Gauhati High Court
I.A.(Civil)/325/2025 on 16 June, 2025
GAHC010025102025
IN THE GAUHATI HIGH COURT
(The High Court of Assam, Nagaland, Mizoram and Arunachal Pradesh)
PRINCIPAL SEAT AT GUWAHATI
FAO No. 8/2025
With
I.A.(Civil) No.325/2025
FAO No. 8/2025
Jay Baba Bakreswar Rice Mill Private Limited,
An existing company within the meaning of the Companies Act, 2013,
having its office at 1413, 14th Floor, "Diamond Heritage",
16, Strand Road, Kolkata-700001,
represented by the Director Rahul Khaitan,
S/o Dip Chand Khaitan.
......Appellant.
-Versus-
1. Lunia Marketing Private Limited,
An existing company within the meaning of the Companies Act,
2013, having its office at 156A, Mahatma Gandhi Road,
3rd Floor, Kolkata-700007 and also at Block-II,
Bajrangbali Real Estate, Pamohi, Ramcharani,
Kamrup-781034, Guwahati.
2. M.L. Store of Hatigaon,
1, Guwahati-781038, Assam.
3. Mamata Store of Birubari Bazar,
Guwahati-781016, Assam.
Page 1 of 34
4. Gupta Store of GarchukChariali,
Guwahati-781035, Assam.
5. MaaKamakhyaBhandar of Bhetapara,
Ghoramara Road, Opp. Durgamandir,
Guwahati-781028, Assam.
......Respondents.
WITH
I.A.(Civil) No. 325/2025
Jay Baba Bakreswar Rice Mill Private Limited,
An existing company within the meaning of the Companies Act, 2013,
having its office at 1413, 14th Floor, “Diamond Heritage”,
16, Strand Road, Kolkata-700001,
represented by the Director Rahul Khaitan,
S/o Dip Chand Khaitan.
……Applicant/Appellant.
-Versus-
1. Lunia Marketing Private Limited,
An existing company within the meaning of the Companies Act,
2013, having its office at 156A, Mahatma Gandhi Road,
3rd Floor, Kolkata-700007 and also at Block-II,
Bajrangbali Real Estate, Pamohi, Ramcharani,
Kamrup-781034, Guwahati.
2. M.L. Store of Hatigaon,
1, Guwahati-781038, Assam.
3. Mamata Store of Birubari Bazar,
Guwahati-781016, Assam.
4. Gupta Store of GarchukChariali,
Guwahati-781035, Assam.
Page 2 of 34
5. MaaKamakhyaBhandar of Bhetapara,
Ghoramara Road, Opp. Durgamandir,
Guwahati-781028, Assam.
……Opposite Parties/Respondents.
BEFORE
HON’BLE MR. JUSTICE ROBIN PHUKAN
For the Appellant/Petitioner : Mr. G.N. Sahewalla, Sr. Adv.,
Mr. DebnathGhosh, Sr. Adv.,
Mr. S. Dasgupta,
Mr. M. Sahewalla.
……. Advocates
For the Opposite Parties/Respondents: Mr. SayantanBasu, Sr. Adv.,
Mr. N. Barman.
........ Advocates
Dates of Hearing : 11.04.2025 & 23.04.2025
Date of Judgment : 16.06.2025
JUDGMENT AND ORDER
Heard Mr. G.N. Sahewalla and Mr. DebnathGhosh, learned Senior
counsel assisted by Mr. S. Dasgupta and Mr. M. Sahewalla, learned counsel
for the appellant. Also heard Mr. SayantanBasu, learned Senior counsel
assisted by Mr. N. Barman, learned counsel for the respondent No.1.
2. This appeal is directed against the order dated 10.01.2025 passed by
the learned Civil Judge (Sr. Division) No.1, Kamrup(M), Guwahati, („Trial
Court‟ for short) in Misc.(J) Case No.30/2025 in Commercial Suit
Page 3 of 34
No.07/2025 (Lunia Marketing Private Limited v. Jay Baba Bakreswar Rice
Mill Private Limited). It is to be noted here that vide impugned order dated
10.01.2025, the learned Civil Judge (Sr. Division) No.1, Kamrup(M),
Guwahati, had granted temporary injunction restraining the opposite
parties, including their directors, promoters, shareholders, partners,
officers, employees, agents, vendors and any individuals claiming through
any contract with defendant-opposite party No.1 from infringing the
plaintiff‟s registered copyright “ARHAM” and/or the composite label
attached as Annexure-B and the same includes using identical artistic
features, containers, poly pouches, or bags as shown in paragraph 19 and
Annexure-F, and any deceptively similar marks, either visually or
phonetically, or any colorable imitations thereof and also restrained them
from using, advertising, selling, offering for sale, or exhibiting for sale rice
products or any related goods from passing off or attempting to pass off
their rice and cereal products by using identical labels or trade dress, and
from using any color scheme, style, get-up, arrangement or packaging that
is deceptively similar to the respondent/petitioner‟s original design. It is
also to be noted here that vide impugned order dated 10.01.2025, while
granting the ad-interim injunction, the learned Trial Court has issued notice
to the opposite parties.
3. And the interlocutory application is being filed by the
applicant/appellant for staying the impugned order dated 10.01.2025, so
passed by the learned Trial Court in Misc.(J) Case No.30/2025 in
Commercial Suit No.07/2025.
4. As the issues raised in the present appeal and in the I.A.(Civil)
No.325/2025 are same, involving the same parties and against the same
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impugned order dated 10.01.2025, and as agreed upon, it is proposed to
dispose of both the appeal and the I.A., by this common judgment and
order.
