Gujarat High Court
Iconic Ip Interests Llc vs M/S Shiv Textiles on 9 May, 2025
Author: Sunita Agarwal
Bench: Sunita Agarwal
NEUTRAL CITATION
C/SCA/1543/2025 CAV JUDGMENT DATED: 09/05/2025
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Reserved On : 12/02/2025
Pronounced On : 09/05/2025
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/SPECIAL CIVIL APPLICATION NO. 1543 of 2025
FOR APPROVAL AND SIGNATURE:
HONOURABLE THE CHIEF JUSTICE MRS. JUSTICE SUNITA AGARWAL
and
HONOURABLE MR. JUSTICE PRANAV TRIVEDI
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Approved for Reporting Yes No
✔
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ICONIC IP INTERESTS LLC
Versus
M/S SHIV TEXTILES
==========================================================
Appearance:
MR. ANSHIN DESAI, SR. ADV. WITH MR.BHASH H MANKAD(6258) for the
Petitioner(s) No. 1
KAMAL J UPADHYAYA(7469) for the Respondent(s) No. 1
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CORAM:HONOURABLE THE CHIEF JUSTICE MRS. JUSTICE
SUNITA AGARWAL
and
HONOURABLE MR. JUSTICE PRANAV TRIVEDI
CAV JUDGMENT
(PER : HONOURABLE MR. JUSTICE PRANAV TRIVEDI)
1. By way of present petition, the petitioner seeks to
challenge legality and proprietary, validity and
correctness of the order dated 22.11.2024
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(hereinafter referred to as ‘the impugned order’)
passed by 2nd Additional District Judge, Bhavnagar
(hereinafter referred to as ‘the learned Court’) below
Exh-13 in Commercial Trade Mark Suit No. 1 of
2023.
2. Brief facts leading to filing of the present writ
petition is that the petitioner is a limited liability
corporation incorporated under the laws of the State
of Delaware, United States of America (USA) and,
inter alia, engaged in the business of licensing
intellectual property rights to businesses and
collecting royalties from such businesses. The
petitioner is a subsidiary of Highlander Partners
L.P., a Dallas, U.S.A based private investment firm,
which is the owner of the “JOLLY RANCHER” mark
and also its variations.
3. It is the case of the petitioner that initially the mark
“JOLLY RANCHER” and its variations in relation to
Confectionery and other products were granted to
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Huhtamaki Finance B.V. which, inter alia, granted
rights of the mark Hershey Chocolate &
Confectionery Corporation. There was a licence
agreement between Huhtamaki Finance B.V and
Hershey Chocolate & Confectionery Corporation ,
which has resulted into Hershey Chocolate &
Confectionery Corporation being granted an
exclusive licencee to use the mark “JOLLY
RANCHER” and its variations in relation to goods
and/ or services world wide, including in India. In
furtherance, Huhtamaki Finance B.V. transferred all
rights, title and interest in the “JOLLY RANCHER ”
mark and its variations to the present writ
petitioner. Owing to this transfer, the petitioner
became licensor in the licence agreement with
Hershey Chocolate & Confectionery Corporation for
the mark “JOLLY RANCHER”, which continued and
subsists till date. Therefore, the petitioner is the
proprietor of valid and subsisting trade-mark
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registration for the petitioner “JOLLY RANCHER”
mark in India, which is initially in Class 15.
4. It is the case of the petitioner that they have been
using “JOLLY RANCHER” mark in more than forty
variants of confectionery and candy products, as
well as merchandise, such as ready-made clothing,
footwear, cosmetics, lip balms and fashion
accessories; pillows, breakfast cereal, soft drinks all
over the world, including in India. It was the case of
the petitioner that they first learnt about the mark
“JOLLY RANGER LEGWEAR”, which was used by M/
s. Shiv Textiles (hereinafter referred to as ‘the
respondent’) in March, 2023. Such mark was
discovered during the routine search of the records
of the Trade Marks Registry. On a further inquiry, it
was found that the respondent’s registration for the
“JOLLY RANGER LEGWEAR ” device mark under the
provisions of Trade Mark Act, 1999 (hereinafter
referred to as ‘the Act’) was done by the respondent
and it had obtained registration No. 4075126,
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covering jeans / pants in Class 25 of the Act. The
registration was dated 2.2.2019 and was obtained
on the basis of use claim from January 1, 2019.
