IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

Appeal From Order No. 123 of 2017, Civil Application No. 5097 of 2017 in Appeal From Order No. 123 of 2017, Appeal From Order No. 124 of 2017 and Civil Application No. 5099 of 2017 in Appeal From Order No. 124 of 2017

Decided On: 04.07.2017

Radheshyam Tourism

Vs.

Radheshyam Travels Private Limited

NLS 04/07/2017/TM/AHD

Head Note:

Appellant filed this appeal against grant of interim injunction in favour of Respondent – appeal against refusal of grant of injunction to the appellant by the lower court – the suit is filed for passing off action concerning the use of trademark “Radheshyam” – Appellant and respondent are in the business of Tours and Travels – the Radheshyam tours are making huge profit and have a reputation and goodwill- appellant claims that they have acquired the trademark and are prior use- the trademark is also a registered under the class 16 and 39-  dispute is regarding the prior use and adaptation between the parties- delay and laches on the part of respondent – court considering prima facie case appellant had failed to convince the court by producing sufficient evidences – evidence with respect to the IT returns and books of accounts does not  does not bare the radheshyam name rather it is ‘Mother India Tours and Travels’ – no invoice were produced – renewal of TM was not done hence appeal is dismissed and no interfered with lower court order.

 Para 16-  Learned Judge in the impugned order has observed that the appellant has not produced any books of accounts, whereas the respondent has produced income tax returns. It is observed by learned Judge that from invitation published by the proprietor of the appellant with one Chandubhai D. Mistry, they are doing travel business in the name and style of “Mother India Tours and Travels”. Learned Judge has also observed that from the documents of partnership deed and retirement deed, it is difficult to accept that the appellant has been in prior use of the trademark “Radheshyam”. It appears that except to make out a case of transmission based on the partnership deed and retirement deed and registration under the Shops and Establishments Act, stated to have been obtained by the appellant in the year 2011, as per the xerox copy at Annexure-D of the registration certificate annexed with Appeal from Order No. 123 of 2017, there appears to be no reliable evidence at this stage to believe that the appellant has been in prior use of the trademark “Radheshyam” than the use of trademark “Radheshyam” by the respondent. In the injunction application, the respondent has given details about the sales/income, advertisement expenses, printing expenses, etc. from the financial year 1989 to 2013 and in the list of documents, income tax returns are placed on record. It appears that though the income tax returns were earlier filed in the name of Babulkar Bhaskarbhai and Radheshyambhai Bhaskarbhai in the business name of “Radheshyam Tours and Travels”, but from the year 2000 onwards, income tax returns were filed in the name of “Radheshyam Travels Ltd.”. Shri Babulkar Bhaskarbhai who claims that he is the son of original inventor of the trademark “Radheshyam” is stated to be the Director of the respondent company. Therefore, it prima facie appears that as against the claim of transmission of the trademark by the appellant, the respondent appears to have better case of prior use of trademark “Radheshyam”. When the Court below on available material has prima facie found that the respondent has been in prior use of the trademark “Radheshyam” than the appellant, this Court in exercise of powers under Order XLIII of the Code is not to substitute the view taken by learned Judge.

Acts/Rules/Orders:

Code of Civil Procedure, 1908 (CPC) – Order XLIII Rule XLIII; Constitution of India – Article 226, Article 227; Trade Marks Act, 1999 – Section 2(zc), Trade Marks Act, 1999 – Section 27, Section 39

JUDGMENT

C.L. Soni, J.

