HIGH COURT OF JUDICATURE FOR RAJASTHAN

BENCH AT JAIPUR
S.B. Civil Miscellaneous Appeal No. 535/2022

Vankon Modular Private Limited, Registered Address At S.No.72 And

74, Gala No. 4 and 5, Ground Floor, Plot No. 22, Meghdoot Signature,
Vasai Road, East Thane, Maharashtra-401208 through Authorized
Signatory Bhagwandas Goklani,
----Appellant-plaintiff
Versus
Vanton Switchgears and Cables, Office At WS-1, Malviya Naar Ind.
Area, Near K.S. Ford Service Centre, Malviya Nagar Rajasthan 302017
through Authorized Signatory Daulatram Lalwani,
----Respondent-defendant

For Appellant(s) : Mr. Jitendra Mitrucka

For Respondent(s) : Mr. Ashwani Kumar Gupta

HON'BLE MR. JUSTICE SUDESH BANSAL

Order

31/01/2023

1. The instant civil misc. appeal under Section 43 Rule 1 CPC

has been filed by appellant-plaintiff, feeling aggrieved by the order

dated 10.2.2022 passed by the Additional District Judge No.10,

Jaipur Metro-I, Headquarter Sanganer, District Jaipur, dismissing

the application for temporary injunction.

2. Heard counsel for both parties, perused the impugned order

and material available on record.

3. It appears that appellant-plaintiff instituted a civil suit for

permanent injunction along with an application for temporary

injunction under Section 134 of the Trade Marks Act, 1999

(hereinafter referred as “the Act of 1999”) against respondent-

defendant for infringement of its registered trademark in brand

name “VANKON” under different classes i.e. 7, 9, 11, 21 and 35.

The main dispute is in respect of infringement of trademark under

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class 9, wherein plaintiff has got registered its trademark in the

brand name “VANKON” having registration No.2823109 dated

9.10.2014. Respondent-defendant has got registered its

trademark in brand name “VANTON”, under class 9 having

registration No.3293881 dated 25.6.2016. In respect of other

classes i.e. 7, 11, 21 and 35, counsel for respondent-defendant

has stated that neither defendant has got any registration nor

doing any business for appliances of such classes.

4. Plaintiff instituted the present suit along with application for

temporary injunction on 23.7.2021 and admitted in para 11 of the

suit that in the year 2020, plaintiff came to know that defendant

is selling the products in market which are similar to plaintiff’s

product, plaintiff has moved rectification application on 3.2.2021

in respect of registered trademark of defendant. Plaintiff alleged

that he has engaged in the business of Manufacturing/

Marketing /Trading /Service Provider of Apparatus, Appliances,

Installation for Lighting, Steam Generating, Cooking,

Refrigerating, Drying, Ventilating, Water Supply and Sanitary

Purposes, Ceiling Lights, Flashlights (Torches), Electric Lamps,

Light Bulbs, Electric Kettles, Kitchen Ranges (Ovens), Microwave

Ovens (Cooking Apparatus), Roasters, Safety Lamps, Drying

Apparatus and Installation, Cooking Apparatus and Installation,

Bread Toasters, Coffee Machines Electric Installation for Heating

and Lighting and among above the main products of the opponent

are Wires, Cables and Switches included in Class 9 since

22.4.2008 and have been carrying on their business under the

name and style of M/s Vankon Modular Private Limited and are

popularly known for their brand name “VANKON” in the market.

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Plaintiff pleaded that the trademark was originally conceived and

honestly adopted by it in the year 2008 after a thorough search

from the market that no such marks was in use or in existence for

above mentioned products and since then, the said trademark has

been used by it honestly, continuously and uninterruptedly. It was

pleaded that defendant firm is proprietorship firm of Mr. Daulatram

Lalwani, who was an ex employee of plaintiff-Company and by

misusing the trade secret of plaintiff-Company, defendant started

infringing the registered trademark of plaintiff under class 7, 9,

11, 21 and 35. It was further pleaded that plaintiff-Company came

to know about infringement of its trademark in the year 2021 that

defendant is using the trademark name of “VANTON” since 2016

onwards and trade name of defendant is deceptively similar to the

trade name of plaintiff “VANKON”, therefore, defendant be

injuncted by way of permanent injunction not to use and mark its

product in the name of “VANTON”. Similar prayer has been made

in the application for temporary injunction.

