IAL.37828.2024.doc

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION

INTERIM APPLICATION (LODGING) NO. 37828 OF 2024

IN

COMMERCIAL IP SUIT (LODGING) NO. 32867 OF 2024

Astra Chemtech Private Limited & Ors. ...Applicants

IN THE MATTER BETWEEN:

Pidilite Industries Limited ...Plaintiff

Versus

Astra Chemtech Private Limited & Ors. ...Defendants

***

 Dr. Virendra Tulzapurkar, Senior Advocate, a/w. Ms. Purnima Thacker,

Jeyhaan Carnac and Nishi Jain, i/b. Mulla and Mulla for for Applicant in

IAL/37828/2024 and for Defendant Nos.1 to 3.

 Mr. Sharan Jagtiani, Senior Advocate, a/w. Mr. Hiren Kamod, Mr.Nishad

Nadkarni, Mr. Aasif Navodia, Ms. Khushboo Jhunjhunwala, Ms. Jaanvi

Chopra and Ms. Rakshita Singh i/by Khaitan & Co. for Respondent in

IAL/37828/ 2024 and for Plaintiff.

***

CORAM :MANISH PITALE, J.

RESERVED ON :16

th

JANUARY, 2025.

PRONOUNCED ON:06

th

FEBRUARY, 2025.

ORDER

1. The defendants have filed the present application under first

proviso to Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (CPC)

for vacating order dated 24

th

October, 2024, passed by this Court

(Coram :

R.I. Chagla, J.)

, whereby ex-parte ad-interim reliefs were granted in favour of

the plaintiff. The defendants claim that the plaintiff knowingly made false

and misleading statements in relation to material particulars in their pleadings

while obtaining the aforesaid order dated 24

th

October, 2024. The defendants

Shrikant Malani

Page 1 of 34

SHRIKANT

SHRINIVAS

MALANI

Digitally signed by

SHRIKANT

SHRINIVAS MALANI

Date: 2025.02.06

14:42:30 +0530 2025:BHC-OS:1821

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have principally raised two grounds in support of the said prayer. Firstly, that

the plaintiff deliberately misrepresented the registered trade mark of the

defendants and placed comparison between the registered trade mark of the

plaintiff on the one hand and a misrepresented version of the registered trade

mark of the defendants on the other, in order to obtain

ex-parte ad-interim

reliefs. Secondly, it is alleged that the plaintiff quoted only a portion of the

reply sent on behalf of the defendants to the plaintiff to the cease and desist

notice, so as to give a distorted version of the assertions made on behalf of the

defendants in the said reply, while obtaining the said

ex-parte ad-interim

reliefs. It is the case of the defendants that by indulging in such acts, the

plaintiff violated the mandate of the law laid down in various judgments in the

context of the first proviso to Order XXXIX Rule 4 of the CPC and on that

basis, the defendants are seeking to vacate the order dated 24

th

October, 2024.

2. The pleadings in this application were completed wherein the

parties have made allegations and counter allegations. The documents and

material on record are sought to be interpreted by the parties in support of

their respective stands. In that light the learned counsel for the parties were

heard.

3. Dr. Virendra Tulzapurkar, learned senior counsel appearing for

the defendants submitted as follows :

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(A) The plaintiff deliberately made misleading and false

statements in the plaint as well as the interim application,

suppressing material facts, thereby obtaining

ex-parte ad-

interim reliefs as per order dated 24

th

October, 2024. The

plaintiff deliberately depicted the trade mark of the

defendants as consisting of two rhinos moving in opposite

directions, thereby misrepresenting that the registered

trade mark of the defendants consisted of only a pair of

rhinos depicted in the aforesaid manner. The said

misrepresented mark of the defendants was juxtaposed

against the registered trade mark of the plaintiff, which

consists of a pair of elephants pulling in opposite

directions, to create an impression before this Court that

there was deceptive similarity between the two. Such an

assertion and distorted depiction of the registered trade

mark of the defendants was repeated at various places in

the plaint, as also in the interim application filed on behalf

of the plaintiff.

(B) Although the registration certificate issued for the trade

mark of the defendants was annexed as a document in the

voluminous plaint and exhibits, while highlighting

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comparative analysis of the rival marks, the entire

registered trade mark of the defendants consisting of six

rhinos i.e. three rhinos on each side moving in opposite

directions, was not placed before this Court while

obtaining the order dated 24

th

October, 2024. This is

evident from the manner in which the order dated 24

th

October, 2024, recorded the submissions of the plaintiff

and thereupon proceeded to compare the rival marks.