  1. These two appeals filed under Order XLIII of the Code of Civil Procedure, 1908 (‘the Code’) are between the same parties. Appeal from Order No. 123 of 2017 is preferred against grant of interim injunction in favour of the respondent in Regular Civil Suit No. 1410 of 2013 preferred by the respondent. Appeal from Order No. 124 of 2017 is preferred against refusal of grant of injunction to the appellant in the Civil Suit No. 523 of 2013 preferred by the appellant.
  1. The suits are filed for passing off action concerning the use of trademark ‘Radheshyam’.
  1. As per the case of the respondent in its suit, one Shri Radheshyambhai, father of the Director Shri Bhaskar Rao of the respondent company, had coined the trade mark Radheshyam, word per say and started use of such trade mark in Radheshyam Yatra Sangh with Travel Arrangement Services for such Sangh since 1940. After death of Radheshyambhai in 1987, his son Bhaskar Rao continued the business of providing travel services under trade name/corporate name Radheshyam Tours & Travels and on growth in travel business, a company, named Radheshyam Travel Private Limited, came to be incorporated under the provisions of the Companies Act, 1956 since 14.2.2000. It is averred in the plaint that the business in the name of Radheshyam Travels has gone in crores of rupees and created tremendous reputation and goodwill due to quality of services provided by the respondent to the public at large. Thus, the respondent has established and managed the goodwill and reputation earned by late Shri Radheshyambhai, who was founder and inventor of trade mark “Radheshyam”. In the plaint, details about the sale/income, advertisement expenses and printing expenses of Radheshyam Tours and Travels from 1989 to 2013 are given out. It is further averred in the plaint that the device representing coined word Radheshyam in artistic manner is registered in Class 16 and the respondent has also applied for registration of the label/device in Class 39. The respondent claims to have exclusive right to use the trade name “Radheshyam” and states that it is entitled to restrain others from using and/or imitating the said trade name. As regards the cause of action for filing the suit, it is stated that the respondent came to know about the use of mark “Shri Radheshyam Tourism” and its label/device by the appellant from the advertisement given in the newspaper and when the respondent served notice to the appellant to desist or cease from using such mark and when the appellant continued to use such mark and also instituted suit, being Civil Suit No. 523 of 2013, the above-referred suit was required to be filed.
  1. In the suit, the respondent filed application Exh.7 for interim injunction with Notice of Motion Exh. 6. The injunction application was opposed by the appellant on the ground that the respondent had earlier preferred Regular Civil Suit No. 1548 of 2001 against Radheshyam Tourism and in the said suit, its application for injunction was rejected on 23.4.2001. Against such order of rejection, the respondent preferred Appeal from Order No. 263 of 2001 with Civil Application No. 7421 of 2001 before this Court and before this Court, it was stated that the respondent was not interested in prosecuting the appeal. The appeal was therefore, dismissed by this Court and thereafter, the suit of the respondent was also dismissed for non-prosecution on 16.1.2009. Thus, the suit filed by the respondent as well as its application for injunction both are barred by the principle of res judicata. It is further stated that late Shri Mansukhlal Babulal Shah (Muchhala) started Shree Radheshyam Tourism in the year 1992 and after he expired on 3.6.2001 and his widow Padmaben became sole proprietor of Shri Radheshyam Tourism since 2001. Padmaben entered into partnership with Hiten Chandubhai Mistri (the Proprietor of the appellant) with effect from 1.8.2010 and deed of partnership was executed between them on 31.8.2010 and partnership was dissolved and thereafter, Hiten Chandubhai Mistri became sole owner to use goodwill of Shri Radheshyam Tourism.
