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2014 DIGILAW 941 (GUJ)

Suncrest Food Makers v. General Candy Co. Ltd.

2014-08-22

S.G.SHAH

body2014
JUDGMENT : S.G. Shah, J. Considering the voluminous record and pendency, of civil suit before the trial Court, parties have agreed to decide this appeal finally at the admission stage and therefore parties are heard at length for final determination of the appeal. 2. The appellant is original defendant whereas opponents are original plaintiffs in Regular Civil Suit No.7 of 2013 pending before the District Court of Vadodara. In such suit, by impugned judgment and order dated 20.9.2013, 13th Additional Distrait Judge, Vadodara has, partly allowed the application at Exh.4 in the suit and thereby interim relief granted earlier by exparte order dated 28.3.2013 restraining the parties from using the mark "Hart Beat" OR "Harty Party" or its similar trademark. Though, injunction regarding infringement of the plaintiffs' right had been rejected, the trial Court has allowed the prayer to restrain the defendants, their distributors, servants, agents, dealers, stockist from using trademark "Harty Party" for their products and also restrained them and from using from committing, act of passing off by selling and marketing with similar trademark till the final disposal of the suit. 3. Parties are referred with nomenclature in the impugned order i.e. appellant as defendant and respondents as plaintiffs. 4. The plaintiffs have filed an application under Order 43 Rule 1(R) of the Code of Civil Procedure, 1908 contending that they are using the trademark "Hart Beat CANDY" for their candy which is of the heart shape since 1984 and thereafter in 1985 started candy wrapping gimmick with sweet love words and since 1986 candy wrapper of heart color prediction and thereafter in 1994 Loved Definition Creation by Celebrities. It is contended that "Hart Beat" is used in a particular manner, style, color combination with a small heart shape since long. 5. It is also contended that in 1997, plaintiffs prepared the design and visualised wrapper and, label contending the original artistic work, design, get up and inter alia containing the trademark "CORAZON" written in an artistic style and device of heart is also wrapped in artistic manner against the background containing golden color ribbons moving and there. The said label was essentially of pink, white and red color. The trademark word "CORAZON" was written in artistic style in red color and the device of straw berries depicted in the label are also of red color. The said label was essentially of pink, white and red color. The trademark word "CORAZON" was written in artistic style in red color and the device of straw berries depicted in the label are also of red color. All such designs bear on both the sides of the packing though front side of label was dominated with white color and back side with pink color. All such other minor details are very well explained in the pleadings as well as in the impugned order. 6. It is further stated that such mark and device has been registered in several countries, list of which is given in Paragraph 9 of the application which includes India also. In Paragraph 11 of the application, volume and sale per year from 2007 to 2012 is listed in tabular, form, which confirms that though sale has been increased at some point of time, at least in the year 2012, it has been reduced from the previous years. It is further submitted that they are registered user of such trademark and they have never received any objection from anybody and registration has been regularly renewed and therefore nobody is entitled to use any such design or work for their product. 7. In paragraph 18 of the application, plaintiff has given the comparison of their wrapper and label used by the defendant, so as to compare the same, while seeking such relief to restrain the defendants while using similar label. In such comparative table, it is stated that except the change in words "Hart Beat" for which the defendant has used "Harty Party", all other facts and details of both the labels are not only common but exactly similar and therefore it is contended that they have no option but to agitate to restrain the defendants from using their design and label which are registered, trademark of them. It is further contended that before initiating such litigation, plaintiffs have issued notice to the defendants restraining them from using such similar label and on confirmation by the defendants that they will discontinue the use, plaintiff has not initiated any action immediately. However, when defendant has again started using such trademark, label etc. which is otherwise identical and similar to the plaintiff's label and mark, the plaintiffs have no option but to file such suit. However, when defendant has again started using such trademark, label etc. which is otherwise identical and similar to the plaintiff's label and mark, the plaintiffs have no option but to file such suit. To prove the repeated infringement of the registered trademark of the plaintiff, the plaintiff has purchased some product from the market in the month of February, 2013 and found that even after confirming that now trademark could not be infringed, continued to use the same. 8. Defendant has resisted the ex-parte order of injunction before the trial Court pressing the Court to deal with the matter at the earliest and at one point of time because of pendency of the interim relief, they have preferred Appeal, From Order No.314 of 2013 against the ex-parte order of injunction. However, such Appeal from Order was disposed of vide order dated 30.8.2013 considering the reasons for delay which is not attributed to the concerned Judicial Officer or the concerned Court because of several reasons and directed the trial Court to decide the injunction application in stipulated time period. 