5. The background facts, leading to filing of the present appeal is
briefly stated as under:-
“The respondent No.1 herein is a Private Limited Company
incorporated on November 12, 1998, under the Indian Companies
Act, 1956 and is engaged in the business of marketing quality cereal
products, including rice and spices. The company has its registered
office in Kolkata, a head office in Shillong and a branch office in
Guwahati and the appellant is also an incorporated company under
the Indian Companies Act, 2013 and engaged in the business of
marketing cereals, particularly rice, packaged in various materials.
The respondent No.1 is recognized as a leading trader in rice and
cereals across India through a network of dealers and distributors.
Then in the year 2001, the respondent No.1 adopted the name
“ARHAM” as its trademark, conducting necessary searches and
market surveys prior to its adoption and the respondent No.1
developed a distinct trade dress, featuring artistic elements, that has
become well-known, especially in the North-Eastern States of India.
The label design includes: (a) A two-line black border with “ARHAM”
and a red Swastik, (b) “100% Pure” in an elliptical green device at
the top, (c) A shield-like green device with a red semi-hexagon and
Swastik, (d) The word “ARHAM” prominently in red, (e) “BRAND” in
green and “PREMIUM QUALITY RICE/ANDHRA SPECIAL RICE” in red,
and (f) The respondent No.1‟s name and address at the bottom,
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labeled “Packaged & Marketed by” in red and green. The overall
color scheme consists of green, black and red and these artistic
features are referred to as the subject trade dress/
copyright/representation. The artistic work in question is registered
under Copyright No.A-89471/2010, making the respondent No.1 the
owner of the copyright for the design used on poly bags and jute
bags containing rice and other cereal products and this registration
entitles the respondent No.1 to protect under the Copyright Act,
1957, against unauthorized reproduction or imitation. The
respondent No.1 asserts that its trade dress has gained significant
recognition, with the public associating its distinct design and color
exclusively with the respondent No.1. To assert its rights, the
respondent No.1published a caution notice in leading Indian
newspapers regarding the trade dress featuring the name “ARHAM”.
In June, 2024, the respondent No.1/petitioner received
complaints about poor-quality of rice sold under a similar trade
dress, featuring the Swastik symbol, misleading customers into
thinking it was from the respondent No.1. Then investigation was
carried out and the said investigation reveals that inferior-quality of
rice branded as “JAY BABA” was being sold using a design that
closely resembles the respondent No.1‟s registered trademark. The
respondent No.1 claims that this unauthorized use infringes on its
copyright, as both the symbol and trade dress have been copied,
including the color scheme and wording such as “100% Pure” and
“SORTEX B.P.T. RICE”. The respondent No.1 believes the appellant
is attempting to unfairly benefit from the goodwill associated with
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the ARHAM brand. Then on June 19, 2024, the respondent No.1 had
issued a notice to the appellant, which denied the claims and filed
caveats in Kolkata Courts. Despite receiving a final request to cease
and desist, the appellant had continued using the similar trade dress
and has marketed the rice on platforms like Big Basket. As a result,
the respondent No.1 is facing damage to its reputation and
commercial interests.
6. Then, being aggrieved, the respondent No.1 had instituted a
Commercial Suit No.07/2025, inter-alia for leave, under Order II, Rule 2 of
the Code of Civil Procedure, 1908 and exemption of the necessary
requirements of Section 12A of the Commercial Courts Act and claiming
following reliefs:-
(i) Declaration that the plaintiff alone is entitled to use the trade dress
along with the artistic features under the trade mark ARHAM as
described and depicted in paragraph 6 hereof and Annexure-B,
hereto, in its business of rice and cereal products, to the exclusion of
the defendants.
(ii) Decree of perpetual injunction restraining the defendants, by its
proprietor, directors, partners, officers, servants, agents and assigns,
dealers, stockists, vendors and each of them from in anyway or
manner infringing the plaintiff’s registered copyright ARHAM and/or
the composite label annexed as Annexure B hereto by using the
identical artistic features and/or containers/poly pouches/bags as
shown in paragraph 19 hereof and Annexure-F hereto and/or any
deceptively similar mark, visually or phonetically similar or any
colourable imitation thereof, in any manner whatsoever by using,Page 7 of 34
advertising, selling, offering for sale, exhibiting for sale ofrice
products and / or any goods allied thereto;
(iii) Decree of perpetual injunction restraining the defendants, by its
proprietors, directors, partners, officers, servants, agents and
assigns, dealers, stockists, vendors and each of them from in any
way or manner passing off or attempting to pass off or enabling
others to pass off its products viz. Rice and Cereal products by using
the identical label / trade dress shown in paragraph 19 hereof and
Annexure-F hereto or using any colour scheme, get-up, style or
arrangement and packaging deceptively similar to that of the
plaintiff’s original artistic design / trade dress referred in paragraph 6
hereof and Annexure-B hereto;
(iv) Decree of perpetual injunction restraining the defendants, by its
proprietors, directors, partners, officers, servants, agents and
assigns, dealers, stockiest, vendors and each of them from in any
way or manner from using, by affixing, labeling, packaging the
infringed artistic label as shown in paragraph 19 hereof and
Annexure-F hereto in respect of Cereal products, Rice and / or any
allied goods thereto with such mark taking undue and unfair
advantage of the reputation of, or detrimental to the distinctive
character of the plaintiff’s registered copyright;
(v) Accounts of profits made by the defendants by selling / distributing
and/or otherwise dealing in Rice and Cereal products bearing the
impugned trade dress and/or the label as shown in paragraph 19
hereof and Annexure-F hereto by way of infringement / passing off;
Page 8 of 34
(vi) Delivery up to the plaintiff by the defendants on affidavit of all goods
bearing the impugned trade dress as shown in paragraph 19 hereof
and Annexure-F hereto in the possession and control of the
defendants and all price lists, invoices and other incrementing
documents, containers, cartoons, bags, poly pouches in possession
and control of the defendants and / or its proprietors, partners,
servants, employees, for destruction;
(vii) An enquiry to the damages suffered by the plaintiff and a decree in
favour of the plaintiff for such sum as may be found due upon such
enquiry;
(viii) Such other injunction as would afford adequate relief to the Plaintiff;
(ix) Receiver;(x) Attachment; (xi) Costs; (xii) Further or other relieves;
7. Along with the said suit, being Commercial Suit No.07/2025, the
respondent filed an application under Order 39 Rule 1 and 2 of the Code of
Civil Procedure, praying for ad-interim temporary injunction against the
appellantrestraining them including their directors, promoters,
shareholders, partners, officers, employees, agents, vendors and any
individuals claiming through any contract with defendant-opposite party
No.1 from infringing the plaintiff‟s registered copyright “ARHAM” and/or
the composite label attached as Annexure-B and the same includes using
identical artistic features, containers, poly pouches, or bags as shown in
paragraph 19 and Annexure-F, and any deceptively similar marks, either
visually or phonetically, or any colorable imitations thereof and also
restrained them from using, advertising, selling, offering for sale, or
exhibiting for sale rice products or any related goods from passing off or
attempting to pass off their rice and cereal products by using identical
Page 9 of 34
labels or trade dress, and from using any color scheme, style, get-up,
arrangement or packaging that is deceptively similar to the respondent‟s
original design.