  1. Learned Additional Principal Judge, City Civil Court No. 2, Ahmedabad partly allowed the application and restrained the appellant from using the trademark “Radheshyam” till disposal of the suit by order dated 20.3.2017, which is challenged in Appeal from Order No. 123 of 2017.
  1. In the suit and in the injunction application filed by the appellant, the appellant has come with same case which it has put up while opposing the injunction application preferred by the respondent. As observed in the order passed in the application Exh. 40/41 filed by the appellant in its suit, the appellant had earlier preferred at Exh.6/7 for injunction which was rejected on the ground that the appellant had failed to establish that it was prior user and adopter of word “Radheshyam” and the device and label having the word “Radheshyam”. Learned Judge, therefore, disposed of the application at Exh.40/41 by ordering that the Civil Suit No. 523 of 2013 filed by the appellant is to be treated as the main one and the suit filed by the respondent is to be consolidated with the proceedings of the suit filed by the appellant, which is challenged in Appeal from Order No. 124 of 2017.
  1. In both the appeals, common question arises is who could be prima facie taken to be a prior user of the trademark “Radheshyam”.
  1. Learned senior advocate Mr. Rashesh Sanjanwala appearing with learned advocate Mr. V.B. Mehta for the appellant in both the appeals submitted that before the business was started in the partnership in the name of ‘Shri Radheshyam Tourism’ with Padmaben with effect from 1.8.2010, not only Padmaben was using the trademark “Radheshyam” to carry on the business in the name of ‘Shri Radheshyam Tourism’ with effect from 18.6.1991 but before that her husband Mansukhlal Muchhala had been using such trade name for trading tourism business and it was after Padmaben entered into partnership with proprietor of the appellant, the appellant continued to do business in the name of ‘Shri Radheshyam Tourism’ and therefore, the appellant could be said to be in prior use of trademark “Radheshyam” than the respondent. Mr. Sanjanwala submitted that prior use of trademark “Radheshyam” claimed by the respondent was not believed when the respondent had filed Regular Civil Suit No. 1548 of 2001 against late husband of Padmaben and, therefore, the injunction application preferred by the respondent in the said suit was rejected and the respondent even did not prosecute the Appeal from Order No. 263 of 2001 preferred against the rejection of such application. Mr. Sanjanwala submitted that on entering into partnership between the proprietor of the appellant and Padmaben, the trademark “Radheshyam” stood transmitted into partnership and when Padmaben retired from partnership, she agreed to continue the use the trademark “Radheshyam” by the proprietor of the appellant while executing the retirement deed. Mr. Sanjanwala drew the attention of the Court to certificate issued under the Shops and Establishment Act (‘the Act’) in the name of Padmaben for the period from 18.6.1991 and renewal thereof till 2010 and also the certificate issued under the Act in the name of the proprietor of the appellant on 4.2.2011 to submit that Padmaben continued to use the trademark “Radheshyam” after the death of her husband and the proprietor of the appellant continued to use such trademark after Padmaben retired from the partnership. Mr. Sanjanwala submitted that considering the continuous use of trademark “Radheshyam” by the husband of Padmaben, by Padmaben and then by the proprietor of the appellant on transmission of the trademark “Radheshyam” in his favour, the appellant could be said to have made out strong prima facie case of prior use of trademark “Radheshyam” than the respondent. Mr. Sanjanwala submitted that the Court below failed to consider that the appellant has established the case of transmission of the trademark in its favour emerging from the documents of partnership deed and retirement deed executed between the proprietor of the appellant and Padmaben and thereby committed serious error in granting injunction in favour of the respondent.

