Judicial Interpretation

The key judicial interpretation, found in paragraphs 26-28, clarifies that a plaintiff claiming trademark infringement must actually use their registered trademark. The Court emphasized that there is no express or implied bar for civil courts to consider challenges to trademark validity at the interlocutory stage.

Court’s View

The Bombay High Court held that the plaintiff was not using his registered device mark on the packet used for selling Shev Chiwda, and therefore could not seek infringement of his trademark against the defendant. The Court also found that the Trial Court had granted relief that was not even sought by the plaintiff. (Paragraphs 24-26, 32)

Conclusion

The High Court allowed the appeal, quashed and set aside the order of the Trial Court, and rejected the plaintiff’s application for interim injunction. The Court directed the defendant to change the background color of their packet from red to blue, as per their undertaking. (Paragraphs 33-34)

Legal Provisions

Trademarks Act, 1999 Commercial Courts Act, 2015 – Section 13

Case of the Appellant (Original Defendant)

• Argued that the case was not of ‘passing off’ but of ‘infringement of trademark’.
• Contended that there was no similarity between the registered trademark of the plaintiff and the packet on which the defendant was selling his product.
• Offered to change the color of their packet from red to blue to remove any ambiguity.

Appellant Relied On

1. Orange City Mobile Collection, Nagpur vs. City Collection, Nagpur & Ors., 2017 (3) Mh. L. J. 180
2. Lupin Ltd. vs. Johnson & Johnson, 2015 (1) Mh.L.J. 501

Case of the Respondent (Original Plaintiff)

• Claimed that the defendant was trying to imitate the plaintiff’s brand and started a business with a similar name.
• Argued that the public would be confused between the products of the plaintiff and the defendant.
• Contended that the defendant’s actions were causing financial loss and depreciating the goodwill of the plaintiff’s business.

Respondent Relied On

1. S. Syed Mohideen vs. P. Sulochana Bai, (2016) 2 SCC 683
2. Hamdard National Foundation (India) & Ors. vs. Sadar Laboratories Pvt.Ltd., 300 (2023) DLT 420
3. Pidilite Industries Ltd. vs. S. M. Associates & Ors., 2003 (5) Bom.C.R. 295

Question & Answer

Question: What was the main issue in this trademark infringement case? Answer: The main issue was whether the plaintiff could claim trademark infringement when they were not using their registered device mark on their product packaging, while the defendant’s packaging was different from the plaintiff’s registered trademark. (Paragraphs 21, 26)

Question: Why did the High Court overturn the Trial Court’s injunction order? Answer: The High Court overturned the injunction because the Trial Court granted relief that was not sought by the plaintiff, and the plaintiff was not using their registered device mark on their product packaging, which is necessary to claim trademark infringement. (Paragraphs 23-24, 28)

Question: What direction did the High Court give to the defendant? Answer: The High Court directed the defendant to change the background color of their packet in which they sell Shev Chiwda from red to blue color, as per the defendant’s undertaking. (Paragraphs 30, 33)

Question: How did the Court view the plaintiff’s use of their registered trademark? Answer: The Court found that the plaintiff was not using their registered device mark on their product packaging, which was quite different from their actual registered trademark. This weakened the plaintiff’s claim of trademark infringement. (Paragraphs 16, 26, 28)

Question: What precedent did the Court rely on regarding the consideration of trademark validity at the interlocutory stage? Answer: The Court relied on the Full Bench decision in Lupin Ltd. vs. Johnson & Johnson, which held that there is no express or implied bar taking away the jurisdiction of the Civil Court to consider challenges to trademark validity at the interlocutory stage. (Paragraph 27)

Details of Case

• Court: High Court of Judicature at Bombay
• Bench: A.S. Chandurkar & Rajesh S. Patil, JJ.
• Date of Order: 3rd September 2024
• Case Name: Santosh Vishnu Mardhekar vs. Arun Shamrao Mardhekar
• Case No.: Commercial Appeal from Order No. 13 of 2023