Delhi High Court
Krb Enterprises & Ors vs M/S. Krbl Limited on 26 May, 2025
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 25.02.2025
Pronounced on: 26.05.2025
+ FAO (COMM) 69/2024, CM APPL. 23568/2024 and CM
APPL. 23569/2024
KRB ENTERPRISES & ORS. .....Appellants
Through: Mr. Rajshekhar Rao, Sr. Adv.
with Mr. Sumit K. Batra, Mr.
Manish Khurana, Mr. Ajay
Sabharwaland Ms. Priyanka
Jindal, Advs.
versus
M/S. KRBL LIMITED .....Respondent
Through: Mr. Jayant Mehta, Sr. Adv.
with Mr. Aniruddha Bakhru,
Mr. Shravan Kumar Bansal,
Mr. Rishi Bansal, Ms.
Kanupriya Sabharwal, Ms.
Ayushi Arora and Mr. Ranjit
Sinha, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
HON'BLE MS. JUSTICE SHALINDER KAUR
JUDGMENT
1. The present Appeal has been filed under Section 13 (1A) of the
Commercial Courts Act, 2015 (in short, „CC Act‟), challenging the
Order dated 21.02.2024 („Impugned Order‟) passed by the Court of
the learned District Judge (Commercial Courts) (Digital-4), South
District, Saket Courts, Delhi in CS(COMM) No.430/2022, titled M/s
KRBL Limited v. KRB Enterprises & Ors., whereby the learned
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 1 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
District Judge has been pleased to pass an ad-interim order of
injunction against the appellants in terms of paragraph 4(a) of the
application filed by the Respondent herein under Order XXXIX Rule
1 & 2 of the Code of Civil Procedure, 1908 (in short, „CPC‟).
FACTUAL BACKGROUND
2. The Appellant No.1/M/s KRB Enterprises is a partnership firm
of Mr. Basant Kumar Jindal, Mr. Krishan Jindal, and Mr. Sanjay
Jindal. The Appellant No.2/M/s KRB Rice Mills Private Limited is a
company registered under the provisions of the Companies Act, 2013.
The Appellant No.3 is Mr. Rajesh Kumar Jindal, the proprietor of
M/s. Jindal Traders. The Appellants herein are engaged inter alia in
the business of manufacturing, trading, and marketing goods such as
rice, coffee, sugar etc., which forms part of Class 30 for the purpose
of trademark registration under the Trade Marks Act, 1999
(hereinafter referred to as „the Act‟).
3. The present Appeal revolves around an alleged infringement of
the trademark of the Respondent „KRBL LIMITED ALONG WITH
DEVICE PADDY FORMING THE SHAPE OF DIAMOND‟
„ ‟ (hereinafter referred to as the „Respondent‟s Mark‟), on
account of usage of allegedly deceptively similar mark
„KRB‟ (hereinafter referred to as the „Appellant‟s Mark/
Impugned Mark‟) by the Appellant.
Case of the Respondent:
4. The respondent has filed the above Suit claiming therein that it
is engaged in the business of manufacturing, processing, marketing,
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 2 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
selling and exporting of food products such as rice, quinoa, chia
seeds, flax seeds, etc. It was incorporated as M/s Khushi Ram Bihari
Lal Ltd. in the year 1993 and later, in the year 2000 its name was
changed to KRBL Ltd. The respondent claimed that it has been using
the trade name KRBL Ltd. and the Respondent‟s Mark since the year
2000.
5. The respondent, in the Suit, claims that the word „KRBL‟ and
devise of paddy are both essential features of the Respondent‟s Mark.
It claimed that the said trademark is also registered under the Act vide
registration nos.1352767 and 3664458.
6. The Respondent claimed that the artistic feature involved in its
trademark is an original artistic work under the Indian Copyright Act,
1957, and has been registered bearing No. A-68191/2005.
7. The Respondent further claimed in the Suit that „KRBL‟ also
forms essential part of its other group companies namely KRBL Food
Ltd., KRBL Foundation, KRBL Infrastructure Ltd., and KRBL Food
Ltd.
8. It is claimed by the Respondent that the said trademark is also
displayed prominently on its website, namely www.krblrice.com, and
forms dominant part of its domain name. It is claimed by the
Respondent that since the year 2000, it has been continuously and
openly using the said trademark as a proprietor thereof in relation to
its above-mentioned goods, businesses, and services, and has built a
valuable goodwill and reputation therein.
9. The Respondent gave the following figures of its sale qua the
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 3 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Respondent‟s Mark in the Plaint:
Year Revenue from
Operations (in Lacs)
2000-2001 25,892
2001-2002 40,217
2002-2003 58,948
2003-2004 47,539
2004-2005 50,274
2006-2007 72,476
2007-2008 99,653
2008-2009 1,24,546
2009-2010 1,57,901
2010-2011 1,55,127
2011-2012 1,63,135
2012-2013 2,08,034
2013-2014 2,79,131
2014-2015 3,11,301
2015-2016 3,35,885
2016-2017 3,14,787
2017-2018 3,4,644
2018-2019 4,11,957
2019-2020 4,49,864
2020-2021 3,99,188
10. The Respondent further claimed that it came across the
Appellant‟s Mark via the applications filed by the Appellants for
registration of trademark-KRB under No.2492500 and 2492501 in
the year 2016, and filed its notices of oppositions. The Respondent
claims that in the Market Inquiry, however, no goods and/or service
of the Appellant No.1 was found under the said trademark/label. It
was only in the last week of May 2022 that it came across the sale of
rice under the Impugned Trademark/label on various online
marketplaces. The respondent thereafter made a public search on the
website of the Trademark Registry and found that the Appellant No.3
has applied for registration of the Appellant‟s trademark under
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 4 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
No.4438483 in relation to rice, wheat, and flour on 12.02.2020,
claiming to be a user since 01.01.2017. The same had been objected
to by the Registrar itself in the examination report.
11. The Respondent further claimed that from the Master-Data
available on the website of Ministry of Corporate Affairs, it came to
know that the Appellant No.2 company has been incorporated on
21.07.2021, and the partners of Appellant No.1 are the directors of
the Appellant No.2. On inquiry in the market, it came to know that
the appellants are supplying rice under the Impugned trademark/label.
12. The Respondent filed the above Suit claiming that the
appellants are infringing its trademark/trade name and its copyright.
The Respondent further claimed that the Appellants are passing off
their goods as that of the Respondent, thereby, diluting the
Respondent‟s trademark/tradename, and indulging in unfair
competition resultantly causing irreparable loss, injury, damage and
prejudice to the Respondent.
Case of the appellants:
13. The Appellants filed their written statement in the above Suit
claiming therein that they are dealing in various goods like rice,
coffee, tea, etc. It was claimed that the Appellant Nos.1 and 2
adopted the Trademark KRB ENTERPRISES in relation to the said
goods and business in the year 2009 and have been continuously and
openly using the same without any hindrance or objection.
14. It was claimed that the Trademark KRB ENTERPRISES is an
inherent mark as the said initials of the mark KRB is of utmost
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 5 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
significance to the Appellants as initial „K‟ has been taken from the
name of the grandfather of Mr.Basant Kumar Jindal namely late
Mr.Kapoor Chand, while initial „R‟ is from his father‟s name, that is,
Mr.Ram Narayan Jindal, and initial „B‟ is from his own name.
15. The Appellants claimed that the trademark has been honestly
and bonafidely adopted by them, and they are the rightful proprietor
of the same due to their prior adoption of the mark. The Appellants
claimed that they have also applied for registration of the said mark
also in the label form, and the said applications are pending before
the Trademark Registry. The appellants gave the following sale
figures in their written statement:
FINANCIAL ANNUAL SALES
YEAR FIGURES (IN RUPEES)
2012-2013 1,74,00,009
2013-2014 19,37,34,353
2014-2015 30,41,57,141
2015-2016 38,69,75,618
2016-2017 54,09,41,741
2017-2018 78,39,46,090
2018-2019 78,55,56,254
2019-2020 78,23,67,567
2020-2021 76,02,06,723
2021-2022 87,12,84,810
16. Importantly, the appellants claimed that they have been
purchasing rice from the Respondent since the year 2014 and that the
Respondent was well aware about the existence of the Appellant
No.1 since then. The Appellants claimed that, therefore, the
Respondent has acquiescence in the use of the Trademark by the
Appellants.
17. The Appellants further claimed that the Respondent‟s
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 6 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
application being no.3664458, seeking registration of its mark under
Class-30, has not only been opposed by the Appellants but also has a
condition that the entire mark is to be used as a whole. The
Appellants, therefore, claim that no separate right in the alphabets
KRBL can be claimed by the Respondent. It was further claimed that
the Respondent also willingly cancelled its application no.941861
seeking registration of its mark, thereby abandoning the said
trademark.
18. Herein itself we may also note that in the Suit filed by the
Respondent, the Respondent has also impleaded M/s New KRB
Foods as Defendant No.4. At the time of passing of the Impugned
Order, the Defendant No.4 had not been served with the summons in
the Suit, however, has also been injuncted from the use of the mark
containing KRB. The Appellants, however, claimed that they have no
connection with the Defendant no.4 in the Suit. Therefore, it is not
necessary for this Court to consider the case set up by the Respondent
herein against the Defendant No.4 in the Suit.