8.1 Mr. Sanjanwala submitted that the respondent is since responsible for delay and laches in taking passing off action against the appellant, it was not entitled to get any relief in exercise of discretionary jurisdiction of the Court. Mr. Sanjanwala submitted that though the respondent got registration of trademark “Radheshyam” in the year 2006 it did not take any action either for infringement of the trademark or passing off action and it was only after the trademark “Radheshyam” was transmitted in favour of the appellant, the respondent filed the suit in the year 2013. Thus, as submitted by Mr. Sanjanwala, the respondent on account of its conduct did not deserve discretionary relief of interim injunction in its favour.

8.2 Mr. Sanjanwala has taken the Court through the relevant provisions of the Trademark Act as also relied on following judgments:-

(1) In the case of Kisan Industries Vs. Punjab Food Corporation and Another, reported in MANU/DE/0486/1982 : PTC (Suppl) (2) 463 (Del);

(2) In the case of M/s. Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd. reported in MANU/SC/0646/1994 : (1994) 2 SCC 448;

(3) In the case of Dhariwal Industries Ltd. and Another Vs. M.S.S. Food Products reported in MANU/SC/0160/2005 : (2005) 3 SCC 63;

(4) In the case of Creative Travels (P) Ltd. Vs. Creative Tours and Travels (P) Ltd., reported in MANU/DE/4208/2006 : 2006(33) PTC 430 (Del);

(5) Order dated 30.6.2015 passed by this Court in Appeal from Order No. 30 of 2012

