CAV Judgment

Rajani Dubey, J.

1. Heard on admission on application under Order 39 Rule 1 & 2 of CPC as well as appeal on merits.

2. The present appeal has been filed by the appellants/plaintiffs against the order dated 10.09.2025 (Annexure-A/1) passed by the learned Commercial Court, Raipur (C.G.), whereby the application of the appellants/plaintiffs under Order 39 Rule 1 and 2 of CPC has been rejected. (The parties herein shall be referred as per their nomenclature before the learned Trial Court).

3. Brief facts of the case, as projected by the plaintiffs, are that the plaintiffs filed the suit under Section 134 of the Trademarks Act, 1999 before the learned Commercial Court. As per plaintiffs, the plaintiff no.1 firm in 2016 had honestly, legitimately, independently and bonafidely conceived and adopted the mark "NEERAJ", inter alia, for using the same in relation to the goods falling under clause 14. The appellant No.01 is a proprietorship firm namely Neeraj Jewellery represented through its proprietor and appellant No.02 is the registered owner of the trademark NEERAJ and is brother of proprietor firm Neeraj Jewellery namely Neeraj Gupta. As per the plaintiffs, the plaintiff firm is a market leader in marketing the aforesaid goods and services and has a broad business presence in India. The plaintiffs' registered mark is eligible to be classified as a "well-known" trademark under Section 2(1) (gz) of the Trademarks Act, 1999. The plaintiffs have alleged that the defendants are dishonestly using identical and deceptively similar mark like his trademark while selling the jewellery. The adoption of impugned trademark by the defendants is done deliberately, malafidely, fraudulently and with ulterior motives to imitate/trade upon the plaintiffs' goodwill and reputation, upon the plaintiffs objected and even sent notice to the defendants, but they continued to do the same. Ultimately civil suit was filed before the learned Trial Court, which is pending consideration, in which the plaintiffs also filed application under Order 39 Rule 1 & 2 of CPC for temporary injunction but the same has been rejected vide impugned order. Hence the present appeal has been filed by the appellants/plaintiffs.

4. Learned counsel appearing for the appellants submits that the the impugned order dated 10/09/2025 passed by the Learned Commercial Court is erroneous and contrary to facts and circumstances of the case. The Learned Commercial Court has not appreciated as the prima facie case of the appellants shows that the trade mark of the appellants is used by the respondents because of which the balance of convenience is in the favour of the appellants also the appellants have suffered irreparable loss due to the actions of the respondents. The learned Commercial Court wrongfully placed over reliance upon section 21 (g) (2) and section 35 of the Act 1999 for denying the relief to the appellants. The said provisions curtails the right of registered trademark user only to the extent of usage by predecessor in business of other persons bonafidely. In this case the registered trademark of 'NEERAJ' in name of plaintiffs is sufficient to establish exclusive rights to use the trade name by the plaintiffs and it is the burden of the defendants to establish by evidence that their predecessors in business used the said trade mark or similar name. He further submits that Section 28 confers exclusive rights to use the registered trademark in relation to goods and service by the plaintiffs in the name of NEERAJ and goods and services which are deceptively similar in their jewellery business. Section 29 prescribes infringement of registered trademarks by the person who is using the registered trademark which is identical with or deceptively similar for his own business as conducted by the defendants in the present case. The learned Commercial Court failed to take into consideration the rigor of Section 78 of the Act of 1999 before denying the right of temporary injunction to the plaintiffs who are holding the registration of certification trademarks in the name of NEERAJ for transacting in minor jewelleries. The plaintiffs are entitled for the relief of injunction in light of section 135 (2) (c) of the Act of 1999 and the holding of certificate of registration of trademark NEERAJ in class 14 goods prima facie establishes case in favour of registered user that no other person will transact in jewelleries with trade name as NEERAJ and deceptively similar names as NEERAJ A1 and NEERAJ 100. It is matter of common reasoning that infringement of trademark rights ested u/s 28, 29 and 78 of the Act of 1999 is bound to cause irreparable injury and damage to the business of the registered user. The element of balance of convenience also tilts in favour of plaintiff therefore the learned commercial Court ought to have granted temporary injunction in favour of the appellants/ plaintiffs but it has failed to do so. Therefore, the impugned order is liable to be set aside. Reliance has been placed on the judgments rendered by the Hon'ble Supreme Court in the matters of Laxmikant V. Patel vs Chetanbhat Shah and another, reported in (2002) 3 SCC 65, Pernod Ricard India Private Limited vs Karanveer Singh Chhabra, reported in 2025 INSC 981, Cadila Laboratories Ltd vs Dabur Industris India Ltd, reported in 1997 SCC Online Delhi 360 and the judgments rendered by the Delhi High Court in the matter of Walter Bushnell Pvt Ltd and others vs Miracle Life Science and Another, passed in CS(OS) No.220/2013, Century Traders vs Roshan Lal Duggar and Company, reported in AIR 1978 Delhi 250,

