https:\/\/indiankanoon.org\/doc\/23991065\/<\/a><\/p>\nAuthored by Kavya Sadashivan, IP Innovation, Consulting & Strategy Team, BananaIP Counsels.<\/strong><\/p>\nRelevant Paragraphs <\/strong><\/h4>\n\u201c24. At the outset, we will make a reference to the celebrated Judgment of the Supreme Court in Wander Ltd. v. Antox India P. Ltd., 1990 (Supp) SCC 727, wherein the Supreme Court cautioned that the Appellate Court should not interfere with the exercise of discretion by the Court of first instance, and substitute its own discretion for the same, except where such 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 the grant or refusal of interlocutory injunctions. The Appellate Court should not re- assess the material and seek to reach at a conclusion different from that reached by the Court below. If the conclusion of the learned Court below was reasonably possible, based on the material before it, the Appellate Court would not be justified in interfering with the exercise of discretion only on the ground that it would have arrived at a contrary conclusion.\u201d<\/em><\/p>\n\u201c32. The appellants, therefore, are not strangers who can be attributed for lack of knowledge regarding the marks, which they had themselves assigned to the respondent for valuable consideration.<\/em><\/p>\n\n- \n
\n- The test to be applied for determining the case of infringement or passing off of the trademarks of the respondent by the appellants, therefore, has to be stricter against the appellants. The appellants must stay absolutely clear of the marks, which they themselves have assigned to the respondent, and in their case, even a remote resemblance to those marks would be a sufficient ground to injunct them from using such marks. The burden of proof for establishing deceptive similarity would be lighter on the respondent, as there can be a presumption drawn against the appellants that the adoption of a mark, which even remotely takes the features of the assigned marks, was with a mala fide intent of causing deception and confusion in the minds of an unwary consumer, and to capitalize on the reputation of the marks, which they have already assigned to the respondent.\u201d<\/em><\/li>\n<\/ol>\n<\/li>\n<\/ol>\n
\u201c35. Prima facie, it appears that the appellants have only taken two prominent parts of the marks and combined them together so as to create a facade of distinction, however, maintaining the intent of causing deception, capitalize on the goodwill of the respondent, and causing dilution of the respondent<\/em>\u201f<\/em>s marks.<\/em><\/p>\n\n- \n
\n- The learned counsel for the appellants has submitted that infringement in terms of Section 29 of the Trade Marks Act can arise only when the rival mark is deceptively similar to a registered mark, thereby causing consumer confusion. He submits that the said provision would not allow the comparing of a rival mark with two distinct registered marks.<\/em><\/li>\n
- While in a given case, the said submission may have found merit, in the background of the facts of the present case, we are unable to accept the said submission. In the present case, the appellants are infringing both the registered marks, that is, \u201eNIMYLE<\/em>\u201f<\/em> and \u201eJOR-POWR<\/em>\u201f<\/em>, by taking their prominent parts with the intent to deceive and cause consumer confusion.\u201d<\/em><\/li>\n<\/ol>\n<\/li>\n<\/ol>\n
\u201c44. Applying the above test to the facts of the present case and keeping in view the nature of goods, the past relationship between the parties, the resemblance of the marks, the intent of the appellants to adopt the prominent parts of the marks of the respondent, and other surrounding circumstances, in our view, no fault can be found in the findings of the learned Single Judge that a case of passing off was made out against the appellants and in favour of the respondent.\u201d<\/em><\/p>\n\u201c47. In any case, in the facts of the present case, mere delay in filing of the Suit would not have provided a ground for rejecting interim injunction in favour of the respondent, as the very adoption of the mark by the appellants was mala fide.<\/em><\/p>\n\n- \n
\n- The submission of the learned counsel for the appellants, placing reliance on Clause 9.9 of the Assets Purchase Agreement dated 05.04.2018, and submitting that since the Non Compete Clause had expired by efflux of time, an order of injunction could not have been passed against the appellants, is also fallacious.\u201d<\/em><\/li>\n<\/ol>\n<\/li>\n<\/ol>\n
\u201c50. A reading of the above Clause would show that it would merely permit the appellants to manufacture and sell the \u2018products that compete\u2019 with the respondent. In the present case, the injunction against the appellants is not on the appellants manufacturing or selling competing products but from using a deceptively similar mark to that of the respondent for such products. Clause 9.9 of the Assets Purchase Agreement dated 05.04.2018, therefore, would have no application to the facts of the case. Similarly, Section 27 of the Contract Act, 1872, cannot come to the aid of the appellants.<\/em><\/p>\n\n- \n
\n- On the issue of lack of territorial jurisdiction to entertain the Suit, we again do not find any infirmity in the findings of the learned Single Judge, so as to warrant any interference therewith.<\/em><\/li>\n
- In view of the above, we do not find any merit in the present appeal. The appeal as well as the pending application is dismissed.<\/em><\/li>\n
- We must, however, clarify that our observations hereinabove, are only prima facie in nature and should not be considered as a final opinion on the merits of the contentions raised by the parties in the Suit. The same shall have to be determined in the trial of the Suit, remaining uninfluenced by what is observed by us.\u201d<\/em><\/li>\n<\/ol>\n<\/li>\n<\/ol>\n