8. Being aggrieved, the appellant preferred this appeal on the following
grounds:-
(i) That, the impugned order is bristled with infirmities and apparent
non-appreciation of documents on record and suffers from erroneous
appreciation of the documents on record, which were disclosed by
the respondent no. 1 itself.
(ii) That, the learned trial court has failed to appreciate that the
appellant is a registered proprietor of a mark and also the
registration-holder of the copyright therein and hence, no suit for
infringement of the said mark was maintainable in law under the
provisions of the Trademarks Act, 1999.
(iii) That, the learned trialcourt has failed to appreciate that the parties
have been exchanging correspondences for a substantial period of
time, and hence, there could have been no urgency in moving the
matter ex-parte, without satisfying and/or complying with the
mandatory provision of Section 12A of the Commercial Courts Act,
2015.
(iv) That, the learned trial court has failed to appreciate that the alleged
mark and artistic work of the respondent no. 1 were inherently un-
registrable under the Trademarks Act, 1999 and the Copyright Act,
1957, in any manner whatsoever, and hence, no protection could be
granted to him.
Page 10 of 34
(v) That, the learned trialcourt has failed to appreciate that the mark
and the alleged artistic work were invalid and were bodily lifted from
the symbol and icon of Jainism and the Arabic language, and hence,
no exclusivity or monopoly could be claimed by the respondent no. 1
in any manner whatsoever and was not entitled to any order of
protection, since the respondent no. 1 has used a mark or artistic
work which contained no distinctiveness or distinguishing feature.
(vi) That, the learned trial court has failed to appreciate that the word
“ARHAM” is a dictionary word, and means ‘merciful’ in the Arabic
language, and hence, is incapable of protection or exclusive use.
(vii) That, the learned trial court has failed to appreciate that the symbol
of Jainism cannot be used by any person to the exclusion of others,
and hence, the respondent no. 1 could not and did not have any
right of monopoly or exclusivity on the overall trade dress thereof.
(viii) That, the learned trialcourt has failed to appreciate that the overall
impression of the marks of the appellant and the respondent no. 1
clearly reveals that the predominant and/or essential features of
both the marks are completely different and the respondent no. 1
has only confined itself to the use of the device of Swastik palm
which was specifically disclaimed by the Registrar of Trademarks.
(ix) That, the learned trialcourt has failed to appreciate that the mark
and/or trade dress of the appellant has no similarity with that of the
respondent no. 1, as the essential elements of the appellant’s mark
is the device of “SWASTIK” and “JAY BABA” and that SWASTIK is
related to Hindu religion, whereas the respondent no. 1’s alleged
mark and/or copyright entirely consists of the symbol or icon of
Page 11 of 34
Jainism and this itself marks a stark difference and distinguishes the
appellant’s product from those of the respondent no. 1.
(x) That, the respondent no. 1 has obtained the impugned judgment
and order by suppression of material facts, inasmuch as the
respondent no. 1 has suppressed that the respondent no. 1 did not
have any right in respect of the device of Swastik palm in any
manner.
(xi) That, the learned trial court further failed to appreciate that although
the respective addresses and/or place of business of both the parties
were in Kolkata, however, the respondent no. 1 chose to institute
the said suit at Kamrup Metro, in order to avoid the natural
jurisdiction.
(xii) That, the learned trial court has failed to appreciate that several
caveats were lodged by the appellant herein before the courts of
Kolkata, and hence, it was evident that the respondent no. 1 clearly
resorted to bench-hunting and forum-shopping.
(xiii) That, the learned court has failed to appreciate that the conduct of
the respondent no. 1 was evidently mala fide, as after receipt of the
caveats lodged by the appellant herein, the respondent no. 1
approached the Kamrup Metro Court, in order to avoid service upon
the appellant herein.
(xiv) That, the impugned order clearly reveals that the learned trialcourt
has not applied its mind on the merits of the case, as the same has
been repeatedly recorded in the impugned judgment and order.
Page 12 of 34
(xv) That, the learned trial court has erred in holding that the respondent
no. 1 is the rightful owner of the trade dress and copyright under the
trademark “ARHAM”.
(xvi) That, the learned trial court has erred in holding that the appellant is
found to be using a similar trade dress along with a composite mark
which closely resemble the trademark and trade dress of the
respondent no. 1.
(xvii) That, the learned trial court has erred in holding that the usage of
the appellant constitutes a violation of the purported intellectual
property rights of the respondent no. 1, despite recording that
diverse notices have been exchanged between the parties, and
therby erred in passing the impugned order, without affording an
opportunity of hearing to the appellant herein.
