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2021 DIGILAW 499 (CAL)

Shree Ganesh Besan Milll v. Ganesh Grains Limited

2021-12-24

ANIRUDDHA ROY, I.P.MUKERJI

body2021
JUDGMENT : I.P. MUKERJI, J. SUMMARY OF FACTS 1. This is a trademark appeal in this court’s Commercial Division. 1. It is from a judgment and order dated 15th March, 2021 read with the order dated 17th March, 2021, in terms of prayers (a), (b), and (c) of the petition, made by the learned Interlocutory judge on an interim application filed by the respondent plaintiffs, in the suit, inter alia, complaining of infringement of their registered word mark “Ganesh” by the appellant/defendants. Prayers (a), (b) and (c) are inserted below:- “a) The respondents their men, servants, agents, assigns, dealers, distributors and/or any one claiming on their behalf be restrained from infringing the petitioners’ registered trademark “GANESH” by selling, manufacturing, marketing, advertising and/or otherwise dealing in any goods or services under the mark “Shree Ganesh” or under any other mark which is identical with or deceptively similar to the petitioners’ registered trademark “Ganesh” in any manner whatsoever; b) The respondents, their men, servants, agents, assigns, dealers, distributors and/or any one claiming on their behalf be restrained from infringing the petitioners’ registered trademark “Ganesh” by carrying on business under the name and style of SHREE GANESH BESAN MILL or under the mark “Shree Ganesh” or any business name or trading name which is identical with or deceptively similar to the petitioners’ registered trademark “GANESH” as part of their trading name in any manner whatsoever; c) The respondents, their men, servants, agents, assigns, dealers, distributors and/or any one claiming on their behalf be restrained from passing off their goods and business as that of the petitioners by selling, manufacturing, marketing, advertising and/or otherwise dealing in goods or services under the mark “Shree Ganesh” or carrying on business under the mark “Shree Ganesh” or under any other mark which is identical with or deceptively similar to the petitioners’ registered trademark “GANESH” in any manner whatsoever.” 2. The respondent No. 1 manufactures and markets within India and exports out of the country, flour products like wheat, besan and so on. It has substantial sale in West Bengal and some market in neighbouring states. At the present point of time the appellant No.1 is also a manufacturer of similar products from Raipur in Chattisgarh and have substantial sale in Chattisgarh, Orissa, Jharkhand, Bihar and Madhya Pradesh but not in West Bengal. This respondent has a turnover in excess of Rs.500 crores per annum. At the present point of time the appellant No.1 is also a manufacturer of similar products from Raipur in Chattisgarh and have substantial sale in Chattisgarh, Orissa, Jharkhand, Bihar and Madhya Pradesh but not in West Bengal. This respondent has a turnover in excess of Rs.500 crores per annum. The turnover of the appellant No.1 is much smaller. The facts of this case from the pleadings and documents in short are like this. 3. Ganesh Flour Mills was manufacturing and marketing flour using the mark “Ganesh” since 1936. At that time, the forefathers of the second respondent ran the business. Eventually, the business was acquired by the father of the second respondent Brij Ratan Mimani who ran it from 88, Burtolla Street, Kolkata. Thereafter, the second respondent took over the business and as a promoter incorporated a private limited company “Ganesh Flour Mills Private Ltd.” on 19th March, 2000. The name was changed to that of the first respondent on 5th February, 2011. From time to time the first respondent made several applications for registration of the mark “Ganesh” or label marks or device marks with the word “Ganesh” imprinted on it and marks which are variations of “Ganesh”. Most of these applications are pending. It enjoys registration of two label marks containing the mark “Ganesh” in Class 30, one with the restriction that the sale of the goods could only be confined to West Bengal and the other with the limitation that sale would be restricted to eastern India. 4. By a certificate dated 28th October, 2005 the word mark “Ganesh” was registered by the trademark registry at the instance of the respondents without any geographical limitation. This is the subject matter of the suit and appeal. The trade dress of the respondent No. 1 is a rhombus, coloured green with the word “Ganesh” prominently written in white and an artistic design in the green part in light green and yellow. The words “since 1936” are written below “Ganesh”. The mark used by the appellants is “Shree Ganesh”. “Ganesh” is written with great prominence in the same style as that used by the respondent No.1. Above “Ganesh” there is the word “Shree” which is in much smaller font. What is also important is that the character, size and font of the alphabets constituting the word “Ganesh” are quite identical to those used by the respondent No.1. “Ganesh” is written with great prominence in the same style as that used by the respondent No.1. Above “Ganesh” there is the word “Shree” which is in much smaller font. What is also important is that the character, size and font of the alphabets constituting the word “Ganesh” are quite identical to those used by the respondent No.1. There are also the added words: “besan mill” after “Ganesh” in very small font. The above mark in english is at the back of the package handed up to the court containing the appellants’ product “idli rava”. The front of the package contains the same words in Hindi. The appellants claim that the word “Ganesh” is common, generic and non-distinctive. Moreover, it is the name of a most popular Hindu God. The respondents cannot have any exclusive right to use the mark, inspite of registration. 5. They also say that they have derived the name “Ganesh” from the father of the appellant No. 2, Ganesh Lal Daryani. He had been doing business for a very long time in grinding and/or manufacturing flour. This business is being carried forward by the appellants in partnership. The trademark or name “Shree Ganesh” which they are using is derived from Ganesh Lal Daryani. They are entitled to use this mark under Section 35 of the Trademarks Act, 1999. 6. Furthermore, the respondents were, at all material times fully aware of the use of this mark by the appellants and admittedly from 2015. Having not taken any action, the respondents are prevented from taking action by the principles of acquiescence, waiver, estoppel and so on. 7. The learned judge by his impugned judgment and order made on 15th March, 2021 read with the order dated 17th March, 2021 has restrained the appellants from using the mark “Ganesh”. TWO BASIC PRINCIPLES 8. Two principles have to be borne in mind. The first is that, in this kind of an action alleging infringement of trademark and passing off, an order of injunction made or refused to be made, virtually disposes of the suit. Experience shows that the order initially passed becomes the final order and nothing much remains of the proceeding thereafter. Therefore, the court exercising jurisdiction has to be most judicious in passing or refusing to pass an interim order in such an action. 9. Experience shows that the order initially passed becomes the final order and nothing much remains of the proceeding thereafter. Therefore, the court exercising jurisdiction has to be most judicious in passing or refusing to pass an interim order in such an action. 