INDIA
VERSUS
DEBENDRA JALEWAL
S/O ONKARMAL JALEWAL HOUSE NO. 398 BYELANE POWER HOUSE L N B
NALBARI 781335 ASSAM
------------
Advocate for : MR. D SARAF
Advocate for : MR. B D KONWAR SR. ADV. (R-1) appearing for DEBENDRA
JALEWAL
BEFORE
HONOURABLE MRS. JUSTICE MALASRI NANDI
ORDER
24.01.2025
Heard Mr. B. D. Konwar, learned Senior counsel assisted by Mr. H. Agarwal,
learned counsel for the petitioner. Also heard Mr. D. Saraf, learned counsel for
the respondent.
2. By filing this application under Article 227 of the Constitution of India, the
petitioner has prayed for setting aside the orders dated 25/08/2023,
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08/09/2023, 05/10/2023 and 18/11/2023 in Misc (J) Case No. 27/2023, arising
out of commercial suit no. 03/2023 and Consequential Advocate Commissioner’s
Report dated 17/11/2023 and list of documents and seizure list attached
thereto.
3. The background of the case is that the petitioner is engaged into
manufacture and sale of food products including matar mixture. On 03/11/2023
in his absence and without any advance notice/ intimation some persons
accompanied by several police personnel visited the factory of the petitioner at
Siliguri, West Bengal and stopped the production operation at his factory. When
his employees informed him about the same, he sent his son to the factory who
came to know that the finished products were kept separately by those persons
and they took away the packeting roll from his factory to prevent him from
carrying on his business activity.
4. Upon objection by his son, they stated that they had received an order
from court to do whatever they like for which the police authorities are also with
them. Accordingly, they took signatures of his son on some papers without
showing the contents of such papers to him and while going away they gave a
pile of papers to his son saying that those were court papers and next date was
fixed on 18/11/2023.
5. The petitioner thereafter came to Gauhati and appointed a local counsel
for appearance on 18/11/2023. Thereafter, the petitioner came to know that the
respondent filed a case vide CS (COMM) No. 03/ 2023 against the petitioner in
the court of Civil Judge, Senior Division, Nalbari on the allegation that the
petitioner was engaged into manufacture of products bearing identical or
deceptively similar artistic work to the allegedly prior adopted trademark of the
respondent.
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6. The petitioner has also come to know that Misc (J) case no. 27/2023 was
filed by the respondent under Order 26 Rule 9 of CPC where under by ex-parte
order dated 05/10/2023, the Civil Judge, Senior Division, Nalbari directed search
and seizure of the premises of the petitioner by Advocate Commissioner without
notice to the petitioner and under the guise of the said order, the packeting roll
of the petitioner has been taken away by the Advocate Commissioner and
respondent depriving the petitioner from carrying on his business.
7. The petitioner has also come to know that another Misc (J) case vide no.
28/2023 was filed by the respondent under Order 39 Rule 1 and 2 of CPC where
under by ex-parte order dated 05/10/2023, the Civil Judge, Senior Division,
Nalbari restrained the petitioner from selling products, displaying artistic work
which is same to that of the respondent.
8. It was urged by learned counsel for the petitioner that on his instruction,
his engaged counsel appeared on 18/11/2023 in the court of Civil Judge, Nalbari
and filed petitions seeking time for filing written objections. But the learned Civil
Judge, Nalbari without deciding the said petitions directed the petitioner to
appear on the next date.
9. According to learned counsel for the petitioner, on perusal of the case
record the petitioner got to know that the respondent did not take any steps on
the petitioner on the same day or the next day of the ex-parte injunction order
dated 05/10/2023 as mandated under Order 39 Rule 3 of CPC and as per settled
law. The petitioner also came to know that the signatures of his son taken by
the Advocate Commissioner were shown to be seizure list and list of materials
and submitted along with Commissioner’s report dated 17/11/2023.
