A Division Bench of the Andhra Pradesh High Court comprising Justice Ravi Nath Tilhari and Justice Challa Gunaranjan has set aside an order of temporary injunction passed by the trial court in favour of the plaintiffs in a trademark dispute over the name “Madras Filter Coffee.” The High Court held that the plaintiffs failed to produce sufficient evidence to establish prior usage of the brand name dating back to 1978–79.
Background
The appeals arose from an order passed by the VII Additional District Judge, Vijayawada in a trademark-related suit (O.S. No. 68 of 2023), where the plaintiffs sought a permanent and mandatory injunction against the defendants from using the trade name “Madras Filter Coffee” or any deceptively similar name or logo. Temporary injunctions were granted in I.A. Nos. 536 and 537 of 2023 restraining the defendants from using the disputed trade name during the pendency of the suit.
The plaintiffs claimed long-standing usage of the trademark “Madras Filter Coffee” dating back to 1978–79, attributing the business’s origin to the 1st plaintiff’s grandfather. They also relied on a series of partnership deeds and memoranda of understanding executed with the defendants to support their claim of exclusive rights over the brand.
Trial Court’s Order
The trial court held that the plaintiffs had established a prima facie case, noting that irreparable injury would be caused to them if injunctions were not granted. It also found the balance of convenience in the plaintiffs’ favour and accordingly passed orders of temporary injunction against the defendants.
Appellant’s Arguments
The appellant contended that:
- The plaintiffs had failed to produce credible evidence to prove use of the trade name “Madras Filter Coffee” from 1978–79.
- The claim of long usage was unsupported by any documentation such as tax records, trade licences, or food safety certifications.
- The trial court had improperly relied solely on recitals from two recent partnership and retirement deeds (dated 19.01.2023 and 20.01.2023) which were executed just before the disputes arose and could not establish historical usage.
- The injunction was granted based on an unproven assertion of prior usage and not on independent evidence.
The appellant relied on precedents including Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd., Century Traders v. Roshan Lal Duggar & Co., and Heinz Italia v. Dabur India Ltd.
Court’s Observations
The High Court emphasized that in a passing-off action, especially when no party has a registered trademark, the burden lies on the plaintiff to establish prior user of the mark with cogent material.
“The learned trial Court ought not to have considered that stray statement…in the Partnership Deed dated 19.01.2023 and the Retirement Deed dated 20.01.2023…to hold that the plaintiffs established prima facie case,” the Court held.
The Court noted the absence of tax returns, licenses, or continuous documentary evidence from 1978–79 to support the plaintiffs’ claim of uninterrupted and exclusive use of the brand name. It further held that statements in private partnership deeds could not be treated as sufficient proof of long-standing user, particularly when one of the parties (appellant) specifically denied those claims.
Decision
The High Court allowed both appeals, set aside the orders of temporary injunction dated 21.10.2022 in I.A. Nos. 536 and 537 of 2023, and remitted the matter for further trial. The Court observed that until cogent evidence is presented at trial, no interim restraint could be justified.