9. Secondly, the general principle is that the discretion exercised by the learned judge in passing an interim order in such a proceeding is interfered with by the appeal court only if there is some gross or patent error in appreciating the facts or law or the order is so unreasonable and perverse that no reasonable judge could have passed it, is arbitrary or is a product of bias. Otherwise, the court of appeal rarely interferes with the discretion exercised by the learned trial judge in passing an interim order. ORDER 41 RULE 27 APPLICATION 10. Another fact is noteworthy. It transpired during hearing of the appeal that the appellants had not disclosed in their affidavit before the trial court their turnover or sale of their products using the trademark “Ganesh”. After commencement of hearing of the appeal, the appellants took out an application under Order 41 Rule 27 of the Code of Civil Procedure to adduce further evidence. Mr. Ranjan Bachawat, learned senior advocate, appearing for the respondents very seriously opposed any order to be made permitting the appellants from relying on those documents on the ground that they were available with the appellants at the trial stage and if they did not disclose them it was at their peril. Furthermore, most of the documents had been fabricated to gain advantage in the appeal. At the time of hearing of the appeal, without prejudice to the above contentions, Mr. Ranjan Bachawat said that even from the documents disclosed by the appellants, he would be able to show they had no case to discharge the interim order. As we have observed, a trademark matter is substantially decided at the interim stage. Moreover, the question whether the learned single judge has exercised his discretion judiciously or not is involved in the appeal. Undoubtedly, the evidence which the appellants sought to produce were available with them at the time of hearing of the interlocutory application and could have been produced by them. For whatever reason they did not produce those documents before the learned single judge. Undoubtedly, the evidence which the appellants sought to produce were available with them at the time of hearing of the interlocutory application and could have been produced by them. For whatever reason they did not produce those documents before the learned single judge. Since we were hearing the matter substantially, we thought that full justice to the case could be done if the parties were allowed to produce whatever materials at their disposal. ARGUMENTS 11. Mr. Biala, learned Counsel appearing for the appellants made very elaborate submissions. The respondents are registered proprietors of both label and word marks “Ganesh”. The label mark or device was categorically stated to be used for sale of the goods in West Bengal as would appear from the registration certificates at Pages 400 to 403 of the paper book. However, the word mark “Ganesh”, also registered did not contain any qualification with regard to the geographical area of sale. It was contended that this word mark was so registered on the assurance given by the appellants to the Trademark Registry that they would restrict their sale to West Bengal only so as not to infringe the trademark of others or pass off their goods as those of others. 12. He submitted that the word “Ganesh” was very common and not distinctive. It was widely used in trade and industry. In fact, about 550 applications for registration of that mark were pending before the Trademark registry, out of which 66 had been registered. Secondly, he submitted that out of inadvertence or mistake or irregular conduct of proceedings, the respondents’ mark “Ganesh” had been registered by the authority. Similar applications by the respondents for registration of a label mark containing the word “Ganesh” or marks being variants of the word “Ganesh” like “Ganapati”, “Shree Ganesh”, “Ganesh Gold”, “Ganesh-G”, “Ganesha” etc. were pending registration. The respondents had admitted in a reply to a show cause before the trademark authority on 19th November, 2005 the above generic nature of the mark that nobody had the right of exclusive use thereof. 13. He also argued that the appellants were carrying on the business of manufacturing and marketing flour products under the name and style of “Ganesh” for a long period prior to the application for registration by the respondent of their mark “Ganesh”. His clients had substantial sale and goodwill in the market for a long period of time. 13. He also argued that the appellants were carrying on the business of manufacturing and marketing flour products under the name and style of “Ganesh” for a long period prior to the application for registration by the respondent of their mark “Ganesh”. His clients had substantial sale and goodwill in the market for a long period of time. In 1989 the predecessor-in-interest of the appellants one Shri Ganesh Lal Daryani started using the trademark “Shree Ganesh” honestly and bonafide deriving the name from his personal name. The appellants are continuing such business. 14. Further, it was his contention that “Ganesh” was the name of a Hindu deity, very popularly and extensively worshipped all over the country. The registration of the mark “Ganesh” in favour of the respondent No.1 was illegal and wrongful and that by virtue of such registration no right of exclusive user should be conferred on the respondents. The appellants and the respondents are carrying on business from different regions and the business of one does not trench on the other’s business. 15. In the application under Order 41 Rule 27 of the Code of Civil Procedure the appellants had inter alia disclosed a certificate by a firm of Chartered Accountants from where it appears that the gross sale of the firm in the financial year 1985-86 was Rs.31,950/-. It increased to Rs.28,50,45,887.60/-in 2019-20. The gross sales were within Rs.1 crore upto 2008-09. It crossed Rs.1 crore in 2009-10 and thereafter made a steady increase till 2019-20, the increase from 2017-18 to 2018-19 being most spectacular from Rs.9,29,20,326/-to Rs.18,07,11,321/-. The appellants in that application have also enclosed amongst other documents invoices relating to sale to their buyers and copies of income tax returns. 16. In Paragraph Nos. 3(e) and (f) of the affidavit-in-opposition used by the appellants before the learned trial Judge, they alleged that the word “Ganesh” was generic and nobody had any right of exclusive use of the mark. The respondents did not have the right of preventing anybody else from using the mark. Moreover, “Ganesh” signified the Hindu God of wealth. The respondents could not restrain the appellants from using this mark, more so, when they have used it in an honest and bonafide manner. In the said affidavit the appellants have referred to an examination report of 2005 of the trademark registry in relation to Application no. Moreover, “Ganesh” signified the Hindu God of wealth. The respondents could not restrain the appellants from using this mark, more so, when they have used it in an honest and bonafide manner. In the said affidavit the appellants have referred to an examination report of 2005 of the trademark registry in relation to Application no. 1386773 of the respondent for registration of the word mark “Ganesh” under Class 30. In their examination report, the trade mark registry objected to registration because it was a personal name and that it was “identical with or similar to registered trademark.” To this, the respondents’ patent and trade mark Attorney S. Majumdar and Company by their letter dated 19th November, 2005 replied that “Ganesh” was another name of Lord Ganesh worshipped by the Hindus and did not have “any direct connection, reference with the goods under the application”. It was also urged in the Attorney’s reply that the word “Ganesh” was “generic and the mark is common to trade as is evident from the several cited registered marks.” 