Impugned Order:
19. As is noted hereinabove, the learned District Judge vide the
Impugned Order has passed an ad-interim injunction in favour of the
Respondent and against all the Defendants in the Suit, including the
Appellants herein, in terms of prayer made by the Respondent in
Paragraph 4 (a) of its application under Order XXXIX Rule 1 & 2 of
the CPC, which is reproduced hereinunder:
“(a) Pass a decree of interim injunction
restraining the defendants by themselves andSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 7 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
also through its individual
proprietors/partners/directors, agents,
representatives, distributors, assigns, heirs,
successors, stockiest and all others acting for
and on their behalf from using, selling,
soliciting, exporting, displaying, advertising,
including but not limited to through print,
visual or electronic media including on
internet, or by any other mode or manner
dealing in or using the impugned
trademark/label KRB and/or any other
word/mark/label/name which is identical with
and/or deceptively similar to the Plaintiff‟s
said trade mark and trade name
KRBL in relation to their impugned goods,
business & services of Rice and other food
grains and related/allied/cognate products
and from doing any other acts or deeds
amounting to or likely to:
(i) Infringement of Plaintiffs registered
trademark bearing registration no. 1352767
in class 35.
(ii) Infringement of Plaintiffs copyright in the
artwork of Plaintiff s said trade mark.
(iii) Passing off their goods as those of the
Plaintiff by use of the impugned
trademark/label KRB.
(iii) Passing off their goods as those of the
Plaintiff by use of the impugned
trademark/label KRB.”
20. Aggrieved of the above Order, the Appellants have filed the
present Appeal.
SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR
THE APPELLANTS:
21. Mr. Rajshekhar Rao, the learned Senior Counsel for the
Appellants submitted that the Respondent has admitted that it is not
using the Impugned Mark for its goods. He submitted that in terms of
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 8 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Section 2(2)(b) and Section 2(2)(c) of the Act, use of the mark has to
be upon or in any physical or other relation to the goods. He
submitted that the Impugned Order itself records that Respondent is
not selling goods under the tradename „KRBL‟ and, therefore, the
Respondent cannot claim any right in the same as a trademark. He
submitted that, therefore, no cause of action has arisen owing to the
Respondent‟s admitted non-use of the Respondent‟s Mark. He further
submitted that the trademark protection is contingent on actual use,
which is not the case herein. He also submitted that it is the own case
of the Respondent that they sell their products under trademarks such
as India Gate, Unity etc., and therefore, a trademark infringement
claim for the Respondent‟s Mark has not been made out under
Section 29 of the Act. In support, he placed reliance on Edward v.
Dennis, (1885) 30 Ch D 454, In re Ducker’s Trade Mark, [1929] 1
Ch.113, Thermax Trade Mark (1985) RPC 403, George Key Ld’s
TM (1953) (71) RPC, Have a Break Trade Mark, 1993 RPC Volume
10 and Sumant Prasad Jain v. Sheojanam Prasad, (1973) 1 SCC 56.
22. It was submitted that the Respondent‟s Mark is registered
under Class 35 and not Class 30. For the purpose of trademark
registration, goods and services are classified into different classes.
While the Classes 1 to 34 deal with „goods‟, those from Class 35
onwards deal with „services‟. Assuming that the mark of the
Respondent is registered under Class 35, the same would entitle it to
claim rights of its use only for the „services‟ for which it is registered,
and not over any goods mentioned in the other classes. Further, as per
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 9 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
the prayer made by the Respondent in the application under Order
XXXIX Rule 1 & 2 of the CPC, the Respondent only sought relief
against infringement of the mark in Class 35. The learned District
Judge, he submitted, has come to a wrong conclusion that the
Respondent would have a right over goods covered under Class 30 as
well. Reliance to this effect was placed on the decision of the
Supreme Court in Nandhini Deluxe v. Karnataka Coop. Milk
Producers Federation Ltd., (2018) 9 SCC 183 and that of the
Bombay High Court in Balkrishna Hatcheries v. Nandos
International & Anr., 2007 OnLine Bom 449.
23. He submitted that the Respondent had withdrawn its trademark
application under Class 30, as it had not used or ever intended to use
the said trademark. Even, when the Respondent sought re-registration
of the said mark in Class 30, it was on a „proposed to be used‟ basis,
which further shows that the mark was not being used.
24. The learned Senior Counsel submitted that the aspect of
confusing or deceptive similarity, which is sine qua non for any
successful action for infringement or passing off, is not established in
the present case. He submitted that the principles which have to be
looked into for establishing a case of infringement, as enunciated by
the Supreme Court in a plethora of judgements, have not been met by
the Respondent in the present case.
25. The learned Senior Counsel contended that the learned District
Judge, in terms of Section 134 of the Act as well as provisions of
Section 20 of the CPC, does not have the jurisdiction to entertain the
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 10 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
present Suit. He submits that the place of business of the Respondent
is at 5190, Lahori Gate, Naya Bazar, Delhi 110006, which falls under
the territorial jurisdiction of the Central District, Tis Hazari Courts,
however, the Suit has been instituted in the South District, Saket
Courts. In support, the learned counsel relied on the decisions in
Dhodha House v. S.K Maingi, (2006) 9 SCC 41, Jay Engineering
Works Ltd. v. Ramesh Aggarwal, 2006 SCC OnLine Del 1356,
Indian Performing Rights Society Limited v. Sanjay Dalia, (2015)
10 SCC 161, Shree Nath Heritage Liquor Pvt. Ltd. v. Octga Green
Power & Sugar Co.Ltd., 2017 SCC OnLine Del 9137.
26. He submitted that if the learned District Judge did not have any
jurisdiction to deal with the Suit, the very foundation for the Suit is
itself destroyed, and no relief could have been granted to the
Respondent. In support of this, he placed reliance on the Judgments
in Coal India Ltd. vs Ananta Saha (2011) 5 SCC 142, State of
Punjab vs Davinder Pal Singh Bhullar (2011) 14 SCC 770 and
Devendra Kumar vs State of Uttranchal(2013) 9 SCC 363.
27. He further submitted that the Suit is barred by estoppel and
acquiescence as there is a gross delay of about eight years in filing of
the aforementioned Suit, as the Respondent was well aware of the
Appellants‟ goods, as they had been in business, in fact, even trading
with each other, since 2014. He submits that even otherwise, the
cause of action first arose when the Appellants first applied for the
registration of their mark and the Respondent came to know of the
same in the year 2016, which was then opposed by the Respondent.
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 11 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
The learned counsel relied on Section 33 of the Act and the decisions
in Power Control Appliances v. Sumeet Machines, (1994) 2 SCC
448, and M/s KRBL Limited v. Lal Mahal Ltd. & Anr.,2015 SCC
OnLine Del 13793.
28. It is submitted by the learned Senior Counsel that the
Respondent sold its rice in packets weighing less than 25 kgs,
however, in 2022, due to the amendment in the GST regime,
imposing 5% GST on rice packets weighing less than 25kgs, the
Respondent started selling its goods in packets of more than 25kgs in
order to avoid to GST on the same. The learned senior counsel
submitted that the Respondent had issues with the mark „KRB‟ being
used, only once the Appellants had tapped the wholesale market and
therefore, chose to file the captioned Suit, eight years after they
entered into the business together.
29. Further elaborating on the Anti-Dissection principle, which
implies that an unwary purchaser of average intelligence and
imperfect recollection would not split the name into its component
parts and consider the etymological meaning thereof, he submits that
the composite marks have to be considered in their entirety as an
indivisible whole, rather than dissecting them into parts of the
original mark. He submits that the learned District Judge has
dissected the Respondent‟s Mark and solely on this ground, granted
ad-interim relief to the Respondent. He relied upon the decisions in
Stiefel Labratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296,
Parle Products v. J.P &CO., AIR 1972 SC 1359, and Griffith v. Vick
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 12 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Chemicals, AIR 1956 CAL 654.
30. The learned Senior Counsel, alluding to the discrepancies in
the Impugned Order, submitted that in the present case, the essentials
of injunction, that are a prima facie case, balance of convenience, and
irreparable loss and injury, have not been met.
31. He submitted that the prayer clause 4(a) of the Respondent‟s
application could not be allowed in toto, as Sub-clause (ii) of the said
prayer demands an injunction for the infringement of the
Respondent‟s copyright in the artwork of the Respondent‟s said
trademark, which could not have been granted as the Appellant No.1
holds the copyright of the artistic work „KRB‟ vide registration No.A-
115592/2016 dated 02.08.2016. The Respondent, therefore, cannot
claim ignorance of the registration of the copyright of the Appellant
No.1, especially while claiming protection of copyright.
32. Concluding his submissions, the learned Senior Counsel
contended that the learned District Judge has erred in passing the
Impugned Order against the Appellant No.2, as the Appellant No.2
was wrongly impleaded in the aforementioned commercial suit. The
financial statements of the Appellant No.2 show that it had no
revenue from operations in the said year, let alone from using the
trademark „KRB‟.