(xviii) That, the learned trialcourt has erred in holding that the words
“100% pure”, “brand”, “sortex” and “BPT Rice” have been used by
the appellant herein, thereby violating the intellectual property rights
of the respondent no. 1, which is evidently an erroneous finding,
inasmuch as the said words are descriptive of the goods sold by the
parties herein and as such, is not a mark under the Trademarks Act,
1999.
(xix) That, the learned trial court has erred in holding that there is a bona
fide dispute between the parties, or that the appellant has used the
same copyright and artistic trade dress as that of the respondent no.
1.
Page 13 of 34
(xx) That, the learned trialcourt has erred in holding that there exists a
strong prima facie case in favour of the respondent no. 1, or that the
use of the said mark by the appellant caused inconvenience to the
respondent no. 1.
(xxi) That, the learned trial court has erred in holding that the appellant
has been selling rice of inferior quality under the name of the
respondent no. 1.
(xxii) That, the learned trialcourt has erred in holding that there exists
elements of urgency, inasmuch as even according to the pleading
made in the said application, the respondent no. 1 came to learn of
the appellant in June, 2024 and the suit came to be instituted in
January, 2025 thereby destroying any likelihood of urgency in the
facts of the present case.
(xxiii) That, the learned trial court has erred in holding that the three
golden principles of granting an injunction have been satisfied in the
facts of the present case, and the impugned order dated 10th
January, 2025 is even otherwise bad in law and is immensely
prejudicial to the valuable rights and interests of the appellant
herein.
(xxiv) That, the order dated 10th January, 2025 has been extended by the
learned trial court on 30th January, 2025, without deciding and/or
adjudicating and/or appreciating the objection being raised by the
appellant that the respondent no. 1 has not complied with the
mandatory provisions of Order XXXIX of the Code of Civil Procedure,
1908, and such extension is erroneous, inasmuch as the respondent
Page 14 of 34
no. 1 had not complied with the mandatory provisions of Order
XXXIX of the Code of Civil Procedure, 1908.
(xxv) That, there exists immense urgency in the matter, and unless the
operation of the said orders dated 10thJanuary, 2025 and
30thJanuary, 2025 is stayed, the entire business of the appellant
would be heavily crippled, and the rights thereof would be
permanently infringed. In the event, the respondent no. 1 is
permitted to carry on its unfair and wrongful activities, the same
would amount to putting premium on the clandestine acts of the
respondent no. 1.
9. Mr. Sahewalla, the learned Senior Counsel for the appellants submits
that the suit was filed under Commercial Courts Act, under which
mediation is a must as provided under Section 12A of the said Act and
correspondence regarding the dispute was going on between the parties
for last six months. Mr. Sahewalla, also submits that having obtained an
ad interim injunction the respondent No.1 had failed to take steps within
24 hours and it had taken steps only after 11 days ignoring the mandate
that injunction petition shall be disposed of within one month.
9.1. Supplementing the submission of Mr. Sahewalla, Mr. D. Ghosh,
learned Senior Counsel for the appellant, submits that both the parties are
from Kolkata and their registered offices are at Kolkata and instead the suit
is filed at Guwahati and in such circumstances, the learned trial court
ought not to have dispensed with the notice. Mr. Ghosh, also submits that
the decision of the learned trial court is perverse as it had ignored the
mandatory provision of Section 12A of the Commercial Court Act. Mr.
Ghosh, referring to a decision of Hon‟ble Supreme Court in Indian
Page 15 of 34
Performing Arts Society vs. Sanjoy Dalia &Anr., reported in
(2015) 10 SCC 161,submits that the Kolkata Court has the territorial
jurisdiction here in this case and the appellant had filed caveat before the
courts at Kolkata and to vitiate the same, the respondent No.1 herein had
instituted the case at Guwahati. Therefore, it is contended to allow this
appeal.
10. Mr. SayantanBasu, the learned Senior Counsel for the respondents
submits that the present appeal is being filed against an ex-parte order.
Mr. Basu submits that though Section 12A of the Commercial Courts Act
provides that parties have to go for mediation mandatorily, yet, there was
urgency and therefore the learned trial court had waived the said
provision. Mr. Basu, also submits that the appellant herein can go and file
the objection and get the injunction petition disposed of in the trial court,
instead of pursuing the appeal. Mr. Basu, further submits that the learned
trial court had granted injunction upon trade dress not on
trademark.Producing the sac used by the respondent No.1 and the
appellant, Mr. Basu submits that arrangement of the sac is same and the
colour of the sac of the appellant is same with that of the respondent No.1.
Referring to Rule 4 of Order 39 of the CPC, Mr. Basu submits that instead
of filing an application for variation or setting aside, the appellant had
preferred the appeal on merit and in appeal the appellant cannot introduce
new documents. Mr. Basu also submits that the appellant could not
disclose since when they have been using the getup and that the
respondent has copyright of the getup and that the appellant had no
explanation for using the same getup with the respondent. It is the further
submission of Mr. Basu that there is no material to suggest that the order
Page 16 of 34
of the learned trial court is erroneous. Therefore, it is contended to dismiss
this appeal.
11. Having heard the submissions of learned Senior counsel of both
sides, I have carefully gone through the memo of appeal and the
interlocutory application filed by the respondent and the documents placed
on record and also through the written arguments as well as the case laws
referred at the bar.
ThePrincipleGoverningGrantofEx-parteInjunction:-
12. The principles of granting ex-parte injunction was dealt with by
Hon‟ble Supreme Court in the case of Morgan Stanley Mutual Fund v.