17. On this, Mr. Biala made two submissions. He referred to a certificate dated 25th November, 2020 obtained from the said registry relating to the application for registration of the image mark “Ganesh”. It stated that the status of the application was “opposed”. He submitted that the self same word mark had been got registered by the respondents. This registration had been wrongfully and illegally obtained as another office of the same registry could not have granted registration of the self same mark. Secondly, he submitted that having admitted through their trademark Attorney that the mark was the name of God and in common and wide spread use and of which there was several registrations, the respondents could not prevent the appellants or are estopped from preventing the appellants from using the mark. 18. From 1998 the predecessor-in-interest of the appellants Shree Ganesh Lal Daryani adopted the trademark “Shree Ganesh” honestly and bonafide from his name “Ganesh”. The appellants continued with this business, thereafter reconstituting it from a proprietorship to a partnership firm. According to Mr. Biala, as stated in Paragraph No. 3(h) and (i) of the said affidavit that the respondent have sale in a restricted area. Furthermore, the appellants and the respondents carry on business in different regions. Their business activities do not overlap. 19. The appellants continued with this business, thereafter reconstituting it from a proprietorship to a partnership firm. According to Mr. Biala, as stated in Paragraph No. 3(h) and (i) of the said affidavit that the respondent have sale in a restricted area. Furthermore, the appellants and the respondents carry on business in different regions. Their business activities do not overlap. 19. Learned Counsel stated that another word mark in the form of an image, of the respondents, had been registered subject to the limitation under Section 18(4) read with Section 2(l) of the Trademarks Act, 1999 that it would be used within the geographical area of West Bengal. He argued that the right to exclusive use of a mark by the registered proprietor under Section 28 of the said Act was subject to the other provisions of the Act namely, Section 30(2)(b) which inter alia, provides that if a trademark is used in a place where the registration did not extend geographically. 20. The said right of exclusive use of a registered proprietor could not interfere with any bonafide use by a person of his own name or that of any of his predecessors in business, under Section 35 of the said Act. 21. Learned counsel also submitted that the respondents were guilty of suppression. They did not disclose to the court that several hundred applications for the mark “Ganesh” were pending registration all over the country, that label marks of the respondents containing the word “Ganesh” were pending registration, subject to opposition or had been registered with limitation and disclaimer with regard to the geographical area of their use. 22. I will discuss only the relevant cases cited by learned Counsel at the time of dealing with the arguments. 23. Mr. Ranjan Bachawat, learned senior counsel, appearing for the respondent made the following submissions. 24. Ganesh Dariani was the name of the father of the appellant No. 2. There is no evidence to show that Ganesh Daryani did business using the mark “Ganesh” or that the father was engaged in the business of manufacture and marketing of flour products. In other words, the appellants have not been able to make out any connection between the father’s business and the present business of the respondent and use of the trade mark “Ganesh”. In other words, the appellants have not been able to make out any connection between the father’s business and the present business of the respondent and use of the trade mark “Ganesh”. Therefore, the case sought to be made out by the appellants that they were doing business using the personal name has no basis. 25. The appellants at best carried on and still carries on the business of grinding flour for individual customers. They are not in any real sense engaged in the manufacture and sale of flour products. Invoice documents have been fabricated by them to show sale. He tried to show from the invoice that the website referred to there had been obtained by the appellants at a later date than when the invoice was issued. 26. By use of the word “Ganesh”, the appellants were infringing the respondents’ mark under Section 29(5) of the said Act which lays down that a registered mark is infringed by a person if he uses such registered trademark as his trade name dealing with goods and services in respect of which the trade mark is registered. 27. He referred to the documents at Pg. 333 of the paper book which showed that application No. 854527 made by Harish Daryani who carrying on business as “Shree Ganesh Besan Mill”, on 4th May, 1999 made an application in Mumbai for registration of the mark “Ganesh” dealing in goods ata, besan and spices. The date of user was claimed from 1990. According to the records of the Trademark Registry obtained on 10th September, 2020, the application had been abandoned. 28. The Chartered Accountant who authenticated the sales figures of the appellants had made a disclaimer that the figures were those provided by the respondents and that no documents had been available to him. Hence, the Chartered Accountant’s certificate had little or no evidentiary value. 29. The respondents had used the mark “Ganesh” from 1936 as would be evident from advertisements of the mark in newspapers in that period. The respondents had also made sizeable expenses throughout the period of its use, in advertisements. 30. The appellants have been unable to show use of the mark “Ganesh in its business. 31. Learned Counsel brought our attention to the supplementary affidavit affirmed on 8th February, 2021 filed by the appellants in the learned court below. The respondents had also made sizeable expenses throughout the period of its use, in advertisements. 30. The appellants have been unable to show use of the mark “Ganesh in its business. 31. Learned Counsel brought our attention to the supplementary affidavit affirmed on 8th February, 2021 filed by the appellants in the learned court below. It appears from it that after the order of injunction was made on 4th January, 2021, the parties had a sitting to settle the trademark dispute. The appellants by an email dated 21st January, 2021 forwarded some proposed trademarks to the respondent. They even became ready to use the words “Shree Ganesh Besan Mill” without highlighting the word “Ganesh” prominently. 32. Learned Counsel also stated that the appellants were unsuccessful in getting registered three marks using the word “Ganesh”, namely “Shree Ganesh Chana Besan”, “Shree Ganesh Gulab” and “Shree Ganesh Tota Farsan Flour”. 33. After receipt of the notice of opposition to registration of those marks, the appellants abandoned the applications as would be evident from the certificates dated 5th May, 2016 and 11th August, 2017 at Pgs. 325, 328 and 331 respectively of the paper book. 34. Mr. Bachawat further submitted that out of 540 marks containing “Ganesh” revealed on search, sixty three were registered. Out of sixty three, seven were registered in favour of the respondents. Fifteen were word marks. Only four marks bearing the word mark “Ganesh” were registered, out of which only one belonged to Class 30. Out of four marks, one related to confectionary items, two have expired and the fourth was owned by the respondents. 35. Learned Counsel also urged before us that the respondents enjoyed substantial goodwill in the market and that the appellants had been unable to furnish any evidence of user or sale of the subject product under the trademark “Ganesh”. At best, the appellants were carrying on the business of grinding flour for individual consumers (ata chakki). He also argued that the purported sale disclosed by the appellants did not show any connection between the trademark “Ganesh” and the sale of the product. 