1 APP-504-11.odt IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION APPEAL NO.504 OF 2009 AND NOTICE OF MOTION NO.2276 OF 2011 IN NOTICE OF MOTION NO.1522 OF 2001 IN SUIT NO.820 OF 2011 M/s.Thanco Enterprises and ors. ..Appellants Vs Siddhant Ice Creams Pvt. Ltd. and ors. ..Respondents -- Mr.Ravi Kadam, Senior Counsel with Mr.Ashish Kamal, Mr.M.A.Mahadgut and Ms.Reema R. Bangale, for appellants. Dr.Virendra Tulzapurkar, Senior Counsel with Mr.Virag Tulzapurkar, Senior Advocate, Mr.Nishad Nadkarni, Ms.Tanmayi Gadre, Mr.Shailendra Bhandare, Ms.Meghna Chandorkar i/b.M/s.Legasis Partners, for the respondents. -- 2 APP-504-11.odt CORAM : D.K.DESHMUKH & R.G.KETKAR, JJ. DATE : 2 nd AUGUST, 2011 P.C: Admit. Heard finally by consent of the parties. 2] This Appeal is directed against the order dated 27 th June, 2011 passed by the learned single Judge of this Court in Notice of Motion No.1522 of 2011. The respondents have filed Suit No.820 of 2011. In that suit, the plaintiff had taken Notice of Motion No.1148 of 2011. In the plaint, principal reliefs are claimed in following terms : a. That this Hon’ble Court be pleased to grant a perpetual order and injunction of this Hon’ble Court restraining the Defendants, its partners, its proprietors, its directors, subordinates, representatives, franchisees, agents and all other persons claiming under them from infringing any of the Plaintiffs’ NATURAL Registered Marks i.e. marks bearing registration nos.641592, 1143033, 1143034, 1143035 and 1502789 in any manner and from using the 3 APP-504-11.odt impugned mark NATURAL/NATURALS or impugned Mark or any mark similar to the NATURAL Registered Marks upon or in relation to any goods / service for which the NATURAL Registered Marks are registered or any goods or services similar thereto and upon or in relation to their business, ice creams, ice cream shops/parlors, restaurants, sign boards, signages (including the Impugned Signage), banners, hoardings, invoices, carry bags, menu cards (including the Impugned Menu Cards), domain names (including the Impugned Domain Names), websites, metatags, advertisements, uniforms (including the Impugned Uniforms) or as part of their trading style or trade name and from manufacturing, marketing or offering for sale, advertising or dealing in any products or rendering any services under the NATURAL Registered Marks or any other mark which is similar to the Plaintiffs’ NATURAL Registered Marks; b. That this Hon’ble court be pleased to grant a perpetual order and injunction of this Hon’ble Court restraining the Defendants, its partners, its proprietors, its directors, subordinates, representatives, franchisees, agents and all other persons claiming under them from infringing in any manner the Plaintiffs copyrights in the NATURAL logo (Exhibit `C’ hereto) or the NATURAL Photographs (Exhibit E-1 to E-28) or the NATURAL Menu Card (Exhibit G hereto) or the NATURAL Signage (Exhibit F hereto) or the NATURAL Uniform (Exhibit I hereto) and from 4 APP-504-11.odt reproducing / substantially reproducing / copying / displaying/using any of the aforesaid copyright works upon or in relation to or as part of the impugned Mark, impugned Signage, impugned Menu Card, Impugned Uniform, advertisements, photographs or upon websites or any other material or substance and from selling or offering for sale products or rendering services upon or in relation to which the aforesaid copyright works of the Plaintiffs have been reproduced or substantially reproduces; c. That this Hon’ble Court be pleased to grant a perpetual order and injunction of this Hon’ble Court restraining the Defendants, its partners, its proprietors, its directors, subordinates, representatives, franchisees, agents and all other persons claiming under them from committing the tort of passing off in any manner and from i. selling or offering for sale ice creams and other products from ice cream shops / parlors, restaurants or business establishments which simulate the ice cream shops / parlors of the Plaintiffs or which have the look and feel or trade dress of the Plaintiffs NATURAL ice cream parlors / shops (including those as depicted in Exhibit H hereto) and from ice cream shops/parlors or business establishments which are same or similar to those depicted in Exhibit S hereto; 5 APP-504-11.odt ii. from using the impugned Signage, impugned