33. In these facts, he submitted that the Appeal be allowed, and the
Impugned Order be set aside.
SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR
THE RESPONDENT
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 13 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
34. Proceeding to controvert the submissions of the Appellant, Mr.
Jayant Mehta, learned Senior Counsel for the Respondent contended
that the Respondent is the registered proprietor of the trademark
in Class 35 in relation to advertising, distribution,
marketing, wholesale, and retail services relating to all kinds of rice.
The application for the registration of the said trademark was filed by
the Respondent in 2005, with a user claim from 2001. The
Respondent has been using the said Mark since 2000, continuously,
honestly, and in the course of trade as a source identifier of its goods.
The Respondent has tremendous goodwill and reputation in the
market.
35. He submitted that the tradename can be protected as a
trademark if its use becomes a source identifier for the products. He
refers to Sections 2(m) and 2(2) of the Act and sought to draw
sustenance in support of aforesaid submission by relying upon the
decisions in Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002)
3 SCC 65, Jaquar Company Pvt Ltd. v. VilleroyBoch Ag & Anr.,
2023 SCC OnLine Del 2734, Montari Overseas Ltd. v. Montari
Industries Ltd,1996 16 PTC 142 OnLine Del 865, and Montari
Industries Ltd v. Montari Overseas Ltd., (1995) 15-PTC 399.
36. The learned Senior Counsel submitted that the Appellants are
in the business of sale/purchase of rice, which is identical to the
Respondent‟s goods and services. He submitted that the Appellants
have filed various trademark applications for the Impugned Mark
before the trademark registry. The claim of the Appellants that they
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 14 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
conducted a market research while adopting the Impugned Mark and
did not come across the mark of the Respondent, is malafide, and in
bad faith as the Respondent has been using the trademark „KRBL‟
since the year 2000. The Appellants and the Respondent conduct
business in the same vicinity, and it is untrue that the Appellants were
unaware of the Respondent being in the market.
37. Further, the trademark registry issued examination reports in
the year 2013 on the application filed by the Appellants, categorically
mentioning marks that were already on the register, also containing
the application details of the registered trademark „KRBL‟ in Class 30,
of the Respondent. The similarity in both the marks and the goods
surpasses identical resemblance, thereby showing a dishonest
adoption by the Appellants. Reliance was placed on the decisions in
Midas Hygiene Industries (P) LTD. & Anr v. Sudhir Bhatia & Ors,
(2004) 3 SCC 90, Sterling Agro Industries Limited v. AST Trading
Company & Ors., 2024 SCC OnLine Del 1145, T.V Venugopal v.
Ushodaya Enterprises Limited & Anr., (2011) 4 SCC 85, M/s Ansul
Industries v. M/s Shiva Tobacco Company, ILR (2007) I DELHI 409,
and Rolex SA v. Alex JewelleryPvt Ltd. & Ors., 2009 SCC OnLine
Del 753.
38. The learned Senior Counsel further submitted that the
Appellants were subsequent adopters of the Impugned Mark. The
Appellants have contended that they have adopted the mark from the
year 2009, however, they have not filed a single document to
establish the same. The earliest document relied upon by the
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 15 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Appellants is of the year 2011 and the use, even if assuming
arguendo, is sporadic. He submitted that an injunction must follow
once the three elements of passing off have been established, such as
in the present case. Reliance was placed on Laxmikant (supra) and
Mind Gym Ltd. v. Mindgym Kids Liberty Pvt Ltd., (2014) 58 PTC
270.
39. The learned Senior Counsel submitted that the Respondent was
the prior user of the Respondent‟s Mark which was duly registered
under Class 30 before the trademark registry on 24.07.2000, with the
user detail of 01.03.2000. The said trademark application was neither
under any opposition/objection nor was any cancellation filed against
such registration obtained by the Respondent. The Respondent filed
an application for the withdrawal/cancellation of the trademark only
because they were influenced by poor legal advice received during
the implementation of the GST regime in the country. On discovering
the mistake, the Respondent immediately applied for registration of
the said mark by filing another trademark application, one day after
their previous registration was cancelled. The argument of the
Appellants that the Respondent abandoned the rights in the mark
„KRBL‟ cannot be sustained. While relying on McCarthy Law on
Trademark, he submitted that the intention to abandon is necessary,
before it could be found that a mark has been legally abandoned by
non-use. There has to be satisfactory evidence of definitive acts
indicating an intention to permanently give up the mark. He placed
reliance on McCarthy on Trademarks- Chapter 17, Loss of
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 16 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Trademark Rights and Hardie Trading Ltd. & Anr. v. Addisons
Paint and Chemicals Ltd., (2003) 11 SCC 92.
40. The learned Senior Counsel submitted that the Appellants
dishonestly filed for the trademark „KRB‟ on 08.03.2013, with a user
detail of 01.04.2009, and the said mark was published in the
trademark journal only in the year 2016. The examination report
against the trademark „KRB‟ mentioned the mark of the Respondent,
and the Respondent duly filed a notice of opposition against the said
mark on 04.10.2016. A similar set of facts and circumstances ensued
for the Application of the Appellants under Class 35 as well. The
Respondent, he submitted, has always been diligent in protecting
their statutory right. He placed reliance on the decision in N.R
Dongre& Ors v. Whirlpool Corporation & Anr., (1996) 16 PTC 476.
41. He further pointed out that the Appellants have alleged that the
Respondent was in business with the Appellants and hence, the Suit
filed suffers from delay. However, this would not have any effect on
the claim of the Respondent inasmuch as the Respondent company
has various branches and sales executives, and that the key
managerial personnel cannot be aware of such transactions at the
lowest level of the business chain. The Respondent never knowingly
encouraged the use of the Impugned Mark. Reliance to this effect
was placed on Make My Trip (India) Private Limited v. Make My
Travel (India) Private Limited, (2019) 80 PTC 491.
42. According to Mr. Jayant Mehta, protection of a registered
trademark under Class 35 also extends to Class 30 due to the allied
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 17 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
and cognate nature of the Classes. The similarity of the goods and
services has to be viewed from an overall perspective. To seek
support, he placed reliance on FDC Limited v. Docsuggest
Healthcare Services Pvt Ltd & Ors., 2017 (69) PTC 218 (Del).
43. While responding to the maintainability of the Suit, the learned
Senior Counsel vehemently submitted that as per Section 134 of the
Act, a suit can be filed wherever the infringing products are available
on the website, or where the consumer is surfing the website of the
Respondent.
ANALYSIS AND CONCLUSION
44. We have heard the submissions advanced by the learned Senior
Counsels appearing for the parties, perused the material on record,
and have gone through the Impugned Order.
45. At the outset, we will first consider the limited scope of our
jurisdiction to interfere with the Impugned Order, which has been
passed by the learned Trial Court in exercise of its discretionary
jurisdiction under Order XXXIX Rule 1 and 2 of the CPC. Right
from Wander Ltd. v. Antox Inida P. Ltd., 1990 Supp SCC 727, the
Supreme Court has cautioned that in appeals challenging the orders
passed by the learned Trial Court in exercise of its discretionary
jurisdiction, the appellate Court will not interfere, except where the
discretion has been shown to have been exercised arbitrarily or
capriciously or perversely or where the court has ignored the settled
principles of law regulating grant or refusal of interlocutory
injunctions. The appellate court will not reassess the material and
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 18 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
seek to reach a conclusion if it would have exercised its discretion
differently, but will only interfere if the discretion has been exercised
in a perverse manner by the Trial Court. Recently, this principle has
been reiterated and explained by the Supreme Court in Ramakant
Ambalal Choksi v. Harish Ambalal Choksi & Ors., 2024 SCC
OnLine SC 3538, by holding as under:-
“20. Order 43 of the CPC specifies the or-
ders against which an appeal lies. Sub-Rule
(r) of Rule 1 of the said order provides that
an appeal would lie against an order made
under Rules 1, 2, 2A, 4 and 10 of Order 39 of
the CPC respectively.
21. The law in relation to the scope of an ap-
peal against grant or non-grant of interim in-
junction was laid down by this Court
in Wander Ltd. v. Antox India P. Ltd., 1990
Supp SCC 727. Antox brought an action of
passing off against Wander with respect to
the mark Cal-De-Ce. The trial court declined
Antox’s plea for an interim injunction, how-
ever, on appeal the High Court reversed the
findings of the trial judge. This Court, upon
due consideration of the matter, took notice
of two egregious errors said to have been
committed by the High Court:
a. First, as regards the scope and nature
of the appeals before it and the limita-
tions on the powers of the appellate
court to substitute its own discretion in
an appeal preferred against a discre-
tionary order; and
b. Secondly, the weakness in ratiocination
as to the quality of Antox’s alleged
user of the trademark on which the
passing off action is founded.
22. With regards to (a), this Court held thus:
“In such appeals, the appellate court will
not interfere with the exercise of discretion
of the court of the first instance and substi-
tute its own discretion, except where theSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 19 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
discretion has been shown to have been
exercised arbitrarily or capriciously or
perversely, or where the court had ignored
the settled principles of law regulating
grant or refusal of interlocutory injunc-
tions … the appellate court will not reas-
sess the material and seek to reach a con-
clusion different from the one reached by
the court below … If the discretion has
been exercised by the trial court reasona-
bly and in a judicial manner the fact that
the appellate court would have taken a dif-
ferent view may not justify interference
with the trial court’s exercise of discre-
tion.”