(C) If the plaintiff had been fair and the entire registered trade

mark of the defendants was placed before this Court in an

honest manner, this Court would have had the opportunity

to compare the rival marks in the correct perspective. By

insisting on ad-interim reliefs without notice to the

defendants and at the same time representing the

registered trade mark of the defendants in a truncated

manner, so as to wrongly highlight the alleged similarity

between the rival marks, the defendants were deprived of

an opportunity to appear before this Court and point out

the correct position on facts as well as law.

(D) It was submitted that the explanation now sought to be

given on behalf of the plaintiff when the present

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application is filed and pressed by the defendants, to the

effect that the comparison between the rival marks was

given on the basis of the assertions made by the defendants

in their reply to the cease and desist notice, cannot be

accepted. It was submitted that even if the contents of the

reply sent on behalf of the defendants is taken into

consideration, the depiction of the rival marks as made by

the plaintiff in the plaint and the interim application is not

justified and this is another reason why the order dated

24

th

October, 2024, needs to be vacated because the

defendants were deprived of an opportunity to

demonstrate the correct position on facts. In any case, the

order dated 24

th

October, 2024, does not show that the

plaintiff had asserted that the comparison of the rival

marks was being shown in a particular manner because of

the assertions made in the reply sent by the defendants to

the cease and desist notice.

(E) It was submitted that the explanation now sought to be

given on behalf of the plaintiff can also not be accepted

that on the label on the defendant’s product as placed on

the circular plastic jar or bucket shows that from the front

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angle only two rhinos in a fighting posture are seen and

this can confuse the consumer. This was not the assertion

made before this Court when the

ex-parte ad-interim order

dated 24

th

October, 2024, was passed.

(F) It was further submitted that the plaintiff deliberately

quoted only a portion of the entire sentence contained in

the reply sent by the defendants on 19

th

May, 2022, to the

cease and desist notice of the plaintiff. This was done with

the deliberate intention of the plaintiff to portray before

this Court, when

ex-parte ad-interim order was obtained,

that the defendants had admitted to the likelihood of

confusion between the rival marks / products. It was

submitted that a reading of the entire sentence in the

relevant portion of the reply i.e. paragraph No.3(k)

thereof, would show that there was no such admission on

the part of the defendants. This clearly amounts to false

and misleading statements being made about material

particulars and therefore, a strong ground is made out for

vacating the order dated 24

th

October, 2024.

(G) It was further submitted that even with regard to the mark

“SH”, the plaintiff falsely claimed that the defendants were

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using the mark “SH” as such, while the defendants used

the mark “SH”, always in conjunction with other words. It

was further claimed that “SH” was common to trade. It

was emphasized that if the defendants were put to notice

all these factors could have been placed before this Court at

the time of considering the prayer for ad-interim reliefs

made on behalf of the plaintiff

(H) The learned senior counsel for the defendants submitted

that the aforesaid acts on the part of the plaintiff amount to

fraud committed on this Court. He submitted that as per

the law laid down by the Supreme Court in the case of S.P.

Chengalvaraya Naidu Vs. Jagannath

1

, since fraud vitiates

everything, the order dated 24

th

October, 2024, passed in

favour of a dishonest litigant like the plaintiff herein,

ought to be vacated forthwith.

(I) The learned senior counsel appearing for the defendants

also relied upon judgment of the Supreme Court in the

case of Ramrameshwari Devi & Ors. Vs. Nirmala Devi &

Ors.

2

, in support of his contention that the better course

for the Court is to give a short notice to hear both parties

1 (1994) 1 SCC 1

2 (2011) 8 SCC 249

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and then pass suitable bipartite orders and that in any case,

the Court has to be cautious and extremely careful while

granting

ex-parte ad-interim injunctions.

(J) Reliance was further placed on judgment of the Division

Bench of this Court in the case of

Kewal Ashokbhai Vasoya

& Anr. Vs. Surabhakti Goods Pvt. Ltd.

