Court can grant interim injunction pending rectification petition under Section 124(5) of Trademarks Act 1999
Facts of the Case:
Nirav Nimmi Corporation, a proprietary firm engaged in the spice business, has been using the trademark "ARJUN" since 1988. The plaintiff alleged that Ashish Traders, which was initially a distributor of the plaintiff’s products, started selling products under the "ARJUN" brand without authorization and falsely labeling them as “marketed” by the defendant. The plaintiff claimed trademark infringement, passing off, and copyright violation and sought an injunction to restrain the defendant from using the trademark.
Procedural Background:
The plaintiff filed a trademark suit in 2024 before the 4th Additional District Judge, Mehsana at Visnagar, seeking an injunction. The Trial Court granted an ex parte ad interim injunction on October 28, 2024, restraining the defendant from using the "ARJUN" mark. The defendant contested the suit, arguing that it had permission from Subhashbhai Shah, the brother of the plaintiff, who claimed prior rights over the "ARJUN" mark. The Trial Court eventually rejected the plaintiff’s injunction application on December 30, 2024, holding that no prima facie case was made out. The plaintiff then filed an Appeal from Order (AO) No. 9 of 2025 before the Gujarat High Court, challenging the rejection of the injunction.
Reasoning of the Court:
The Gujarat High Court found that the Trial Court erred in rejecting the injunction application. The plaintiff held trademark registration for "ARJUN" since 1993 and a copyright registration since 2006, which established prima facie statutory rights. The court held that the SMV firm, originally owned by the plaintiff’s father and later by his brother Subhashbhai Shah, was dissolved in 1994. As per Clause 18 of the partnership deed, no goodwill was transferred. Subhashbhai ceased business operations in 2013, making his claims of prior rights untenable. The defendant had no valid license or written authorization to use the "ARJUN" mark, violating Sections 28, 29, and 34 of the Trade Marks Act, 1999. The Trial Court wrongly relied on the pending rectification petition filed by Subhashbhai Shah in 2022, ignoring that Section 124(5) of the Trade Marks Act allows for interim relief even during rectification proceedings. The defendant’s use of identical trade dress and packaging clearly indicated an intent to mislead consumers, amounting to passing off and trademark infringement.
Decision:
The Gujarat High Court set aside the Trial Court’s order and granted an interim injunction in favor of the plaintiff, restraining the defendant from using the "ARJUN" mark. The appeal was allowed, reinforcing the plaintiff’s exclusive trademark rights.
Case Title: Nirav Nimmi Corporation Vs. Ashish Traders
Date of Order: March 7, 2025
Case Number: R/AO/9/2025
Neutral Citation: 2025:GUJHC:14665
Name of Court: Gujarat High Court
Name of Hon’ble Judge: Hon'ble Mr. Justice Maulik J. Shelat