36. The partnership under which the appellants were carrying on business was founded after the death of the said appellant No. 2’s father and that there was no connection between the business of the partnership and the business carried on by the father. 37. 36. The partnership under which the appellants were carrying on business was founded after the death of the said appellant No. 2’s father and that there was no connection between the business of the partnership and the business carried on by the father. 37. Therefore, there was no justification for use of the father’s name Shree Ganesh Daryani. In any case, if the father’s name had to be used “Ganesh Daryani” and not “Ganesh” ought to have been used by the appellants. 38. The sole purpose of the appellants was to trade on the goodwill of the respondents by using their mark “Ganesh”. 39. In those circumstances, there was no case for vacation or variation of the interim order. 40. I will deal with the relevant cases cited by Mr. Bachawat when I deal with the arguments. FACTS IN DETAIL, DISCUSSION AND FINDINGS 41. The respondent plaintiffs’ case is founded on the registered word mark “Ganesh”. The application (No. 1168684) in Class 30 was made on 21st January, 2003. Registration had been granted on 28th October, 2005 without any limitation or disclaimer. 42. The application of Manish Mimani at Page 400 of the paper book was made on 17th January, 1992 (TM Application No. 565726 in Class 30) for registration of the image word mark “Ganesh”. It was registered under Certificate No.231828 dated 31st August, 2000 and renewed till 17th January, 2026 for flour, besan, ata, suji, sattu etc. with the limitation that it could be used for goods for sale in the state of West Bengal only. Another Application No. 928276 in Class 30 was made on 30th May, 2000 by Manish Mimani for the marks “Ganesh Bhog”, “Ganesh Photo (device)”. It was registered as a device under Certificate No. 777955 dated 10th March, 2009 and renewed till 30th May, 2030 for the same category of goods with the limitation that the mark could be used for sale in the states of eastern region of India only (Pg. 403 of the paper book). 43. On 22nd September, 2005 just a month or so before the registration of the word mark “Ganesh” Purusottam Das Mimani made the application No. 1386773 for registration of the same trade mark in Class 30 for inter alia, flour products (Pg. 404 of the paper book). 403 of the paper book). 43. On 22nd September, 2005 just a month or so before the registration of the word mark “Ganesh” Purusottam Das Mimani made the application No. 1386773 for registration of the same trade mark in Class 30 for inter alia, flour products (Pg. 404 of the paper book). A certificate dated 25th November, 2020 issued by the trade mark registry states that the status of the registration is “opposed”. The examination report of the trade mark registry stated that the mark was refused registration as it was a personal name and identical or deceptively similar to registered trademarks. To this the respondents’ trade mark Attorney replied on 19th November, 2005 that “Ganesh” was the name of a God worshipped by the Hindus and did not have “any direct connection reference with the goods under the application” and further that the name was generic. 44. About 540-550 marks of “Ganesh” or variants thereof like Ganesh Gold, Ganesh-G, Ganesh-R, Shree Ganesh have been applied, for registration. 63-66 have been registered. 4 are for the word mark “Ganesh”. One relates to confectionary. Two registrations have expired. The other belongs to the respondents, the only registered word mark “Ganesh” is Class 30. 45. On the other hand, the appellants filed several applications for registration of the trade mark “Shree Ganesh” and its variants. Some of these applications were opposed by the respondents who filed their opposition. None of these marks have been registered in favour of the appellants. Some of the applications of the appellants are deemed to have been abandoned according to the respondents. 46. By virtue of registration of the word mark “Ganesh”, the respondent seeks to restrain the appellants from using that mark in any manner whatsoever. 47. The trademarks registry has been very cautious in dealing with such a huge number of applications. Either they are kept pending or granted with disclaimer and limitation so as to recognize that the mark is generic and not distinctive of any trader and not common to the trade (See Section 12 of the said Act). 48. In the application dated 22nd September, 2005 stated above, registration has not been granted after consideration of the examination report that “Ganesh” is the name of God, generic and not distinctive. 48. In the application dated 22nd September, 2005 stated above, registration has not been granted after consideration of the examination report that “Ganesh” is the name of God, generic and not distinctive. The respondents have admitted through a letter of their trade mark Attorney dated 19th November, 2005 and in answer to opposition to applications for registration of “Ganesh” or variant marks that the name was common and generic and that no trader could claim exclusive right over it. 49. It is quite extraordinary how the word mark “Ganesh” of the respondents was registered on 28th October, 2005 without any restriction or limitation. More extraordinary is the conduct of the respondents in trying to exercise their right of exclusive user of the mark “Ganesh” at least in Class 30 goods, when they were aware that it was generic, common to the trade and not distinctive and had admitted so in their said correspondence with the trade mark registry. 50. When a mark is registered the registering authority may do so without any condition or limitation. It is equally open to the said authority to specify that the proprietor will not have exclusive right over a part of the mark. Absence of a disclaimer does not always vest the proprietor with an exclusive right over a word mark. In our case registration of the word mark “Ganesh” was without any disclaimer. 51. Just because the word mark “Ganesh” was registered without any limitation or condition, could this registration confer on the respondents the right to prevent the appellants from using the mark “Ganesh”? 52. Ganesh is a Hindu deity. He is the son of Ma Durga and Lord Shiva. In the Hindu pantheon of gods and goddesses, Ganesh is a most powerful and a very widely worshiped God. So much so that nearly two weeks of celebration attending his worship takes place every year just before autumn in Maharashtra. Ganesh festival is also highly popular in the rest of the country. Its popularity is growing day by day in Bengal also. Hence, the word or mark “Ganesh” can never be distinctive of any person or trade. It is too common to be so. Any name of God is generally not distinctive and very common and is usually not registered as a trademark. 53. Its popularity is growing day by day in Bengal also. Hence, the word or mark “Ganesh” can never be distinctive of any person or trade. It is too common to be so. Any name of God is generally not distinctive and very common and is usually not registered as a trademark. 53. It is doubtful whether the registration of “Ganesh” word mark is valid under Section 28(1) of the Trademark Act, 1999. The registered proprietor of the mark has the right of its exclusive use only if the registration is valid. 54. It is true that till date the appellants have not taken any steps for rectification of the register. But after promulgation of the Tribunal Reforms Ordinance, 2021 it is always open to them to take the point of invalidity at the trial of the suit. They have done so in the written statement filed in this suit. In that case the court would be called upon to adjudge the validity of the registration. The question is whether the appellants could be restrained from using the word “Ganesh”? 