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2025 DIGILAW 708 (KAR)

Anantheshwara Foods Private Limited v. Ravikiran

2025-07-02

JYOTI MULIMANI

body2025
JUDGMENT : JYOTI MULIMANI, J. 1. Sri.Dhananjay Joshi, Senior counsel on behalf of Sri.Nitin Prasad, for the appellant and Sri. Rishabha Raj Thakur, counsel for the respondent, has appeared in person. 2. Though the appeal is listed today for admission, with the consent of counsel for the respective parties, it is heard. 3. The short facts are these: Vegan Hospitality Private Limited came up with a brand name called 'PAAKASHALA' to provide food and catering services in 2013. The brand name was assigned in favor of the appellant in 2018 by Vegan Hospitality Private Limited. The appellant is running its catering and restaurant business under the name and style "PAAKASHALA" which is apart from its various outlets. In January 2025, the respondent was in the process of starting a restaurant by the name 'DOSA CORNER PAAKASHALA' in Mysuru, and though the restaurant was yet to commence operations, the signage had been put up. The appellant got issued notice on 21.01.2025 calling upon the respondent to cease and desist from using the said trade name. The respondent issued a reply on 29.01.2025. It is said that the respondent inaugurated the restaurant in the name of 'DOSA CORNER PAAKASHALE' which, according to the appellant, infringes their trade mark. Hence, the appellant got issued a Cease-and-Desist Notice dated 13.02.2025 to the respondent calling upon him to refrain from infringing the appellant's trade mark and to remove the signage and other infringing materials within two days. However, the notice returned unserved with an endorsement, no such person found at the said address; the appellant attempted to serve the notice by hand. However, the respondent refused to receive the same and make any endorsement thereon. The appellant got issued one more notice through registered post on 20.02.2025, but in vain. The appellant filed a suit in O.S.No.1554/2025 seeking a permanent injunction from infringing the appellant's registered trade mark. The Trial Court vide order dated 04.03.2025 granted ad-interim injunction and issued suit summons to the respondent and notice on I.A.No.1 and emergent notice on I.A.No.2. The respondent entered an appearance and filed a written statement and a memo seeking to adopt the averments of the written statement as a response to I.A.Nos.1 and 2. The Trial Court vide order dated 04.03.2025 granted ad-interim injunction and issued suit summons to the respondent and notice on I.A.No.1 and emergent notice on I.A.No.2. The respondent entered an appearance and filed a written statement and a memo seeking to adopt the averments of the written statement as a response to I.A.Nos.1 and 2. The appellant also filed an application seeking correction of the order dated 04.03.2025 (I.A.No.3), and the Trial Court passed the orders allowing the application seeking correction of the interim order as prayed for. The respondent filed applications seeking leave of the Court to file an additional written statement (I.A.No.4) along with an additional written statement and seeking to stay the suit until the disposal of the rectification proceedings initiated by him before the Trade Marks Registry (I.A.No.5). The Trial Court extended the interim order dated 04.03.2025 until the disposal of I.A.No.1/2025. The appellant filed objections to I.A.Nos.4 and 5. The Trial Court vide order dated 03.05.2025 dismissed the appellant's temporary injunction application. Under these circumstances, the appellant is before this Court. Counsel for the respective parties urged several contentions. 4. Sri.Dhananjay Joshi., Senior counsel appearing for the appellant submits that the order passed by the Trial Court is opposed to the law and facts of the case, and therefore, the same is liable to be set aside. Next, he submits that the order is contrary to the settled principles of Trade Mark law that as per Section 28(1) of the Act, the registered proprietor of the Trade Mark shall have the exclusive right to use the Trade Mark concerning the goods or services in respect of which the Trade Mark is registered and to obtain relief in respect of infringement of the Trade Mark in the manner provided by the Act: A further submission is made that the Trial Court, despite holding that the appellant is the registered proprietor of the Trade Mark "PAAKASHALA" and by implication acknowledging infringement by the respondent, proceeds not to grant an