9. So far as merits is concerned, the defendant has pleaded that it is using several labels since decades together and most of them were registered trademarks at different point of time with competent authorities and how present defendant has come in business and power from M/s. Flamingo Food Products which is in business since the year 2004. It is also contended that they are also registered proprietors of artistic work consisting of device of heart and love candy involved in the trademark label "ONE LOVE DARLING AND VALENTINO" since the year 2007 under the Indian Copy Rights, Act and under one of such trademark label adopted by the defendant in respect of heart shape device made in the same color and under the name of "Harty Party JUMBO" which contains various fruits, and that label was exclusively and openly adopted by the defendant through its predecessor since 1.8.2004, knowing fully well that there was no such trademark in use and/or in existence. It is further contended that concept of device and fruits of various confectionery labels is common to the label of the plaintiffs as same denotes the furry contents in the said candy confectionery. To prove such statement, defendants have produced and crave leave to refer and rely upon various such examples and various confectionery manufactures with device of fruits. It is further contended that concept of device and fruits of various confectionery labels is common to the label of the plaintiffs as same denotes the furry contents in the said candy confectionery. To prove such statement, defendants have produced and crave leave to refer and rely upon various such examples and various confectionery manufactures with device of fruits. List of all such confectionery is included in written statement with photographs. It is specifically pleaded that they are having registered trademark of such label under the Indian Copy Rights Act. However, it is also contended that their trademark is somewhat identical to the, trademark by the plaintiffs. While contending that the trademark in question is in the distinctive style, design and get up with color scheme is in use by the defendant through its predecessor since 1.8.2004 and with knowledge that such similar trademark is not used or in existence and is in such long and continuous use, it is stated that application for the trademark "Harty Party" is filed by the defendant on 1.9.2011 since there was change in constitution of the firm, details of which is also pleaded in initial paragraphs of the written statement. We are not concerned with the constitution and change in constitution of the firm and therefore all those details are omitted. 10. So far as merits of the case is concerned, it is also pleaded that plaintiff has suppressed material facts and there is delay and, therefore, suit and injunction application are to be dismissed. However, in the next paragraph, plaintiff has explained the communication, between the parties which started somewhere in the month of August, 2012 and, therefore, only because suit is filed after some communication, it cannot be said that there is delay in filing such suit. But the most important and material defence is to the effect that in-fact the trademark "Hart Beat" is adopted by one namely; M/s. Swan Sweets Private Limited, Jamnagar much prior to the present plaintiffs also and such name "Hart Beat" is also registered in the name of said firm M/s. Swan Sweets Private Limited, Jamnagar as back as on 9.5.1994. Relevant documentary evidence to that effect is already produced on record and now same label has been registered by the plaintiffs firm. Relevant documentary evidence to that effect is already produced on record and now same label has been registered by the plaintiffs firm. It is further contended that plaintiffs' product had no market in India and only because of advocate of M/s. Swan Sweets Private Limited, Jamnagar, is also an advocate for the plaintiffs, he managed to grab the label registered in the name of the M/s. Swan Sweets Private Limited, Jamnagar. The other specific and disturbing factual submission is with reference to the use of word "CORAZON", in the label of the plaintiff which makes both the label different than each other. It is specifically contended that in the registration of trademark, plaintiffs have admittedly disclosed and agreed only to the word "CORAZON" and at-least in the pleadings also, the plaintiffs have pleaded in the plaint as well as in the injunction application that their product is sold under the trademark "CORAZON." It is therefore, submitted that the plaintiffs have concealed the several facts from the Court while filing the present suit when registration of the said trademark is in challenge, as rectification is filed and while seeking registration, it was stated that it is "proposed to be used". Thereby, it is submitted that in fact plaintiffs have never registered the trademark in their name which was otherwise registered with M/s. Swan Sweets Private Limited, Jamnagar and therefore plaintiff is not entitled to relief as claimed for. 11. Several procedural details about different, applications for registration procedure for such trademarks are pleaded but again at present it is made clear that we are not concerned with the same except use of a trademark in question at such interim stage, rather than history of both the parties. 