55. By amendment of Section 57(1) of the said Act, the power to rectify the register has been conferred on the Registrar or the High Court. 56. The said Ordinance, 2021 made amendments to the Trademark Act, 1999. The effect of this amendment was that if any proceedings for rectification of the register in relation to the plaintiffs or the defendant’s trade mark were pending before the Registrar or the High Court, the suit would be stayed till the final disposal of such proceeding. If no such proceeding had been taken out and the High Court was under the tentative view that a plea regarding validity of a trademark was tenable, it may adjourn the case for a period of three months to enable the party to apply for rectification. The High Court could extend the time. 57. It is always be open to the appellants to raise the plea of invalidity of the respondents’ trademark at the trial. Even if no proceedings for rectification of the mark are pending now the court trying the suit has the discretion to adjourn the suit for three months to enable them to make such an application [Section 124(1)(ii)]. It even has the power to further extend the time [under Section 124(2)]. Even if no proceedings for rectification of the mark are pending now the court trying the suit has the discretion to adjourn the suit for three months to enable them to make such an application [Section 124(1)(ii)]. It even has the power to further extend the time [under Section 124(2)]. Only if no such application is made within the extended time can the court declare the issue regarding validity of the registration to have been abandoned. The decision of the Supreme Court in Patel Field Marshal Agencies vs. P.M. Diesels Limited and Ors., reported in (2018) 2 SCC 112 cited by Mr. Bachawat was before promulgation of the ordinance. It inter alia held on the basis of the Act then existing that if the parties did not approach the Tribunal the plea regarding validity of the mark would not survive. With the coming of the ordinance this consequence is done away with and the suit court retains its discretion throughout the proceedings to order trial of the invalidity issue. Hence the issue of invalidity is very much open to the appellants. 58. They have, in my opinion, raised a very strong prima facie case regarding invalidity of the registration. 59. Section 35 of the said Act enacts as under:- “35. Saving for use of name, address or description of goods or services.—Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.” 60. From the evidence disclosed by the appellants before the trial court they have been able to show that the father of the appellant No. 2, Ganesh Lal Daryani carried on some business in the grinding and making of flour. It may not have been of the type and to the extent now carried on by the appellants in partnership. The appellants say that Ganesh Lal used this word mark in business atleast from 1989. He died on 20th July, 1998. 61. On 20th July, 1998 a partnership was formed by his son and grandsons. It may not have been of the type and to the extent now carried on by the appellants in partnership. The appellants say that Ganesh Lal used this word mark in business atleast from 1989. He died on 20th July, 1998. 61. On 20th July, 1998 a partnership was formed by his son and grandsons. In the deed of partnership it was clearly stated that the business would be carried on under the name and style of “M/s Shree Ganesh Besan Mill”. The business was to be of manufacture and sale of ata, besan, dal etc. This partnership deed was annexed to the affidavit in opposition. 62. Prima facie, it appears that the derivation of “Shree Ganesh” was from Ganesh Lal Daryani way back in 1989. As Ganesh Lal Daryani was engaged in the business of flour grinding and manufacturing, he could be called a predecessor in business of the respondents. If his name was used to run the partnership business from 1989, the decision of the appellants to use “Shree Ganesh” as a trademark to manufacture and market their products when the business expanded cannot be said to be lacking in bonafide. If that be so, even if the respondent No.1 is the registered proprietor of the trademark “Ganesh”, they cannot prevent the appellants under Section 35 of the said Act to use the words “Shree Ganesh Besan Mill”. 63. In Precious Gems and Anr. Vs. Varun reported in (2015) 1 SCC 160 , cited by Mr. Biala, the court opined: “4. The plaintiff claiming trade mark of their surname “RAKYAN” filed a suit praying, inter alia, that the defendants be restrained from doing their business in the name and style of “NEENA AND RAVI RAKYAN”. In the said suit, an application seeking interim relief was filed whereby it was prayed that the defendants be restrained from doing the business in the name and style of “NEENA AND RAVI RAKYAN”. By virtue of the impugned order, the defendants i.e. the present appellants have been restrained from doing their business in the concerned name and therefore, the appellants have approached this Court. 9. We have perused the hoardings of the shops where they are doing the business and upon perusal of the hoardings we do not find any similarity between them. 10. 9. We have perused the hoardings of the shops where they are doing the business and upon perusal of the hoardings we do not find any similarity between them. 10. In our opinion, looking at the provisions of Section 35 of the Act, there is no prima facie case in favour of the plaintiff and therefore, the defendants could not have been restrained from doing their busines. We, therefore, quash and set aside the impugned order granting interim relief in favour of the plaintiff and the appeal is allowed with no order as to costs.” 64. A very interesting and important concept is that of trade dress. A mark may be a label or a device mark comprising of a word mark and artistic design, colour combinations, artistically designed shapes, configurations etc. 65. Let us consider two label marks with similar word marks which are non-distinctive and common to the trade. But a label or device mark with a particular unregistered trade dress made artistically may differentiate one mark as a whole from the other with a different unregistered trade dress. In that case, the word mark of a party containing a registered word mark would nevertheless become distinctive if viewed as a whole with the trade dress. This kind of a trade dress was spoken about by Chandrachud, J. in Kuber Khaini Private Limited Vs Sopariwal Exports & Anr. reported in (2013) SCC Online Bom 1072 also cited by Mr. Bachawat in the following manner: “3. The First Respondent is the registered proprietor of the mark `Afzal' which is described in the certificate of registration dated 12 November 1995 as a device. Registration of the mark in relation to Class-34 of the Trademarks Act, 1999 (tobacco) is subject to the condition and limitation that it shall not give a right to the exclusive use of the words `Pandharpuri', `Best Quality Indian' and to the `descriptive matter appearing on the label'. The First Respondent has three certificates of registration which were annexed at Exhibits B-1, B-2 and B-3 to the plaint. 4. The Appellant has obtained registration of the mark `KUBER' and its certificates of registration are annexed at Exhibits A-1 to A-9 of the plaint. Among them is a registration under Clause-34 in relation to Chewing Tobacco. The First Respondent has no objection to the use of the mark of `Kuber', per se, by the Appellant. 