23. This Court, while arriving at the above
findings, relied on its earlier judgment
in Printers (Mysore) v. Pothan Joseph, 1960
SCC OnLine SC 62 where it was held thus:
“[…] as has been observed by Viscount
Simon LC in Charles Osenton &
Co v. Johnston – the law as to reversal by
a court of appeal of an order made by a
judge below in the exercise of his/her dis-
cretion is well established, and any diffi-
culty that arises is due only to the applica-
tion of well-settled principles in an indi-
vidual case.”
24. It is pertinent to note that
in Printers (supra) this Court had held that
ignoring relevant facts is also a ground for
interfering with the discretion exercised by
the trial court. Furthermore, Viscount Simon
LC in Charles Osenton &
Co v. Johnston, [1942] A.C. 130, after stating
the above, went on to quote Lord Wright’s
decision in Evans v. Bartlam, [1937] A.C.
473:
“It is clear that the court of appeal should
not interfere with the discretion of a judge
acting within his jurisdiction unless the
court is clearly satisfied that he was
wrong. But the court is not entitled simply
to say that if the judge had jurisdictionSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 20 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
and had all the facts before him, the court
of appeal cannot review his order unless
he is shown to have applied a wrong prin-
ciple. The court must, if necessary, exam-
ine anew the relevant facts and circum-
stances in order to exercise a discretion by
way of review which may reverse or vary
the order.”
25. In Evans (supra) case, Lord Wright made
it clear that while adjudicating upon the dis-
cretion exercised by the trial court, the appel-
late court is obliged to consider the case put
forward by the appellant in favour of its ar-
gument that the trial court exercised its dis-
cretion arbitrarily or incorrectly in the cir-
cumstances.
26. What flows from a plain reading of the
decisions in Evans (supra) and Charles
Osenton (supra) is that an appellate court,
even while deciding an appeal against a dis-
cretionary order granting an interim injunc-
tion, has to:
a. Examine whether the discretion has been
properly exercised, i.e. examine whether the
discretion exercised is not arbitrary, capri-
cious or contrary to the principles of law;
and
b. In addition to the above, an appellate court
may in a given case have to adjudicate on
facts even in such discretionary orders.
27. The principles of law explained by this
Court in Wander‘s (supra) have been reite-
rated in a number of subsequent decisions of
this Court. However, over a period of time
the test laid down by this Court as regards
the scope of interference has been made more
stringent. The emphasis is now more on per-
versity rather than a mere error of fact or law
in the order granting injunction pending the
final adjudication of the suit.
28. In Neon Laboratories Ltd. v. Medical
Technologies Ltd., (2016) 2 SCC 672 this
Court held that the Appellate Court should
not flimsily, whimsically or lightly interfere in
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 21 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
the exercise of discretion by a subordinate
court unless such exercise is palpably per-
verse. Perversity can pertain to the under-
standing of law or the appreciation of plead-
ings or evidence. In other words, the Court
took the view that to interfere against an or-
der granting or declining to grant a tempo-
rary injunction, perversity has to be demon-
strated in the finding of the trial court.
29. In Mohd. Mehtab Khan v. Khushnuma
Ibrahim Khan, (2013) 9 SCC 221 this Court
emphasised on the principles laid down
in Wander (supra) and observed that while
the view taken by the appellate court may be
an equally possible view, the mere possibility
of taking such a view must not form the basis
for setting aside the decision arrived at by the
trial court in exercise of its discretion under
Order 39 of the CPC. The basis for substitut-
ing the view of the trial court should be mala-
fides, capriciousness, arbitrariness or per-
versity in the order of the trial court. The re-
levant observations are extracted below:
“20. In a situation where the learned trial
court on a consideration of the respective
cases of the parties and the documents
laid before it was of the view that the enti-
tlement of the plaintiffs to an order of in-
terim mandatory injunction was in serious
doubt, the Appellate Court could not have
interfered with the exercise of discretion
by the learned Trial Judge unless such ex-
ercise was found to be palpably incorrect
or untenable. The reasons that weighed
with the learned Trial Judge, as already
noticed, according to us, do not indicate
that the view taken is not a possible view.
The Appellate Court, therefore, should not
have substituted its views in the matter
merely on the ground that in its opinion
the facts of the case call for a different
conclusion. Such an exercise is not the
correct parameter for exercise of jurisdic-
tion while hearing an appeal against aSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 22 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
discretionary order. While we must not be
understood to have said that the Appellate
Court was wrong in its conclusions what
is sought to be emphasized is that as long
as the view of the trial court was a possi-
ble view the Appellate Court should not
have interfered with the same following
the virtually settled principles of law in
this regard as laid down by this Court
in Wander Ltd. v. Antox India (P) Ltd.”
(Emphasis supplied)
30. This Court in Shyam Sel & Power
Ltd. v. Shyam Steel Industries Ltd., (2023) 1
SCC 634 observed that the hierarchy of the
trial court and the appellate court exists so
that the trial court exercises its discretion
upon the settled principles of law. An appel-
late court, after the findings of the trial court
are recorded, has an advantage of appreciat-
ing the view taken by the trial judge and ex-
amining the correctness or otherwise thereof
within the limited area available. It further
observed that if the appellate court itself de-
cides the matters required to be decided by
the trial court, there would be no necessity to
have the hierarchy of courts.
31. This Court in Monsanto Technology
LLC v. Nuziveedu Seeds Ltd., (2019) 3 SCC
381, observed that the appellate court should
not usurp the jurisdiction of the Single Judge
to decide as to whether the tests of prima fa-
cie case, balance of convenience and irre-
parable injury are made out in the case or
not.
32. The appellate court in an appeal from an
interlocutory order granting or declining to
grant interim injunction is only required to
adjudicate the validity of such order applying
the well settled principles governing the
scope of jurisdiction of appellate court under
Order 43 of the CPC which have been reite-
rated in various other decisions of this Court.
The appellate court should not assume unli-
mited jurisdiction and should guide its pow-
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 23 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
ers within the contours laid down in
the Wander (supra) case.
46. The Supreme Court in Ramakant (supra), also explained the
meaning of the term „perverse‟, as under:
“35. Any order made in conscious violation
of pleading and law is a perverse order. In
Moffett v. Gough, (1878) 1 LR 1r 331, the
Court observed that a perverse verdict may
probably be defined as one that is not only
against the weight of evidence but is
altogether against the evidence. In Godfrey v.
Godfrey, 106 NW 814, the Court defined
“perverse” as “turned the wrong way”; not
right; distorted from the right; turned away
or deviating from what is right, proper,
correct, etc.
36. The expression “perverse” has been
defined by various dictionaries in the
following manner:
a. Oxford Advanced Learner’s Dictionary
of Current English, 6th Ed.
Perverse – Showing deliberate
determination to behave in a way that
most people think is wrong, unacceptable
or unreasonable.
b. Longman Dictionary of Contemporary
English – International Edition
Perverse – Deliberately departing from
what is normal and reasonable.
c. The New Oxford Dictionary of English –
1998 Edition
Perverse – Law (of a verdict) against the
weight of evidence or the direction of the
judge on a point of law.
d. New Webster’s Dictionary of the English
Language (Deluxe Encyclopedic Edition)
Perverse – Purposely deviating from
accepted or expected behavior or opinion;
wicked or wayward; stubborn; cross or
petulant.
e. Stroud’s Judicial Dictionary of Words &
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 24 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Phrases, 4th Ed.
Perverse – A perverse verdict may
probably be defined as one that is not only
against the weight of evidence but is
altogether against the evidence.
37. The wrong finding should stem out on a
complete misreading of evidence or it should
be based only on conjectures and surmises.
Safest approach on perversity is the classic
approach on the reasonable man’s inference
on the facts. To him, if the conclusion on the
facts in evidence made by the court below is
possible, there is no perversity. If not, the
finding is perverse. Inadequacy of evidence
or a different reading of evidence is not
perversity. (See : Damodar Lal v. Sohan Devi,
(2016) 3 SCC 78)”
(Emphasis Supplied)
47. In Ramakant (supra), the Supreme Court also reiterated the
guiding principles governing the grant of temporary injunction, as
under:
“33. In the case of Anand Prasad Agarwal v.
Tarkeshwar Prasad, (2001) 5 SCC 568, it
was held by this Court that it would not be
appropriate for any court to hold a mini-trial
at the stage of grant of temporary injunction.
34. The burden is on the plaintiff, by evidence
aliunde by affidavit or otherwise, to prove
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 precedent 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 caseSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 25 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
by itself is not sufficient to grant injunction.
The Court further has to satisfy that
noninterference 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. Irreparable 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. (See : Dalpat
Kumar v. Prahlad Singh, (1992) 1 SCC
719.)”