12. While assailing the pleadings of the plaintiff, defendant has specifically contended that admittedly plaintiffs' trademark is only "CORAZON", whereas, the defendant's trademark is "Harty Party" and thereby two trademarks, if taken as a whole, are completely different and dissimilar from each other. It is also submitted that in-fact plaintiffs have admitted the word "LOVE CANDY" and "Hart Beat." Moreover, the word "Hart Beat" is appeared in a certain manner on their labels. Therefore, they are very common and it is for this reason that plaintiffs have disclaimed their right in the said explanation. It is also submitted that in-fact plaintiffs have admitted the word "LOVE CANDY" and "Hart Beat." Moreover, the word "Hart Beat" is appeared in a certain manner on their labels. Therefore, they are very common and it is for this reason that plaintiffs have disclaimed their right in the said explanation. It is further submitted that the goods of the plaintiffs are sold by the trademark "CORAZONE" and not by the trademark "Hart Beat" and, therefore suit filed by the plaintiffs is baseless since trademark 'CORAZONE" and "Harty Party" are completely different and dissimilar from each other. It is further submitted that plaintiffs have intentionally not disclosed and failed to state exact date of use of their trademark in India and deliberately using vague and malicious terms with malafide intention to mislead the Court and failed to produce any documents in support of the claim raised by them. However, it is further contended that plaintiffs have never used trademark as claimed by them and since their trademark is only a word "CORAZONE" and not "Hart Beat," whereas defendant's trademark is "Harty Party". It is also contended that plaintiffs are not the prior adopters and users of the trademark label "Hart Beat" in India which was originally registered in the name of M/s. Swan Sweets Private Limited, Jamnagar in the year 1994 and it was renewed recently by the plaintiffs as against the registered trademark "Harty Party" used by the defendants since the year 2004. 13. Based upon above pleadings, both the sides have submitted their arguments in support of their pleadings which are taken into consideration. 14. Perused the record, which runs into almost 900 pages, wherein, both the sides have produced several documentary evidence including copies of registered trademarks in their names and relevant documents regarding constitution of firms etc., as well as communication between them. Both the parties are relying upon several judgments and several decisions. However, all those details are not required to be dealt with minutely for the simple reason that considering over all pleadings and available material on record, prima-facie, it transpires that the game is otherwise i.e. not only regarding similar product in the two different trademarks but in reality who has used the trademark at prior point of time is the material issue which is required to be proved during the trial of the suit. Prima-facie, it seems that since both the, parties are at different places i.e. plaintiffs are producing their products in Malesia, whereas defendant in India, therefore, there was no question or dispute regarding similarity but the question is regarding trans-border reputation when products are now available in all the countries and at that point of time when plaintiffs have found that their label "Hart Beat" is somewhat similar to the label used by defendant "Harty Party," it seems that they have acquired the rights of the label which was otherwise adopted and used by one local manufacture of Jamnagar namely: M/s. Swan Sweets Private Limited as "Hart Beat" in the year 1994 and then complained that they are prior user and, therefore, defendant should be restrained from using such flavor. Even if it is permitted under law, it requires to be properly proved before passing any order of restraining the other side and if necessary, such issues may be decided at the earliest rather than seizing the material and restraining the party to deal with the products which is already manufactured or to, restrain the party from dealing further with the same product. As against that, if we peruse the pleadings of the plaintiffs, it becomes clear that, may be by oversight or by misunderstanding, though plaintiffs are claiming their trademark on the word "Hart Beat" through out their pleadings, it is pleaded that their trademark is with "CORAZONE" and it is not specifically pleaded that their trademark is with the word "Hart Beat." Therefore when defendant's trademark is with the word "Harty Party" since the year 2004, then an attempt by the plaintiffs to get their word "Hart Beat" registered in the year 2011 is nothing but an attempt as apprehended in previous part of this judgment that plaintiffs are taking disadvantage