Bombay HC Continues Interim Relief Granted To Mumbai's 'Haji Ali Juice Centre' In Trademark Infringement Suit Against Establishment In Vijaywada

Justice Manish Pitale stated that the defendants didn't show that there was any falsehood and suppression of material facts on the part of the plaintiff in not disclosing a prior litigation with the defendants, as the plaintiff could not presume that there was any link between the Vijaywada establishment and the defendants.

"...only because there was an ongoing litigation between the plaintiff and defendant No.2 in the court at Ernakulum in Kerala and that there were other proceedings….it could not lead to an obvious conclusion that the establishments at Vijaywada using the identical or deceptively similar mark were necessarily linked with defendant Nos.2 to 4.", the court stated in its order.

The plaintiff was seeking continuation of the interim relief while the defendant was seeking vacation of the same under Order 39 Rule 4 of the CPC. The plaint stated that the father of the plaintiff opened a juice centre in 1971 named Race View Juice Corner overlooking the Haji Ali dargah. In 1985, her father changed the trading name of his establishment to Haji Ali Juice Centre and in 1991 adopted a label mark Haji Ali Juice Centre with the device of an apple.

The word mark Haji Ali Juice Centre and the label mark Haji Ali Juice Centre with the device of an apple were registered as trademarks in the year 2010 and 2001 respectively. In 2019-20 the turnover reached about 6.05 crores Rs, according to the plaintiff. It is Noorani's case that many entities have copied the marks to take illegal advantage of their goodwill.

Noorani filed the present suit after coming to know that the defendants intended to open an outlet under the mark 'Haji Ali'. After enquiry, it was found that the name and mark 'Haji Ali fresh fruit juices' with the device of a red apple was being used by the defendants in an outlet at Vijayawada, Andhra Pradesh.

The court granted ex-parte interim relief to plaintiff in June 2021 observing that the defendant's mark was prima facie identical and deceptively similar to plaintiff's mark.

Advocate Hiren Kamod for the defendants submitted that the plaintiff deliberately suppressed an earlier suit filed against the defendants in Ernakulam in 2011. Plaintiff also suppressed that she had filed opposition proceedings against the trademark application filed by the defendant as managing partner of a partnership firm Al-Ali Enterprises for Haji Ali Fresh Fruit Juices with the device of red apple. The plaintiff knew that defendant through Al-Ali Enterprises was openly using the mark 'Haji Ali Fresh Fruit Juices' and earlier initiated proceedings for the same but did not disclose this in the present plaint, Kamod stated.

Kamod further contended that the plaintiff did not pursue the matter any further after the Ernakulam suit was dismissed in default. This indicates that the plaintiff had acquiesced to the presence of the defendants with the mark in the market.

The words 'Haji Ali' are publici juris (of public right) and the plaintiff could not claim exclusivity to the same since Haji Ali dargah is a revered shrine on the Arabian sea at Mumbai having numerous followers, Kamod submitted.

Advocate Rashmin Khandekar for the plaintiff submitted that there was nothing in the public domain to indicate any link between the Vijayawada establishment and the rest of the defendants. He said that the mark has been misused by a number of entities. Establishments at Vijaywada were being operated by an unregistered partnership firm 'F&M Enterprises'. Merely because the offending mark used by the Vijayawada establishment was the same as the one regarding which suit was filed in Ernakulam, the plaintiff could not presume that there was a link between the establishment in Vijayawada and defendant's firm Al-Ali Enterprises.

On the matter of acquiescence, Khandekar said that the proceedings initiated by the plaintiff from time-to-time indicate that the plaintiff has zealously taken steps to protect the mark's exclusivity.

Khandekar rebutted the contention that Haji Ali was publici juris stating that the defendants themselves had sought registration for their marks which contain the words Haji Ali.

The plaintiff specifically stated that nothing was available in public domain including Facebook to trace connection of the establishments at Vijayawada with the partnership firm Al-Ali Enterprises. This specific statement made by plaintiff regarding absence of any material in the public domain is not controverted by the defendants, the court observed.

The court noted that the details of the partnership firms of the defendant are not in public domain and weren't available even with reasonable efforts and enquiry.

"Merely because the said suit remained pending, which was subsequently dismissed in default, could not be the sole basis to indicate that in respect of every such establishment using a mark identical to or deceptively similar to the registered trade mark of the plaintiff, it ought to have been presumed or concluded by the plaintiff that the same would have a link or connection with defendant Nos.2 to 4", the court stated.

Hence, the court found the defendants' allegation of suppression of facts and misleading statements on behalf of plaintiff to be unsustainable.

The court noted that the plaintiff has been resisting the misuse of the registered trademark by initiating a number of proceedings and the defendants themselves have applied for registration of the mark containing the words Haji Ali. Thus, the court agreed with Khandekar's contention regarding acquiescence and inapplicability of the concept of publici juris in the present case.

The court stated that a bare look at the offending mark shows that it is prima facie identical and deceptively similar to the registered marks of the plaintiff and concluded that the defendants have not fulfilled the requirements of the first proviso to Order 39 Rule 4 of the CPC.

Case no. – Commercial IP Suit No. 189 of 2021

Case title – Asma Farid Noorani v. Haji Ali Fresh Fruit Juices and Ors.

Citation: 2022 LiveLaw (Bom) 436