  1. Learned advocate Mr. R.R. Shah appearing for the respondent submitted that the appellant is rival to the respondent in travel business and to dishonestly grab the trademark “Radheshyam” of the respondent, it has come with false case of transmission of trade mark under partnership deed. Mr. Shah submitted that by document of partnership between the proprietor of the appellant and Padmaben, there is no transmission of trademark “Radheshyam” in favour of the proprietor of the appellant. Mr. Shah submitted that reading the contents of the partnership deed, it clearly appears that Padmaben has not done any tourism business in the name of “Shri Radheshyam Tourism” with the proprietor of the appellant as the day on which the partnership deed was made, Padmaben was shown to have retired by retirement deed. Mr. Shah submitted that execution of two different deeds was a clear game plan with dishonest intention on the part of the proprietor of the appellant to create false evidence to show that there was transmission of trademark “Radheshyam” in favour of the proprietor of the appellant which in fact was never there. Mr. Shah submitted that except such fraudulent documents executed between the proprietor of the appellant and Padmaben, there is no evidence or any material produced on the record of the suit to prove that Padmaben had actually done the travel business in the name of “Shri Radheshyam Tourism” at any time before the partnership document was made. Mr. Shah submitted that when there was no such evidence of Padmaben doing any business in the name of “Shri Radheshyam Tourism”, there is no question of transmission of the trademark “Radheshyam” by Padmaben in favour of the proprietor of the appellant. Mr. Shah submitted that registration under the Shops and Establishment Act in the name of Padmaben and in the name of proprietor of the appellant subsequent to the partnership deed could not be said to be an evidence of use of trademark “Radheshyam” by the appellant. Mr. Shah submitted that in the earlier suit filed by the respondent, when the application of injunction was decided, it was no where found that Padmaben had either inherited the trademark “Radheshyam” or had ever used trademark “Radheshyam” for doing travel business. Mr. Shah submitted that the respondent did not press for Appeal from Order as Padmaben and her son were not in use of the trademark “Radheshyam”, no cause had survived against them. Mr. Shah submitted that undisputably, the respondent got the trademark “Radheshyam” registered in its favour in the year 2006 pursuant to the application made by the respondent in the year 2000 and such registration would prove that the respondent had been in use of the trademark at least prior to the year 2000. Mr. Shah submitted that the application made by the respondent for renewal of the registration of the trademark “Radheshyam” has been pending with the concerned authority, but even in absence of continuing registration of the trademark “Radheshyam” after 2006, the respondent is entitled to injunction in passing off action against the appellant. Mr. Shah submitted that the Court below has on scrutiny of material placed on record of the suit prima facie found that the respondent has been in prior use of the trademark “Radheshyam” and, therefore, granted injunction in favour of the respondent in exercise of its discretionary jurisdiction and such discretion since cannot be said to be erroneously exercised, this Court may not interfere with the impugned orders passed by the Court below in exercise of powers under Article 226 and 227 of the Constitution. Mr. Shah has also taken the Court through the relevant provisions of the Act and relied on following judgments:-

(1) In the case of Wander Ltd. and Another Vs. Antox India P. Ltd. reported in MANU/SC/0595/1990 : 1990 (Supp) SCC 727;

(2) In the case of Duncan Agro Industries Ltd. Vs. Somabhai Tea Processors (P) Ltd., reported in MANU/GJ/0002/1994 : PTC (Suppl)(2) 839 (Guj);

(3) In the case of N.R. Dongre Vs. Whirlpool Corporation, reported in MANU/SC/1223/1996 : 1996 (16) PTC 583 (SC);

(4) In the case of Rupa & Co. Ltd. Vs. Dawn Mills Co. Ltd., reported in MANU/GJ/0004/1998 : 1999 PTC (19) 334;

(5) In the case of Cadila Pharmaceutical Ltd. Vs. Torrent Pharmaceuticals Ltd., reported in MANU/GJ/0582/1996 : 1999 PTC (19) 318;

(6) In the case of Laxmikant V. Patel Vs. Chetanbhai Shah and Another, reported in MANU/SC/0763/2001 : AIR 2002 SC 275;

(7) In the case of Midas Hygiene Industries P. Ltd. & Anr. Vs. Sudhir Bhatia & Ors. reported in MANU/SC/0186/2004 : 2004 (28) PTC 121 (SC);

(8) In the case of Bhavnesh Mohanlal Amin Vs. Nirma Chemicals Works Ltd., reported in MANU/SC/1590/2005 : 2005 (31) PTC 497 (SC);