of the situation that before going to the Court of law, they tried to clear a trademark named "Hart Beat" from anywhere, in the present case, probably from the previous user i.e. M/s. Swan Sweets Private Limited, Jamnagar, and though their product was dealing with the trademark "CORAZONE," they are claiming that defendant, should not use the word "Harty Party" since it is similar to their trademark. Suffice it to say that even if plaintiffs have a good case and title over the trademark "Hart Beat," when defendant has brought on record that such trademark was already in use since 1994 by one M/s. Swan Sweets Private Limited, Jamnagar, now when plaintiffs alleged that even in that case, defendant should not use the same trademark, plaintiffs should come forward with a case that how and when, if at all, they have procured such trademark from M/s. Swan Sweets Private Limited, Jamnagar or in fact, plaintiffs should have joined M/s. Swan Sweets Private Limited, Jamnagar or its successor in title and confirmed that even M/s. Swan Sweets Private Limited, Jamnagar, does not have better title over such trademark. But in any case, only because of plaintiffs' submission that even in such situation, defendant is not entitled to use the trademark, cannot be accepted. It is crystal clear that whatever relief claims before the Court with a specific pleading, is liable to, prove his case and he cannot be permitted to get disadvantage of other situation, submitting that because they have came before the Court, their statement must be believed as gospel truth. Though, civil jurisprudence confirms that both the sides have to be fair in disclosing the true facts before the Court, the common legal jurisprudence confirms and remains in force that it is for the petitioners or plaintiffs to prove their case on their own by sufficient and cogent evidence. 15. It seems that as a good gesture, when appellant defendant has agreed to sit across the table to solve the dispute by making few corrections in the label of both the parties so as to avoid similarity, the respondent-plaintiffs have probably considered it as a drawback or lacuna in the merits of the defendant's case. However, when plaintiffs have failed to consider and accept the different proposals to amicably settle the dispute, it becomes clear that they wants to take disadvantage of the impugned, order. 16. Irrespective of such situation, it cannot be ignored that in as many as ten pages i.e. paragraph nos. However, when plaintiffs have failed to consider and accept the different proposals to amicably settle the dispute, it becomes clear that they wants to take disadvantage of the impugned, order. 16. Irrespective of such situation, it cannot be ignored that in as many as ten pages i.e. paragraph nos. 3,5,7 to 11, 13, 15 and 18, plaintiffs have pleaded that their trademark is in the word "CORAZONE" whereas, the lower Court has compared the label "Hart Beat" with the label "Harty Party." There is substance in the defendant's submission that District Court has used different yardsticks; when registration by the defendant, which is in the year 2004 with the trademark "Harty Party" is not accepted, whereas, registration certificate by plaintiff, which is initially in the name of some other company (M/s. Swan Sweets Private Limited) and though there is no cogent evidence to confirm that plaintiff was the sole user of such trademark prior to the defendant, though plaintiff has tried to make a show that they are prior user, such registration was accepted to determine the issue in favour of the plaintiff. There is also substance in the submission that, plaintiff's claim for trans-border reputation from 1993 till date has no substance because there are only few invoices for petty amount i.e. in all four invoices in eight years and, therefore, it cannot be said that plaintiffs were using the trademark "Hart Beat" with trans-border reputation. So far as assignment of trademark "Hart Beat" in favour of the plaintiffs is concerned, the Registrar of Trademarks disbelieved such assignment by its order dated 28.8.2009, which is on record and, therefore, unless such assignment is priorly pleaded and proved by cogent evidence on record based upon simple pleadings by the plaintiffs, interim relief of harsh nature as granted in the present suit, is not warranted. 17. As against that, plaintiffs have tried to prove that in notice before the suit they concluded the dispute regarding trademark "Hart Beat" and in some of the paragraphs of the suit they pleaded that their trademarks are "CORAZONE" and "Hart Beat." However, the facts remain that, while filing the suit, plaintiffs have probably opted to plead about the trademark "CORAZONE", rather than "Hart Beat" though in prayer clause, it is prayed that defendant should restrain from using the trademark "Harty Party" in the label. Even if it is a bonafide mistake, then unless such bonafide mistake is rectified on record, harsh order of injunction is not warranted. 18. Plaintiffs have contended that trans-border reputation is not the ground but only prior user is the ground. In that case, plaintiffs should have joined M/s. Swan Sweets Private Limited, Jamnagar, or proved on record that their assignment is genuine, legal and in force. However, in absence of such proof on record, harsh order of stay is not warranted. 