order of temporary injunction. It is submitted that the Trial Court has erred in holding that the order of temporary injunction would prejudice the respondent, as it has started its business recently. Senior counsel vehemently contended that the Trial Court exceeded its jurisdiction by holding that the term "PAAKASHALA" is generic. It is submitted that the Trial Court has erred in holding that the order of temporary injunction would prejudice the respondent, as it has started its business recently. Senior counsel vehemently contended that the Trial Court exceeded its jurisdiction by holding that the term "PAAKASHALA" is generic. Lastly, he submits that the Trial Court has failed to appreciate that the essential requirements for the grant of a permanent injunction in respect of a trademark Mark are the existence of a right on the appellant's behalf and an infringement or a threat of breach of that right by the respondent. Hence, he submits that viewed from any angle, the rejection of a temporary injunction is unsustainable in law. Counsel, therefore, submits that the appeal may be allowed. Senior counsel for the appellant placed reliance on the following decisions: (1) Midas Hygiene Industries (P) Limited and Another Vs. Sudhir Bhatia and Others, (2004) 3 SCC 90 (2) Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai and Others, (2022) 5 SCC 1 (3) PH4 Food and Beverages Private Limited Vs. M/s. Cafe Toit in MFA No. 7011/2021 (IPR) disposed of on 17.08.2022 Counsel Sri.Rishabha Raj Thakur, for the respondent, justified the order passed by the Trial Court. Next, he submits that the defendant was intending to open a restaurant, namely 'DOSE CORNER PAAKASHALE' and accordingly filed an application, and the same is pending for consideration. A further submission is made that the entire foundation of the claim by the appellant rests on the word 'PAAKASHALA', which is a generic and descriptive word in common usage, particularly in the Kannada language. He submitted that the term 'PAAKASHALA' literally translates to KITCHEN or COOKING PLACE and is used by several unrelated entities in the food and hospitality sector in Karnataka. Counsel vehemently contends that the respondent has independently and honestly adopted the mark "DOSE CORNER PAAKASHALE" in 2025. The respondent's name includes the prefix "DOSE CORNER", which is the primary identifier, along with the suffix "PAAKASHALE", which is a phonetically variant Kannada word for "PAAKASHALA". Lastly, he submits that the grant or refusal of a temporary injunction is discretionary. The Trial Court in extenso, referred to the material on record and has rightly rejected the grant of a temporary injunction. The appellant has not made out any case to interfere with the order passed by the Trial Court. Lastly, he submits that the grant or refusal of a temporary injunction is discretionary. The Trial Court in extenso, referred to the material on record and has rightly rejected the grant of a temporary injunction. The appellant has not made out any case to interfere with the order passed by the Trial Court. Accordingly, he prayed for the dismissal of the appeal. Counsel for the respondent placed reliance on the following decisions: (1) Messrs Hindusthan Development Corporation Ltd. Vs. The Deputy Registrar of Trade Marks and Another, AIR 1955 Cal 519 (2) Delhivery Private Limited Vs. Treasure Vase Ventures Private Limited, 2020 SCC OnLine Del 2766 (3) Bhole Baba Milk Food Industries Ltd. Vs. Parul Food Specialities (P) Ltd. 2011 (121) DRJ 536 (4) Marico Limited Vs. Agro Tech Food Limited, 2010 SCC OnLine Del 3806 (5) Visa International Ltd. Vs. Visa International Service Association and Another, 2024 SCC OnLine Cal 7238 5. Heard the arguments and perused the appeal papers with care. 6. The issue falls within a narrow compass and relates to the refusal to grant an order of temporary injunction for infringement of a registered trade mark. As we all know that an action for infringement of a trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the enforcement of his right to use the trade mark concerning the goods for which the mark has been registered and is pursuing it, the plaintiff must prove their title and exclusive right to use the trade mark in question and further establish that the defendant has infringed the same by identical or deceptively similar or colorable imitation of it. Temporary injunctions are made in pending proceedings with the object of maintaining the status quo till the rights of the parties in the cause are