(Prayer: This MFA no.5183/2025 is filed u/o 43 Rule 1(r) of CPC 1908, against the order dated 11.04.2025 passed on i.a.no.2 in o.s.no.3911/2024 on the file of the xviii additional city civil judge and sessions Judge, Bengaluru (cch-10), allowing the i.a.no.2 filed under order 39 rule 1 and 2 r/w section 151 of CPC & etc.

This MFA no.5220/2025 is filed u/o 43 rule 1(r) of CPC., against the order dated 11.04.2025 passed on i.a.no.1 in o.s.no.3911/2024 on the file of the xviii additional city civil judge and sessions juedge, bengaluru scch-10, allowing the i.a.no.1 filed under order 39 rule 1 and 2 r/w section 151 of CPC, 1908 & etc.)

Cav Judgment:

1. Challenging common order dated 11.04.2025 passed by XVIII Additional City Civil and Sessions Judge, Bengaluru (CCH- 10), on IAs.no.1 and 2 in OS no.3911/2024, this appeal is filed.

2. Sri Shivaramakrishnan M. Sivsankaran, learned counsel for appellant submitted, appellant was defendant in OS.no.3911/2024 filed by respondent - plaintiff seeking for decree of permanent injunction restraining defendant from infringement  and  passing  off  of  its  registered  trademark 'TULASI', for rendition of accounts and recovery of profits, delivery-up and destruction of infringing materials etc.

3. In plaint, it was stated plaintiff was a partnership firm engaged in manufacture and sale of incense sticks, cones, burners and fragrance oils since 1945, formally constituted under partnership deed dated 07.08.1992 and reconstituted under partnership deed dated 20.12.2008. It was stated, plaintiff was amongst largest incense manufacturers in Country, operating 75,000-set integrated manufacturing unit at Bangalore and exporting its products to more than 45 countries worldwide. It was stated, plaintiff earned considerable goodwill and reputation in domestic and international markets by adhering to high quality standards and it held ISO 9001:2015, ISO 14001:2015 and WHO-GMP certifications and also undertook various social and charitable initiatives.

4. It was stated, plaintiff adopted trademark 'TULASI' in year 1950 and using it continuously, extensively and exclusively in respect of incense sticks and allied goods. It was stated, mark was inherently distinctive and acquired secondary meaning due to decades of uninterrupted use, extensive sales, advertisement expenditure and wide promotion. And for protection of goodwill, plaintiff had multiple registrations, including ‘device mark’ (granted registration dated 15.11.1962) and ‘word mark’ (granted registration dated 19.10.2005) and Trademark registration on 21.07.1952, which were periodically renewed, valid and subsisting. It was stated, plaintiff holds registrations for various variants of mark and obtained international registrations in several jurisdictions worldwide, in addition to operating domain name “” for marketing and sale of its goods.

5. It was stated, by virtue of prior adoption, long and continuous use, extensive promotion and multiple trademark registrations, plaintiff had acquired exclusive proprietary rights over mark 'TULASI', and same was exclusively associated with plaintiff in trade and among consumers. It was further stated plaintiff had taken action against earlier infringers by filing OS.no.5927/2015, where Civil Court had recognized plaintiff as registered proprietor of mark and restrained unauthorized use thereof.

6. It was stated, cause of action for present suit arose on account of defendant’s adoption and use of mark 'TULSI' in respect of identical goods, namely incense sticks under Class-3. It was stated, impugned mark was phonetically identical and deceptively similar to plaintiff’s registered mark, differing only by omission of letter “a”, and same was adopted with malafide intention to ride on goodwill and reputation of plaintiff. It was stated, defendant’s goods bearing impugned mark were discovered in market in December 2023, leading to confusion among consumers, some of whom allegedly enquired whether defendant’s products were associated with plaintiff. It was stated, defendant was marketing impugned goods through its website "".

7. It was stated, plaintiff issued a cease-and-desist notice dated 04.01.2024, which defendant refused in reply dated 15.01.2024 and admitted continued use of impugned mark, which act constituted infringement of plaintiff’s registered trademark under Sections 27, 28 and 29 of Trade Marks Act, 1999 (‘TMA’, for short) and also amounts to passing off. It was stated defendant’s acts had caused confusion and deception in market, diluted plaintiff’s brand value, tarnished its reputation and resulted in irreparable loss and injury.

8. It was stated, plaintiff was prior user and registered proprietor of mark, whereas defendant’s adoption was recent and dishonest. Therefore, plaintiff had strong prima facie case, balance of convenience lie in its favour and irreparable harm would be caused, if relief was not granted. It was stated, cause of action first arose from adoption and registration of plaintiff’s mark and subsequently in December 2023, on discovery of defendant’s infringing goods and continued day-to-day. It was stated, trial Court had territorial jurisdiction under Section 134 of TMA and Section 20 of Code of Civil Procedure, 1908 (’CPC’, for short), as plaintiff carries on business within jurisdiction and infringing goods are sold therein. Therefore, plaintiff filed suit.