10. Learned counsel for the petitioner also pointed out that the Misc (J) case
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No. 27/ 2023 and Misc (J) case No. 28/2023 were both registered on
25/08/2023 whereas the main suit i.e., CS (COMM) no. 03/2023 was registered
on 08/09/2023. The cases were fixed in absence of the petitioner on
08/09/2023, 20/09/2023, 26/09/2023 and 05/10/2023 and ex-parte orders were
passed in the cases on 05/10/2023 i.e., after 42 days from the date of first filing
which indicates absence of urgency in the suit and the applications.
11. The learned counsel for the petitioner has also contended that the
impugned order dated 05/10/2023 in Misc (J) case no. 27/2023 waived the
requirement of service of notice upon the petitioner before appointment of
Advocate Commissioner and also before execution of Commission which is
against the express mandate of Order 26 Rule 18 of CPC as such the impugned
order dated 05/10/2023 is liable to be set aside.
In support of his submission, learned counsel has placed reliance of the
following case laws –
(1) (2001) 3 Supreme 1 (Cadila health care Ltd. vs. Cadila Pharmaceuticals Ltd.)
(2) (1988) AIR (SC) 1845 (Rajbir Kaur vs. S. Chokesiri and
company)
12. On the other hand, the case of the respondent is that the respondent as
plaintiff filed a civil suit in the court of Civil Judge, Nalbari vide CS (COMM)
03/2023 on the ground of infringement of trademark as per section 2©(XVII) of
the Commercial Courts Act, 2015. The plaintiff is a businessman who has been
manufacturing and selling green matar mixture since 2008 in the State of Assam
and other parts of North Eastern States of Assam. Over the past 6 years, the
plaintiff has adopted a trademark and has been actively marketing products
under the trademark “Krishan” with a distinct and recognizable artistic work in
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its packaging.
13. The petitioner as defendant is also involved in the manufacturing and
marketing of green matar mixture with the same, similar, distinctively similar
trademark “Krisaan” at Siliguri, Darjeeling in the State of West Bengal.
14. The learned counsel for the respondent has argued that the respondent is
the prior adopter and prior user of the well known trademark namely “Krishan”.
Since 2017, the respondent has been consistently using the said trademark
thereby establishing his prominence in the particular field. The registered
trademark comprises of an exclusive artistic work which has become the
prominent and main identity of the trademark both within the industry and the
general public. It is also pointed out that the exclusive artistic work of the
respondent/ plaintiff features a silver background with a pictorial representation
of green peas (matar) along with a red and yellow colour formation. Inside the
red lining the brand name is written. This entire composition is the most
highlighted and prominent part of this trademark which is highly recognizable in
and within the trade and public at large.
15. It is also submitted that the respondent/plaintiff applied for its registration
under application no. 398/6811 in class 30 before the trademark registry. The
registration of his trademark was granted on 26/05/2019 which is valid till
30/10/2028.
16. Learned counsel for the petitioner has further contended that the
respondent’s well known trademark is “Krishan” and the petitioner has adopted
the same brand by adding only one alphabet i.e., “A” and the deletion of “H”
automatically proves the malicious intention of the petitioner to capitalize the
goodwill of the respondent since last 6 years.
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17. It is also the submission of learned counsel for the respondent that the
Advocate Commissioner has not exceeded their jurisdiction while furnishing the
report dated 17/11/2023. The court in its order appointed the Advocate
Commissioner with a direction to conduct local investigation for a specific
purpose i.e., to investigate, to prepare inventory and report on materials in
question. As per Order 26 Rule 9 the Commissioner is empowered to elucidate
the matter in dispute. The report, therefore, was prepared by the commissioner
in accordance with law.