Immediately on coming to know about respondent’s
registration for device mark “JOLLY RANGER
LEGWEAR”, the petitioner initiated investigation
which lead to sending a legal notice on 28.4.2023 to
the respondent putting them on notice of the
petitioner’s right in the petitioner’s “JOLLY
RANCHER” marks and further demanding, inter
alia, that the respondent cease from using the mark
“JOLLY RANGER”.
5. Pursuant to the notice issued by the petitioner,
respondent gave a reply on 8.5.2023 claiming that
the term “JOLLY” is common name/ term, and no
person can claim exclusive rights over the world. It
was the case of the respondent that they had
honestly adopted the JOLLY RANGER marks in the
year 2019. Resultantly, the respondent refused to
comply with any of the petitioner’s demand.
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Subsequent notice was issued by the petitioner on
9.6.2023, which was replied by the respondent on
30.6.2023.
6. On 17.8.2023, the petitioner sent a letter to the
respondent to amicably resolve the matter and
asking to comply with the demand made by the
petitioner. There was no response by the respondent
to notice dated 17.8.2023. However, instead of
replying to the notice of the petitioner, respondent
preferred a suit before the learned District &
Sessions Court, Bhavnagar, which came to be
numbered as Commercial Trademark Suit No. 1 of
2023.
7. Pursuant to the suit filed by the respondent,
petitioner also preferred a suit along with Hershey
Company against the respondent before the Delhi
High Court for permanent injunction restraining
trademark infringement of its JOLLY RANCHER
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marks by the respondent as well as for passing off of
trademark, acts of trademark, acts of unfair
competition, seeking damages/ rendition of
accounts, delivery up and other appropriate reliefs.
The suit filed before the Delhi High Court came to
be numbered as CS (COMM) 870/2023. Along with
the Civil Suit, the petitioner also filed a petition on
6.12.2023 before the Hon’ble Delhi High Court
under Section 57 of the Act seeking cancellation of
registration number 4075126 for the trademark
“JOLLY RENGER LEGWEAR” Device in Class-25
given to the respondent. The petitioner further
initiated proceedings for registration of petitioner’s
trademark application namely application No.
5970539 for registration of “JOLLY RANCHER” mark
in Class-25 before the Trade Mark Registry. This
application was made on 3.1.2024.
8. Subsequent to the suit being filed by the respondent,
the petitioner preferred an application under the
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provisions of Order VII Rule 11 of the Code, which
was rejected by the learned Court by way of
impugned order dated 22.11.2024, which has
resulted into the present writ petition under Article
227 of the Constitution of India.
9. It was the case of the petitioner that the respondent
has carefully obfuscated facts regarding the
petitioner’s “JOLLY RANCHER” marks with an
intention to mislead the Court. It was the case of the
petitioner that the respondent in the Civil Suit claim
to be the prior adopter of the “JOLLY RANGER”
Marks than the petitioner’s adoption and use of the
“JOLLY RANCHER” Marks.
10. It was the case of the petitioner that respondent’s
registration mark “JOLLY RANGER” Marks were
were only adopted in the year 2019. This adoption
admittedly is subsequent to the adoption and use of
petitioner’s “JOLLY RANCHER” Marks, which
precedes such adoption and/ or use by decades.
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Therefore, it was the case of the petitioner that he is
clearly the prior user of the petitioner’s “JOLLY
RANCHER” Marks. It was the case of the petitioner
that respondent’s registration mark “JOLLY
RANGER LEGWEAR” Device Mark cannot, in any
manner, interfere with the petitioner’s use of “JOLLY
RANCHER” Marks. The respondent was very well
aware of such prior rights of the petitioner in the
“JOLLY RANCHER” Marks, and despite such
knowledge, knowingly and willfully the plaint is
preferred by cleverly drafting to harass the
petitioner and by making false and frivolous
allegations. However, without considering the fact
as raised by the petitioner and also the fact that the
claim of the petitioner that the suit appears to be
bad by law, the learned Court by way of impugned
order, has rejected the application below Exh-13 in
Commercial Suit No. 1 of 2023.
11. We have heard Mr. Anshin Desai, learned senior
advocate assisted by Mr. Bhash Mankad and Mr.
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Valmik Vyas, learned advocates for the petitioner
and Mr. Kamal Upadhyaya, learned advocate for the
respondent.