4. The Appellant has obtained registration of the mark `KUBER' and its certificates of registration are annexed at Exhibits A-1 to A-9 of the plaint. Among them is a registration under Clause-34 in relation to Chewing Tobacco. The First Respondent has no objection to the use of the mark of `Kuber', per se, by the Appellant. The case of the First Respondent, however, is that the Appellant has adopted the same trade-dress as is used by it as part of its labels. The First Respondent accordingly sought an injunction, basing its claim on the infringement of its registered trademark, for passing off and for infringement of the copyright in the artistic work. 6. During the course of the hearing, the packages in which the Appellant sells its product, chewing tobacco, as well as the packages of the First Respondent have been produced for comparison. Both the counsel have accepted their authenticity. In view of the settled position in law, what falls for consideration is whether the essential features of the mark of the Appellant are deceptively similar to those of the First Respondent. Undoubtedly the word mark of the First Respondent is `Afzal', whereas that of the Appellant is `Kuber'. However, what needs to be emphasised is that the Appellant had admittedly advertised its product `Kuber' initially with a distinctive trade-dress until it commenced using the disputed label. Exhibit-H to the plaint is the impugned mark of the Appellant. A bare look at the 4 of 7 APP.725.2012 rival labels would indicate that the Appellant has used the same colour scheme (brown and green in colour); the use of the hookah; and this is coupled with the order of the descriptive words "Pandharpuri Best Quality Indian Tobacco" with green shaded lines under the edge of the words. The Appellant has absolutely no explanation, much less a bona fide explanation, of the circumstances in which it has adopted a label which is shown at Exhibit-H which is deceptively similar to the label of the Respondent. There can be prima facie no manner of doubt that this was done in an undisguised attempt to trade on the reputation and the goodwill of the mark of the First Respondent. There can be prima facie no manner of doubt that this was done in an undisguised attempt to trade on the reputation and the goodwill of the mark of the First Respondent. The essential character of the two labels would leave no manner of doubt that the entire colour scheme, get up and trade-dress which constitute essential features of the mark of the First Respondent, have been adopted by the Appellant. The evaluation, prima facie, of the merits by the learned Single Judge does not suffer from error. 8. As regards the descriptive words `Pandharpuri Best Quality Indian Tobacco', it has been pointed out on behalf of the Appellant that the registration which the First Respondent has obtained at Exhibit B-1 contains a disclaimer to the effect that the registration of the mark shall not give a right to the exclusive use of the words and the descriptive matter appearing on the label. Hence, it has been urged that the First Respondent cannot prevent the Appellant from using those words and the Appellant is entitled to use those words too. While dealing with this contention, it must be noted that a disclaimer which has been imposed in connection with the registration of a mark under the Trademarks Act, 1999 operates in respect of the proprietary interest which is claimed in a mark under and in accordance with the provisions of the Act. Consequently, in an action for infringement of a registered trademark, a Plaintiff cannot found a cause of action on the use of descriptive words in respect of which a disclaimer has been granted. But, equally, this does not preclude a Plaintiff from asserting a cause of action for passing off. A disclaimer which is of relevance to an action for infringement does not prohibit a Plaintiff from asserting nonetheless that in an action for passing off, the use of the words by the Defendant in a particular syntax and context would constitute the use of the mark of the Plaintiff in a manner which is deceptively similar. 10. Hence, the descriptive words `Pandharpuri', `Best Quality', `Indian' and ' Tobacco' cannot be used or depicted by the Appellant in the manner as shown in Exhibit-H to the plaint or in the same form or in a deceptively similar trade-dress so as to render the label of the Appellant similar to that of the First Respondent. 10. Hence, the descriptive words `Pandharpuri', `Best Quality', `Indian' and ' Tobacco' cannot be used or depicted by the Appellant in the manner as shown in Exhibit-H to the plaint or in the same form or in a deceptively similar trade-dress so as to render the label of the Appellant similar to that of the First Respondent. The order of the learned Single Judge thus cannot be faulted because in an action for passing off, the learned Single Judge was justified in coming to the conclusion that it was not open to the Appellant to use even descriptive words in a form, manner or syntax that would render their use in deceptive similarity to the trade-dress which has been adopted by the Respondent.” 66. Even if a non-distinctive mark is part of the trader’s trade dress taken as a whole which has a distinctive and original character it would be open for the proprietor of the trade or the label mark or device or trade dress to prevent another from using it in a passing off action. 67. The Supreme Court said these words in Registrar of Trademarks Vs. Ashok Chandra Rakhit Ltd. reported in AIR 1955 SC 59, cited by Mr. Bachawat. “9. The last feature of the section is its proviso. That proviso preserves intact any right which the proprietor may otherwise under any other law have in relation to the mark or any part thereof. The disclaimer is only for the purposes of the Act. It does not affect the rights of the proprietor except such as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters which he disclaims. In short, the disclaimed parts or matters are not within the protection of the statute. That circumstance, however, does not mean that the proprietor's rights, if any, with respect to those parts or matters would not be protected otherwise than under the Act. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way.” 67. This principle was followed and reiterated by the division bench of the Bombay High Court in Skol Breweries Ltd. Vs. Som Distilleries & Breweries Ltd. & Anr reported in 2012 (49) PTC 231 Bom., also referred to by learned senior counsel. 68. The trade dress of the respondents is a rhombus coloured green with the word “Ganesh” prominently written in white and an artistic design on the green part in light green and yellow. The words “since 1936” is written below “Ganesh”. In the package of the appellants handed up to the court the word “Ganesh” has been written in the same character, font, layout and design as that of the respondents. It is by far the most prominent part of the mark. The word “Shree” is written over it using a small font in light green. On top of it is a floral design. The overall effect of this trade dress of the appellants is quite similar to that of the respondents and in my view bound to cause confusion in the trade with regard to identification of the goods with the manufacturer. 69. Even if the case for infringement of the trademark fails on the plea of invalidity or lack of distinctiveness and the common use of the mark in the trade, a case in passing off would lie. 70. On a comparison of the two labels, prima facie the respondents have been able to make out a case in passing off. 71. Now the question is whether the principle laid down in Midas Hygiene Industries (P) Ltd. and Anr. Vs. Sudhir Bhatia and Ors. reported in (2004) 3 SCC 90 also shown to us by Mr. Bachawat can be applied here. The principle is as follows: “5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. Bachawat can be applied here. The principle is as follows: “5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.” 