3

to submit that the

Court, while considering such an application under Order

XXXIX Rule 4 of the CPC, is required to consider various

factors, including the aspect as to whether the plaintiff has

neutrally and objectively presented all disclosures, that

there is material to support the insistence of the plaintiff

for such

ex-parte urgent ad-interim reliefs, that the plaintiff

has disclosed before the Court anticipated defence or

arguments likely to be taken in opposition and that

attention of the Court is invited to all factual, legal or

procedural issues. The emphasis is on ensuring the

integrity of the process of the Court. It was submitted that

the plaintiff in the present case violated the integrity of the

process of the Court by indulging in such truncated

pleadings and failing to honestly and correctly place the

entire facts before this Court while obtaining the order

3 2022 SCC Online Bom 3335.

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dated 24

th

October, 2024. In this regard, reliance was also

placed on judgment of the Delhi High Court in the case of

Kent Ro Systems Ltd. & Anr. Vs. Gattubhai and Ors.

4

Reliance was placed on judgments of this Court in the

cases of RKRM International Products Private Limited &

Ors. Vs. Laser Shaving (India) Private Limited (Order

dated 02

nd

May, 2024 passed in Interim Application

(Lodging) No.7226 of 2024 in Commercial IP Suit No.44

of 2024), Pidilite Industries Limited Vs. Chirpal Industries

Limited, (order dated 09

th

March, 2023, passed in Interim

Application (Lodging) No.12828 of 2021 in Commercial

IP Suit No.452 of 2021) and ATYATI Technologies

Private Limited Vs. COGNIZANT Technologies

Solutions US Corp. and another

5

4. On the other hand, Mr. Sharan Jagtiani, learned Senior Counsel

appearing for the plaintiff made the following submissions :

(A) It was asserted that the plaintiff did not make any false and

misleading statements in the plaint in relation to the

representation of the trade mark of the defendants. Much

emphasis was placed on the reply dated 19

th

May, 2022,

4 2022 SCC OnLine Del 791

5 2024 SCC OnLine Bom 1680

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sent on behalf of the defendants to the cease and desist

notice wherein, according to the plaintiff, the defendants

themselves countered the assertions made on behalf of the

plaintiff by referring to and relying upon only a pair of

rhinos in a fighting posture. It was submitted that when

the understanding of the defendants about their own mark

was depicted in the said reply and in that backdrop, the

cease and desist notice was resisted, the plaintiff was

entitled to place its case for grant of

ex-parte ad-interim

reliefs by comparing the registered trade mark of the

plaintiff with the said depiction of the mark of the

defendants.

(B) It was submitted that the defendants cannot claim that the

plaintiff had tucked away the registration certificate of the

trade mark of the defendants and buried it in the

voluminous plaint, for the reason that the entire registered

trade mark of the defendants was shown as it is in

paragraph No.46 of the plaint, giving entire honest

disclosures. As a result, even in the

ex-parte ad-interim

order dated 24

th

October, 2024, the entire registered trade

mark of the plaintiff showing all six rhinos was referred to

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in paragraph No.24 of the order with a specific mention of

the details of the registrations of the trade marks of the

defendants at paragraph No.46 of the plaint being noticed

in the said order. According to the learned senior counsel

appearing for the plaintiff, this clearly demonstrates the

fact that the contentions raised on behalf of the

defendants are without any substance.

(C) As regards the allegation that the plaintiff placed only part

of a sentence contained in the reply sent by the defendants

to the cease and desist notice of the plaintiff and slicing

the sentence while quoting the same in the plaint, it was

submitted that the relevant paragraph of the plaint i.e.

paragraph No.37 would show that before quoting part of

the sentence from the reply of the defendants dated 19

th

May, 2022, the plaintiff paraphrased the stand of the

defendants, thereby placing before this Court the meaning

of the entirety of paragraph No.3(k) of the reply. It was

submitted that the quotation in paragraph No.37 cannot

be read out of context to claim that the plaintiff misled

this Court in any manner. It was submitted that in any

case, the aforesaid quoted portion of part of the reply of

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the defendants is not the basis for this Court to have

passed the

ex-parte ad-interim order dated 24

th

October,

2024. On this basis, it was submitted that such ground is

also without any substance and there is no question of

suppression or misrepresentation on the part of the

plaintiff.

