1. Although this Appeal From Order is listed on the board for admission, with the consent of the learned counsel appearing for both the parties, it has been taken up for final hearing today.
2. This Appeal From Order under Order XLIII Rule 1(r) of Code of Civil Procedure has been filed by the appellant- original defendant (hereinafter referred to as 'defendant' for short) challenging the order dated 27-12-2011 passed below Ex.5 by the learned 4th Additional District Judge, Ahmedabad (Rural) in Regular Civil Suit No.1 of 2011 whereby injunction application Ex.5 filed by the present respondents-original plaintiffs (hereinafter referred to as 'plaintiffs' for short) was granted.
3. It is the case of the plaintiffs that plaintiffs have started business of restaurant in the name and style of “Sankalp” since the year 1985. They earned tremendous name and fame by running the business in the said name. Subsequently, different types of business were started by the plaintiffs and the word “sankalp” was registered under the Trademark Act in the year 1995 for the trade mark class 16-19-29-30-36-37-43. As per the case of the plaintiffs, plaintiffs have started the business of construction. It is further the case of the plaintiffs that as defendant has also put up the scheme of bungalows and commercial centre under the name of “sankalp”, people were confused and hence, plaintiffs have made an inquiry in the office of Trademark and it was found that application was submitted by defendant for registration of trademark 'Sankalp' which is pending. As per the plaintiffs, defendant, with ulterior motive to take disadvantage of the goodwill and fame of the trademark of the plaintiffs, is running the business in the name of 'Sankalp' which name was being used by the plaintiffs since the year 1985 in their branches in India and 8-9 branches abroad. The registration is made by the plaintiffs for the business of restaurant as well as for construction of buildings and for other business purpose since 2009 and it is valid for ten years i.e. upto 2010. The defendant started its business in the name of 'Sankalp' in 2011 but thereafter, with ulterior motive to encash the goodwill and fame of the word 'Sankalp', started to use the word 'Sankalp' The defendant is unauthorisedly and illegally using the name of word 'Sankalp' of plaintiffs. As per the plaintiffs, due to unauthorised and illegal use of the name 'Sankalp' by the defendant in running its business, the business of the plaintiffs is put to great irreparable loss. As plaintiffs have been using the said word name 'Sankalp' since many years, prima facie case and balance of convenience are in favour of the plaintiffs and, therefore, aforesaid suit was filed by the plaintiffs along with an application for injunction below Ex.5 praying for restraining the defendant from using name 'Sankalp' to run the business of building construction.
4. In pursuance of issuance of notice to the defendant and upon affording opportunity of hearing to learned advocates appearing for both the parties and on perusal of the documents produced by both the parties, trial court has allowed the injunction application and hence, the present Appeal From Order.
5. Heard learned counsel, Mr.Hiren U.Trivedi for the defendant and learned counsel, Mr.Y.J.Trivedi for the plaintiffs.
6. Mr.Hiren Trivedi, learned counsel for the defendant, submitted that composite suit filed by the plaintiffs under the provisions of Trademark Act is not tenable and, therefore, plaintiffs are not entitled to get injunction. He further submitted that the defendant was doing the construction business in the name of “Sankalp” since 3-3-2006 and filled the trademark application on 22-4-2009 in Class 37 of the Trade Marks Act, 1999 for statutory protection, which is pending. According to him, plaintiffs have not entered into the business of construction from the year 1985. He further submitted that the word “Sankalp” was only used for the restaurant purpose by the plaintiffs and not for doing business of construction. According to him, restaurant business and construction business are two different kinds of businesses having no connection with each other. Moreover, even an illiterate person would not get confused or deceived in identifying the services of the defendant and plaintiffs. He submitted that Hon'ble Supreme Court in the case of Cadila Healthcare Ltd. Vs. Swiss Pharma Pvt.Ltd. reported in 2002(24) PTC 708(Guj), in an action for passing off has observed that for deciding the question of deceptive similarity, the following factors to be considered:
(a) The nature of the marks, i.e whether the marks are word marks or label marks or a composite marks, i.e. both words and label works.
(b) The degree of resemblance between the marks, phonetically similar and hence similar in idea
(c) The nature of the goods, in respect of which they are used as trade marks
(d) The similarity in the nature, character and performance of the goods of the rival traders
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity.