19. Appellant has relied upon the following citations: (A) AIR 2004 Delhi 74 between M/s. East African (I) Remedies Pvt. Ltd. v. M/s. Wallace Pharmaceuticals Ltd., wherein, relying upon the judgment of Supreme, Court between Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd., reported in AIR 2001 SC 2083 , the Court held that it was appropriate to grant injunction in favour of either of the parties with direction to ensure that the proceedings in the suit are conducted as expeditiously as possible or the Registrar under the Trade and Merchandise Marks Act, 1958 may decide the matter which may govern the rights of the parties. It is further observed that in the matter of grant of injunction, the Court has also to see whether non-interference of the Court would result into irreparable injury to the party seeking the injunction. Reliance is also placed on the decision by the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in AIR 2001 SC 1952 , wherein, High Court has refused to grant injunction and the Supreme Court in appeal remanded the case back to the trial Court to decide the suit in view of the observations made therein. The Court has broadly reiterated the following factors to be considered by the Court in the case of an alleged action of passing off on the basis of unregistered trademark :- (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works. (b) The degree of resembleness 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. (b) The degree of resembleness 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. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case." Ultimately when Supreme Court has found that no evidence has been brought on record to show that, plaintiffs' product is readily and regularly available in the market and that plaintiffs have not been able to show if it has acquired any goodwill in the said trademark. Whereas, on other hand, defendant could show that there was no misrepresentation in adoption of the trademark as such was bonafide, because defendant was not aware of plaintiffs' product at the time of commencement of use of its trademark. In the result, the prayer for injunction was dismissed with a direction to both the parties to maintain proper accounts of the sales of their respective products under their respective trademarks and to file it periodically i.e. every three months, in the Court. The defendant was also further directed to deposit the amount of Rs.2,00,000/- or to furnish security of the same amount to the satisfaction of the Court so as to safeguard the interest of the plaintiffs. Situation in the present case is also similar and, therefore, ultimately this appeal is required to be determined with the similar decision and directions. However, other cited judgments are, scrutinised and its brief facts are taken into consideration in following manner. Situation in the present case is also similar and, therefore, ultimately this appeal is required to be determined with the similar decision and directions. However, other cited judgments are, scrutinised and its brief facts are taken into consideration in following manner. [B] 2001 PTC 513 (Del) between M/s. The Gillette Company and others v. A.K. Stationery and others, wherein, the Delhi High Court has referred several decisions but ultimately follow the decision referred in previous citation i.e. directing the defendant to maintain proper accounts of the sales of their respective products under their respective trademarks and to file it periodically i.e. every three months, in the Court. It was observed that no doubt the Courts in India have protected the trans-border or spill over international reputation of trade marks of overseas companies in various cases and would continue to do so. It also does not require any emphasis that rapidly grown international trade marks is imperative that intellectual property rights are properly recognised and managed in different countries of the globe. The Court frowns upon any attempt by one proprietor to appropriate the mark of another proprietor although that proprietor is a foreign proprietor and the mark has only been used by, him in a foreign country. However, these principles are to be applied keeping in view the salient aspects of each case. When we are examining the case of interim injunction, the well recognised principles for grant or refusing to grant such injunction at this stage would have also to be borne in mind. [C] 2009 (39) PTC 457 (Mad) between M/s. World Wide Brands Inc. v. Smt. Dayavanti Jhamnadas Hinduja, The Gillette Company and others v. A.K. Stationery and others, wherein, the High Court has held that when petitioner totally failed to produce any evidence with regard to the commercial publicity in India, the contention regarding trans-border reputation should be negatived. It is further held that trans-border reputation can be established only by letting any evidence before the Registrar of Trade Marks that the mark in question is so well known or familiar in India that most of the general public is fully aware of such mark connecting the trade mark. In absence of such evidence, in present case also, it cannot be stated that plaintiffs are having, trans-border reputation. In absence of such evidence, in present case also, it cannot be stated that plaintiffs are having, trans-border reputation. [D] 2002 (24) PTC 207 (Del) between Sakalain Meghjee v. BM House (India) Ltd. is on similar concept, wherein also, it is held that being foreign magazine, plaintiff was to show that it was sold and known in India but when there was no documents in this regard from the plaintiff, claim for reputation and goodwill in India cannot be accepted. It is further held that if defendant is now restrained and at the end of the day if the plaintiff fails in his suit, the defendant may not be able to recover any damages which it would have suffered because of stoppage of publication in the interregnum. On the other hand, the interest of plaintiff can be taken care of by directing the defendant to maintain and file the accounts relating to the publication and sale of its magazine. 