(9) In the case of Coral Seal & Ceramics Vs. Sunil Sagar, reported in MANU/DE/2492/2013 : 2013 (55) PTC 337 (Del);

  1. The Court having heard learned advocates for both the sides finds that in the suit of the appellant, the interim injunction application at exhibit 6/7 preferred by the appellant was dismissed for non-prosecution and the appellant then filed application at exhibit 40/41 for the same purpose. The Court below decided such application on the same day when the interim injunction application preferred by the respondent in its suit was decided and taking note of grant of injunction in favour of the respondent, it disposed of the application Exh. 40/41 preferred by the appellant by ordering consolidation of the suit of the appellant with the suit of the respondent. In the suit for passing off action, what is primarily required to be considered is the question as regards prior use of the trademark. Sub-section (1) of Section 27 of the Act provides that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. Sub-section (2) thereof provides that nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof. Mr. Shah submitted that since after 2006 there was delay in making application for renewal of registration of trademark “Radheshyam” and since renewal application made by the respondent is pending, the suit is not filed for infringement of the trademark “Radheshyam” but since the respondent has been in prior use of such trademark then the appellant, as provided in Sub-section (2) of Section 27 of the Act, the respondent is entitled to take action against the appellant for passing off the services under the trade name of “Radheshyam” belonging to the respondent.
  1. Though the respondent has asserted that the use of the trademark “Radheshyam” by Radheshyambhai was since 1940, however, even if such assertion at this stage may not be accepted without evidence, the respondent since got the trademark “Radheshyam” registered in the year 2006 which would relate back to the date of application for registration made in the year 2000, at least, it could be said that from the year 2000, the respondent has been in use of the trademark “Radheshyam”. However, the case of the appellant is that Padmaben with whom the proprietor of the appellant entered into partnership in the name of “Shri Radheshyam Tourism” had been in use of the trademark “Radheshyam” after the death of her husband since 18.6.1991 and Padmaben having agreed at the time of retirement from the partnership that all rights of goodwill in the partnership shall be of the appellant and she shall not be entitled to do business in the name of “Shri Radheshyam Tourism”, the trademark “Radheshyam” stood transmitted in favour of the appellant and by virtue of such transmission, the appellant could be said to have been in continuous use of the trademark right from the day its predecessor-Padmaben had been in the use of the trademark “Radheshyam”. Learned senior advocate Mr. Sanjanwala has relied on the certificate issued under the Shops and Establishment Act, 1948 by the Ahmedabad Municipal Corporation in favour of Padmaben initially showing the period of registration from 18.6.1991 to 31.12.1991 which was then stated to have been renewed at the interval of five years till 2010, as also the certificate of registration under the Shops and Establishment Act, 1948 in favour of the proprietor of the appellant in the year 2011 and copies of the partnership deed and retirement deed between Padmaben and the proprietor of the appellant to submit that such documents are clear evidence to establish the prior use of the trademark “Radheshyam” by the appellant than the respondent. Mr. Sanjanwala also relied on refusal of the injunction to the respondent in the suit filed by the respondent against the husband of Padmaben to submit that the respondent failed to establish prior use of trademark “Radheshyam” against the husband of Padmaben and considering the transmission of trademark “Radheshyam” to the appellant by Padmaben, the appellant could be said to be prior user of such trademark.
  1. It appears that the respondent had filed suit for permanent injunction and for damages against the husband of Padmaben, wherein the respondent claimed that it had registered its trademark “Radheshyam” under the Act. The Court below while dealing with the application for interim injunction observed that making of application by the respondent at the relevant time for registration of the trademark could not be said that the respondent had got its trademark registered and it found that there was no registration of the trademark in favour of the respondent. While deciding the said application, the Court below examined the question of passing off action. The Court below recorded that there was no documentary evidence on record to prove that the respondent was prior user of mark “Radheshyam” as compared to the defendant of the said suit. Against such refusal of injunction, the respondent had preferred Appeal from Order No. 263 of 2001 but did not prosecute the said appeal and the Appeal from Order came to be disposed of on 24.4.2002. The main suit was also dismissed for non-prosecution. However, such refusal of injunction to the respondent in its suit of 2001 against the husband of Padmaben wherein Padmaben and her son who were later on joined in the suit on death of the husband of Padmaben could not be ipso facto taken as proof of prior use of trademark “Radheshyam” by the appellant. The appellant solely relies on deed of partnership for transmission to claim continuous prior use of trademark “Radheshyam” than the use of such trademark by the respondent. Learned senior advocate Mr. Sanjanwala relied on the decision in the case of Dhariwal Industries Ltd. (supra), especially para 7 thereof to submit that if there is assignment or transmission of the unregistered trademark, a person in whose favour such assignment or transmission is made, can tack on the prior use of such trademark of its predecessor. Para 7 of the judgment reads as under:-
  1. Section 27 of the Trade Marks Act, 1999 provides that nothing in that Act shall be deemed to affect the right of action against any person for passing off goods or services as the goods of another person or as services by another person or the remedies in respect thereof. Therefore, the fact that neither party has a registered trade mark as on the date of the suit cannot stand in the way of entertaining the claim of the plaintiff and granting the plaintiff an injunction in case the plaintiff is in position to show prima facie that it was the prior user of its mark, that it had a prima facie case and that the balance of convenience was in favour of the grant of an interim injunction. It is provided in Section 39 of the Act that an unregistered trade mark may be assigned or transmitted with or without goodwill of the business concerned. It is, therefore, possible for a plaintiff or a defendant to show that an unregistered trade mark that was being used by another person earlier had been assigned to it and that it can tack on the prior user of its predecessor.
  2. However, before tacking on prior use of the trademark by its predecessor, the person who wants to tack on such prior use of trademark is required to show that the predecessor of trademark either assigned or transmitted the trademark to him. Therefore, the question which boils down is whether the appellant has prima facie established that there was use of trademark “Radheshyam” by Padmaben and that there is a transmission of such trademark to it. As regards the question whether Padmaben had ever used trademark “Radheshyam”, what is relied on is the registration certificate under the Shops and Establishment Act in the name of Padmaben showing her as Proprietor of “Shri Radheshyam Tourism”. There is no other material to show that the actual business was carried on by Padmaben in the name of “Shri Radheshyam Tourism”. Mr. Sanjanwala sought to show the advertisement given in newspaper in the name of “Shri Radheshyam Tourism” but, such would not establish that the business was carried on in the name of “Shri Radheshyam Tourism” by Padmaben. Therefore, it may be a matter of proof whether Padmaben had ever carried on the business in the name of “Shri Radheshyam Tourism”. It is not in dispute that Padmaben was not the only heir of her deceased husband but even if it is believed that Padmaben had inherited the trade name “Shri Radheshyam Tourism”, then also, whether the appellant would claim continuous use of trademark “Radheshyam” on the ground that such trademark was transmitted to him. At this stage, definition of ‘transmission’ in Section 2(zc) of the Act needs to be referred, which reads as under:-