5. Learned counsel for the respondent strongly opposes the prayer of the appellants in interim application as well as on merits and submits that the appeal is wholly misconceived, bereft of substance and liable to be dismissed at the threshold. The appellants have failed to demonstrate any perversity, illegality or jurisdictional error in the well-reasoned order dated 10.09.2025 passed by the Learned Commercial Court. The appeal is nothing but an attempt to reargue factual issues already examined in detail and to invite this Court to substitute its own discretion for that lawfully exercised by the Court below, which is impermissible in appellate jurisdiction. The impugned order has been passed after a comprehensive evaluation of pleadings, documents, and settled principles governing the grant of temporary injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure. The Commercial Court has correctly appreciated that interim relief is an equitable and discretionary remedy, and the burden to establish entitlement thereto squarely lies upon the plaintiffs. The appellants have failed to discharge this burden on every material parameter. It is submitted that the appellants' case is founded primarily upon an alleged exclusivity over the word "NEERAJ" and a purported infringement through the marks "NEERAJ A1" and "NEERAJ 100" However, the Learned Commercial Court has rightly recorded that the said marks are admittedly unregistered and pending consideration before the Trademark Registry. Mere filing of trademark applications does not confer any enforceable statutory right under Sections 28 or 29 of the Trade Marks Act, 1999. In the absence of registration, the appellants' claim of statutory infringement is illusory and legally unsustainable. It is pertinent to note that equally untenable is the appellants' claim to monopoly over the word "NEERAJ", which is a common personal name widely used across India. The Commercial Court has correctly observed that a common name cannot, by default, acquire exclusivity unless the claimant demonstrates by cogent and independent evidence that such name has acquired a secondary meaning exclusively associated with its business. No such material has been produced. The appellants have failed to place on record any consumer surveys, market recognition studies, trade data or industry reports to substantiate their assertion of distinctiveness or brand dominance. On the contrary, the financial disclosures placed by the appellants themselves, including modest net profits, belie their tall claims of pan-India presence or market leadership. It is respectfully submitted that the Learned Commercial Court has further and correctly applied Section 35 of the Trade Marks Act, 1999, which statutorily protects the bona fide use of one's own name or place of business. The protection under Section 35 is absolute in nature and extends to both infringement and passing off actions. Even a registered trademark proprietor cannot interfere with such bona fide use unless exceptional circumstances of overwhelming distinctiveness and proven malafide intent are established. The appellants have failed to satisfy either of these requirements. The findings of the Commercial Court are firmly supported by authoritative judicial precedents and do not warrant interference. The conduct of the appellants also disentitles them from any equitable relief. Despite being fully aware that the alleged manufacture and first use of the impugned marks is attributable to one Mr. Pawan Kumar Agrawal, the appellants deliberately chose not to implead him as a party. This omission is not accidental but strategic, as the appellants had already served him with a legal notice dated 01.05.2023 and acknowledged his prior applications and prior user claims. Selective litigation of this nature, coupled with suppression of material facts, strikes at the root of the appellants' bona fides and justifies denial of discretionary relief. It is further evident that the respondents are independent traders and retailers engaged in legitimate business-to-business transactions. There exists no relationship of agency, franchise, license or partnership between the respondents and the alleged manufacturer. The appellants have also relied upon an alleged admission by Respondent No. 1 regarding cessation of dealings under the mark "NEERAJ", but such assertion, even if accepted, does not absolve the appellants of their obligation to establish the essential ingredients required for grant of injunction. An interim injunction cannot be granted merely on conjecture or apprehension. Therefore, the appeal as well as the application are liable to be dismissed. Reliance has been placed on the judgment rendered by the Hon'ble Supreme Court in the matters of Vasundhra Jewellers Pvt Ltd vs Kirat Vinodbhai Jadvani, reported in 2022 SCC Online Del 3370 and Corn Products Refining Co. vs Shangrila Food Products Ltd, reported in AIR 1960 SC 142.