18. The learned counsel for the respondent/ plaintiff has raised another issue
that whether section 13 read with Order XLIII Rule 1(r) of CPC bars the filing of
an appeal under the Commercial courts Act, 2015, thereby, invoking Article 227
of the Constitution of India as the only available remedy. According to the
learned counsel for the respondent, section 13 of the Commercial Courts Act
outlines the appellate framework for decisions made by Commercial courts. It
stipulates that appeal shall lie from orders specified under Order XLIII of CPC.
Order XLIII Rule 1(r) permits appeal against orders granting, refusing or
modifying injunctions under Order XXXIX Rules 1 and 2.
19. By referring the Judgment of A. Venkatasubbiah Naidu vs. S.
Chellappan and others reported in (2000) 7 SCC 695, the learned counsel
for the respondent has pointed out that an Order of Temporary Injunction
including ex-parte orders granted by a Civil court under Order XXXIX Rules 1
and 2 is appealable under Order XLIII Rule 1(r) CPC. In similarly situated case
Jagdsih Singh vs. Ambalal and others, reported in (2014) 10 SCC 610,
the Hon’ble Supreme court reiterated that any order of temporary injunction
whether ex-parte or otherwise granted under Order XXXIX Rule 1 and 2 is
subject to appeal under Order XLIII Rule (r) of CPC. The similar view was taken
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by this court in Akmal Ali and others vs. State of Assam and others
reported in (1983) SCC Online Gau 25.
20. The learned counsel for the respondent has further contended that the
aforesaid Judgments clarified that the ex-parte injunction orders issued under
Order XXXIX Rules 1 and 2 are appealable under Order XLIII Rule 1(r) of the
CPC. Section 21 of the Commercial Courts Act does not abrogate this appellate
provision instead it incorporates it by reference ensuring that appeals against
such orders are maintainable within the commercial disputes framework.
21. In addition, the learned counsel for the respondent has also submitted
that the Hon’ble Supreme Court in the case of Virudhunagar Hindu Nadargal
Dharama Paribalana Sabai vs. Tuticorin Educational Society reported
in (2019) 9 SCC 538, emphasized that when a statutory remedy of appeal is
available under the CPC, the High Court should refrain from entertaining a
revision under Article 227. The court observed that the availability of an
alternative remedy is a significant factor and the High Court ought not to have
entertained the revision under Article 227, especially when a specific remedy of
appeal is provided under the CPC itself.
22. Accordingly, the learned counsel for the respondent submits that as there
was procedural lapse on the part of the petitioner, the application under Article
227 is not maintainable and is liable to be dismissed.
23. Having heard the learned counsel for the parties and the documents
available in the record and on perusal of the order passed by the learned Civil
Judge, Nalbari, it appears that Misc (J) case No. 27/2023 arose in connection
with appointment of commissioner to conduct enquiry and investigate the
premises of the petitioner. Misc (J) case No. 28 of 2023 was filed by the
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petitioner under Order 39 of Rule 1 and 2 praying to pass an order of ad-
interim/temporary injunction restraining the petitioner, his agents, employees or
his representatives from distributing and selling their products which are
identical and similar to the trade mark of the respondent/ plaintiff. Admittedly, in
both the aforesaid cases the orders were passed by the learned Civil Judge ex-
parte without hearing the other side.
24. Coming to the question of infringement of trademark, it is a settled
position of law that an order of injunction in a suit for infringement against a
registered trademark can be passed only if the court is satisfied that the
defendant’s registration is invalid. While, textually, the Trade Marks Act proscribes
any infringement suit against a registered trade mark, or an order of injunction
restraining the use of a registered trade mark, such a suit would be maintainable,
and such an order could be passed, if the Court is satisfied that the defendant’s
registration is invalid. The Court is, while arriving at such a decision, to bear in
mind Section 31(1) of the Trade Marks Act, which treats the very factum of
registration as prima facie evidence of its validity. The threshold that the plaintiff
would have to cross in such a case would, therefore, be very high. For this, not
only must the plaint contain cogent pleadings alleging invalidity of the defendant’s
registration; it must also contain convincing grounds to satisfy the court, prima
facie, that the registration is in fact invalid.
