In a significant ruling, the Allahabad High Court has dismissed an appeal filed by M/S Sai Chemicals, upholding a temporary injunction granted by the Commercial Court, Kanpur Nagar, in favour of M/S Jai Chemical Works. The case, “M/S Sai Chemicals vs. M/S Jai Chemical Works” (FAFO No. 1623 of 2023), involved allegations of trademark infringement under the Trade Marks Act, 1999, and the Copyright Act, 1957.
Background of the Case:
The dispute centers around the use of similar trademarks by two detergent manufacturers. The plaintiff, M/S Jai Chemical Works, a proprietorship firm owned by Jay Kumar, has been using the trademark ‘HARA PATTA’ since 1996. The mark was registered under the Trade Marks Act in 2002 and under the Copyright Act in 2009. The plaintiff alleged that the defendant, M/S Sai Chemicals, began using a deceptively similar trademark, ‘TAZZA PATTA,’ in 2019, which could cause confusion among consumers due to its resemblance to the ‘HARA PATTA’ mark in terms of color scheme, font, and logo design.
Legal Issues Involved:
1. Trademark Infringement and Passing Off: The plaintiff argued that the defendant’s trademark ‘TAZZA PATTA’ was visually and phonetically similar to the plaintiff’s registered trademark ‘HARA PATTA,’ thereby infringing on their exclusive rights under Sections 29 and 134 of the Trade Marks Act, 1999. The plaintiff sought a permanent injunction to restrain the defendant from using the allegedly infringing mark.
2. Prima Facie Case and Balance of Convenience: The core issue before the court was whether the plaintiff had established a prima facie case of infringement and whether the balance of convenience favored the plaintiff, who claimed to have been in business since 1996, as opposed to the defendant, who had entered the market in 2019.
3. Irreparable Harm: The court also examined whether the plaintiff would suffer irreparable harm if the temporary injunction was not granted, as opposed to the defendant, who argued that any loss to the plaintiff could be compensated monetarily.
Arguments by Counsel:
For the appellant, M/S Sai Chemicals, the legal team led by Devansh Misra argued that the plaintiff’s suit was under-valued and that the trial court had failed to properly consider the defendant’s application under Order 7 Rule 11 of the CPC. They contended that the trademark ‘TAZZA PATTA’ was registered under the Trade Marks Act in 2019 and was distinct from ‘HARA PATTA’ in both visual and phonetic aspects.
Counsel for the respondent, Senior Advocate G.K. Singh, argued that the ‘HARA PATTA’ trademark had been in use since 1996 and had acquired substantial goodwill and market recognition. Singh maintained that the defendant’s use of a similar trademark was likely to cause confusion among consumers, thereby justifying the injunction.
Court’s Observations and Decision:
Justice Rohit Ranjan Agarwal, while delivering the judgment, held that the plaintiff had successfully established a prima facie case of trademark infringement. The court found that the use of similar colors, font, and logo design by the defendant was likely to deceive or cause confusion among consumers. The court observed:
“Comparing the two labels, it is clear that except for the photo of a boy being there on the label of ‘HARA PATTA’ and the photo of a girl on the label of ‘TAZZA PATTA’, both are almost the same including the fonts and color schemes. Anyone who has a look at one of the two labels may easily mistake the other as being the same product.”
The court further noted that the balance of convenience favored the plaintiff, as the plaintiff had been using the mark for over two decades, whereas the defendant had only recently entered the market. On the issue of irreparable loss, the court held:
“The plaintiff-respondent is the prior user and has the right to debar the defendant-appellant from eating into the goodwill it has built up.”
Key Legal Precedents Referenced:
The court referenced several key judgments, including Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia, where the Supreme Court emphasized that in cases of trademark infringement or copyright infringement, injunctions should generally be granted. The court also cited the decision in Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd., where it was held that the balance of convenience in trademark disputes typically favors the prior user.
Final Decision:
Dismissing the appeal, the High Court directed the Commercial Court, Kanpur Nagar, to expedite the hearing of Original Suit No. 3 of 2020, aiming to conclude the trial within six months. The court emphasized that no adjournments should be granted, and the matter should be heard on a day-to-day basis.
Counsel Representing the Parties:
– For Appellant (M/S Sai Chemicals): Devansh Misra, Arun Kumar Misra, Raghuvansh Misra.
– For Respondent (M/S Jai Chemical Works): Utkarsh Singh, Brijesh Kumar Singh, with Senior Counsel G.K. Singh.