(Emphasis Supplied)
48. Applying the above principles of the facts of the present case,
it is not in dispute that the Respondent‟s corporate name is KRBL
Ltd., and that the Respondent is the registered proprietor of the
Respondent‟s Mark in Class 35. Initially, the Respondent had applied
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 26 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
for registration under Class 30, but later withdrew the application, but
reapplied for the same within a day of the acceptance of its
withdrawal application. As on the date of institution of the Suit, the
Respondent is the registered proprietor of the Respondent‟s Mark in
Class 35 only.
49. The Respondent asserts that it had been carrying on its
business in India as well as overseas through exports from India
(including the Middle East countries, Australia, European Countries,
USA, South Africa, Canada; South East Asian Countries like
Singapore, Malaysia etc.). The Respondent‟s business and services
under the said trademark together with the goodwill and reputation
achieved thereunder is global in character. Ever since the year 2000,
the Respondent has been expanding the use of its trademark in
relation to its said business and services to cover more countries
across the globe.
50. The Respondent is the registered proprietor of trademark/label
since the year 2000. The Respondent has also registered its domain
name under www.krblrice.com on 18.09.2001. The Respondent, in
support of its contention of continuous, honest, and in the course of
trade use of trademark label “KRBL” as a source identifier of its
goods, filed invoices beginning from the year 2000 upto 2021, and
also placed on record figures in respect of revenue from operation for
its goods, business and services, which have been reproduced by us
hereinabove. The Respondent has also mentioned his advertisement
expenditure and placed on record advertisement material.
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 27 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
51. We shall first deal with the submission of the Appellants that
the Respondent, in fact, trades under trademark like „India Gate‟,
„Unity‟, etc. and not „KRBL‟. The submission, in fact, is that use of
the corporate name is itself not a use of it as a trademark.
52. While as a general proposition of law, the above submission
sounds attractive, in the facts of the present case, it may not come to
the aid of the appellant.
53. The term „mark‟ is defined in Section 2(1)(m) of the Act, as
under:
“Section 2. Definitions and interpretation.
(1) In this Act, unless the context otherwise
requires,–
*****
(m) mark includes a device, brand, heading,
label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or
combination of colours or any combination
thereof;”
54. „Trademark‟ is defined in Section 2(1)(zb) of the Act as a mark
capable of distinguishing the goods or services of one person from
those of others. We quote the Section as under:
“Section 2. Definitions and interpretation.
(1) In this Act, unless the context otherwise
requires,–
*****
(zb) trade mark means a mark capable of
being represented graphically and which is
capable of distinguishing the goods or
services of one person from those of others
and may include shape of goods, their
packaging and combination of colours; and–
(i) in relation to Chapter XII (other than
section 107), a registered trade mark or aSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 28 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
mark used in relation to goods or services
for the purpose of indicating or so as to
indicate a connection in the course of
trade between the goods or services, as the
case may be, and some person having the
right as proprietor to use the mark; and
(ii) in relation to other provisions of this
Act, a mark used or proposed to be used in
relation to goods or services for the
purpose of indicating or so as to indicate a
connection in the course of trade between
the goods or services, as the case may be,
and some person having the right, either
as proprietor or by way of permitted user,
to use the mark whether with or without
any indication of the identity of that
person, and includes a certification trade
mark or collective mark;”
55. Therefore, a combined reading of the above provisions would
show that even a name, which is capable of distinguishing the goods
or services of one person from those of others, qualifies to be
considered as a trademark. Reference in this regard may be made to
Laxmikant V. Patel (supra), Jaquar Company Pvt Ltd. (supra),
Montari Overseas Ltd. (supra), and to Montari Industries Ltd.
(supra).
56. This now brings us to the submission of the Appellant that the
Respondent‟s Mark is not used by it on the goods and is, therefore,
not entitled to protection.
57. This submission of the appellant also does not impress us.
Manner of „Use of a mark‟ has been explained in Section 2(2)(c) of
the Act, as under:
“Section 2. Definitions and interpretation.
*****
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 29 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
(2) In this Act, unless the context otherwise
requires, any reference–
*****
(c) to the use of a mark,–
(i) in relation to goods, shall be construed
as a reference to the use of the mark upon,
or in any physical or in any other relation
whatsoever, to such goods;
(ii) in relation to services, shall be
construed as a reference to the use of the
mark as or as part of any statement about
the availability, provision or performance
of such services;”
58. The „use of a mark‟ in relation to goods is therefore, the use of
the same upon, or in any physical or in any other relation whatsoever,
to such goods. It is, therefore, not necessary that the mark must only
be used in a physical form in relation to such goods, but may be used
in any other relation whatsoever to such goods. A Division Bench of
this Court in Google Llc v. DRS Logistics (P) Limited & Ors., 2023
SCC OnLine Del 4809, explained the wide nature of the above
definition of the „use of a mark‟, as under:
“84. Section 2(2)(c)(i) of the TM Act is
couched in wide terms. Any reference to the
use of a mark in relation to goods is not only
limited to use in any physical form but also
“in other relation whatsoever” to such goods.
The words “in relation to” have been
interpreted in wide terms. In Hardie Trading
Ltd. v. Addisons Paint & Chemicals Ltd.
[Hardie Trading Ltd. v. Addisons Paint &
Chemicals Ltd., (2003) 11 SCC 92] , the
Supreme Court considered the scope of
Section 2(2)(b) of the TM Act [which is now
Section 2(2)(c)(i) of the TM Act] and
interpreted the words “in other relation
whatsoever” in wide terms. The court furtherSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 30 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
observed that use of the words “in” and
“whatsoever” indicated that the expression
“other relation” was of a wide amplitude.
The relevant extract of the said decision is as
under: (SCC pp. 108-109, paras 41, 42 and
45)
“41. The question therefore is — is the
word „use‟ in Section 46(1) so limited? The
phrase used in Section 46 is „bona fide use
thereof in relation to those goods‟. The
phrase has been defined in Section 2(2)(b)
of the Act as:
„2. (2)(b) to the use of a mark in relation
to goods shall be construed as a reference
to the use of the mark upon, or in any
physical or in any other relation
whatsoever, to such goods.‟
(emphasis supplied)
42. This shows that the use may be other
than physical. It may be in any other
relation to the goods. Given this statutory
meaning, we see no reason to limit the
user to use on the goods or to sale of
goods bearing the trade mark.
∗∗∗
45. In Section 2(2)(b) of the Act, we have
the additional words „any‟ and
„whatsoever‟ qualifying the words „other
relation‟ giving the words a much wider
meaning. Reading this definition into
Section 46(1) it is clear that the word „use‟
in Section 46(1) may encompass actions
other than actual sale.”
85. We are unable to accept that the use of a
trade mark must necessarily be limited to use
in a visual form on the goods. The words “in
any other relation” to goods would also
include use in relation to the goods, in any
form whatsoever.
86. Section 2(2)(c)(ii) of the TM Act requires
the reference to the use of the mark as or as a
part of any statement about availability,
provision or performance of such services.
The expression “or in any other relation
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 31 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
whatsoever” is not used under Section
2(2)(c)(ii) of the TM Act. It is difficult to
accept that the use of a mark in relation to
services must be construed in a narrower
sense than use of the mark in respect of goods.
However, the same would depend on the
context in which the expression “use of the
mark” is used.
87. Section 2(2) of the TM Act serves as an
aid to interpret the words and terms as used
in the TM Act. However, the same is by no
means exhaustive. The expression “use of a
mark” is used in the TM Act in several
sections and in the context of various aspects
including removal of the trade mark on
account of abandonment or non-use, and for
lack of any bona fide intention to use the
mark. Thus, the question whether a reference
to the expression “use of a trade mark” is to
be understood as instructed by Section 2(2)(b)
or Section 2(2)(c) of the TM Act would
depend on the context in which the said
expression is used.
88. Section 29(6) of the TM Act expressly lists
out certain actions, which would amount to
use of a registered mark for the purposes of
Section 29 of the TM Act. Clearly, the words
of Section 2(2) of the TM Act do not control
the width of Section 29(6) of the TM Act.
Thus, if any action falls within the scope of
Section 29(6) of the TM Act, the same would
necessarily have to be construed as use of the
mark, for ascertaining whether the trade
mark is infringed in terms of Section 29 of the
TM Act.
89. We concur with the view that the words
“unless the context otherwise requires” in the
opening sentence of Section 2(2) of the TM
Act, limits the applicability of Section 2(2) of
the TM Act to where it is contextually
relevant.”
59. In the present case, the Respondent has placed on record
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 32 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
voluminous documents to show the use of its mark not only in
relation to the goods, but also in form of advertisement etc. In fact, as
is admitted, the Respondent is also the registered proprietor of its
mark, as far as Class 35 is concerned, in relation to rice.
60. Coming to the claim of infringement of the trademark by the
Appellant, Section 29 of the Act is reproduced herein below:
“Section 29. Infringement of registered
trade marks.-
(1) A registered trade mark is infringed by a
person who, not being a registered proprietor
or a person using by way of permitted use,
uses in the course of trade, a mark which is
identical with, or deceptively similar to, the
trade mark in relation to goods or services in
respect of which the trade mark is registered
and in such manner as to render the use of
the mark likely to be taken as being used as a
trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor
or a person using by way of permitted use,
uses in the course of trade, a mark which
because of–
(a) its identity with the registered trade
mark and the similarity of the goods or
services covered by such registered trade
mark; or
(b) its similarity to the registered trade
mark and the identity or similarity of the
goods or services covered by such
registered trade mark; or
(c) its identity with the registered trade
mark and the identity of the goods or
services covered by such registered trade
mark, is likely to cause confusion on the
part of the public, or which is likely to
have an association with the registered
trade mark.