Kartick Das, (1994) 4 SCC 225at page 241,
whereinHon‟bleCourthaslaiddown following guidelines:–
‚36.As a principle, ex parte injunction could be
granted only under exceptional circumstances. The
factors which should weigh with the court in the grant
of ex parte injunction are-
(a) Whether irreparable or serious mischief will ensue
to the plaintiff;
(b) Whether the refusal of ex parte injunction would
involve greater injustice than the grant of it
would involve;
(c) The court will also consider the time at which the
plaintiff first had notice of the act complained
so that the making of improper order against a
party in his absence is prevented;
(d) The court will consider whether the plaintiff had
acquiesced for some time and in such circumstancesPage 17 of 34
it will not grant ex parte injunction;
(e) The court would expect a party applying for ex
parte injunction to show utmost good faith in
making the application.
(f) Even if granted, the ex parte injunction would be
for a limited period of time.
(g) General principles like prima facie case, balance
of convenience and irreparable loss would also be
considered by the court.‛
13. Inthecase ofShivKumarChadha v.MunicipalCorpn.of
Delhireported in (1993) 3 SCC 161, Hon‟bleSupremeCourthad
occasioned to emphasize the need to give reasons before passing ex parte
orders of injunction in following words:-
‚… the court shall ‘record the reasons’ why an ex parte
order of injunction was being passed in the facts and
circumstances of a particular case. In this background,
the requirement for recording the reasons for grant of
ex parte injunction cannot be held to be a mere
formality. This requirement is consistent with the
principle, that a party to a suit, who is being
restrained from exercising a right which such party
claims to exercise either under a statute or under the
common law, must be informed why instead of following
the requirement of Rule 3, the procedure prescribed
under the
provisohasbeenfollowed.Thepartywhichinvokesthejurisdict
ion of the court for grant of an order of restrain
against a party, without affording an opportunity to
him of being heard, must satisfy the court about the
gravity of the situation and court has to consider
briefly these factors in the ex parte order. We are
quite conscious of the fact that there are otherPage 18 of 34
statutes which contain similar provisions requiring the
court or the authority concerned to record reasons
before exercising power vested in them. In respect of
some of such provisions it has been held that they are
required to be complied with but non-compliance
therewith will not vitiate the order so passed. But
same cannot be said in respect of the proviso to Rule 3
of Order 39. The Parliament has prescribed a particular
procedure for passing of an order of injunction without
notice to the other side, under exceptional
circumstances. Such ex parte orders have far-reaching
effect, as such a condition has been imposed that court
must record reasons before passing such order. If it is
held that the compliance with the proviso aforesaid is
optional and not obligatory, then the introduction of
the proviso by the Parliament shall be a futile
exercise and that part of Rule 3 will be a surplusage
for all practical purposes. Proviso to Rule 3 of Order
39 of the Code, attracts the principle, that if a
statute requires a thing to be done in a particular
manner, it should be done in that manner or not all.
This principle was approved and accepted in well- known
cases ofTaylorv.Taylor[(1875) 1 Ch D 426 : 45 LJ Ch
373],andNazirAhmedv.Emperor[AIR1936PC253(2):63IA
372: 37 Cri LJ 897] . This Court has also
expressed the same view in respect of procedural
requirement of the Bombay Tenancy and Agricultural
Lands Act in the case of RamchandraKeshavAdke v.
GovindJotiChavare [(1975) 1 SCC 559] .
As such whenever a court considers it necessary in the
facts and circumstances of a particular case to pass an
order of injunction without notice to other side, it
must record the reasons for doing so and should take
into consideration,
Page 19 of 34
whilepassinganorderofinjunction,allrelevantfactors,incl
uding as to how the object of granting injunction
itself shall be defeated if an ex parte order is not
passed.‛
ThePowerOfAppellateCourt:-
14. It is well settled that grant of an interlocutory injunction is in
exercise of discretionarypower.Usually,theappellatecourtwillnotinterferewith
it.But,when the discretion is exercised arbitrarily, capriciously, perversely
ignoring the settled principles of law regulating the grant or refusal of
interlocutory injunctions, the appellate court can interfere with such order
of granting injunction. Reference in this context can be made to a decision
of Hon‟ble Supreme Court in Ramdev Food Products (P) Ltd. v.
ArvindbhaiRambhai Patel &Ors., reported in (2006) 8 SCC 726.In
the case of Wander Limited and Another v. Antox India Pvt.
Ltd., reported in (1990) Supp SCC 727,Hon‟ble Supreme Court has
held that unless it has been shown to have exercised the discretion
arbitrarily by the learned trial court, the appellate court would not interfere
with the discretion exercised by the trial court.
15. InthecaseofWander Ltd.(supra),Hon‟bleSupremeCourthasalso
held that:-
“14.The appeals before the Division Bench were against
the exercise of discretion by the Single Judge. In such
appeals, the appellate court will not interfere with
the exercise of discretion of the court of first
instance and
substituteitsowndiscretionexceptwherethediscretionhas
been shown to have been exercised arbitrarily, or
capriciously or perversely or where the court hadPage 20 of 34
ignored the settled principles of law regulating grant
or refusal of interlocutory injunctions. An appeal
against exercise of discretion is said to be an appeal
on principle. Appellate court will not reassess the
material and seek to reach a conclusion different from
the one reached by the court below if the one reached
by that court was reasonably possible on the material.
The appellate court would normally not be justified in
interfering with the exercise of discretion under
appeal solely on the ground that if it had considered
the matter at the trial stage it would have come to a
contrary conclusion. If the discretion has been
exercised by the trial court reasonably and in a
judicial manner the fact that the appellate court would
have taken a different view may not justify
interference with the trial court’s exercise of
discretion.
Finding of the learned Trial Court:-
16. The learned trial court, while dealing with the injunction application,
had observed that petitioner (respondent No.1 in the present appeal) is a
Private Limited Company incorporated under the Indian Companies Act of
1956 and has its registered office in Kolkata, a head office in Shillong, and
a branch in Guwahati and is recognized as a leading trader in rice and
cereals across India through a network of dealers and distributors. In
2001, the petitioner adopted the name “ARHAM” as its trademark,
conducting necessary searches and market surveys prior to its adoption.