6. Heard learned counsel for the parties and perused the material available on record.

7. It is clear from the record of the learned Trial Court that the plaintiffs filed suit under Section 34 of the Trademarks Act, 1999 before the learned Commercial Court and they also filed application under Order 39 Rule 1 & 2 of CPC in this regard that defendants may be restrained from using trademark 'NEERAJ' as shown to be owned by the plaintiffs. The learned Trial Court vide impugned order dismissed the application of the plaintiffs on this ground that the plaintiffs have failed to establish essential ingredients for temporary injunction such as prima facie case, balance of convenience and thereafter loss in their favour.

8. As per suit filed by the plaintiffs, the plaintiff No.1 firm in the year 2016 honestly, legitimately, independently and bonafidely conceived and adopted the mark "NEERAJ", inter alia for using the same in relation to the goods falling under clause 14. The plaintiffs have alleged that the defendants are dishonestly using identical and deceptively similar mark like their trademark while selling the jewellery. The adoption of impugned trademark by the defendants is done deliberately, malafidely, fraudulently and with ulterior motives to imitate/trade upon the plaintiffs' goodwill and reputation, upon the plaintiffs objected and even sent legal notice to the defendants, but they continued to do the same, which resulted into filing of civil suit before the learned Commercial Court and the plaintiffs also filed application under Order 39 Rule 1 & 2 of CPC.

9. The learned Trial Court minutely appreciated the arguments of the both the parties and adduced the documents filed by the parties and held in para 28 as under:-

          "28. Clearly, the plaintiffs have failed to establish prima facie case in their favour. Admittedly, the marks "NEERAJ A1" and "NEERAJ 100" are pending consideration before the Trademark registry. In fact, as per Trademark search report dated 04/05/2025 filed by plaintiffs themselves, Mr. Pawan Kumar Agrawal appears to have applied for registration of marks "Neeraj A1" and "Neeraj 100" vide applications dated 11/04/2023, whereas the plaintiffs appear to have applied for registration of their trademark "NEERAJ A1" and "NEERAJ 100" only on 01/05/2023 and 02/05/2023 respectively. Here also, the user date for trademark by Pawan Kumar Agrawal has been shown to be 10/10/2018 and 18/10/2018 respectively which are prior to the user date as shown by the plaintiffs i.e. 02/02/2019."

          The learned Trial Court also found that 'Neeraj' is commonly used name which cannot be said to be distinctive in itself and accordingly dismissed the application of the appellants for temporary injunction.

10. The Hon'ble Supreme Court in the matter of Vasundhra Jewellers Pvt Ltd (supra) held in paras 23, 37, 38, 39 & 40 as under:-

          "23. The learned Single Judge found that albeit the VASUNDHRA Trademarks were registered, however, the appellant did not hold any registration for the word mark "VASUNDHRA". The learned Single Judge further held that "device mark, the essential feature of the same is equally entitled to protection... at the same time, it has to remembered that in extending such protection, the party does not lay a claim of exclusivity in a mark to which otherwise he would have been unable to do so. The possibility of the proprietor attempting to expand the operation of his trade mark cannot be ignored or overlooked.