20. As against that, respondents are relying upon the following citations: [A] 1978 PTC (Suppl) (1) 720 (Del) (DB) between Century Traders v. Roshan Lal Duggar & Co. The respondent is relying upon the observations and, outcome to the effect that registration of mark in the trade mark registry would be irrelevant in an action for passing off and for deciding that whether a particular mark is common to the trade use of that mark would be extremely relevant, because mere registration would not be enough. Thus, in order to succeed at this stage, the respondents had to establish user of the aforesaid mark prior in point of time than the impugned user by the appellant. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. However, this judgment does not help the plaintiffs. However, this judgment does not help the plaintiffs. [B] 2011(45) PTC 433 (SC) between T.V. Venugopal v. Ushodaya Enterprises Ltd., wherein, the Hon'ble Apex, Court has referred number of decisions for coming to the conclusion that no one can be permitted to encroach upon the reputation and goodwill of other party. However, only because Apex Court has confirmed the injunction in such case in favour of the plaintiffs, without considering other material facts and circumstances relating to the case on hand, it cannot be said that in each case, filing of suit should be treated as a genuineness of plaintiffs' claim and thereby defendant is required to be restrained. It is certain and clear that without comparing the factual details and evidence only because of Supreme Court has confirmed the injunction in one case, injunction cannot be confirmed in all cases. [C] AIR 1994 Delhi 264 between P.M. Diesels Ltd. v. M/s. S.M. Diesels, wherein, issue was altogether a different and limited for delay on the part of the plaintiff in filing the suit because probably plaintiff has not filed the suit in time. However, the Supreme Court has held that it is not a ground to say that plaintiff has abandoned its trademark and, cannot challenge action of defendant. Such position and situation may be helpful to the plaintiffs if plaintiffs have joined M/s. Swan Sweets Private Limited, Jamnagar being the original trademark holder as a plaintiff with them. In any case, only because injunction is confirmed in such reported cases, which is practically based upon factual details, it cannot be said that in all cases injunction should be confirmed. [D] 2005(30) PTC 233 SC between Dhariwal Industries Ltd. v. M.S.S. Food Products, wherein though the matter was pertaining to the similar issue what is decided by the Supreme Court is to the effect that Supreme Court in exercising of its jurisdiction under Article 136 cannot interfere with the grant of injunction being interim injunction against use of trademark which was affirmed under Order 39, Rules 1,2 and 4 of Civil Procedure Code, 1908. Therefore, this judgment is also not helpful to the plaintiff since we are not exercising the powers under Article 136 of the Constitution. Therefore, this judgment is also not helpful to the plaintiff since we are not exercising the powers under Article 136 of the Constitution. [E] 2013(55) PTC 337 (Del) between Coral Seal & Ceramics v. Sunil Sagar, wherein, it is held that mere filing of an application prior in time does not per se confer any right "if the other party is in fact, an actual prior user of the mark in question". However, what is material in this case is final decision wherein it is stated that it is not possible at this stage to conclude even prima-facie that defendant is the actual prior user of the mark and that it can be decided only after evidence is recorded. Therefore, what is decided in favour of the plaintiff in this case is mainly based upon some prima-facie evidence, more particularly, when trademark under reference was having the name of the firm i.e. "Coral" and therefore considering the factual details, injunction was confirmed. However, only because of confirmation of injunction in one such case, relying upon the factual details, it cannot be concluded that in every such case, injunction is to be confirmed irrespective of factual details. Therefore, this judgment also does not help the plaintiffs. [F] 2007(1) GLR 686 between R.N. Bhagat v. M/s. Bhagat Marketing, wherein also injunction was confirmed based upon factual details of that case after relying upon several decisions. Mainly because material evidence on record, prima-facie established that plaintiffs were prior user of trademark. However, even thereafter defendants were directed to clear existing stock as quantified by the report of the Court commissioner. Therefore also it cannot be