Menu Card, impugned Uniforms, impugned Domain Names or impugned Photographs upon or in relation to their ice cream shops/parlors or any other business establishments; iii. from manufacturing, marketing, selling, advertising, offering to sell ice creams and other products and rendering services in relation to ice creams and other products whether through ice cream shops/parlors or otherwise under or bearing the mark NATURAL / NATURALS / impugned Mark or any other mark resembling the Plaintiffs’ NATURAL Trademarks; iv. from using the impugned Domain Names or any other domain name containing the Plaintiffs’ mark NATURAL and from using the impugned website and webpages of which are depicted at Exhibit V hereto v. from seeking franchisees or granting franchises allowing the use of the impugned Mark or the mark NATURAL or NATURAL’S or any other mark resembling the Plaintiffs NATURAL Trademarks; vi. from doing any other acts which suggest that the Defendants’ business is associated with or connected with or bears a nexus with those of the 6 APP-504-11.odt Plaintiffs; The temporary injunction in the same terms was sought on the ground of infringement and passing off. By order dated 15 th April, 2011, the learned single Judge granted temporary injunction in favour of the plaintiffs in terms of prayer clauses (a),(b),(c) and (d) of the Notice of Motion. The temporary injunction in terms of prayer clause (d) was granted excluding the bracketed portion. An appeal was filed against that order. In the appeal, leave was sought of the Appeal Court to rely on certain additional documents. The Appeal Court did not entertain that Appeal. Thereafter, Notice of Motion No.1522 of 2011 was taken out for discharge of the order dated 15 th April, 2011. We have been informed that the Notice of Motion was taken out under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (for short “C.P.C.”). The learned single Judge has dismissed that Notice of Motion. Present Appeal is directed against that order. 3] Notice of Motion No.1522 of 2011 was admittedly taken out 7 APP-504-11.odt under Order XXXIX Rule 4 of C.P.C., which reads as under :- 4. Order for injunction may be discharged, varied or set aside.- Any order for an injunction may be discharged, or varied, or set aside by the Court, on application made thereto by any party dissatisfied with such order: [Provided that if in an application for temporary injunction or in any affidavit supporting such application, a party has knowingly made a false or misleading statement in relation to a material particular and the injunction was granted without giving notice to the opposite party, the Court shall vacate the injunction unless, for reasons to be recorded, it considers that it is not necessary so to do in the interests of justice: Provided further that where an order for injunction has been passed after giving to a party an opportunity of being heard, the order shall not be discharged, varied or set aside on the application of that party except where such discharge, variation or setting aside has been necessitated by a change in the circumstances, or unless the Court is satisfied that the order has caused undue hardship to that party.] Perusal of Order XXXIX Rule 4 of C.P.C. quoted above shows that an 8 APP-504-11.odt order of temporary injunction can be discharged, or varied, or set aside under that provisions if the applicant satisfied the Court that there is change in circumstances which necessitates discharge, variation or setting aside of the order of temporary injunction or where the Court is satisfied that the order has caused undue hardship to the applicant. 4] In the present case, order dated 15 th April, 2011 was made by the learned single Judge after due notice to the appellant. That Motion was heard finally by consent of both sides. What is observed in paragraph 1 of that order reads as under:- “1. The Notice of Motion has by consent and on the request of Counsel been taken up for hearing and final disposal. Counsel appearing on behalf of the Defendants has submitted that the affidavit in reply dated 15 th April 2011 may be treated as a reply to the Motion.” Perusal of order of the Appeal Court dated 3 rd May, 2011 reads thus: 9 APP-504-11.odt “ The learned counsel for the appellants seeks leave to rely on certain documents which were not placed before the learned trial Judge. 