Dabur India Limited vs Alka Ayurvedic Pvt. Ltd.

The appellant filed a suit for permanent injunction restraining infringement of trademark as well as the alleged endeavour of the respondent to

pass of its goods as that of the appellant by trading the same product under the trademark PACHMOLA. Accounts and costs were also sought

for. The suit was contested by the respondent. Interim orders were enduring for the benefit of the appellant by an ad interim order. However, after

hearing both the parties the application under Order 39 Rules 1 & 2 of the CPC was dismissed and interim orders vacated vide impugned order

dated 6.10.2009. It is this order which is assailed before us. No interim orders were granted at the stage of admission of the appeal and as a result

parties have continued to trade in their respective products.

Though more than three (3) years have elapsed, the suit has not progressed much for trial. We have perused the original suit record and it shows

that the first witness of the appellant is yet to be cross-examined though the affidavit of evidence were filed and now some witnesses are sought to

be summoned.

Learned counsel for the appellant whom we heard at great length, fairly concedes that there is no disclosure in the plaint of the fact that the

trademark of the respondent was registered, an aspect which has weighed heavily with the learned Single Judge. The explanation given by him is

that though the mark PACHMOLA was known it was not known as to was the owner of the trademark as the registration is in the name of the

third party and the respondent claims as an assignee of the third party. Learned counsel further states that injunctions have been granted qua similar

trademarks and the matters have been upheld in respect of similar trademark including the trademark RASMOLA.

The learned Single Judge has found that the aspect of infringement of trademark could not really proceed further because neither has the

appellant filed proceedings for cancellation of the trademark PACHMOLA (we are informed that the same have been filed subsequently) nor are

the necessary pleas raised in the plaint or the prayers made. The plaint has, thus, been examined as one only of passing off. On the basis of the

alleged concealment of material facts, injunction has been declined but while doing so there are observations even qua the merits of the passing off

action. In fact, the learned Single Judge has opined that even assuming that the appellant did not have knowledge of who was the owner of the

registered trademark the previous proceedings initiated by the appellant did show the registration of that mark was known and was, at least,

known after the written statement was filed whereafter also no proper steps were taken. Even the replication is found to be deficient in terms of

proper pleadings as rebuttals.

The other important aspect in the present case is that after the decision of the interim application on the very same day issues were framed. The

suit was treated as one for passing off and no issue was framed qua infringement of the trademark. This aspect was not pressed on behalf of the

appellant nor did the appellant ever assailed that order or claimed any additional issue on the basis of infringement of trademark.

Learned counsel for the appellant submits that the appellant was under a belief that if the appellant could persuade the appellate court (i.e.,

before us) that there was infringement of the mark the occasion to claim additional issue may have arisen at that stage.

We are of the view that this is really putting the cart before the horse. A decision on an interlocutory application can only be for purposes of

prima facie case and can never decide the suit before trial. The trial has to proceed on the basis of issues framed. The issue in turn have to be

framed on the basis of pleadings of the parties. Thus, if additional issues were to be claimed it was at that stage itself and not after decision of the

appeal filed before us. We, thus, put to learned counsel for the appellant that it may not be permissible for him to urge aspects arising from

infringement of trademark before us as the appellant had not even claimed any issue in the suit qua that aspect and, thus, the suit was proceeding to

trial without there being any issue of infringement"" of the trademark. Thus, the suit was proceeding to trial only on the basis of a passing off claim

and that relief had been denied to the appellant on account of there being nondisclosure/lack of proper pleadings.

Learned counsel for the appellant now faced with this position submits that rather than prosecuting the present appeal a better course of action

for him would be to move the learned Single Judge claiming additional issues and/or seek amendment of pleadings so that the suit can be

prosecuted both for infringement and passing off. In our view that is a matter for the appellant to take up in the proceedings before the learned

Single Judge.

The only apprehension expressed by learned counsel for the appellant is that the findings in the present appeal qua even the passing off aspects

may cause the appellant prejudice in these proceedings or in other proceedings. In our view such apprehension is misplaced for the reason that the

prima facie case has not been found in favour of the appellant even qua passing off on account of improper pleadings, and non-disclosure of

material facts. This cannot prejudice the claim of the appellant against a third party based on other judicial precedents if pleadings are properly

framed. As far as the present case is concerned the opinion is only prima facie in nature and thus, it is always open to the appellant to lead

appropriate evidence to assist the learned Judge to come to a conclusion in the favour of the appellant.

We, thus, accede to the request of the learned counsel for the appellant even after an elaborate hearing to permit him to withdraw the appeal

making it clear that observations made in the impugned order would not prejudice the appellant in any manner in the decision in the suit on merits.

Insofar as the other reliefs which learned counsel for the appellant feels are required to be prayed for before the learned Single Judge are

concerned, the appellant will have to move the learned Single Judge for that purpose.

We may only add that a considerable time has elapsed in the mean time and once the suit is ready for trial, both parties must co-operate to

bring the trial to an end and if the board of the Joint Registrar is heavy learned counsels for the parties can always seek the assistance of

appropriate orders from the learned Single Judge to have the evidence recorded on Commission before a retired Judicial Officer so that final

hearing in the suit can take place. We need only emphasize once more that the ultimate adjudication has to take place in the suit and the purpose of

an interim order is only to protect the rights of the parties till there is final adjudication of the rights of the parties in the suit. The appeal is dismissed

as withdrawn with the aforesaid observations.