Introduction:This case arose from an appeal filed under Order 43 of the Code of Civil Procedure, challenging the grant of an interim injunction by the learned 10th Additional District and Sessions Judge, Ahmedabad (Rural). The original suit involved allegations of infringement of trademark and copyright concerning the mark and artistic label "TAAM JHAAM". The legal conflict centered on competing claims of prior use, authorship of artwork, and an alleged attempt to misappropriate an artistic and brand identity. The High Court of Gujarat was called upon to decide whether the interim injunction granted to the plaintiff/respondent was proper and justified in law.
Factual Background:The respondent-plaintiff filed Trade Mark Civil Suit No. 17 of 2022 asserting his rights over the mark "TAAM JHAAM", which was described as a unique artwork/label used in connection with restaurant services. The plaintiff claimed to be the creator and prior adopter of the said mark, and supported his claim with documents such as a deed of assignment from an artist, invoices related to logo design, menu card printing, and T-shirts bearing the mark—all allegedly created in mid-2022.
The defendant-appellant was the proprietor of a company that operated restaurants under various brand names including "Ghee Gud", "Octant Pizza", and allegedly, "TAAM JHAAM". The plaintiff alleged that despite knowing the plaintiff's prior use, the defendant was attempting to commercially exploit the "TAAM JHAAM" label and had even begun using it in various locations. This led the plaintiff to file the suit seeking permanent injunction, damages, and other reliefs.
Procedural Background:Upon institution of the suit, the plaintiff filed an injunction application under Exh. 5 seeking to restrain the defendant from using the disputed label/artwork. In response, the defendant filed a counterclaim along with a separate injunction application under Exh. 20, asserting his own prior rights and challenging the plaintiff’s assertions.
The learned District Court heard both applications together and passed an order dated 29.05.2024 granting interim injunction in favour of the plaintiff (allowing Exh. 5) while rejecting the defendant’s counterclaim for injunction (under Exh. 20). Aggrieved by this, the defendant filed an appeal before the High Court of Gujarat limited to challenging the grant of interim injunction.
Issues Involved in the Case:The central issue was whether the District Court was justified in granting interim relief in favour of the plaintiff based on a prima facie case of copyright infringement and the likelihood of passing off?The corollary issues included whether the plaintiff was indeed the prior user of the mark, whether the assignment deed was genuine, whether the label/artwork qualified for protection under the Copyright Act, and whether the defendant’s documents supporting its claim were credible?
Submissions of the Parties: The defendant contended that the plaintiff was a former franchisee of the defendant's brand "Octant Pizza" and had instituted the suit as a retaliatory measure after the franchise agreement was terminated. It was argued that the plaintiff’s claims were fabricated and that the artwork being asserted as copyright was in fact a label mark defined under Section 2(m) of the Trade Marks Act. The defendant challenged the authenticity of the assignment deed and other supporting documents such as invoices and claimed that the plaintiff had falsely backdated his user. It was further submitted that the suit was barred since the plaintiff had declared the mark in his trademark application as “proposed to be used,” thereby contradicting his claim of prior use.To support these submissions, the defendant relied upon the following decisions:
Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 – laying down the principles for grant of interim injunction and emphasizing the need for a prima facie case, balance of convenience, and irreparable harm.
Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 – concerning protection against passing off and requirement of goodwill.
Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 – emphasizing deceptive similarity and comparable strength of trademarks.
K. Narayanan v. S. Murali, (2008) 10 SCC 479 – on the accrual of right to sue post-registration.
Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577 – concerning proof of goodwill and misrepresentation in passing off cases.
The plaintiff defended the injunction, arguing that the suit was primarily based on copyright infringement, and registration was not necessary under the Copyright Act. It was emphasized that copyright subsists in both published and unpublished works, and under Section 14(c), the exclusive right to reproduce an artistic work in material form rests with the owner. Plaintiff asserted that it had a valid assignment deed dated 28.05.2022 from the artist and had begun using the artwork on menus and T-shirts by June and August 2022 respectively. The defendant, he submitted, had not established any credible use of the mark prior to the plaintiff, and the documents relied upon by the defendant—including suspicious invoices and contradictory addresses—were manipulated. He also highlighted that the defendant had previously been injuncted in a related case involving another mark "DHAAM DHOOM" and that similar injunctions had been granted against his alleged associates.
Discussion on Judgments and Contextual Application:The Gujarat High Court considered the principles laid down in Neon Laboratories Ltd. v. Medical Technologies Ltd. and reiterated that appellate interference with interim orders should be minimal if the trial court’s exercise of discretion is based on reasonable and judicially considered grounds.
The Court examined the relevance of Wander Ltd. and Cadila Healthcare, distinguishing them to the extent that those cases pertained primarily to trademark disputes. Here, the interim injunction had been granted for copyright infringement as well, and the standard of proving goodwill in a passing off claim was not a prerequisite at this stage.
The Court accepted the application of Laxmikant V. Patel to the extent that it supported protection against unfair commercial exploitation, but found that even without satisfying the classical trinity test (prior use, goodwill, misrepresentation), the plaintiff was entitled to protection due to the strong prima facie case of authorship and ownership of the artwork.
Reasoning and Analysis of the Judge: The court observed that the plaintiff had sufficiently established a prima facie case of copyright ownership through a valid assignment deed, timely issuance of invoices, and documentary proof of usage of the label/artwork prior to the defendant’s alleged adoption.
The judge noted discrepancies in the defendant’s documents, including invoices issued before rental agreements for the same address and failure to credibly establish a prior creation of the logo. The High Court emphasized that these inconsistencies raised doubts about the genuineness of the defendant’s claims.
The judge further held that the plaintiff's act of filing the trademark as "proposed to be used" did not defeat the claim under copyright law, which operates independently of trademark registration. The existence of a similar mark, possibility of confusion, and the earlier artistic creation being used by the plaintiff tilted the balance in his favour.
Court underscored that once a prima facie case for copyright infringement was made, the requirement to prove the trinity test for passing off could be bypassed at the interim stage, particularly when the defendant’s materials lacked reliability.
Final Decision :The High Court dismissed the appeal and upheld the interim injunction granted by the District Court. It held that the order was based on cogent reasoning and did not warrant interference. The Court emphasized that the trial court had considered all relevant factors and that the plaintiff had demonstrated a prima facie case, balance of convenience, and potential irreparable harm if the injunction were denied.
Law Settled in this Case: The case reaffirms that in suits involving both copyright infringement and passing off, interim injunction may be granted solely on the basis of a prima facie case of copyright infringement, without necessarily establishing all elements of a passing off claim. It also reiterates that ownership of copyright in an artistic label can be established through an assignment deed, and registration is not mandatory. The judgment cautions against entertaining suspicious documents produced to undermine prior artistic ownership and upholds the broader objective of protecting genuine creative work from unfair exploitation.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