72. It is in broad and general terms. It does not take into account the situation where another user challenges the validity of the registration. (See Section 124 of the said Actread with Section 28(1)). The effect of the registration on another user claiming prior, honest and concurrent use was also not before the court (See Section 34 of the said Act). Nor was any right of a person seeking to use the name of a predecessor in business. (See Section 35). Here the first and last factors have become most relevant. In my opinion the broad and general principle of this case has only limited application to the facts of this case IGNORING THE ORDER 41 RULE 27 APPLICATION 73. Let us ignore all the documents brought on record by the appellants in their application under Order 41 Rule 27 of the Civil Procedure Code. 74. Still, two points of great significance were worthy of consideration on the evidence disclosed before the trial court and have not been adequately considered by the learned single judge. 75. The first, relates to the alleged invalidity of registration of the word mark “Ganesh” in favour of the respondent. Section 28 of the said Act makes it specific that rights acquired by registration would only flow if the registration was valid. An invalidly registered mark can be resisted by any user on that ground. An action for infringement brought by the proprietor can be successfully defended by pleading lack of validity. In fact, Section 9(1)(a) of the said Act specifically states as an absolute ground for refusal of registration, of trademarks which are devoid of any distinctive character. The word “Ganesh” apart from being the name of a most popular Hindu god is most generic, common, non-distinctive and incapable of conferring any exclusive right of user on a person. In fact, Section 9(1)(a) of the said Act specifically states as an absolute ground for refusal of registration, of trademarks which are devoid of any distinctive character. The word “Ganesh” apart from being the name of a most popular Hindu god is most generic, common, non-distinctive and incapable of conferring any exclusive right of user on a person. If that has been the case of the appellants, whether the respondents have used the mark from 1936 or the appellants have used it from 1989 does not matter at all. It also does not matter whether the respondent has a sale of Rs.500 crores and the appellants much smaller. To my mind, it also does not matter whether the mark “Ganesh” is the only registered mark in Class 30. 76. Further, in my opinion, due consideration was not given by the learned judge to the adopted use by the appellants of the name of the predecessor-in-interest of the appellants Ganesh Lal Daryani, as discussed above. 77. Another substantial point in favour of the appellants is that having discovered the use of the word “Ganesh” by the appellants from 2015, the respondent allowed them to use it till 2020 when the instant suit was filed and in January, 2021 the order of injunction obtained. While using the mark “Ganesh” in relation to flour products in Class 30 from 2015 to 2021 the mark has been made more generic and common and non-distinctive, even in the flour manufacturing trade. By the principles of acquiescence and waiver, the respondents cannot insist on exclusive use of the mark “Ganesh”, to the exclusion of the respondent. THE IMPUGNED JUDGMENT AND ORDER 78. The learned judge made a detailed judgment. In the first part of it, the submissions of learned counsel for the parties have been enumerated. 79. The respondents’ arguments have been summarized as follows:- 80. The respondents have been manufacturing and selling products under the mark “Ganesh” since 1936. Their turnover is in excess of Rs.500 crores. 81. The expenses on account of advertisement have been Rs.3 to 4 crores per year. They became aware of the appellants’ use of the mark in 2015. The appellants have been trying to ride on the respondents’ goodwill by using the word “Ganesh”. Hence, an action in passing off would lie. The appellants have not disclosed any documents to show long or prior user. 82. They became aware of the appellants’ use of the mark in 2015. The appellants have been trying to ride on the respondents’ goodwill by using the word “Ganesh”. Hence, an action in passing off would lie. The appellants have not disclosed any documents to show long or prior user. 82. The submissions of learned counsel for the appellant defendants were tabulated as under:- 83. The appellants are using the mark “Ganesh” deriving it from the father of one of the partners Shri Ganesh Lal Daryani. The adoption has been honest and bonafide. 84. The respondents’ application for registration of a similar mark was rejected by the Registrar on the ground as it was a personal name and similar to registered trademarks or pending applications. The respondents were aware of the appellants using the mark “Shree Ganesh” since 2015 and had taken no action. Hence, there was acquiescence and waiver of their right. 85. The appellants have been honest and concurrent user of the mark “Shree Ganesh”. 86. It is also generic in nature being that of a Hindu God and common to the trade. 87. Then, the learned judge came to his findings which were as follows:- 88. The respondents have a claim on account of infringement of the registered trademark as well as in passing off against the appellants. 89. They have in their favour registration of the trademark “Ganesh” dated 28th October, 2005. The respondents also are the registered proprietors of trademarks “Ganesh Gold”, “Ganesh Premium”, “Ganesh Healthy” and “Ganapati”. 90. According to the materials produced, the respondent plaintiffs have registration for the trademark “Ganesh”. The respondents’ have produced invoices from 1936 to establish its claim. The appellants can only produce a trade licence of 1989 in support of their claim of use of the word “Ganesh”. But, they have failed to produce any document that it was marketing products under the name and style of “Ganesh” from 1989. By reason of the registration of the trademark “Ganesh” in favour of the respondents, they have under Section 29 of the said Act became entitled to protection of the mark. 91. They are not entitled to protection under Section 35 as “Shree Ganesh” has never been the name of the predecessor-in-interest of the defendant. His name was Shri Ganesh Lal Daryani. 92. 91. They are not entitled to protection under Section 35 as “Shree Ganesh” has never been the name of the predecessor-in-interest of the defendant. His name was Shri Ganesh Lal Daryani. 92. The description of “Shree Ganesh” shows that the word “Shree” has been used in a manner so as to “camouflage itself in the design of the label the word “Ganesh”. Visually, a customer is likely to mistake the product of the appellants to be that of the respondents. In such a case following the case of Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd., the court should grant “a prompt ex-parte injunction followed by appointment of a local commission if necessary.” 93. The appellants are not entitled to use the word “Shree Ganesh” in carrying on its business. 94. Orders in terms of prayers (a), (b) and (c) of the petition were passed. INJUNCTION AND EXERCISE OF DISCRETION 95. The circumstances to be considered by the court to assess the prima facie case of the applicant before it in an intellectual property matter were rewritten by Lord Diplock in the American Cynamid Vs. Ethicon case reported in (1975) AC 396. 