(zc) “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment.

  1. As per the definition of Transmission, transmission could be either by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment. The appellant does not claim transmission of trademark by operation of law nor it claims devolution as personal representatives of deceased person. It also does not claim the assignment of trademark, then what remains is whether the case of the appellant falls within any other mode of transfer. The phrase ‘any other mode of transfer’ is not limited to transfer under the Transfer of Property Act but is wide enough to cover transmission by different mode. The appellant claims transmission of trademark under deed of partnership. In the deed of partnership, it is mentioned that since Padmaben has been presently doing the tourism business in the name of “Shri Radheshyam Tourism” in Ahmedabad and in such business for further management and administration, since the proprietor of the appellant wanted to enter as a partner in the partnership, he has been inducted as partner with effect from 1.8.2010. Such partnership deed is executed on 31.8.2010 and in Clause (2) of the partnership deed, it is stated that the business of the partnership firm was started on 1.8.2010. Profit sharing between Padmaben and the appellant is shown to be in the ratio of 20 : 80. In Clause (6), it is stated that first accounting year of the firm shall be from 1.8.2010 to 31.3.2011. But the day on which the deed was executed, Padmaben was shown to have retired on that very day by deed of retirement subsequently made on 22.10.2010 and in such deed of retirement, two clauses are inserted, i.e. Clause (4) and (6) with other clauses to show that the rights of goodwill of the partnership were given to the appellant and Padmaben shall not be entitled to do business in the name of “Shri Radheshyam Tourism”. These two documents would prima facie demonstrate that they were made just with a sole aim to project that the proprietor of the appellant has acquired right to use the trademark “Radheshyam”. The partnership shown to have commenced on 2.8.2010 was made to end on 31.8.2010. There is no material to show that within the short duration of 28 days, any business in partnership was carried on. It prima facie appears that the documents were made to grab the trademark “Radheshyam” of which the respondent claims to be the owner and in prior use.
  1. No discussion is required on the judgments cited by learned advocates on the principle of law on the question of grant of interim injunction in passing off action as the law on the subject is well settled that prior use of the trademark is prime consideration for grant of interim injunction in passing off action.
  1. Learned Judge in the impugned order has observed that the appellant has not produced any books of accounts, whereas the respondent has produced income tax returns. It is observed by learned Judge that from invitation published by the proprietor of the appellant with one Chandubhai D. Mistry, they are doing travel business in the name and style of “Mother India Tours and Travels”. Learned Judge has also observed that from the documents of partnership deed and retirement deed, it is difficult to accept that the appellant has been in prior use of the trademark “Radheshyam”. It appears that except to make out a case of transmission based on the partnership deed and retirement deed and registration under the Shops and Establishments Act, stated to have been obtained by the appellant in the year 2011, as per the xerox copy at Annexure-D of the registration certificate annexed with Appeal from Order No. 123 of 2017, there appears to be no reliable evidence at this stage to believe that the appellant has been in prior use of the trademark “Radheshyam” than the use of trademark “Radheshyam” by the respondent. In the injunction application, the respondent has given details about the sales/income, advertisement expenses, printing expenses, etc. from the financial year 1989 to 2013 and in the list of documents, income tax returns are placed on record. It appears that though the income tax returns were earlier filed in the name of Babulkar Bhaskarbhai and Radheshyambhai Bhaskarbhai in the business name of “Radheshyam Tours and Travels”, but from the year 2000 onwards, income tax returns were filed in the name of “Radheshyam Travels Ltd.”. Shri Babulkar Bhaskarbhai who claims that he is the son of original inventor of the trademark “Radheshyam” is stated to be the Director of the respondent company. Therefore, it prima facie appears that as against the claim of transmission of the trademark by the appellant, the respondent appears to have better case of prior use of trademark “Radheshyam”. When the Court below on available material has prima facie found that the respondent has been in prior use of the trademark “Radheshyam” than the appellant, this Court in exercise of powers under Order XLIII of the Code is not to substitute the view taken by learned Judge.
  1. In the case of Laxmikant V. Patel (supra), Hon’ble Supreme Court has observed in first part of para 17 as under:-
  1. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the trial Court and substitute its own discretion therefor except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. 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 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 [(See Wander Ltd. v. Antox India P. Ltd., MANU/SC/0595/1990 : 1990 (Supp) SCC 727 and N.R. Dongre v. Whirpool Corporation, MANU/SC/1223/1996 : (1996) 5 SCC 714)].
  2. In the case of Wander Ltd. (supra), Hon’ble Supreme Court has held in para 14 as under:-
  1. 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:-

“… 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.