(3) In any case falling under clause (c) of
sub-section (2), the court shall presume thatSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 33 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
it is likely to cause confusion on the part of
the public.
(4) A registered trade mark is infringed by a
person who, not being a registered proprietor
or a person using by way of permitted use,
uses in the course of trade, a mark which–
(a) is identical with or similar to the
registered trade mark; and
(b) is used in relation to goods or services
which are not similar to those for which
the trade mark is registered; and
(c) the registered trade mark has a
reputation in India and the use of the mark
without due cause takes unfair advantage
of or is detrimental to, the distinctive
character or repute of the registered trade
mark.
(5) A registered trade mark is infringed by a
person if he uses such registered trade mark,
as his trade name or part of his trade name,
or name of his business concern or part of the
name, of his business concern dealing in
goods or services in respect of which the
trade mark is registered.
(6) For the purposes of this section, a person
uses a registered mark, if, in particular, he–
(a) affixes it to goods or the packaging
thereof;
(b) offers or exposes goods for sale, puts
them on the market, or stocks them for
those purposes under the registered trade
mark, or offers or supplies services under
the registered trade mark;
(c) imports or exports goods under the
mark; or
(d) uses the registered trade mark on
business papers or in advertising.
(7) A registered trade mark is infringed by a
person who applies such registered trade
mark to a material intended to be used for
labeling or packaging goods, as a business
paper, or for advertising goods or services,
provided such person, when he applied the
mark, knew or had reason to believe that theSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 34 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
application of the mark was not duly
authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by
any advertising of that trade mark if such
advertising–
(a) takes unfair advantage of and is
contrary to honest practices in industrial
or commercial matters; or
(b) is detrimental to its distinctive
character; or
(c) is against the reputation of the trade
mark.
(9) Where the distinctive elements of a
registered trade mark consist of or include
words, the trade mark may be infringed by
the spoken use of those words as well as by
their visual representation and reference in
this section to the use of a mark shall be
construed accordingly.”
61. A registered trademark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark:
i) Which is identical with, or deceptively similar to, the
trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner as
to render the use of the mark likely to be taken as being
used as a trade mark; or
ii) Which because of-
a) its identity with the registered trade mark
and the similarity of the goods or services
covered by such registered trade mark; or
b) its similarity to the registered trade mark
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 35 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
and the identity or similarity of the goods
or services covered by such registered
trade mark; or
c) its identity with the registered trade mark
and the identity of the goods or services
covered by such registered trade mark,
is likely to cause confusion on the part of the public, or
which is likely to have an association with the registered
trade mark.
62. Therefore, identity of the mark or the goods for which the
mark is registered is not a sine qua non for a claim of infringement.
63. Now, turning to the question whether the Respondent‟s Mark,
which is registered in Class 35, is infringed by the Appellant‟s Mark.
The classification of the goods under the Trade Mark Rules alone is
not a determinative factor for considering the claim of infringement;
it is the similarity of the goods or services covered by the registered
trade mark that has to be seen.
64. In the present case, the Respondent‟s Mark is registered in
Class 35 for advertising, distribution, marketing, wholesale and retail
services relating to all kind of rice. The Appellants admittedly are
using the Impugned Mark for rice, which would include its
advertising, marketing and wholesale and retail. Therefore, merely
the fact that the Respondent‟s Mark presently is registered only in
Clauss 35 and not in Class 30, would not come to the aid of the
Appellants in their defence to the claim of infringement by the
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 36 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Respondent.
65. A perusal of the marks shows that the Appellants‟ mark „KRB‟
is similar to the Respondent‟s registered mark „KRBL‟. Though a
mark is not to be dissected and must be taken as a whole, it is also
settled principle of law that for judging whether the mark is
deceptively similar to another mark, the dominant part of the mark
may be seen. When compared on this touchstone, the mark of the
appellant is prima facie deceptively similar to that of the respondent.
66. This now brings us to another important aspect of the
submission of the learned senior counsel for the Appellant, that is, the
Respondent, while withdrawing its application for registration of its
mark in Class-30, evidenced an intention to abandon the said mark.
The learned senior counsel for the Appellants has further urged that
the Respondent did not initiate any legal action against the Appellants
upon coming to know of its application seeking registration of its
mark in Class-30 and Class-35 in the year 2016. The learned senior
counsel for the Appellants has also placed reliance on certain
invoices for the purchase and sale of rice between the Appellants and
the Respondent. He submits that as the present Suit was filed only in
July 2022, it must also be said to have acquiescence to the use of the
mark Respondent. He has also placed reliance on Section 33 of the
Act.
67. We are not impressed with the above submissions of the
Appellants.
68. As far as the withdrawal of the application is concerned, the
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 37 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Respondent has explained that it filed the application seeking
withdrawal of registration in Class-30 because of an erroneous legal
advice received during the implementation of the GST regime in the
country. The said application was allowed on 06.07.2017, however,
immediately realising its mistake, the Respondent filed a fresh
application seeking registration of its mark in Class-30 on 07.07.2017.
This, at prima facie, establishes the plea of the respondent that the
withdrawal of the application was due to a mistaken advice and
immediately, the respondent had taken corrective measures. In our
view, the above conduct of the respondent does not display an
intention to abandon the claim in the mark as far as goods falling in
Class 30 is concerned or even otherwise.
69. On the plea of acquiescence, the Respondent has claimed that
though the Appellants have filed an application seeking registration
of its mark, which was opposed by the Respondent in the year 2016,
the market survey did not reveal the use of the said mark by the
Appellants. It was only in the year 2022 that the Respondent came to
know about the use of the said mark by the Appellants, and thereafter,
immediately filed the Suit.
70. On the commercial transactions between the parties, the
learned senior counsel for the Respondent, on the other hand, submits
that such invoices do not reflect the knowledge of the existence of the
appellant by the management of the Respondent.
71. We find prima facie merit in the submissions made by the
Respondent.
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 38 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
72. The Supreme Court in M/s Power Control Appliances (supra),
has held that acquiescence is sitting by, when another is invading the
rights and spending money on it. It is a course of conduct
inconsistent with the claim for exclusive rights in a trade mark, trade
name etc. It has to be a positive act. We quote from the judgment as
under:-
“26. Acquiescence is sitting by, when another
is invading the rights and spending money on
it. It is a course of conduct inconsistent with
the claim for exclusive rights in a trade mark,
trade name etc. It implies positive acts; not
merely silence or inaction such as is involved
in laches. In Harcourt v. White [(1860) 28
Beav 303 : 54 ER 382] Sr. John Romilly said:
“It is important to distinguish mere
negligence and acquiescence.” Therefore,
acquiescence is one facet of delay. If the
plaintiff stood by knowingly and let the
defendants build up an important trade
until it had become necessary to crush it,
then the plaintiffs would be stopped by
their acquiescence. If the acquiescence in
the infringement amounts to consent, it
will be a complete defence as was laid
down in Mouson (J.G.) &
Co. v. Boehm [(1884) 26 Ch D 406] . The
acquiescence must be such as to lead to
the inference of a licence sufficient to
create a new right in the defendant as was
laid down in Rodgers v. Nowill [(1847) 2
De GM&G 614 : 22 LJ KCH 404] .
27. The law of acquiescence is stated by
Cotton, L.J. in Proctor v. Bannis [(1887) 36
Ch D 740] as under:
“It is necessary that the person who
alleges this lying by should have been
acting in ignorance of the title of the other
man, and that the other man should have
known that ignorance and not mentioned
his own title.”
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 39 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
In the same case Bowen, L.J. said:
“In order to make out such acquiescence it
is necessary to establish that the plaintiff
stood by and knowingly allowed the
defendants to proceed and to expend
money in ignorance of the fact that he had
rights and means to assert such rights.”
28. In Devidoss and Co. [AIR 1941 Mad 31 :
(1940) 2 MLJ 793 : ILR 1941 Mad 300] at
pages 33 and 34 the law is stated thus:
“To support a plea of acquiescence in a
trade mark case it must be shown that the
plaintiff has stood by for a substantial
period and thus encouraged the defendant
to expend money in building up a business
associated with the mark.
In Rowland v. Michell [(1896) 13 RPC
464] Romer J. observed:
„If the plaintiff really does stand by and
allow a man to carry on business in the
manner complained of to acquire a
reputation and to expend money he cannot
then after a long lapse of time, turn round
and say that the business ought to be
stopped.‟”
In the same case, but on appeal Lord Russel,
C.J. said [Rowland v. Michell, (1897) 14
RPC 37, 43] at p. 43:
“Is the plaintiff disentitled to relief under
that head by injunction because of
acquiescence? Of course it is involved in
the consideration of that that the plaintiff
has a right against the defendant and that
the defendant has done him a wrong and
the question is whether the plaintiff has so
acted as to disentitle him from asserting
his right and from seeking redress from the
wrong which has been done to him. Cases
may occasionally lay down principles and
so forth which are a guide to the court, but
each case depends upon its own
circumstances.