The petitioner had developed a distinct trade dress, featuring artistic
elements that has become well-known, especially in the Eastern and North-
Eastern states of India. The label design includes:
Page 21 of 34
a. A two-line black border with “ARHAM” and a red Swastik,
b. “100% Pure” in an elliptical greendevice at the top,
c. A shield-like green device with a red semi-hexagon and Swastik.
d. The word "ARHAM" prominently in red.
e. "BRAND" in green and "PREMIUM QUALITY RICE / ANDHRA SPECIAL
RICE" in red.
f. The petitioner's name and address at the bottom, labelled "Packaged
& Marketed by" in red and green.
The overall color scheme consists of green, black, and red. These artistic
features are referred to as the subject trade
dress/copyright/representation. The artistic work in question is registered
under Copyright No. A-89471/2010, making the petitioner the owner of the
copyright for the design used on poly bags and jute bags containing rice
and other cereal products, for which the petitioner is entitled to protections
under the Copyright Act, 1957, against unauthorized reproduction or
imitation of the same.
16.1 The learned trial court also found that the trade dress of the
petitioner had gained significant recognition, with the public associating its
distinct design and color exclusively with it and it had also published a
caution notice in leading Indian newspapers regarding the trade dress
featuring the name “ARHAM,” to assert its rights.Thereafter, in June 2024,
the petitioner had received complaints about poor-qualityrice sold under a
similar trade dress featuring the Swastik symbol, misleading customers into
thinking it was from the petitioner. Thenthe matter was investigated which
revealed that inferior-quality rice branded as “JAY BABA” was being soldPage 22 of 34
using a design that closely resembles the petitioner’s registered trademark,
and this unauthorized use infringes on its copyright, as both the symbol
and trade dress have been copied, including the color scheme and wording
such as “100% Pure” and “SORTEX B.P.T RICE” and that the petitioner
believes that the O.P No. 1 is attempting to unfairly benefit from the
goodwill associated with the ARHAM brand. Upon discovering the same the
petitioner had issued caution notice in leading newspapers in India and
also issued notice to the O.P. No.1, on June 19, 2024, and theO.P No. 1,
denied the claims and continued using the similar trade dress and filed
caveats in Kolkata courts and has marketed the rice on platforms like Big
Basket. Consequently, the petitioner is facing damage to its reputation and
commercial interests.
16.2 Thereafter, the learned trial court went on to observe that -“at this
stage, without addressing the merits of the caseand on careful reviewed
the contentions of the petitioner, alongside the submitted documents, it is
evident that the petitioner is the owner of the copyright and trade dress
associated with the name “ARHAM.” It had also found that the O.Ps are
using a similar trade dress along with a composite mark for their own rice
products, which closelyresemble the petitioner’s trademark and trade
dress, and this usage constitutes a violation of the petitioner’s intellectual
property rights, causing significant inconvenience and harm to the
petitioner.
16.3 The learned trial court had also noted that- the petitioner holds a
registered copyright featuring artistic element, including a hand symbol
and the Swastika. And the O.P. No. 1 is using this symbol in the same color
and company style, along with descriptive terms such as “100% pure,”
Page 23 of 34
“Brand,” “Sortex,” and “BPT rice,” which constitutes a violation of the
petitioner’s trade dress and artistic design.
16.4 Thereafter, the learned trial court had held that – there is a bona fide
dispute between the petitioner and the O.Ps regarding the use of the same
copyright and artistic trade dress by O.P. No. 1, which goes to establisha
strong prima facie case in favor of the petitioner and that the alleged
actions of the O.Ps in violating the petitioner’s copyright and artistic design
result in greater inconvenience to the petitioner than what the O.Ps may
experience and that -at this stage, if the Court does not intervene in the
dispute, it is solely the petitioner who will suffer harm that may not be
quantifiable in monetary terms. This situation arises from the infringement
by O.P No. 1, who is selling rice of inferior quality under the petitioner’s
name.
16.5 The learned trial court observed that – there are elements of urgency
that warrant the granting of an injunction, potentially excluding the
mandatory notice requirement as per Order XXXIX Rule 3 of the CPC. If
the O.Ps are not restrained through an ad-interim temporary injunction,
the purpose of filing this Misc. Case may become futile, leading to multiple
proceedings. Thereafter, the learned trial court found that the three golden
principles of granting an injunction support the petitioner’s case.
Consequently, the petitioner is entitled to interim protection from the Court
and thereafter, it had granted ad-interim temporary injunction.
Appreciation:-
17. In the case in hand,from the pleadings and documents annexed
thereto and also from the submissions advanced by learned counsel for thePage 24 of 34
respondent No.1,reveals that the respondent No.1 has been using the
artistic work of ARHAM BRAND, which was registered on 01.12.2010, vide
No. A-89471/2010, with the Copy Right Office of Government of India
(Page No. 89 of the Interlocutory Application), and the same was first
published in the year 2001, and further it appears that the respondent
No.1 has been using „ARHAM‟ Trade Mark since 01.01.2001 vide Certificate
No. 584378, dated 22.11.2006, for goods and service details which relates
to their own rice, cereals, preparation made from cereals, spices bread,
biscuits confectionery, pastry, sauces products. The respondent No.1
herein is, thus, the owner of the copyright for the design used on poly
bags and jute bags, (sample of which are produced before this court at the
time of hearing), containing rice and other cereal products, and the
petitioner is entitled to protections under the Copyright Act, 1957, against
unauthorized reproduction or imitation of the same.