25. The Division Bench of the Delhi High Court in Dabur India Ltd vs
Emami Ltd (FAO (OS) (COMM) 171/2023), while setting aside the ad
interim injunction granted against the defendant in a trade mark suit, had held
that since the defendant’s product was introduced in the market before the
institution of the suit, that alone entitled the defendant at least a rudimentary
opportunity to oppose the application for grant of ad interim injunction.
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26. The court observed that the opinion of the Division Bench was in line with
the Supreme Court’s decision in Wander Ltd vs Antox (India) Pvt Ltd, 1990 Supp
SCC 727. The High Court observed that the top court in Wander (Supra) has
clearly advocated adoption of a different approach while dealing with
applications for grant of interim injunction in intellectual property matters with
respect to defendants who have been in the market for some time, vis-à-vis
those who were yet to enter the market.
27. The court was dealing with an application for ad interim injunction filed by
the plaintiff, Silvermaple Healthcare Services Private Limited, in a suit for trade
mark infringement filed against its former employee.
28. It was the case of the plaintiff that it was engaged in providing DHI
treatment, which refers to a technique for facilitating hair growth, known as
“Direct Hair Implantation”. It claimed that it holds valid licenses over the “DHI”
mark under the Trade Marks Act, 1999.
29. The plaintiff claimed that the defendant, Dr Ajay Dubey, was engaged as a
dermatologist in the former’s clinic. Consequently, after leaving the services of
the plaintiff, Dubey set up his own clinic in Gurgaon, carrying out transplantation
by a technique titled “Direct Follice Insertion”, abbreviated to “DFI”.
30. The plaintiff claimed that the use of the acronym “DFI” by the defendant
on its website and social media, infringed its registered “DHI” trademarks, as
they were deceptively similar, both in appearance as well as phonetically.
31. The court, at the outset, said that in view of the recent order passed by
the Division Bench in Dabur India Ltd, (Supra) the prayer for interim injunction
restraining the defendants from using “DFI” as a trademark, cannot be granted
without allowing the defendant an opportunity to file a reply to the application.
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32. Referring to the order passed in Dabur India Ltd, the court said, “If the
defendant has been using the impugned trade mark, before the plaintiff
instituted the suit, then, in all but, possibly, the most exceptional cases, the
decision in Dabur would obligate the Court to extend, to the defendant, an
opportunity to submit a written response to the prayer for interlocutory relief,
before proceeding to pass orders thereon.”
33. The court remarked that the plea raised by the plaintiff would require
arguments and consideration, and the same cannot be the basis of an ad
interim order, even before the reply is filed in the application.
34. The court thus refused to grant an ex-parte ad-interim injunction
restraining the defendants from using the words “DFI” or “DHI” or directing
them to remove the same from their website/ any other platform. Issuing notice
on the application, the court directed the defendants to file reply to the
application within two weeks.
35. Regarding legality/maintainability of writ petition being filed under Article
227 of the Constitution of India, it was held by the different High Courts in the
following manner –
In the case of Mohar Yadav vs. Pramod Yadav, reported in (2021)
0 Supreme (Jhk) 544, it has been laid down that –
“……3. Be that as it may, the petitioners have preferred the present writ petition
in the year 2017 challenging the order passed by the court below under Order
XXXIX, Rule 1(C), CPC, however, they did not take pain to remove the defects
as pointed out by the office of this Court for more than 3 years. Moreover, the
impugned order is an appealable one under Order XLIII, Rule 1(r), CPC against
which the petitioners could have filed appeal, however, they straightway moved
before this Court by filing a writ petition under Article 227 of the Constitution of
India.