          37. First, that on a plain comparison of the VASUNDHRA Trademarks with the device mark " /VASUNDHRA FASHION", it is apparent that the trademarks are not similar. Even if it is accepted that the word 'Vasundhra' is a dominant part of the VASUNDHRA Trademarks, the device label " /VASUNDHRA FASHION" cannot be accepted to be deceptively similar merely because it includes the word 'Vasundhra'. The dominant part of the said trademark is a leaf, which is not common to the competing marks.

          38. Second, the word 'Vasundhra' is a generic word and it is brought on record that there are several registered trademarks, which include the word 'Vasundhra'. Further, 'Vasundhra' in Hindi means the earth or the bearer of all. Thus, intrinsically, the word 'Vasundhra' would be a weak trademark. Although it is possible for a proprietor to claim exclusive right in respect of the word 'Vasundhra', however, for that, it would be necessary to establish on account of extensive use, the said common word has been identified exclusively with the business of the proprietor and no other. Prima facie, it is difficult to accept that the appellant meets the said threshold. The learned Single Judge had noted that the appellant has a single store. Although the appellant's turnover is about ₹79 crores, it pertains to high value items and therefore, does not necessarily establish the reputation associated with the VASUNDHRA Trademarks.

          39. The observations in the impugned judgment that " 'VASUNDHRA' is a common name in India and an exclusive right to use the same cannot be granted to the plaintiff" has to be read in the aforesaid context. The learned Single Judge had found that the word 'Vasundhra' was a part of the composite marks and the appellant did not have exclusive monopoly over the word 'Vasundhra' merely on account of registration of composite marks including the said words.

          40. It is also relevant to note that the learned Single Judge had also noted that before the Registrar of Trademarks, the appellant had sought to distinguish other trademarks, which included the word 'Vasundhra', by claiming that the VASUNDHRA Trademarks were required to be considered as a whole. Thus, it is not open for the appellant now to take a contrary stand and claim that the device mark "VASUNDHRA FASHION/ " is deceptively similar to the VASUNDHRA Trademarks on the ground that it includes the word 'Vasundhra'.

11. In light of the above, in the present case also the learned Trial Court observed that as per Trademark search report dated 04/05/2025 filed by plaintiffs themselves, Mr. Pawan Kumar Agrawal appears to have applied for registration of marks "Neeraj A1" and "Neeraj 100" vide applications dated 11/04/2023, whereas the plaintiffs appear to have applied for registration of their trademark "NEERAJ A1" and "NEERAJ 100" only on 01/05/2023 and 02/05/2023 respectively. Here also, the user date for trademark by Pawan Kumar Agrawal has been shown to be 10/10/2018 and 18/10/2018 respectively which are prior to the user date as shown by the plaintiffs i.e. 02/02/2019.

12. It is well settled principle of law that in order to obtain an order of injunction, the applicant has to prove that he has made out a prima facie a good case, balance of convenience and irreparable loss also lies, but it is clear that the plaintiffs/appellants have failed to prove essential ingredients required for temporary injunction in their favour, as such the learned Trial Court has rightly dismissed the application of the plaintiffs/appellants for grant of temporary injunction. Thus looking to the facts and circumstances of the case and the fact that the case is already pending before the learned Trial Court for final adjudication, we do not find any good ground to entertain the application for temporary injunction as well as appeal on merits.

13. Accordingly, the application i.e No.1/2025 for grant of interim relief as well as the appeal are without any merit and are liable to be dismissed at the admission stage itself.

14. Consequently, the application (IA No.1/2025) and the appeal are dismissed at the admission stage itself.