7. He has relied on a decision of Hon'ble Delhi High Court reported n 2012(50) PTC 535(Del.)(DB) in the case of IHHR Hospitality Pvt. Ltd. Vs Bestech India Pvt. Ltd. wherein it has been held in para 13 as under:
“13. We simply highlight the fact that the word 'Ananda' is a word which is public juris. In relation to abodes, it signifies joy, bliss and happiness. The sales of the appellant in sum of Rs.200 crores spread over 10 years have rightly been opined by the learned Single Judge to not be indicative of a distinctiveness of the word being linked to the appellant.”
8. Relying upon the principle laid down in the aforesaid decision, Mr.Hiren Trivedi submitted that the word 'Sankalp' is derived from Sanskrit language and it has a broad meaning. According to him, any person can use the said word and, therefore, the plaintiffs are not entitled to get any relief. It is, therefore, submitted that the trial court ought to have considered that the plaintiffs' exclusive right over the trade mark “Sankalp” was baseless and unfair and hence, defendant should not have been restrained from using the name 'Sankalp' for business purpose.
9. Mr.Hiren Trivedi further submitted that trial court did not consider the fact that application for trademark was filed on 22-4-2009 while the suit was filed on 22-7-2011 and, therefore, there was a delay of more than two years which aspect has not been considered by the trial court. He has relied on the following decisions:
i) 2009(4) PTC 393 (Del.)(DB) in the case of Goenka Institute of Education & Research Vs. Anjani Kumar Goenka & Anr.;
ii) AIR 1998 Delhi 126 in the case of S.B.L. Ltd. Vs.
Himalaya Drug Co.; and
iii) AIR 2011(NOC) 115 (Guj.) in the case of Nirma Chemical Works Pvt. Ltd. & Anr. Vs. Nirman High School & others.
10. Mr.Y.J.Trivedi, learned counsel for the plaintiffs, submitted that composite suit is tenable if cause of action arises at the same place. He further submitted that in business, word 'Sankalp' is very well known and has its own reputation and it is registered for different class under the Trademark Act and, therefore, the trial court has rightly held that plaintiffs have a prima facie case apart from balance of convenience in their favour and if the name 'Sankalp' was used by the defendant in carrying business of construction, great irreparable loss would be caused to the plaintiffs. He further submitted that the plaintiffs have entered into the business of construction in the name and style of 'Sankalp' since 2002 while the defendant has started the business in name of 'Sankalp' since 2006 and, therefore, the plaintiffs are the prior users of the name 'Sankalp'. It is further submitted that merely because application for registration of the word 'Sankalp' qua business of construction is pending before the Registrar of Trademark filed by the defendant, defendant is not entitled to use the word 'Sankalp' as objection was filed by the plaintiffs for the same. He further submitted that initially construction business was started by the defendant in the name of 'Shilp' but with ulterior motive to take disadvantage of the name which has been used by the plaintiffs having a good reputation and goodwill in the market, the word 'Sankalp' was used by the defendant in the scheme. He has relied on a decision reported in AIR 1960 SC page 142 in the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd.
11. Mr.Y.J.Trivedi further submitted that this Court as an Appellate Court has limited power to interfere with the order passed by the trial Court and cannot reassess or reappreciate the material with a view to arrive at a different conclusion. He further submitted that the order passed by the trial court is just, legal and proper and hence, sought to dismiss this Appeal From Order.
12. This Court has gone through the impugned judgment and order passed by the trial court together with the submissions made by learned counsel appearing for the respective parties. This Court has also gone through the principles laid down in various decisions relied on by the learned counsel for the respective parties. Keeping in mind the principles laid down therein, this Court is proceeding further.
13. This Court has considered the aspect that present Appeal From Order is challenging a discretionary order passed by the trial Court. In this connection, reliance is placed on a decision of this Court in the case of Matrix Telecom Pvt.Ltd. Vs.Matrix Cellular Services Pvt.Ltd. reported in 2011(3) GLR 1951 more particularly towards paragraph 6.1 which reads thus:
“6.1 It is required to be noted that it is well settled law that the Appellate Court may not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the 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 injunctions. An appeal against exercise of discretion is said to be an appeal on principle. The Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by the court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion.”