9. Along with plaint, plaintiff had filed IAs.no.1 and 2 under Order XXXIX Rules 1 and 2 of CPC for temporary injunction restraining defendant, assigns, agents etc. from manufacturing, selling, marketing, offering for sale or in any manner infringing and passing off plaintiff’s trademark 'TULASI' or any other mark that may be identical or deceptively similar to registered trademark of plaintiff and adopting assertions in plaint sought for grant in temporary injunction.

10. In affidavit filed in support of applications, plaintiff stated about its usage and registration of trademark/word mark, about its business spreading across 45 countries around world, about plaintiff having applied for or trademark registrations in various countries, about investing time, effort and money in earning trust as well as adopting certified manufacturing processes. There is also assertion about having huge turnover based on brand value and plaintiff’s products receiving awards.

11. There is also assertion about plaintiff having been granted an order of injunction against infringement and passing of against some other party in OS.no.5927/2015. There is specific assertion about defendant resorting to exploit plaintiff’s goodwill by seeking to manufacture, distribute and sell incense sticks under name and style of ‘TULSI’, which came to its knowledge in December, 2023 and that same was also reflected from defendant’s website. Plaintiff further stated that it had caused issuance of a cease-and-desist notice to defendant on 04.01.2024, which defendant refused in its reply dated 15.01.2024. There is further assertion that defendant’s product being deceptively similar was likely to cause confusion in minds of consumers and erode its profits and dilution of its brand value alleging that it has a strong prima facie case, that balance of convenience lie in its favour and plaintiff would suffer irreparable loss and injury in case of denial of injunction, it prayed for grant of temporary injunction.

12. On appearance, defendant filed written statement and adopting same as its objections against applications for temporary injunction denying plaint averments in toto and stating that plaintiff’s suit was not maintainable either in law or on facts and plaintiff has not approached Court with clean hands and by suppressing and misrepresenting material facts. It was stated, defendant obtained GST registration on 12.08.2022 and thereafter commenced manufacturing and marketing of agarbattis from 01.03.2023 and also secured MSME registration on 11.05.2023. It was stated, defendant adopted his surname as trademark 'JALLAN', which was registered under no.5974549 dated 11.06.2023, and that said mark was only trademark used by defendant in relation to his products.

13. Defendant specifically denied that word 'TULSI' was not used as trademark or brand name but only to describe smell or flavor of agarbatties, that it contains tulsi essence and bonafide/descriptive use was protected under Sections 30 and 35 of TMA. It was contented words TULSI, CAMPHOR, LOBAN, LEMONGRARASS, LAVENDER and BOSEWELLIA appearing on packaging only describe character and quality of products and were not trademarks. Defendant asserted any manufacturer of agarbatties with tulsi fragrance was entitled to use word 'TULSI' to describe scent and plaintiff cannot claim exclusive rights over such descriptive usage, even assuming its alleged long standing registration and usage of word 'TULASI', which was otherwise denied.

14. Further, defendant had conducted business openly and transparently, without copying or infringing any trademark of plaintiff and sales invoices demonstrate continuous and bonafide commercial activity. Defendant further denied infringing  or  passing  off  plaintiff’s  mark  and  asserted  a statutory and common law right to use words to bonafide describes character or quality of goods. Therefore, plaintiff’s claim was untenable and sought dismissal of suit.

15. It was submitted defendant was proprietorship, engaged in business of manufacture and sale of incense sticks under registered trademark 'JALLAN' dated 11.06.2023, in regular course of trade and commerce. It was submitted, plaintiff had issued cease-and-desist notice to defendant on 04.01.2024, alleging that it was infringing plaintiff’s trademark by marketing incense sticks under name 'TULSI'. Defendant replied on 15.01.2024 denying infringement and asserting that 'TULSI' was a descriptive expression referring to natural fragrance of basil and was not used as a trademark. Despite same, plaintiff filed suit for permanent injunction against defendant, alleging infringement and passing off by use of word 'TULASI'. Plaintiff also filed I.As.no.1 and 2 under Order XXXIX Rules 1 and 2 of CPC seeking ad-interim injunction.

16. Based on same, trial Court framed following :

                  POINTS

                  1) Whether the plaintiff has made out prima facie case under I.A.No.1 and 2?

                  2) Whether balance of convenience leans in favour of the plaintiff under I.A.no.1 and 2?

                  3) Whether plaintiff will be put to more hardship if temporary injunction is not granted under I.A.no.1 and 2?

                  4) What order?