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4. In the case of “Virudhunagar Hindu Nadargal Dharma Paribalana Sabai and
Ors. v. Tuticorin Educational Society and Ors.” reported in (2019) 9 SCC 538:
(AIROnline 2019 SC 1166), the Hon’ble Supreme court has held as under:
13. Therefore wherever the proceedings are under the Code of Civil Procedure
and the forum is the civil court, the availability of a remedy under the CPC, will
deter the High Court, not merely as a measure of self-imposed restriction, but
as a matter of discipline and prudence, from exercising its power of
superintendence under the Constitution. Hence, the High Court ought not to
have entertained the revision under Article 227 especially in a case where a
specific remedy of appeal is provided under the Code of Civil Procedure itself….”
36. In the case of Draupadi Rai vs Atul Jain and others, reported in
Civil Revision Petition vide No.7522/2021, decided on 13.01.2022, it
has been observed that-
“…..A writ petition challenging an ex-parte interim injunction becomes
infructuous when the temporary injunction application has been finally decided,
as an appeal lies against such an order under Order 43 Rule 1 (r) C.P.C.”
37. In the case of Vishwanath Basappa Batti vs. The State of
Karnataka, Case No. WP No. 202681 of 2024, the Hon’ble Court has laid
down the following –
“….8. Insofar as the third contention of learned counsel for the petitioner is
concerned that refusal of an order of injunction can be subject matter of a
proceedings under Article 227 of the Constitution of India, the same would have
been so if at a ex-parte stage, the relief of injunction is refused by a Trial court.
………
9. The only remedy which is available to the petitioner is to file an appeal
challenging the said order….”
38. In Raj Kumar Shivhare v. Directorate of Enforcement [(2010) 4
SCC 772], the court held as follows:
“31. When a statutory forum is created by law for redressal of grievance and
that too in a fiscal statute, a writ petition should not be entertained ignoring the
Page No.# 12/13statutory dispensation. In this case the High Court is a statutory forum of
appeal on a question of law. That should not be abdicated and given a go-by by
a litigant for invoking the forum of judicial review of the High Court under writ
jurisdiction. The High Court, with great respect, fell into a manifest error by not
appreciating this aspect of the matter. It has however dismissed the writ petiton
on the ground of lack of territorial jurisdiction.”
39. Reverting back to the case in hand, it appears from the record that the
Misc (J) case no. 27/2023 i.e., appointment of Advocate Commissioner to search
and seize the premises of the petitioner without notice to the petitioner suffers
from irregularities and deserves to be set aside. Misc (J) case No. 28/2023
arises in connection with Order 39 Rules 1 and 2 CPC wherein ex-parte
injunction was granted to the respondent. As per Judgment of the Dabur India
Ltd (Supra) the court observed that an order of injunction in a suit for
infringement against a registered trademark can be passed only if the court is
satisfied that the defendant’s registration is invalid. It was also held while
setting aside the ad-interim injunction against the defendant in a trademark suit
that since the defendant’s product was introduced in the market before the
institution of the suit, that alone entitled the defendant an opportunity to
oppose the application to grant ad-interim injunction.
40. Admittedly, in the case in hand, the orders in both the Misc cases were
passed ex-parte. The defendant did not get the opportunity to oppose the
application filed by the respondent granting injunction. From the order of the
learned Civil judge, it also does not reflect that the court was satisfied before
passing of the order that defendant’s registration was invalid.
41. In view of the above, this court is of the view that the orders passed by
the Civil Judge, Nalbari in Misc (J) case no. 27/2023 and Misc (J) 28/2023 are
liable to be set aside.
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42. Accordingly, the orders referred above are set aside.
43. As it appears that the petitioner has chosen a wrong forum against the
order of ad-interim injunction which is appealable under Order XLIII Rule 1(r)
CPC as such this revision petition is not maintainable.
44. In the result, the Civil Revision Petition is dismissed. No cost. The interim
order, if any, is hereby vacated.
45. Both the parties are directed to appear before the trial court to obtain
further instruction to proceed with the relevant suit.
46. Accordingly, Civil revision petition is disposed of.
JUDGE
Comparing Assistant
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