17.1 It also appears that the„trade dress‟of the respondent No.1 herein
got significant recognition, with the public associating its distinct design
and color exclusively with it. The respondent No.1 had also published a
caution notice in leading Indian Newspapers, regarding the „trade dress‟
featuring the name “ARHAM,” to assert its rights.But, in the month of June
2024, the respondent No.1had received complaints about poor-qualityrice,
being sold under a similar „trade dress‟ featuring the Swastik symbol, and
as contended, it misleads the customers.Thenon enquiry it had found that
inferior-quality of rice branded as “JAY BABA” was being sold using a
design which closely resembles the petitioner’s registered trademark. The
symbol and trade dress have been copied, including the color scheme and
wording such as “100% Pure” and “SORTEX B.P.T RICE” and is using this
symbol in the same color and company style which constitutes a violation
Page 25 of 34
of the respondent No.1‟s „trade dress‟ and „artistic design‟ and thereby, the
appellant has been attempting to unfairly benefit from the goodwill
associated with the ARHAM brand of the respondent No.1. This
unauthorized use infringes on its copyright, of the respondent No.1.
17.2 The trade mark and trade dress being used by the respondent No.1
and the appellant are shown below for ready reference:-
17.3 The respondent No.1 then had issued caution notice in leading
Newspapers in India and also issued notice to the appellant on June 19,
2024.But,theappellant had denied the same and continued infringement of
copyright of the respondent No.1,using the similar „trade dress‟ and
thereby, it has been facing damage to its reputation and commercial
interests.
Page 26 of 34
17.4 Under the given facts and circumstances,there appears to be a bona
fide dispute between the appellant and the respondent No.1, regarding the
use of the same copyright and artistic „trade dress‟ by the appellant, which
goes a long way to establish a strong prima facie case in favor of the
respondent No.1. The actions of the appellant caused greater
inconvenience to the respondentNo.1 than what the appellant may
experience.And the relief claimed was urgent in nature otherwise the
respondent No.1 would havesuffered from irreparable loss and injury and
as such, there was a requirement to protect the respondent No.1 herein.
18. It is to be noted here that while dealing with Order 39 Rule 1(c)
CPC, Hon‟ble Supreme Court, in the case ofDalpat Kumar vs. Prahlad
Singh,reported in(1992) 1 SCC 719,has held as under:-
‚5. Therefore, the burden is on the plaintiff by
evidence alinude by affidavit or otherwise that there
is ‚a prima facie case‛ in his favour which needs
adjudication at the trial. 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.
Satisfaction that there is a prima facie case by itself
is not sufficient to grant injunction. The Court
further has to satisfy that non-interference by the
Court would result in ‚irreparable injury‛ to the party
seeking relief and that there is no other remedy
available to the party except one to grant injunction
and he needs protection from the consequences of
apprehended injury or dispossession. IrreparablePage 27 of 34
injury, however, does not mean that there must be no
physical possibility of repairing the injury, but means
only that the injury must be a material one, namely one
that cannot be adequately compensated by way of
damages. The third condition also is that ‚the balance
of convenience‛ must be in favour of granting
injunction. The Court while granting or refusing to
grant injunction should exercise sound judicial
discretion to find the amount of substantial mischief
or injury which is likely to be caused to the parties,
if the injunction is refused and compare it with that
which is likely to be caused to the other side if the
injunction is granted. If on weighing competing
possibilities or probabilities of likelihood of injury
and if the Court considers that pending the suit, the
subject matter should be maintained in status quo, an
injunction would be issued. Thus the Court has to
exercise its sound judicial discretion in granting or
refusing the relief of ad interim injunction pending
the suit.‛
19. In the case in hand, the aforesaid requirement appears to be taken
note of by the learned trial court in the impugned order. Also it appears
that thefactors,whichshouldweighwiththecourtinthegrant of ex-parte
injunction, so laid down in the case of Morgon Stanley Mutual Fund
(supra), were also taken note of by the learned trial court.
19.1 In respect of prima-facie case, the learned trial court in no uncertain
term, in the impugned order, had held that – there is a bona fide
dispute between the petitioner and the O.Ps regarding the
use of the same copyright and artistic trade dress by O.P.
No. 1, which goes to establish a strong prima facie case in
favor of the petitioner.
Page 28 of 34
19.2 The learned trial court also, in respect of balance of convenience had
held that – the alleged actions of the O.Ps in violating the
petitioner’s copyright and artistic design result in greater
inconvenience to the petitioner than what the O.Ps may
experience.
19.3 The learned trial court also held that -at this stage, if the
Court does not intervene in the dispute, it is solely the
petitioner who will suffer harm that may not be quantifiable
in monetary terms. This situation arises from the infringement by O.P
No. 1, who is selling rice of inferior quality under the petitioner’s name.
20. Though the appellant herein had taken a stand that the parties have
been exchanging correspondences for a substantial period of time, and
hence, there could have been no urgency in moving the matter ex-parte,
without satisfying and/or complying with the mandatory provision of
Section 12A of the Commercial Courts Act, 2015, as it was evident that
there was no urgency in the matter at all, and as such the trial court had
erred in granting dispensation of the mandatory provisions of the
Commercial Courts Act, 2015, yet it appears that prior to filing of the suit,
the respondent No.1 had issued to the appellant company Cease and
Desist Notice on June 19 of the year 2024, calling upon the appellant
company to cease immediately from using such identical packaging and
the appellant had given its reply on 20th June, 2024 refusing to comply
with the requisition of the Cease and Desist Notice. Thereafter, counter
reply was served upon the appellant company on 06.07.2025, and in
response thereto the appellant company on 20.07.2024 had refused to
comply with the same. Thus, the respondent No.1 has contended that the
Page 29 of 34
process of mediation, as contemplated under Section 12-A of the
Commercial Courts Act stands foreclosed and stood executed and being
left with no option, the respondent No.1 was forced to institute the suit.