Dealing with the question of standing by
in Codes v. Addis and Son [(1923) 40 RPCSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 40 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
130, 142] at p. 142, Eve, J. said:
„For the purpose of determining this issue
I must assume that the plaintiffs are
traders who have started in this more or
less small way in this country, and have
been continuously carrying on this
business. But I must assume also that they
have not, during that period, been
adopting a sort of Rip Van Winkle policy of
going to sleep and not watching what their
rivals and competitors in the same line of
business were doing. I accept the evidence
of any gentleman who comes into the box
and gives his evidence in a way which
satisfies me that he is speaking the truth
when he says that he individually did not
know of the existence of a particular
element or a particular factor in the goods
marketed by his opponents. But the
question is a wider question than that :
ought not he to have known : is he entitled
to shut his eyes to everything that is going
on around him, and then when his rivals
have perhaps built a very important trade
by the user of indicia which he might have
prevented their using had he moved in
time, come to the Court and say : “Now
stop them from doing it further, because a
moment of time has arrived when I have
awakened to the fact that this is calculated
to infringe my rights.” Certainly not. He is
bound, like everybody else who wishes to
stop that which he says is an invasion of
his rights, to adopt a position of
aggression at once, and insist, as soon as
the matter is brought to Court, it ought to
have come to his attention, to take steps to
prevent its continuance; it would be an
insufferable injustice were the Court to
allow a man to lie by while his competitors
are building up an important industry and
then to come forward, so soon as the
importance of the industry has been
brought home to his mind, and endeavourSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 41 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
to take from them that of which they had
legitimately made use; every day when
they used it satisfying them more and more
that there was no one who either could or
would complain of their so doing. The
position might be altogether altered had
the user of the factor or the element in
question been of a secretive or
surreptitious nature; but when a man is
openly using, as part of his business,
names and phrases, or other elements,
which persons in the same trade would be
entitled, if they took steps, to stop him from
using, he gets in time a right to sue them
which prevents those who could have
stopped him at one time from asserting at
a later stage their right to an injunction.‟
In Mc. Caw Stevenson & Orr Ltd. v. Lee
Bros. [(1960) 23 RPC 1] acquiescence for
four years was held to be sufficient to
preclude the plaintiff from succeeding. In
1897 the plaintiffs in that case registered the
word „glacier‟ as a trade mark in respect of
transparent paper as a substitute for stained
glass. As the result of user the word had
become identified with the plaintiffs’ goods.
In 1900 the defendants commenced to sell
similar goods under the name „glazine.‟ In
1905 the plaintiffs commenced an action for
infringement. The defendants denied that the
use of the word „glazine‟ was calculated to
deceive and also pleaded acquiescence. A
director of the plaintiff company admitted
that he had known of the use of the word
„glazine‟ by the defendants for four years —
he would not say it was not five years. It was
held that the plaintiffs failed on the merits
and by reason of their delay in bringing the
action.
Delay simpliciter may be no defence to a suit
for infringement of a trade mark, but the
decisions to which I have referred to clearly
indicate that where a trader allows a rival
trader to expend money over a considerableSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 42 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
period in the building up of a business with
the aid of a mark similar to his own he will
not be allowed to stop his rival’s business. If
he were permitted to do so great loss would
be caused not only to the rival trader but to
those who depend on his business for their
livelihood. A village may develop into a large
town as the result of the building up of a
business and most of the inhabitants may be
dependent on the business. No hard and fast
rule can be laid down for deciding when a
person has, as the result of inaction, lost the
right of stopping another using his mark. As
pointed out in Rowland v. Michell [Rowland v.
Michell, (1897) 14 RPC 37, 43] each case
must depend on its own circumstances, but
obviously a person cannot be allowed to
stand by indefinitely without suffering the
consequence.”
29. This is the legal position. Again
in Halsbury’s Laws of England, Fourth Edn.,
Vol. 24 at paragraph 943 it is stated thus:
“943. Acquiescence.– An injunction may
be refused on the ground of the plaintiff’s
acquiescence in the defendant’s
infringement of his right. The principles on
which the court will refuse interlocutory or
final relief on this ground are the same,
but a stronger case is required to support
a refusal to grant final relief at the hearing.
[Patching v. Dubbins [(1853) Kay 1 : 69
ER 1] ; Child v. Douglas [(1854) 5 De
GM&G 739 : 43 ER
1057] ; Johnson v. Wyatt [(1863) 2 De
GJ&Sm 18 : 46 ER
281] ; Turner v. Mirfield [(1865) 34 Beav
390 : 55 ER 685] ; Hogg v. Scott [(1874)
LR 18 Eq 444] ; Price v. Bala and
Festiniog Rly. Co. [(1884) 50 LT 787] ]
The reason is that at the hearing of the
cause it is the court’s duty to decide upon
the rights of the parties, and the dismissal
of the action on the ground of
acquiescence amounts to a decision that aSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 43 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
right which once existed is absolutely and
for ever lost: Johnson v. Wyatt [(1863) 2
De GJ&Sm 18 : 46 ER 281] at 25; and
see Gordon v. Cheltenham and Great
Western Union Rly. Co. [(1842) 5 Beav
229, 233 : 49 ER 565] per Lord Langdale
MR.”
30. In Aktiebolaget Manus v. R.J. Fullwood &
Bland, LD. [(1948) 55 RPC 329, 338] at pp.
338-39 it was held thus:
“Apart from this point the case
of Fullwood v. Fullwood [(1878) 9 Ch D
176 : 47 LJ Ch 459] shows that the
injunction in a passing-off case is an
injunction sought in aid of a legal right,
and that the Court is bound to grant it if
the legal right be established unless the
delay be such that the Statute of
Limitations would be a bar. That case
apparently concerned some predecessors
of the defendants. The delay was one of
rather under two years and the relief
sought was an injunction to restrain the
use by the defendants of cards and
wrappers calculated to induce the belief
that his business was connected with the
plaintiff. Fry, J., in the course of his
judgment said this:
„Now, assuming, as I will, for the purpose
“of my decision, that in the early part of
1875 the plaintiff knew of all the material
facts” which have been brought before me
today, he commenced his action in
November 1876. “In my opinion that delay,
and it is simply delay, is not sufficient to
deprive the plaintiff of” his rights. The
right asserted by the plaintiff in this action
is a legal right. He is, in “effect, asserting
that the defendants are liable to an action
for deceit”. It is not suggested in the
defence that the delay here involves a
question under or analogous to the period
under the Statute. The defendants did
suggest that there had been somethingSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 44 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
more than mere delay on the part of the
plaintiffs, and that the plaintiffs had lain
by and allowed the goodwill which the
plaintiffs now propose to acquire, but this
point was not seriously pressed. It was
suggested that Mr Evans Bajker, the
plaintiffs‟ solicitor, knew from 1941
onwards what the defendants were doing,
but it is impossible to impute to a busy
solicitor a knowledge which he could only
acquire by seeing advertisements in local
or farming papers advertising the
defendants’ activities. No direct
information was afforded to him; on the
contrary it will be remembered that when
in 1942 he made enquiries on behalf of his
clients information was studiously
withheld from him. I conclude therefore
that there has been no acquiescence to
disentitle the plaintiff to relief.'”
31. In Electrolux LD. v. Electrix [1954 RPC
23, 34] at pp. 32 and 33 it was held thus:
“I now pass to the second question, that of
acquiescence, and I confess at once that upon
this matter I have felt no little sympathy for
the defendants, and have been not a little
envious of the good fortune which has
attended the plaintiffs, though no doubt they
may justly attribute it to the astuteness of
their advisers; but, as has already been said,
the defendants have traded openly and (as the
Judge found) honestly, beyond any question,
in the ordinary course and substantially
under this name „Electrix‟ for a very long
period of time, since early 1930’s. During
that time, they have built up (I doubt not) a
valuable goodwill associated with that name.
If the possibility that the mark „Electrolux‟
was infringed is out of the way, and if I
disregard for the moment (as I do) the point
taken by Mr Kenneth Johnstone that in any
event for use of „Electrolux‟ was a sufficient
use for the purpose of Section 26(1) of
„Electrux‟ (seeing that the two marks wereSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 45 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
associated). I have no doubt that if the
plaintiff had challenged in the courts the
right of the defendants to use „Electrix‟ before
they have effect to their decision to apply the
word „Electrux‟ to their cheaper model in lieu
of „Electrolux‟, they would in all probability
have failed, because the defendants’ motion
to strike the word „Electrux‟ off the Register
would have succeeded, but the fact is that
when the battle was joined, „Electrux‟ was no
longer vulnerable on that account, unless the
defendants can establish that the use was not
bona fide, a matter to which I shall come
presently. It is, however, said that by the
defendants that the plaintiffs have deprived
themselves of their legal right or, at least, of
any right to the equitable remedy of
injunction.
Upon this matter, a great deal of learning has
been referred to, and we have also had our
attention drawn to a number of cases. The
latter include the well-known statement
in Willmott v. Barber [(1880) 15 Ch D 96 : 43
LT 95] by Fry, J. (as he then was) at p. 105.