5. Respondent-defendant has filed reply to the application for

temporary injunction and contended that its trade name

“VANTON” is wholly different from plaintiff’s trade name and there

is no similarity in the logo at all.

The Logo of plaintiff’s-Company is:

The Logo of defendant’s-Company is:

Further defendant denied the use of trade name “VANKON”

by plaintiff since 2008 and contended that since defendant is using

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its trade name since 2016, therefore, application for temporary

injunction filed after expiry of 5 years suffers from delay and

latches and as such the same is liable to be dismissed.

Defendant also raised objection that application for

temporary injunction is liable to be dismissed in view of Section

124 of the Act of 1999, since the issue in respect of

rectification/invalidity of trade name of defendant is pending

before the Registrar of Trade Mark.

6. The learned Trial Court after hearing counsel for both parties

and perusal of material on record as also taking into consideration

the logo of trademark of both parties as well as appreciating the

scope of Section 124 of the Trade Mark Act, dismissed the

application for temporary injunction taking note that the plaintiff

has already moved application for rectification of registered

trademark of defendant “VANTON” prior to filing of the present

suit and application for temporary injunction dated 23.7.2021.

7. Feeling aggrieved by the impugned order dated 10.2.2022,

appellant-plaintiff has filed the instant appeal.

8. At the outset from para 11 of the plaint, it is clear that

plaintiff-Company has come to know in the year 2020 that

defendant-Company is selling products which are deceptively

similar to the plaintiff-Company and thereby infringing the

plaintiff’s legal right. Thereafter plaintiff-Company has instituted

present suit for injunction on 23.7.2021. In reply of the

application for temporary injunction, defendant has pleaded in

para 8 that defendant-Company is continuously indulged and

carrying on its business of manufacturing and selling products in

the open market under trademark “VANTON” since year 2016

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onwards, which is well within knowledge of the plaintiff-Company

as well. There is no rejoinder of plaintiff to such pleadings of

defendant. Although, plaintiff has pleaded that trademark

“VANKON” being used from 2008 onwards and has produced its

registration certificate dated 9.10.2014 but plaintiff has not

produced any substantive evidence/material on record to prove

that he is carrying on business of manufacturing and selling of

products by using the trade name “VANKON” in the open market

since 2008 onwards. Counsel for appellant has made an effort that

defendant has admitted this fact in reply of the application for

temporary injunction, but there is no such admission of defendant.

Therefore, it is matter of evidence that since when plaintiff started

to use trademark “VANKON”, for his business in the market. Mere

producing the certificate of registration dated 9.10.2014 and

brochure is not suffice to prove the factum of carrying on business

since 2008. Further plaintiff has not denied the contention of

defendant that defendant is indulged in business in the name of

“VANTON” and he is using this trademark since year 2016 onwards

continuously in the market. It is true that defendant too has to

prove its contention by way of evidence during trial, as per

material on record at the time of deciding application for

temporary injunction, this Court finds it difficult to prima facie

observe that any finding that plaintiff is carrying on business in

market by using the trademark “VANKON” since 2008 prior to

using the trade name “VANTON” by defendant from 2016. These

issues are mater of evidence, which can be decided after evidence

led by both parties. That apart, it appears that plaintiff has

instituted the present civil suit for injunction on 23.7.2021,

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despite of having knowledge in the year 2020 and as such there is

delay on the part of plaintiff to claim the temporary injunction.