confirmed that only because of confirmation of stay in such reported case, it is to be confirmed in every case. [G] (1972)1 SCC 618 between Parle Products (P) Ltd. v. J.P. and Co. Mysore, wherein also the issue is decided finally after relying upon evidence and not at interim stage like the case in hand. Therefore also it cannot be confirmed that only because of confirmation of stay in such reported case, it is to be confirmed in every case. [G] (1972)1 SCC 618 between Parle Products (P) Ltd. v. J.P. and Co. Mysore, wherein also the issue is decided finally after relying upon evidence and not at interim stage like the case in hand. Therefore, it cannot be in dispute, if there is sufficient evidence on record, the Court can certainly confirm the injunction and restrain the defendants but in absence of such clear evidence on record at such preliminary stage, when prima-facie evidence is not that much concluding to confirm the right of the plaintiff,, only because of few such decisions where injunctions has been confirmed, it could not be said that in all the cases, injunction should be confirmed. [H] 2013(53) PTC 323 (Del.) between Icrave, Lic v. Icrave Designs Pvt. Ltd., wherein, it was held that in absence of explanation for adopting similar trade name, plaintiff is entitled to injunction. Therefore, such judgment was practically based upon an admitted fact that trade name was similar since it is evident from the name of the parties themselves which includes the word "ICRAVE" in the name of both the parties. Therefore, only because in such cited cases, High Court has confirmed the order of stay against the defendant, it cannot be said that in all cases, stay is to be confirmed irrespective of factual and other details. [I] 2002(3) SCC 65 between Laxmikant V. Patel v. Chetanbhai Shah and another, wherein, though Hon'ble Supreme Court has granted stay, it is held that requirement for granting stay in similar matter will certainly govern by Order 39 Rule 1 of Code of Civil, Procedure, 1908. Thereby, even for action for passing off the plaintiff, and suffering of irreparable injury in absence of injunction, it is made clear that action of passing off will lie wherever the defendant-plaintiff's name or initial name is calculated to deceive and to so divert business of the plaintiff or to cause confusion between the two businesses. With due respect, there cannot be any dispute with the decision of the Apex Court in such reported judgment but without having the sufficient evidence to prove the case, it cannot be said that only because of filing of suit, plaintiffs are entitled to injunction as prayed for. With due respect, there cannot be any dispute with the decision of the Apex Court in such reported judgment but without having the sufficient evidence to prove the case, it cannot be said that only because of filing of suit, plaintiffs are entitled to injunction as prayed for. [J] 2011(3) GLR 1951 between Matrix Telecom Pvt. Ltd. v. Matrix Cellular Services Pvt. Ltd., wherein, single judge of this High Court has taken a view in an appeal against order of injunction, Appellate Court would not interfere with the discretionary exercise by the trial Court unless it is arbitrary or perverse etc. and that Appellate Court would reassess the material and seek to reach a different conclusion. However, the Court has entered into the, scrutiny of material and tried to lay down the principle that "deceptive similarity" in an action for passing off needs to be examined. Ultimately, though the word "MATRIX" is common in product/services of both the parties, considering that services area of both the companies have different characteristics and there is no possibility to show that plaintiff was not entitled to injunction, order of trial Court refusing the injunction was affirmed. So ultimately the decision is to the effect that even there was a common terminology "MATRIX" by both the parties, injunction to the plaintiff was refused. [K] Respondent is also relying upon the unreported judgment in Appeal From Order No.348 of 2010 between M/s. Universal Pharma v. G M Bell Health Care Pvt. Ltd., wherein, this Court has confirmed the interim injunction granted by the trial Court. On scrutiny of such unreported judgment, it becomes clear that it was also based upon the factual details and only because injunction was confirmed in that case, it cannot be said that it is to be confirmed in all the cases. 21. In background of above facts and circumstances, when main suit is yet to be decided on its own merits wherein all the parties would have sufficient and ample opportunity to adduce final evidence to prove their case. Therefore, scrutinising and thereby discussion and determination at present on any evidence on record in any manner would ultimately prejudice the trial. 21. In background of above facts and circumstances, when main suit is yet to be decided on its own merits wherein all the parties would have sufficient and ample opportunity to adduce final evidence to prove their case. Therefore, scrutinising and thereby discussion and determination at present on any evidence on record in any manner would ultimately prejudice the trial. Therefore, it is not advisable to scrutinize, discuss and thereafter determine the outcome of other documentary evidence and submissions of both the sides so as to arrive at any specific conclusion either regarding dispute or issue between the parties or regarding the effect of such evidence at such interim stage. 