He said this: „It has been said that the
acquiescence which‟ will deprive a man of his
legal rights must amount to fraud, and in my
view that is an abbreviated statement of a
very true proposition. A man is not to be
deprived of his legal rights unless he has
acted in such a way as would „make it
fraudulent for him to set up those rights‟. Let
me pause here to say that I do not understand
that, by the word „fraudulent‟, the learned
Judge was thereby indicating conduct which
would amount to a common law tort of deceit.
„What, then, are the elements or requisites
necessary to constitute fraud of that
description?‟ In the first place „the plaintiff
must have made a mistake as to his legal
rights‟. Secondly, the plaintiff must „have
expended some money or must have done
some act (not necessarily upon the
defendant’s land) on the faith of his mistakenSignature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 46 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
belief‟. Thirdly, the defendant, the possessor
of „the legal right, must know of the existence
of his own right which is inconsistent with
„the legal right, must know of the existence of
his own right which is inconsistent with‟ the
right claimed by the plaintiff. If he does not
know of it he is in the same position „as the
plaintiff, and the doctrine of acquiescence is
founded upon conduct with a knowledge‟ of
your legal rights. Fourthly, the defendant, the
possessor of the legal right, must know „of the
plaintiff’s mistaken belief of his rights. If he
does not, there is nothing which‟ calls upon
him to assert his own rights. Lastly, the
defendant, the possessor of the legal „right,
must have encouraged the plaintiff in his
expenditure of money or in the other acts
which he has done, either directly or by
abstaining from asserting his legal right‟. In
reading that passage, it is perhaps necessary
to note (because it makes it at first sight a
little more difficult to follow) that the
positions of plaintiff and defendant as they
are usually met with are there transposed,
and that one of the parties who is there
spoken of as the plaintiff corresponds with the
present case with the defendants, and vice
versa.”
32.Amritdhara Pharmacy v. Satyadeo Gupta
[(1963) 2 SCR 484 : AIR 1963 SC 449] is a
case where Halsbury was quoted with
approval. However, on the facts of that case it
was held that the plea of acquiescence had
not been made out.”
73. While judging the plea of acquiescence, this Court must also
consider whether the adoption of the mark by the Appellants was
bona fide. In considering the same, we may note that the Appellants
had filed two applications seeking registration of its mark, claiming
usage of the said mark since the year 2009. However, even in the Suit,
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 47 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
the earliest document of usage filed by the Appellants was of the year
2011. The Respondent‟s Mark had also been cited by the Registrar of
the trade marks in its examination report. Even otherwise, it is
inconceivable to say that the Appellants did not know of the
existence and reputation of the Respondent, especially when it is
dealing in the same goods as the Respondent, and in fact, has even
claimed to have had inter se transactions with the Respondent.
74. Clearly, the adoption of a mark by the Appellants, similar to
that of the Respondent, was mala fide. This opinion of ours, is
fortified by a fanciful explanation given by the Appellants for the
reason for the adoption of the Impugned Mark by it.
75. Therefore, any usage of the mark by the Appellants, merely
due to the alleged delay in filing of the Suit by the respondent, cannot
come to its aid.
76. We are also of the opinion that mere presences of certain
invoices for the purchase and sale of rice between the Appellants and
the Respondent, cannot in itself, satisfy the test for acquiescence.
This Court, while rejecting a similar contention qua acquiescence in
the case of Make my Trip (India) Pvt. Ltd. (supra), held as under:
20. Now, coming to the Defendant’s plea re-
garding suppression of facts and acquies-
cence. Plaintiff has strongly refuted the De-
fendant’s allegation qua suppression of facts
in respect of the communications which have
been placed on record. Plaintiff has ex-
plained that it is a large organization having
over 3000 employees across India and in ad-
dition to these employees, it has a large fran-
chise network which works independently of
the Plaintiff company. It has further been cla-
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 48 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
rified that the communications relied upon by
the Defendants were allegedly exchanged be-
tween the booking executives of the Plaintiff
and the franchisees of the Plaintiff in the year
2011. Prima facie, it appears that such email
communications were not exchanged with the
management of the Plaintiff Company or any
of its key managerial personnel who could be
regarded as persons who ought to be aware
of Defendant’s existence. Although, for the
sake of complete discovery, the Plaintiff
should have placed on record all the commu-
nications exchanged between the parties in-
cluding the franchisees, but failure to do so,
cannot lead to assumption that there has been
willful concealment on its part. This aspect
would require trial, having regard to the na-
ture of the Plaintiff’s business which is based
on a large network of booking executives,
who are stated to be lowest rung employees.
It is quite possible that such communications
and correspondences were not known to any
of the key managerial personnel of the Plain-
tiff Company. Further, as pointed out by the
Plaintiff’s counsel, some of the communica-
tions were exchanged with the email ad-
dresses [email protected] and
[email protected], which ids per-
tain to the franchisees and not the Plaintiff
Company. Correspondences sent by the fran-
chisees could possibly be not known to the
key managerial personnel of the Plaintiff
Company. It is also significant, as pointed out
by Plaintiff’s counsel, that the email commu-
nications exchanged between the automated
response system and the officials of the De-
fendant Company are unnamed. Plaintiff’s
explanation regarding the bank statement of
HDFC bank that the transactions reflected
therein were completed by the franchisee and
its knowledge cannot be attributed to the
Plaintiff, appears to be plausible, keeping in
mind its business model. Besides, Defendant
has not placed on record any email commu-
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 49 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
nication exchanged with the management of
the Plaintiff Company, or any of its key ma-
nagerial personnel who ought to have been
aware of Defendant’s existence. Therefore, it
is not a case where the Plaintiff can be held
to be guilty of suppression of facts.
21. Significantly, it cannot go unnoticed that
the adoption of the mark by the Defendants is
without any cogent explanation, and it prima
facie appears to be dishonest. It cannot be
accepted that the Plaintiff has acquiesced the
use of the infringing mark by the Defendant.
The correspondence with the booking cus-
tomer care executive of the Plaintiff who ap-
parently did not have knowledge of the intel-
lectual property rights of the Plaintiff, cannot
be considered as positive acts of encourage-
ment towards the Defendant to do business
under Infringing/Impugned Marks.”
77. The Respondent, in the present case, has knowingly never
encouraged or induced the Appellants to continue using the
Impugned Mark. Moreover, it is not disputed that some of the inter se
invoices placed on record have been issued by the Respondent in
favour of the Appellant No.1, but the same are for the sale of „loose
rice‟ by the Respondent in favour of the Appellant and not under any
trademark or brand name. The Sale of „loose rice‟, in such a manner,
will not tantamount to acquiescence on the part of the Respondent.
78. On the issue of abandonment, we find merit in the submission
of the learned senior counsel for the Respondent that there should be
an active intention to abandon the usage of the mark. In the present
case, as noted hereinabove, the Respondent has been in continuous
use of the mark, and even though it withdrew its application under
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 50 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
Class-30, the very next day filed a fresh application for the re-
registration of the same, which clearly evidences an intent of not to
abandon the said mark.
79. The learned senior counsel for the Appellants has also
emphasised that the new application filed by the Respondent, seeking
registration of its mark in Class-30, is on a „proposed to be used‟
basis. In our view, the same cannot act as an estoppel against the
Respondent. As noted hereinabove, the Respondent has been able to
establish the continuous use of the said mark since the year 2000.
80. The above discussion of facts, brings a prima facie conclusion
that:
a) the marks of the Appellants and Respondent are deceptively
similar to each other;
b) the Appellants and the Respondent deals in the same goods,
therefore, the likelihood of confusion being caused is even
greater;
c) the adoption and use of the mark by the Appellants does not
appear to be bona fide;
d) the Respondent has neither abandoned the use of its mark
nor has acquiesced the use of the Impugned Mark by the
Appellants;
e) the Respondent has been able to make out a case of
infringement and passing off against the Appellants;
f) the Respondent is likely to suffer grave irreparable injury in
case an ad interim injunction is not granted in its favour;
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 51 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
and,
g) the balance of convenience is also in favour of the
Respondent and against the Appellants.
81. This now brings us to the submission of the learned senior
counsel for the Appellants that the learned District Judge does not
have the territorial jurisdiction to adjudicate the Suit. We are afraid
that, given the pleadings of the Respondent in the Suit, the said plea,
cannot be accepted at this stage. It would be a matter of trial.
82. Keeping in view the above, we find no merit in the present
appeal. The appeal, along with pending applications, is accordingly
dismissed.
83. We, however, clarify that any or all observations made by us
hereinabove are prima facie in nature and shall not, in any manner,
influence the learned District Judge in adjudication of the said Suit.
84. The parties shall bear their own costs of the appeal.
NAVIN CHAWLA, J SHALINDER KAUR, J
MAY 26, 2025/ss/rv/frk/VS
Click here to check corrigendum, if any
Signature Not Verified
Digitally Signed FAO(COMM) 69/2024 Page 52 of 52
By:NEELAM
Signing Date:27.05.2025
12:11:23
[ad_1]
Source link