9. Counsel for appellant-plaintiff has placed reliance on the

judgment of Maheshwari Tea Co. Pvt. Ltd. Vs. M/s Vijay

Agencies [2016 (2) DNJ (Raj.) 961] wherein the injunction

was granted restraining the defendant from using the trademark

“Maleshwari” which was found deceptively similar to plaintiff’s

trademark “Maheshwari” but in that case, the Court observed that

plaintiff has proved that he is using trademark “Maheshwari” since

2003. In the case at hand, plaintiff has not proved that he is using

trademark “VANKON” since 2008 in the market. Therefore, this

judgment does not render any help to plaintiff.

10. Counsel has placed reliance on another judgment passed in

case of Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto

Industries Limited [(2018) 2 SCC 1], the Hon’ble Supreme

Court expounded principle that passing off action can even lie

against the registered proprietor of mark sued upon. There is no

disagreement with the proposition of law but same is not

applicable to facts of present case, as plaintiff-Company though

has a registered trademark “VANKON” but has not proved that

same is being used in the market since 2008, prior to defendant’s

product. At this stage, this Court is not expressing any opinion on

merits in respect of the issue of prior user, but as per the material

available on record, prima facie, has not find any material, except

the registration certificate and brochure of plaintiff-Company to

show that plaintiff-Company is using the trademark “VANKON” in

market since 2008. Thus, this judgment does not render any

support to plaintiff’s case for squaring temporary injunction.

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11. During the course of arguments, counsel for both parties

have not disputed that plaintiff has registration of trademark

“VANKON” and defendant has registration of trademark “VANTON”.

Plaintiff has already filed objections on 3.2.2021 in respect of

registered trademark of defendant it means prior to institution of

present suit on 23.7.2021. However, this fact has not been

pleaded in clear terms by plaintiff. Learned trial Court, directed the

plaintiff to implead Registrar of Trademark as party and after

impleadment of Registrar of Trademark, he has produced a letter

dated 17.12.2021 that objections in respect of registered

trademark of defendant “VANTON” is pending and such objections

have not been decided finally. Counsel for appellant-plaintiff does

not dispute this factual aspect. Further the defendant in para 7 of

his reply to the application for temporary injunction has stated

that against the trademark of plaintiff, one “Veto Switchgears and

Cables Limited”, has moved a rectification before the Registrar of

Trademark and same is pending. Plaintiff has not countered this

assertion of defendant nor has filed any rejoinder denying such

assertion, therefore, this Court finds that the trial Court has not

committed any illegality and jurisdictional error in not allowing the

application for temporary injunction taking resort to provisions of

Section 124 of the Act of 1999.

12. The judgment passed by the Hon’ble Supreme Court in case

of Patel Field Marshal Agencies Vs. P.M. Diesels Limited

[(2018) 2 SCC 112], wherein provisions of the Trade and

Merchandise Mark Act, 1958 were discussed, which has been

substituted by the Act of 1999. Section 111 of the Act of 1958 is

pari materia to Section 124 of the Act of 1999. The ratio of law in

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respect of issue that where the issue of invalidity is raised or

arises independent of a suit, the prescribed statutory authority will

be the sole authority to deal with the matter, has been discussed

and decided. This Court is of the opinion that the ratio of law

decided in this judgment, is not in quarrel in any manner but for

the discussion made hereinabove by this Court, merely on account

of fact that plaintiff has not pleaded in respect of invalidity of the

trademark of defendant in his plaint, though plaintiff himself

admits to file objection against the trademark of defendant before

the Registrar of Trademark on 3.2.2021, much prior to filing of the

present civil suit for injunction on 23.7.2021 plaintiff cannot

escape from the rigor of Section 124 of the Act of 1999. Thus, the

resort on the judgment passed in Patel Field Marshal Agencies

(supra) is of no help to the plaintiff.