22. At present, it is sufficient, at the cost of repetition to recollect that the original user of trademark under reference was with one M/s.Swan Sweets Private Limited, Jamnagar. However, since such user had either discontinued the production and use of the trademark or may, not be interested to protect the trademark when defendant - appellant has started to produce and sale their products with their trademark namely; "Harty Party," the plaintiffs have claimed that they have trans-border reputation inasmuch as their product with trademark "Hart Beat" is used by them since long, but on scrutiny of factual details, it becomes clear that they acquire such trademark only after confirming such rights from M/s.Swan Sweets Private Limited, Jamnagar only after use of trademark "Harty Party" by the defendant. It is surprising to note that the trial Court has adopted different yardsticks for the process of registration for plaintiffs and defendant inasmuch as registration process by plaintiffs was approved, whereas, registration process of defendant were ignored. Considering such prima-facie stage, where applications for both the sides are under consideration before the competent authority, it would be appropriate for the trial Court to wait for confirmation of registration by the competent authority in favour of one of the party. Instead of that, the, trial Court has, at interim stage, confirming the right of the plaintiffs though they are claiming trademark with the name of "CORAZONE" and with different terminology than the terminology used by the defendant and confirming the injunction by restraining the defendant from doing their commercial activities. Instead of that, the, trial Court has, at interim stage, confirming the right of the plaintiffs though they are claiming trademark with the name of "CORAZONE" and with different terminology than the terminology used by the defendant and confirming the injunction by restraining the defendant from doing their commercial activities. In other words, when commercial activities is stayed, it can be said that the damage, if any, that may be suffered by the plaintiffs, can certainly be quantified in terms of money or asking the defendant to maintain his details about production and sale both in terms of volume and money on the record of the suit periodically and if at all plaintiff suffered any loss, it may be compensated from such accounts of the defendant. However, if defendant is restrained from doing his business, then in case of failure of the plaintiffs, it would be difficult for the defendant to realise his proposed profits which can be termed as damages claimable by him, which is uncertain. Therefore, considering the settled legal position that in case where damages can be, ascertained, injunction cannot be granted. The trial Court has certainly failed to follow the decision of the Apex Court relied upon by the defendant, wherein, directions are given to maintain sale, production and accounts etc. 23. In view of above facts and circumstances, when order of the trial Court is resulting into harsh situation for the defendant, the order is required to be interfered by appropriate modification. Thereby, appeal is partly allowed resulting into setting aside the impugned order, but with following directions: [i] Defendant-appellant is hereby directed to maintain and to produce on record of the suit, the factual details of their total production and accounts every month and their profit from such production. [ii] The defendant should deposit Rs.2,00,000/- (Rupees two lacs only) before the trial Court towards security of damages that may, incur and suffer by the plaintiffs in passing off injunction. [iii] Out of such account, 25% of profit shall be regularly deposited before the trial Court towards security of damages that may incur and suffer by the plaintiffs. 24. [ii] The defendant should deposit Rs.2,00,000/- (Rupees two lacs only) before the trial Court towards security of damages that may, incur and suffer by the plaintiffs in passing off injunction. [iii] Out of such account, 25% of profit shall be regularly deposited before the trial Court towards security of damages that may incur and suffer by the plaintiffs. 24. Needless to mention, the entire matter is examined on the touch stone of Order 39, Rule 1 and 2 dealing with the application for adinterim injunction and, therefore, views expressed above are tentative and as prima-facie conclusions which shall not be treated as any final expression on the merits of the case. 25. In view of disposal of main application i.e. Appeal from Order No.403 of 2013, Civil Application No.11064 of 2013 does not survive and hence the same stands disposed of accordingly. Further Order Learned advocate Mr.Premal Racchh for the respondent submits that since interim relief was in operation almost for 18 months, he is requesting to stay the operation of this judgment whereby such interim relief is vacated. Learned advocate Mr. Manav Mehta for the appellant is submitting that because of interim relief they are losing their business. However, since interim relief was in favour of respondent for 18 months, it would be appropriate to stay the operation of present judgment for further four weeks. Order accordingly.