12. It was submitted by Mr. Anshin Desai, learned
senior counsel for the petitioner that the impugned
order is erroneous on the principles of law and also
on facts. The learned Court has misinterpreted the
facts and relevant laws against the petitioner. The
petitioner challenges the fictitious cause of action
created by the respondent solely on the basis of
reading the plaint and documents on record. The
learned Court has arrived at an erroneous
conclusion for dismissal of application under
provision of Order VII Rule 11. According to Mr.
Desai the plaint is liable to be dismissed if it does
not disclose the cause of action. The plaint must
include some act done by the defendant i.e. the
petitioner and in absence of any act, no cause of
action accrue or arise. As per Mr. Desai, there is a
distinct “material facts” and “particulars”. The
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material facts shows the facts which are necessary
to formulate a complete cause of action. In absence
of such material facts there was no cause of action
and the plaint ought to have been rejected on this
ground itself.
13. It was further submitted by Mr. Desai that the plaint
clearly indicates that the respondent was aware
about the petitioner’s right in the JOLLY RANCHER
Marks and failed to reveal the prior statutory rights
of the petitioner, despite being made aware of these
rights in the legal notices issued by the petitioner to
the respondent. It was case of the petitioner that the
statutory rights of the petitioner in JOLLY
RANCHER Marks insofar it pertains to India, can
also be verified from the online records of the Trade
Mark Registry, which are publicly accessible in
nature. The registration granted to the petitioner for
the JOLLY RANCHER Marks act as prime facie
evidence of validity as per Section 31 of the Act, and
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thus, these registrations ought to have been
revealed to the learned Court especially when the
respondent is asserting prior rights in its JOLLY
RANCHER Marks.
14. Mr. Desai, learned senior counsel relying on the
decision of the Hon’ble Apex Court in case of Mudhit
Madanlal Gupta v. Mazher Khan Farooqui & Anr.
reported in 2022 SCC OnLine Bom 7183, submitted
that if a party which has complete knowledge of the
real facts deliberately suppresses or does not
expressly refers to the same, which is adverse to
the party pleading it, so as to camouflage the other
facts and by clever drafting and create an illusionary
cause of action, the Court cannot turn a blind eye to
such aspects, when such facts, which are not
disclosed are otherwise apparently found/ revealed
from the pleadings as well as documents attached to
it. Therefore, according to Mr. Desai, learned senior
counsel it was an important and crucial duty cast on
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the court to check whether there was any material
suppression of facts as averred by the petitioner in
its Order VII Rule 11 application.
15. It was further submitted by Mr. Desai, learned
senior counsel that learned Court has not
determined whether the suit of respondent is bad in
law owing to non-joinder of necessary parties to the
suit. The petitioner had disclose the factum of
relationship between the petitioners and Hershey
Company in the legal notices sent by the petitioner
to the respondent. Therefore, the respondent was
aware of the fact that in absence of necessary party
i.e. The Hershey Company, neither an effective
decree can be passed, nor can the issues raised in
the present suit be finally decided. Therefore, if
necessary party is not impleaded, the suit itself is
liable to be dismissed.
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16. It was further submitted by Mr. Desai that the
underlying object of Order VII Rule 11 of the Code is
that if in a suit, no cause of action is disclosed, the
Court would not permit the plaintiff to unnecessarily
protract the proceedings of the suit and it would be
necessary to to put an end to the sham litigation. It
is the duty of the Court to determine that a litigation
which is doomed to fail, should not be allowed and
used as a device to harass a person.
17. Per contra, Mr. Kamal Upadhyaya, learned advocate
for the respondent has submitted that the present
petitioner- original defendant has sent them notice
under the provisions of the Act for infringement of
the trade-mark. Further, the respondents have also
applied for registration under Clause-25 of the Trade
Marks Act, which has been opposed by the
petitioner. Therefore, the cause of action has arisen
to file the suit. It was further submitted by Mr.
Upadhyaya that the cause of action arose to file the
Suit on 28.4.2023 when they received the notice
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from the petitioner and came to know that the
petitioner is using trade-mark “JOLLY RANCHER’
which is identically, deceptively and confusingly
similar to the respondent’s trade-mark “JOLLY
RANGER’. Subsequent to the issuance of the notice,
a reply was given to the petitioner on 8.5.2023.
Another notice came to be issued on 9.6.2023 and a
third notice on 17.8.2023.
18. It was further submitted by Mr. Upadhyaya that the
petitioner filed a trade-mark application to claim
monopoly over the trade-mark “JOLLY RANCHER”
and they are still using the mark “JOLLY RANCHER”
in respect of their goods. Therefore, the cause of
action is continuous and recurring one and continue
to subsist and arise afresh on day-to-day basis, till
such time the defendant-petitioner will desist the
use of the registered trade-mark “JOLLY RANGER’.