20.1 And taking note of the urgency of the relief being sought for, the
learned trial court had waived the said provision by observing in the
impugned order that- ‚Additionally, there are elements of
urgency that warrant the granting of an injunction,
potentially excluding the mandatory notice requirement as
per Order XXXIX Rule 3 of the CPC. If the O.Ps are not
restrained through an ad-interim temporary injunction, the
purpose of filing this Misc. Case may become futile, leading
to multiple proceedings.It is also observed that- ‚Therefore,
based on the above discussion, this Court finds that the
three Golden Principles of granting an injunction support
the petitioner’s case. Consequently, the petitioner is
entitled to interim protection from the Court.‛
20.2 It is fact that the learned trial court had in fact made no reference to
Section 12A of the Commercial Courts Act, in the impugned order. Instead,
it had referred to the mandatory notice requirement as per Order XXXIX
Rule 3 of the CPC.But, it is well settled in the case of YaminiManohar v.
T.K.D. Keerthi, reported in (2024) 5 SCC 815, that Section 12A of
the Commercial Courts Act does not contemplate leave of the court, as is
clear from the language and words used therein. Nor does the provision
necessarily require an application seeking exemption. An application
seeking waiver on account of urgent interim relief setting out grounds and
reasons may allay a challenge and assist the court, but in the absence of
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any statutory mandate or rules made by the Central Government, an
application per se, is not a condition under Section 12A of the Commercial
Courts Act; pleadings on record and oral submissions would be sufficient.
20.3 Hon‟ble Supreme Court in the case of YaminiManohar (supra)
while dealing with the issue, has also held as under:-
‚10. We are of the opinion that when a plaint is filed
under the CC Act, with a prayer for an urgent interim
relief, the commercial court should examine the nature
and the subject-matter of the suit, the cause of
action, and the prayer for interim relief. The prayer
for urgent interim relief should not be a disguise or
mask to wriggle out of and get over Section 12-A of the
CC Act. The facts and circumstances of the case have to
be considered holistically from the standpoint of the
plaintiff. Non-grant of interim relief at the ad
interim stage, when the plaint is taken up for
registration/admission and examination, will not
justify dismissal of the commercial suit under Order 7
Rule 11 of the Code; at times, interim relief is
granted after issuance of notice. Nor can the suit be
dismissed under Order 7 Rule 11 of the Code, because
the interim relief, post the arguments, is denied on
merits and on examination of the three principles,
namely : (i) prima facie case, (ii) irreparable harm
and injury, and (iii) balance of convenience. The fact
that the court issued notice and/or granted interim
stay may indicate that the court is inclined to
entertain the plaint.‛20.4 In the case in hand, perusal of the plaint, so presented before the
learned trial court, indicates that there is prayer for leave under Order II
Rule 2 of the CPC for exemption of the necessary requirements of SectionPage 31 of 34
12A of the Commercial Courts Act and claims. Not only in the plaint, but
also in the Misc. Application for ad-interim injunction,the respondent
prayed for leave under Section 12-A of the Commercial Court Act and leave
under Order II Rule 2 of the CPC. And as held in the case
ofYaminiManohar (supra) the observation made by the learned trial
court in the impugned order dated 10.01.2025, viz.-‘If the O.Ps are
not restrained through an ad-interim temporary injunction,
the purpose of filing this Misc. Case may become futile,
leading to multiple proceedings’ and further that „Consequently,
the petitioner is entitled to interim protection from the
Court’ goes to show that the learned trial court had applied its mind
while granting the relief.
21. That, with regard to the contention of the appellant that only the
Courts at Kolkata Court has the jurisdiction, wherein the appellant had filed
caveat and to vitiate the same, the respondent No.1 herein had instituted
the case at Guwahati, yet, the said contention of the appellant and the
submission of learned counsel for the appellant had left this court
unimpressed in as much as it is not in dispute that the respondent No.1
has its office at Guwahati and has its business. And in view of the
proposition of law, so laid down in the case ofSanjoy Dalia &Anr.
(supra),no fault can be found with the respondent No.1 herein, in
instituting the suit at Guwahati. Notably, in the said case,Hon‟ble Supreme
Court in para No.52, held as under:-
‚52. In our opinion, the provisions of Section 62 of
the Copyright Act and Section 134 of the Trade Marks
Act have to be interpreted in the purposive manner. No
doubt about it that a suit can be filed by thePage 32 of 34
plaintiff at a place where he is residing or carrying
on business or personally works for gain. He need not
travel to file a suit to a place where the defendant is
residing or cause of action wholly or in part arises.
However, if the plaintiff is residing or carrying on
business, etc. at a place where the cause of action,
wholly or in part, has also arisen, he has to file a
suit at that place, as discussed above.‛FINDING:-
22. Thus, having examined the impugned injunction order, dated
10.01.2025 so passed by the learned trial court in exercising its
discretionary power, this Court is unable to derive satisfaction that the
discretion was exercised arbitrarily, capriciously and perversely, ignoring
the settled principles of law. As held in the case of Ramdev Food
Products (P) Ltd. (supra) and in Wander Limited (supra), unless
exercise of discretion is shown to be arbitrary, this Court is not in a
position to interfere with the same.
23. The learned Senior counsel for the appellant and the respondent
No.1 has raised several other issues before this Court and also referred
several decisions in support of their respective argument. But, to decide
the present appeal, reference to all those issues and the decisions, are
found to be not warranted. Therefore, detailed discussion of the same is
found to be not necessary here in this appeal.
24. In the result, and in view of foregoing discussion,this court is of the
view that no interference of the impugned order of injunction, dated
10.01.2025, so passed by the learned trial court is warranted at this stage.
Accordingly, the interlocutory application being I.A.(Civil) No.325/2025
Page 33 of 34
stands dismissed and the interim order dated 10.02.2025, stands vacated
forthwith.
25. Since the injunction petition is pending before the learned trial court
for disposal, this appeal stands remanded to the learned trial court, with a
direction to proceed with the injunction application pending before it and
shall dispose of the same within the stipulated period, after hearing both
the parties.
26. The parties have to bear their own cost.
Sd/- Robin Phukan
JUDGE
Comparing Assistant
Page 34 of 34