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Orange City Mobile Collection v. City Collection And Ors. - (High Court of Bombay) (28 Feb 2017)

In passing off, defendant could escape liability if it can be shown that added matter was sufficient to distinguish his goods from those of Plaintiff


Intellectual Property Rights

An order of injunction passed in Trade Mark Suit filed by Respondents temporarily restraining Appellant from using trade mark or trade name “City Collection”, in any manner, whatsoever, for business purposes during pendency of the suit is subject-matter of challenge in this appeal. Defendant being aggrieved by aforesaid order has filed the present appeal. On 13th August, 2014, this Court granted ad interim stay to the order of temporary injunction passed by the trial Court which order was subsequently confirmed.

In present case, subsequent developments sought to be relied upon are the grant of trade mark certificate to Plaintiffs during pendency of suit. When the suit was filed, Plaintiffs had sought to restrain Defendant from passing off its goods as those of Plaintiffs. These subsequent developments have not been brought on record by Plaintiffs by amending plaint in the trial Court. Similarly, no permission of this Court has been sought in that regard under provisions of Order-XLI Rule 27 (1) of the Civil Procedure Code, 1908 (Code). Merely by filing an affidavit, said fact is sought to be relied upon in the appeal. In view of scope of an appeal under provisions of Order-XLIII, Rule 1 (r) of the Code which is limited to examining the correctness of the order passed by the trial Court under provisions of Order-XXXIX, Rules 1 and 2 of the Code, Plaintiffs merely by filing an affidavit cannot seek to rely upon any subsequent event without amending the plaint or by seeking permission to produce additional evidence. The order impugned cannot be assailed by relying upon grounds/facts which do not find place in the pleadings of the parties.

Supreme Court in M/s. S.M. Dyechem Ltd. Vs. M/s. Cadbury (India) Ltd. [ (2000) 5 SCC 573]. While considering the difference between a passing off action and one for infringement, it was held that in a passing off action, additions, get-up or trade dress could be relevant to enable the defendant to escape. In infringement cases, such facts do not assume relevance. It was then observed that on the same facts, a suit for passing off may fail but a suit for infringement may succeed. Said decision also holds that in trade mark matters, while considering the prayer for grant of temporary injunction, comparable strength of the cases of either parties has also to be gone into.

The manner in which an action for passing off has to be considered has been laid down in Ayushakti Ayurved Pvt. Ltd. & others Vs. Hindustan Lever Ltd. [2003 (4) Mh. L.J. 915]. It was observed that claims in passing off action are not for an infringement of property rights, but are for misrepresentation by the defendant.

Plaintiffs did not place on record any prima facie material to indicate that due to alleged use of a deceptively similar trade name by Defendant, they had suffered some loss of clientèle or that their turnover had reduced. There is not a single instance either pleaded or placed on record of a customer being misled or deceived on account of the use of deceptively similar trade name by the defendant. Some material in that regard was necessary in facts of the present case for purpose of making out a prima facie case as one of ingredients while seeking interim injunction. Prima facie material in that regard appears to be lacking on record. As observed in Ayushakti Ayurved, at a prima facie stage without any actual instance of witnesses having been deceived, it would be sufficient for the Court to form a broad impression that there is no confusion by and large.

Material placed on record by the plaintiffs insufficient to make out a prima facie case for grant of temporary injunction in their favour. Variety of services provided by Plaintiffs as contrasted with services provided by Defendant, use of the word 'mobile' in the trade name of Defendant which is prima facie found relevant in passing off action and absence of any material to indicate customers being misled or deceived are relevant aspects resulting in absence of making out a prima facie case. These factors would also have a bearing on comparable strength of Plaintiffs' case which has also to be taken into account while considering prayer for grant of temporary injunction. There is further no prima facie material placed on record by Plaintiffs that there has been some fall in their sales as a result of the alleged passing off acts of the defendant which aspect has been found relevant by the Division Bench in Shelke Beverages Pvt. Ltd.

Trial Court while passing the impugned order failed to take into consideration the settled principles of law regulating grant of temporary injunction. On said count, in view of ratio of decision in Wander Ltd. Vs. Antox India (P) Ltd. [1990 (Supp) SCC 727] that has been reiterated in Ramdev Food Products P. Ltd. and Skyline Education Institute (Pvt.), a case for interference with the discretion exercised by the trial Court has been made out. However, in decision in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980], it has been observed that in an action for passing off, defendant could escape liability if it can be shown that the added matter was sufficient to distinguish his goods from those of Plaintiff. In the light of the position and accepting the statement made on behalf of Defendant that the defendant was willing to increase fonts of the words “Orange” and “Mobile” in its logo to make the entire trade name of the defendant conspicuously visible, Defendant can be directed without prejudice to the rights of the parties to increase the fonts of said words in its logo during pendency of the suit.

Relevant : Wander Ltd. Vs. Antox India (P) Ltd. [1990 (Supp) SCC 727], Ramdev Food Products P. Ltd. and Skyline Education Institute (Pvt.), Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980]


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