determined. They are made to prevent the ends of justice from being defeated. When granting a temporary injunction in trademark cases, Courts primarily consider three factors: prima facie case, balance of convenience, and irreparable injury. These factors help determine if the applicant's rights are likely to be violated and if an injunction is the appropriate remedy. Reverting to the facts of the case, the plaintiff is the owner of a registered trade mark 'PAAKASHALA'. The appellant's grievance is about the infringement of their trade mark. These factors help determine if the applicant's rights are likely to be violated and if an injunction is the appropriate remedy. Reverting to the facts of the case, the plaintiff is the owner of a registered trade mark 'PAAKASHALA'. The appellant's grievance is about the infringement of their trade mark. The rights of the parties in the cause are yet to be determined in the pending suit. At present, what is required to be considered is whether the plaintiff has made out a prima facie case for the grant of a temporary injunction and whether the Trial Court has properly exercised the discretionary powers. I have perused the impugned order with care. The Trial Court, in my view, has unnecessarily taken pains and dealt with a temporary injunction application as if it were deciding a main issue. There is an unnecessary reference to Section 9 of the Act, and in paragraph 15 of the order, the Trial Court has observed that the plaintiff has obtained the trade mark to the generic name; hence, he cannot claim a monopoly over the generic word. This reasoning is untenable. In my view, the Trial Court has totally lost sight of the fact that it is dealing with the interim application and not the main matter. It is significant to note that the Trial Court declined to grant an order of temporary injunction on the sole ground that the defendant has applied for rectification of the Trade Mark. The reasoning and the conclusion are untenable. The pendency of the rectification application has no significance while considering the temporary injunction application. On the contrary, the right to seek rectification of a trade mark is restricted when an infringement suit concerning the same trade mark is on going. A party cannot directly seek to cancel a Trade Mark Registration through a rectification petition, if an infringement suit is already under way. 7. Lastly, counsel Sri.Rishabha Raj Thakur, in presenting his argument, strenuously urged that the word 'PAAKASHALA' was not invented by the appellant, and it is a descriptive word, and there is no prohibition for the defendant to open and run the restaurant before the grant of trade mark under the name and style of 'DOSE CORNER PAAKASHALE'. 7. Lastly, counsel Sri.Rishabha Raj Thakur, in presenting his argument, strenuously urged that the word 'PAAKASHALA' was not invented by the appellant, and it is a descriptive word, and there is no prohibition for the defendant to open and run the restaurant before the grant of trade mark under the name and style of 'DOSE CORNER PAAKASHALE'. He argued by saying that merely having registration of a trade mark called 'PAAKASHALA' which is generic and descriptive, does not give an exclusive monopoly for the plaintiff to use the trade mark. The said contentions cannot be accepted. The respondent’s application for the grant of trade mark is yet to be considered by the authority concerned. Thus, the conclusion of the Trial Court that the respondent will be put to greater hardship is totally incorrect. The Trial Court has not exercised the discretionary powers in the right perspective. Overall, I can say that the Trial Court has failed to have regard to the relevant consideration and disregarded the relevant matters. In my view, the plaintiff has made out a prima facie case for the grant of a temporary injunction, and accordingly, I order the same. 8. The order dated 03.05.2025 passed by the XVIII Additional City Civil Judge (CCH-10) in O.S.No.1554/2025 on I.A.No.1/2025 is set aside. The application is allowed, and the defendant is restrained from infringing the registered trade mark of the appellant 'PAAKASHALA' either alone or along with a suffix or prefix or in any other form till the disposal of the suit. Counsel for the respective parties placed reliance on several decisions, but I do not think that the law is in doubt. Each decisions turns on its facts. The present case is also tested in the light of the aforesaid decisions. 9. Resultantly, the Miscellaneous First Appeal is allowed.