14. In view of the above settled principle of law, power of this Court as an Appellate Court to interfere with the order passed by the trial court is very limited and only in exceptional circumstances, the appellate Court can interfere with the order passed by the trial Court. The appellate Court cannot reevaluate or reassess the entire evidence and arrive at a conclusion contrary to the conclusion arrived at by the trial Court. However, in case where the order passed by the trial court is found to be invalid, illegal, arbitrary, perverse or contrary to the settled principles of law, the Appellate Court has all powers to interfere with the same. Considering the above principles of law, this Court has only to see as to whether the trial court has committed any error in passing the impugned order. It has also to see whether the main basic principles of law namely, prima-case, balance of convenience and irreparable loss are satisfied or not in passing the order.
15. As far as composite suit is concerned, it may be noted that the plaintiffs have been doing the business of construction in the name of 'Sankalp' within the territorial jurisdiction of this Court and the infringement of trademark and copyright of the plaintiffs has been committed by the defendant in the Ahmedabad Rural and, therefore, this composite suit is tenable.
16. It is true that the word “Sankalp” is not registered by the plaintiffs. However, the plaintiff has been using the same name since 1985 and earned reputation and goodwill in the market and, therefore, although the said name is not registered, however, when the court is convinced that the plaintiffs are able to prove its prima facie case, then they are entitled to injunction by restraining the defendant from using the name “Sankalp”. It is worthwhile to note at this juncture that defendant's application for registration of identical trade mark 'Sankalp' filed with the Trademark Registry has not been decided till date.
17. As far as prayer in the suit is for passing off is concerned, what is required to be seen by this Court is whether the plaintiffs have prima-facie proved that they are the prior users of the disputed mark or not. It is to be noted that the plaintiffs were using the name 'Sankalp' in their business activities since the year 1985. However, said name was being used by the plaintiffs in their construction field since the year 2002. However, the defendant has been doing the construction business in the name of “Sankalp” since 3-3-2006 and, therefore, the trial court has rightly held that plaintiffs are the prior users of the mark 'Sankalp'.
18. Now it has to be seen whether the word “Sankalp” used by the defendant is deceptively similar to the word “Sankalp” used by the plaintiffs. In this connection, the documents produced on record shows that the defendant has been using the trade name 'Sankalp' which is similar to the trade name 'Sankalp' used by the plaintiffs in their restaurant since 1985 and in their construction business since 2002. Since both these words are deceptively similar, there are all possibilities of creating confusion in the market. If the defendant did not have a dishonest intention, they should not have used the same name 'Sankalp' but some other name. This shows that the defendant is intentionally using the said word to encash the name, fame and goodwill earned by the plaintiffs over a long period of time. This Court is therefore of the opinion that the plaintiffs are able to prove that the defendant was using the name 'Sankalp' to lead the purchasers to believe that this is the name of the plaintiffs and, therefore also, this definitely is likely to cause confusion and deception in the market.
19. In view of the above, when this Court has held hereinabove that the defendant has been using the name 'Sankalp' with dishonest intention and in bad faith to encash the goodwill and reputation earned by the plaintiffs during the past many years, temporary injunction was rightly granted by the trial court. When the court is convinced that the plaintiffs are able to prove their prima facie case, then they are entitled to injunction.
20. As far as delay is concerned, this Court has gone through the averments made in the plaint as well as injunction application and the documents appearing on record and it appears that as soon as it came to the knowledge of the plaintiffs that the defendant has been using the name of the plaintiffs, plaintiffs have filed the suit and, therefore, there is no delay at all. If at all it is contended to be a delay, said delay has been sufficiently explained.
21. As far as the judgments relied on by the learned counsel for the appellants are concerned, this Court is of the opinion that each case has its own facts and considering the facts of each case, judgments have been rendered. However, as facts of the present case are different from the facts of cited judgments, they would not be applicable to the present case.
22. In the entirety of the facts and circumstances narrated hereinabove, this Court is of the opinion that the plaintiffs were able to establish all the three main basic principles in their favour and, therefore, trial court, after considering the evidence on record and after discussing the legal position, was perfectly right in passing the impugned order. Since the said order is just, legal and proper, the Appellate Court should not interfere with the same and hence, this Appeal From Order is required to be dismissed.
23. Thus, the appeal is dismissed.
24. In view of the dismissal of the Appeal From Order, Civil Application does not survive and is disposed of. Notice is discharged.
[M.D.SHAH,J.] radhan