96. There is now departure from the principle of assessment of the prima facie case of the petitioner atleast in intellectual property cases, from an arguable case, a good case, a reasonably good case, and so on. If a substantial question is raised to go to trial, then the court has to consider granting an interim order to balance the rival rights of the parties which remain uncertain till all the evidence is produced in the proceedings. The balance of convenience has to be weighed by the court. If an interim order of injunction is granted against the respondent and the petitioner fails at the trial would the award of damages adequately compensate the respondent for the loss suffered? On the other hand if the order of injunction is refused at the interim stage and at the final trial the petitioner wins, would the award of damages adequately compensate him? This exercise involves the use of discretion. 97. Now, this exercise of discretion by the trial judge is usually not interfered with by the appellate court only for the reason that it would have come to a different conclusion. This principle was explained by the Supreme Court in Wander Ltd. & Anr. Vs. This exercise involves the use of discretion. 97. Now, this exercise of discretion by the trial judge is usually not interfered with by the appellate court only for the reason that it would have come to a different conclusion. This principle was explained by the Supreme Court in Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd. reported in 1990 (supp) SCC 727 in the following words: 9. Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted. 14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. 14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the Appellate Court will 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. 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. If the discretion has been exercised by the Trial Court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721) ….These principles are well established, but as has been observed by Viscount Simon in Charles Osention & Co. v. Johnston the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case. The appellate judgment does not seem to defer to this principle.” In Dalpat Kumar and Anr. vs. Prahlad Singh and Anr. reported in (1992) 1 SCC 719 the Supreme Court said: “4. …….. It is settled law that the grant of injunction is a discretionary relief. The exercise thereof is subject to the court satisfying that (1) there is a serious disputed question to be tried in the suit and that an act, on the facts before the court, there is probability of his being entitled to the relief asked for by the plaintiff/defendant; (2) the court's interference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensue before the legal right would be established at trial; and (3) that the comparative hardship or mischief or inconvenience which is likely to occur from withholding the injunction will be greater than that would be likely to arise from granting it. 5. Therefore, the burden is on the plaintiff by evidence aliunde by affidavit or otherwise 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 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 case by itself is not sufficient to grant injunction. The Court further has to satisfy that non-interference 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 it 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. 6. 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. 6. ………The phrases "prima facie case", "balance of convenience" and "irreparable loss" are not rhetoric phrases for incantation, but words of width and elasticity, to meet myriad situations presented by man's ingenuity in given facts and circumstances, but always is hedged with sound exercise of judicial discretion to meet the ends of justice.” 98. The appeal court can only exercise its discretion if the order of the trial judge is perverse, most unreasonable or has not considered material facts 99. We have already discussed the various vital issues involved in this case for consideration of grant or refusal to grant an interim injunction which were not adequately considered by the learned judge in exercising his discretion in the matter. 100. Before concluding this judgment, I would like to deal with the point of suppression raised by Mr. Biala. An interim order is vitiated if it is obtained by suppression of material facts. The plaintiff or the petitioner is not obliged to disclose all facts before the court but is only obliged to disclose those which are material on proof of which he is entitled to an order. The respondents had founded their case on the certificate dated 28th October, 2005 issued by the trademark registry in respect of their word mark “Ganesh” without any condition, restriction or limitation. On that basis, they ran the case of infringement seeking a restraint order on the appellants to use that mark in any form. Whether registration of word and label marks containing the word “Ganesh” or any variant thereof was pending or marks with “Ganesh” had been registered subject to a geographical limitation or disclaimer was not material for the respondents’ case. Hence, I see no merit in this contention. 101. In those circumstances and for the reasons advanced, the interim order granted by the learned judge requires modification if not wholly, substantially. CONCLUSIONS: 102. Hence, I see no merit in this contention. 101. In those circumstances and for the reasons advanced, the interim order granted by the learned judge requires modification if not wholly, substantially. CONCLUSIONS: 102. As the word mark Ganesh is very common to the flour trade generic, nondistinctive and moreover as it is the name of a most popularly worshipped Hindu god, the registration of this mark in favour of the respondent No. 1 prima facie appears to be invalid. The respondents do not have any exclusive right of ownership of this mark. They cannot restrain the appellants from using the word mark “Ganesh”, in an infringement action. 103. However in my opinion the respondents have a proprietary right over the label mark or trade dress under which their goods are sold, containing the word mark “Ganesh” along with artistically coloured designs. Specially important in this trade dress is the character, size, font and style of writing “Ganesh” prominently, accompanied by the above colour combination and design. In my opinion the appellants have imitated the character, size, font and style of writing “Ganesh”. The prominence of “Ganesh” in their label mark also containing the word mark “Ganesh” and colourful designs is such, that the label resembles the trade dress of the respondents, causing deception and confusion in the trade. The appellants seem to be trading on the goodwill of the respondents. In those circumstances, an action in passing off action lies. The respondents have been able to make out a prima facie case in passing off. 104. The appellants are entitled to use the mark “Shree Ganesh” under Section 35 of the Trademarks Act, 1999. 105. Considering all the circumstances the impugned interim order granting a blanket injunction restraining use by the appellants of the respondents’ trademark is modified to the extent that they will be entitled to use the label mark with the following modifications: 106. The word “Ganesh” in isolation cannot be used. The words: “Shree Ganesh Besan Mill” has to be written on the label in the same character font and style and in a non-prominent way, differently from the style in which it is written on the label of the respondents’ products. The place of manufacture Raipur, Chhattisgarh should also be mentioned so as not to cause any confusion or deception in the trade. 107. The appeal is disposed of. The place of manufacture Raipur, Chhattisgarh should also be mentioned so as not to cause any confusion or deception in the trade. 107. The appeal is disposed of. The application (CAN 2 of 2021) is allowed. 108. Certified photocopy of this order, if applied for, be supplied to the parties upon compliance with all requisite formalities. I agree,