2. While granting injunction against the appellants, the learned trial Judge stayed the operation of the injunction order for a period of four weeks which is expiring on 13 th May, 2011. 3. We leave it open to the appellants to move the learned trial Judge with an appropriate application. As and when such an application is made, it shall be decided in accordance with law. Appeal is, accordingly, disposed of.” 5] It is apparent from the above quoted orders that before the Appeal Court, only on the basis of additional documents, it was sought to be argued that the order passed by the learned single Judge which was challenged in the Appeal was erroneous. It does not appear to be the case that on the basis of the material that was before the learned single Judge, it is contended that the order could not have been made which causes undue hardship. Perusal of 10 APP-504-11.odt Notice of Motion and affidavit in support of Notice of Motion No.1522 of 2011 shows that the said Notice of Motion is being moved pursuant to the liberty granted by the Appeal Court. What is said in paragraph 4 of the affidavit filed in support of Notice of Motion makes the position clear. It reads as under : - “4. I say that I am now taking out this fresh Notice of Motion for setting aside, discharging and/or varying the order dated 15 th April, 2011 passed by the learned Trial Judge, pursuant to the liberty granted by the Division Bench Order dated 3 rd May, 2011.” It, thus, appears that the Motion under Order XXXIX Rule 4 of C.P.C. was moved not on the basis of material that was before learned single Judge when he decided the Motion finally, but on the facts of the additional material which the appellant wanted to produce before the Appeal Court. 6] What is further to be seen is that it was claimed that the plaintiff is guilty of suppressing material facts before the Court. 11 APP-504-11.odt Perusal of the impugned order shows that the learned single Judge considered that aspect in detail and has found that there is no suppression of the material facts. 7] Thus, taking overall view of the matter, in the facts and circumstances of the case, it cannot be said that the order dated 15 th April, 2011 could have been modified or cancelled on the ground of undue hardship. Therefore, the order passed by the learned single Judge dismissing the Notice of Motion cannot be interfered with. However, it appears that the learned single Judge after dismissing the Notice of Motion has observed in paragraph 35 as under: “35. This application not being bona-fide, the defendants cannot retain the benefit obtained by them by having the time to comply with the order dated 15 th April, 2011, extended. A view to the contrary would endorse speculative litigation encouraging applications which are an abuse of the process of Court. By the said order, the learned Judge had granted the defendants, a period of four weeks to comply with the order. The were, therefore, bound to comply with the 12 APP-504-11.odt order with effect from 15 th May, 2011. The defendants are, therefore, directed to furnish on affidavit on or before 19 th July, 2011, accounts of all their dealings, including the sale of products, using the said mark from the date on which the order and judgment dated 15 th April, 2011 was to be complied with viz. 15 th May, 2011 to date. The defendants shall, on or before 19 th July, 2011, deposit in this Court, the entire/gross proceeds of sales of products using the said mark during the period 15 th May, 2011, to date. The Prothonotary & Senior Master shall invest the same in fixed deposit of a Nationalised Bank initially for three years and, thereafter, for like periods of three years each. The amount shall abide by the order passed at the final hearing of the suit.” This order has been made by the learned single Judge in Notice of Motion taken out by the defendant. By consent of the parties, paragraph 35 of the impugned judgment passed by the learned single Judge is set aside. Save and except paragraph 35 of the impugned judgment, the judgment of the learned single Judge 13 APP-504-11.odt dismissing Notice of Motion is confirmed. Appeal is partly allowed to the above extent. In view of disposal of Appeal, Notice of Motion No.2276 of 2011 does not survive and the same stands disposed of. [R.G.KETKAR, J.] [D.K.DESHMUKH, J.]