Suit For Injunction | Party Estopped From Taking Stand Contradictory To That Taken Before Trademark Registrar: Rajasthan High Court

In a significant decision, the Jaipur Bench of Rajasthan High Court has underscored that a party that has already adopted a stand that the trademark to be registered carries no semblance to that of another trademark at the time of registration, cannot later take a contrary view in a suit for permanent injunction that both the trademarks are indeed similar.

Justice Sudesh Bansal also added that since both the appellant and respondent have registered trademarks and similarly claim prior use of the impugned trademark, the trial court rightly deemed it fit as per Section 28(3) of the Trademark Act, 1999 not to grant an injunction at the preliminary stage, though both may claim protection against any third parties.

Relying on Wander Ltd. v. Antox India Private Ltd. (1990) and Gujarat Bottling Co. Ltd. v. Coca-Cola Co. (1995), the court also clarified that orders on temporary injunction by the trial court are discretionary in nature and as long as the view adopted is a ‘reasonably possible view’, no interference is warranted.

Principle of Estoppel Applicable

Pertinently, the counsel for the appellant had not denied filing a response to the objections raised by the Registrar of Trademark. The High Court went on to observe that the trial court has rightly interpreted Section 115 of the Indian Evidence Act and judicial precedents in order to apply the principle of estoppel on the factual matrix of this case.

“…The trial Court has observed that in view of reply by the appellant before the Registrar of Trademark at the time of registration, the appellant is estopped to take a different stand, and now he cannot be permitted to state that the registered trademark of respondent is similar which is contrary to his own stand taken before the Registrar of Trademark while dealing with the objection of similarity of trademarks…”, the court noted while stating that the appellant has approached the court with unclean hands by not disclosing about his knowledge about the erstwhile registration of the impugned trademark by the respondent in 2016.

The appellant applied for trademark registration for the trademark ‘ORNATE JEWELS’ in 2018 for Gold, Diamond, Precious and Semi-Precious Jewellery and got the same trademark with a logo registered in Class 35. The respondent company has also been allegedly using the same trademark with a different logo in the same field which was registered in Class 14. Later, the appellant and the respondent instituted a suit and counterclaim respectively wherein both parties claimed temporary injunction against each other for using the trademark, ‘Ornate Jewels’. The appellant/plaintiff preferred the civil miscellaneous appeal before the High Court after the trial court dismissed the applications filed by both parties for temporary injunction.

The court also expressed its suspicion about the omission of the appellant/plaintiff to make any mention about the reply filed against the objections raised by the Registrar of Trademark.

“…The plaintiff has nowhere disclosed in the application about having knowledge of the registration of Trademark of respondent, which certainly has come to his knowledge at least during the course of registration nor the plaintiff disclosed about filing of reply before the Registrar of Trademark, to the effect of having no similarity of his trademark of the Trademark of respondent”, Justice Sudesh Bansal reasoned about the lack of perversity in the order pronounced by the trial court.

Scope of Interference of Appellate Court in Matters of Temporary Injunction

The High Court concluded that the trial court has rightfully made the observation that there is prima facie no case in favor of the plaintiff/appellant to grant temporary injunction as per Section 28(3) of the Trademark Act, 1999. Hence, noting that the defendant cannot be restrained from using the trademark that’s the subject matter of the dispute, the single-judge bench also iterated the few instances when an appellate court can interfere.

“This Court does not find any illegality or perversity in impugned order nor the opinion expressed by the Trial Court cannot be said to be one of the impossible views in such facts and circumstances. The impugned order passed on the application for temporary injunction is discretionary in nature and reasonably possible view, until and unless the same suffer from any vice of arbitrariness, perversity or grave illegality/ irregularity, which leads to miscarriage of justice, such order does not warrant interference by the Appellate Court”, the court observed.

Finally, the court also mentioned that none of the remarks made in the current order would adversely affect the merits of the case of either party before the trial court.

Case Title: M/s Ornate Jewels Proprietor Piyusha Nyati v. Wow Overseas Private Limited

Case No: S.B. Civil Miscellaneous Appeal No. 1570/2021

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