13. In the celebrated judgment of the Hon’ble Supreme Court in

Wander Ltd. Vs. Antox India [1990 (Supp) SCC 727] while

dealing with the scope of temporary injunction in respect of

passing of action for the trademark, the Hon’ble Supreme Court

has opined in para 9 as under:

“9. Usually, the prayer for grant of an
interlocutory injunction is at a stage when the
existence of the legal right asserted by the plaintiff and
its alleged violation are both contested and uncertain
and remain uncertain till they are established at the
trial on evidence. The court, at this stage, acts on
certain well settled principles of administration of this
form of interlocutory remedy which is both temporary
and discretionary. The object of the interlocutory
injunction, it is stated
“….is to protect the plaintiff against injury
by violation of his rights for which he could not
adequately be compensated in damages
recoverable in the action if the uncertainty were
resolved in his favour at the trial. The need for
such protection must be weighed against the
corresponding need of the defendant to be
protected against injury resulting from his

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having been prevented from exercising his own

legal rights for which he could not be
adequately compensated. The court must weigh
one need against another and determine where
the ‘balance of convenience’ lies.”
The interlocutory remedy is intended to preserve in
status quo, the rights of parties which may appear on a
prima facie case. The court also, in restraining a
defendant from exercising what he considers his legal
right but what the plaintiff would like to be prevented,
puts into the scales, as a relevant consideration
whether the defendant has yet to commence his
enterprise or whether he has already been doing so in
which latter case considerations somewhat different
from those that apply to a case where the defendant is
yet to commence his enterprise, are attracted.”

14. The Hon’ble Supreme Court in Gujarat Bottling Co. Ltd.

Vs. Coca Cola Co. [(1995) 5 SCC 545], has held as under:
“43. The grant of an interlocutory injunction
during the pendency of legal proceedings is a matter
requiring the exercise of discretion of the court. While
exercising the discretion the court applies the following
tests - (i) whether the plaintiff has a prima facie case;
(ii) whether the balance of convenience is in favour of
the plaintiff; and (iii) whether the plaintiff would suffer
an irreparable injury if his prayer for interlocutory
injunction is disallowed. The decision whether or not to
grant an interlocutory injunction has to be taken at a
time when the existence of the legal right assailed by
the plaintiff and its alleged violation are both contested
and uncertain and remain uncertain till they are
established at the trail on evidence. Relief by way of
interlocutory injunction is granted to mitigate the risk
of injustice to the plaintiff during the period before that
uncertainty could be resolved. The object of the
interlocutory injunction is to protect the plaintiff against
injury by violation of his right for which he could not be
adequately compensated in damages recoverable in the
action if the uncertainty were resolved in his favour at
the trial. The need for such protection has, however, to
be weighed against the corresponding need of the
defendant to be protected against injury resulting from
his having been prevented from exercising his own
legal rights for which he could not be adequately
compensated. The court must weigh one need against
another and determine where the 'balance of
convenience' lies.”

15. The other ingredients in respect of irreparable loss and

balance of convenience also go against plaintiff as this Court has

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already discussed the factual aspect and delay on the part of

plaintiff as well as the fact that defendant claims to use the

trademark “VANTON” since 2016 onwards which has not been

rebutted by the plaintiff. In such factual matrix non grant of

temporary injunction in favour of plaintiff, does not lead to such

irreparable loss which cannot be compensated in terms of money,

in case plaintiff succeed in the suit finally and similarly no balance

of convenience lie in favour of plaintiff.

16. As far as claim for temporary injunction by the plaintiff in

respect of its product for Class 7, 11, 21 and 35 wherein plaintiff

claims to have registration before the Registrar of Trademark,

counsel for defendant has stated that defendant-Company is not

indulged in business of products of such classes, therefore, no

injunction is required to be issued against defendant.

17. For the discussion made hereinabove and reasoning

discussed in foregoing paras, this Court is not inclined to interfere

with the impugned order dated 10.2.2022 and accordingly the

appeal stands disposed of with observations made hereinabove.

18. It is made clear that findings/opinion of this Court would not

affect the case of either parties on merits and the suit would be

decided on merits after appreciation of respective evidence

adduced by both parties, without being influenced by this order

and dismissal of temporary injunction application of plaintiff.

19. Stay application and other pending application(s), if any, also

stand disposed of.

(SUDESH BANSAL),J

NITIN /287

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