  1. Learned senior advocate Mr. Sanjanwala however submitted that on the principle of delay and laches, the respondent could not be made entitled to injunction against the appellant as for long time, the respondent did not take any action seeking either to restrain Padmaben or the appellant from using trademark “Radheshyam” though the appellant continued to use the trademark “Radheshyam”. On the other hand, learned advocate Mr. Shah submitted that in fact, there is no delay in taking action against the appellant and the principle of delay cannot be applied in passing off action because delay would not defeat the action of rightful owner of the trademark against the person who attempts to pass off his goods or services under the trade name belonging to the person seeking passing off action.
  1. In the case of Creative Travels (supra) relied on by learned senior advocate Mr. Sanjanwala, Delhi High Court has observed in para 8 as under:-
  1. Latches have important bearing while deciding intellectual property matters. Persons whose right is being intruded by the competitors must keep vigil and must not sleep over their right. Law needs to be put into motion as Page 0362 and when invasion somebody’s legitimate rights are invaded otherwise it will be taken that he has given consent to the other party to carry on such business. In the instant case, the defendant claims to be using this trades name creative since 1979. They have filed their Income Tax Returns right from the year 1981-82 thus indicating that they have been continuously using the word Creative. They have also filed membership directory 2002 of TAAI containing the names of the persons who are into this business. It is expected that the plaintiffs must have come across this directory and must be in the knowledge that the defendants were also carrying on the business with the trade mark Creative yet they choose not to take any action against the defendants till 2006. Therefore, prima-facie the plaintiff is guilty of latches. Now, abruptly ordering the closure of the business of the defendants will create greater hardship on the defendants as it would give a big jerk and bring turmoil to their business which they have been able to grow gradually and gradually. Even otherwise though the Trade Mark Creative is registered in the name of the plaintiff but learned Counsel for the defendants while taking help from the internet, filed list of Travel agencies world wide to show that the mark Creative is being used by many other traveling agencies in Singapore, Cyprus, Australia, Czech Republic, USA(Create Tours & Transportation), USA (Pacifico Creative Service, Inc.), Syria, Brazil, Austria, Germany, Italy, Korea, Mexico, Holland, United Kingdom, Thailand, Spain, Switzerland, Taiwan (R.O.C.), Malta and emphasised that the mark is descriptive in nature and also being openly used by various Tours & Travels agencies, the plaintiff cannot claim exclusive right over this trade mark. Though this is an impressive argument but Court cannot loose sight of the fact that registration of this mark exist in favor of the plaintiff. If at all the defendant was keen to term this mark as descriptive mark and not distinctive, he could take an appropriate action before the Board for cancellation of this trade mark. This Court is with the plaintiff as far as the registration of Trade Mark and its prior user is concerned but what is coming in the mind of the Court is that the defendants too have been using this mark for quite long time and have built up their reputation by doing huge business to the tune of Rs. 100 Crores for the year 2005-06., therefore, they cannot be stopped from doing their business under this mark particularly looking to the goodwill for a number of years. They have been into this business without any description either from anyone or from the plaintiff. It would be the defendants who will suffer irreparable loss and injuries, if they are injuncted from carrying on their business with this mark. If prior user favors the plaintiff, long user favors the defendants. For all these reasons the injunction order passed by this Court on July 14, 2006, is liable to be vacated. Ordered as such. This results in dismissing the application of the plaintiff and allowing the application of the defendant.

However, the plea of delay and laches is to be considered in the context of the facts of each case. In the facts of the present case, so far as the appellant is concerned, his case of transmission is on the basis of the partnership deed executed in the month of August 2010 and then when it sought to assert its right by filing Civil Suit No. 523 of 2013, the respondent immediately filed suit for passing off action. In fact, as observed by learned Judge in the impugned order, the proprietor of the appellant with another person issued invitation to start business in the name of “Radheshyam Tourism” on 1.4.2012 when the proprietor of the appellant and one Mr. Chandubhai D. Mistri have been doing the business in the name and style of “Mother India Tours & Travels”. Therefore, it appears that the action taken by the respondent cannot be said to be defeated on account of any delay. In above view of the matter, the contention that the respondent was not entitled to interim injunction on account of delay and laches cannot be accepted.

  1. In light of the above and for the reasons stated above, the Court finds that no interference is required in the impugned order made by the Court below. The Appeals from Order are therefore, required to be dismissed. They are dismissed.
  1. At this stage, learned senior advocate Mr. Sanjanwala states that the Trial Court after passing the impugned order had put its order in abeyance and such abeyance has been continued by the interim order by this Court which may further be continued for a period of four weeks.
  1. The Court finds that since the impugned order made by the Trial Court has been in abeyance in the present Appeals from Orders, it would be appropriate if the interim order made in the present Appeals from Order is continued for a further period of two weeks. Order accordingly.
  1. Since the main appeals are disposed of, no order is required to be passed on the Civil Applications. They are accordingly disposed of.