In view of the fact that there is a cause of action to
file the suit. The respondent herein namely the
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original plaintiff is a registered proprietor of trade-
mark “JOLLY RANGER” and is doing business
activity within the area of Bhavnagar which is within
the territorial jurisdiction of this Court and,
therefore, the learned Court has the jurisdiction to
entertain the suit. In wake of such submissions, it
was further submitted by Mr. Upadhyaya that it is a
settled position of law that while deciding
application under Order 7 Rule 11 of the Code, the
Hon’ble Court will look into only plaint /
avermentsand the documents filed by the plaintiff
along with the plaint. The arguments canvassed by
the petitioner are very vague and cannot be
entertained to reject the suit under order VII Rule
11 CPC.
19. Having heard the learned counsels for the parties
and perused the material on record. The main crux
and thrust of argument advanced by the learned
Counsels appearing for both the parties is with
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regard to the cause of action. The pertinent
question, thus, would be whether the petitioner
having sent a notice to the respondent asking to stop
using the trade-mark, will give rise to a cause of
action or if the petitioner – original defendant has
filed an application for registration of a trade mark,
may be deceptively similar to that of the plaintiff,
when other remedies are available to the plaintiff
will give rise to a cause of action to file the suit of
infringement. The pleadings along with the
documents along with plaint, in the instant case
placed on record would clearly show that the goods
in question are not distributed or manufactured by
the petitioner-original plaintiff within the territorial
jurisdiction of the Country. The documents
appended from Page-’13’ to ’16’ would only show
that the goods of the defendants are sold at a
website call ‘AMAZON’ (USA), which is a website
originated in USA and the defendant is having a
mark which is registered in USA. It is true that the
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subsidiary Company, i.e the present defendant has
applied for registration of the mark in the territorial
jurisdiction of India but they are neither
manufacturing nor selling their goods in the
territorial jurisdiction of India. The only sale that is
taking place is through a mark which is registered in
USA and on a website which is registered in USA.
20. Therefore, the pertinent question would be when a
customer uses such goods from a website which is
registered in USA and a mark which is registered in
USA, then whether such action would give rise to
cause of action of filing of the suit of infringement
within the territorial jurisdiction of a Court in India.
21. Strong reliance was placed on the decision of
Division Bench of the Delhi High Court in the case of
Banyan Tree Holding (P) Limited v. A. Murali
Krishna Reddy & Anr., reported in 2009 SSC OnLine
Delhi 3780.
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22. However, the question is intrinsically different from
the fact of that case. In case of Banyan Tree Holding
(P) Limited v. A. Murali Krishna Reddy & Anr.
(Supra), the goods were manufactured in India, but
were not sold or manufactured within the territorial
jurisdiction of the Court where the Suit was filed.
However, in the instant case, there is an
international mark and an international website
from which the goods are sold. For the purpose of
establishing that a part of cause of action arose
within the jurisdiction of the Court, In India, the
plaintiff would have to show that the defendant has
purposefully availed the jurisdiction of the Forum
Court by entering into a commercial transaction
with an internet user located within the jurisdiction
of the Forum Court. It would have to be a real
commercial transaction that the defendant had
entered into with the website users specifically
targeting the jurisdiction of the Forum Court which
would result in injury or harm to the plaintiff.
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23. In the instant case, the evidence produced by the
plaintiff is with regard to the website which is
registered in USA and selling the goods with a mark
registered in USA. The respondent i.e. the original
plaintiff has not been able to establish that the use
of the website was with an intention to complete or
conclude transaction specifically targeting the
consumers base where the plaintiff’s goods were
stored.
24. In view of the same, there cannot be any cause of
action for filing a suit for infringement by the
plaintiff. Resultantly, the impugned order passed by
the learned trial Court dismissing the application
under Order VII Rule 11 of Code of Civil Procedure
is hereby quashed and set-aside on the basis of the
observations made hereinabove. It can be
specifically inferred that there was no cause of
action for the plaintiff to file the plaint and,
therefore, the plaint is to be rejected under the
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provisions of Order VII Rule 11(a) of the Code of
Civil Procedure. The writ petition stands allowed.
(SUNITA AGARWAL, CJ )
(PRANAV TRIVEDI,J)
SAJ GEORGE
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