(D) It was further submitted that the defendants are wholly

unjustified in claiming that the

ex-parte ad-interim order

granted in the context of mark “SH” deserves to be

vacated, for the simple reason that while making such a

claim the defendants are seeking to enter into the merits of

the matter, which is impermissible in such an application

filed under Order XXXIX Rule 4 of the CPC. It was

submitted that the defendant cannot claim that the mark

“SH” is descriptive in nature or that it is common to trade,

as any enquiry into the said aspect of the matter would

necessarily touch upon the merits. Therefore, the

contention that the defendants by using the mark “SH” in

conjunction or combination with other trade marks

demonstrates that there is no infringement, cannot be

considered at all in the present application.

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(E) It was submitted that the stand now being taken on behalf

of the defendants in respect of the trade mark “SH” is

absolutely dishonest, as it is diametrically opposite to their

stand in the reply to the cease and desist notice, wherein

they conceded that they would stop using the said mark.

It was submitted that the defendants are in the habit of

indulging in such dishonest conduct because they have

been caught using infringing marks and when caught on

the wrong foot they are in the habit of giving undertakings

to discontinue use of such infringing marks. Therefore, it

was submitted that it cannot lie in the mouth of such

defendants to claim any relief in the instant application.

(F) It was further submitted on behalf of the plaintiff that the

first proviso to Order XXXIX Rule 4 of the CPC

specifically provides that the Court shall vacate the

injunction unless, for reasons to be recorded, it considers

that it is not necessary so to do in the interest of justice. In

this regard reliance was placed on judgment and order

dated 20

th

December, 2023, passed by this Court in

Interim Application (Lodging) No.26759 of 2023 in

Commercial IP Suit (Lodging) No. 22293 of 2023 (K.L.F.

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Nirmal Industries Pvt. Ltd. Vs. Marico Limited). It was

submitted that the

ex-parte ad-interim order cannot be

vacated on the basis of conjectures and surmises and that

even if the plaintiff makes an incorrect or inadvertent

statement, it cannot constitute a ground for vacating such

an order. Reliance was also placed on judgment and order

dated 22

nd

December, 2022, passed by this Court in

Interim Application (Lodging) No.37027 of 2022 in

Commercial IP Suit (Lodging) No. 26527 of 2022

(

Farooq Usman Batliwala Vs. Hindustan Unilever

Limited), to contend that the ex-parte ad-interim order

can still be continued in the interest of justice. Further

reliance was placed for the said proposition on the order

passed in the case of Asma Farid Noorani Vs. Haji Ali

Fresh Juices and Others

6

, as also order passed in the case

of Dharampal Satyapal Foods Ltd. Vs. Parle Products

Private Limited and Anr.

7

5. The instant application is to be considered on the touch stone of

the first proviso to Order XXXIX Rule 4 of the CPC, whereby the Court can

vacate, vary or set aside an order of injunction granted without notice to the

6 2022 SCC OnLine Bom 4995

7 2024 SCC OnLine Bom 3452

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opposite party, provided it is demonstrated that the applicant obtained the

order of injunction by knowingly making a false or misleading statement in

relation to a material particular. According to the defendants herein, the

applicant/plaintiff in the present case indulged in such conduct and that this

Court was misled into granting

ex-parte ad-interim injunction by order dated

24

th

October, 2024. The aforesaid provision is based on the general principle

that fraud of any nature would vitiate everything. The learned senior counsel

appearing for the defendants is justified in relying upon judgment of the

Supreme Court in the case of

S.P. Chengalvaraya Naidu Vs. Jagannath (supra),

to contend that if it is demonstrated that a party has obtained a particular

order or any manner of relief by committing fraud on the Court, such an order

needs to be recalled forthwith, as deception and fraud practiced on the Court

cannot be tolerated. In this context, the extent of care and caution required to

be exercised by the Court while granting

ex-parte ad-interim injunctions is

also indicated in the judgment of the Supreme Court in the case of

Ramrameshwari Devi & Ors. Vs. Nirmala Devi & Ors. (supra). The said

judgment emphasizes that ordinarily the Court is required to issue notice, even

if a short notice, to the opposite party so that both parties can be heard and

then a suitable bipartite order can be passed in a given case.

6. It is in this backdrop that the material placed on record in the

present case needs to be appreciated, particularly in the light of the said

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position of law being explained in detail in the Division Bench judgment of

this Court in the case of Kewal Ashokbhai Vasoya & Anr. Vs. Surabhakti

Goods Pvt. Ltd. (supra). In the said judgment, the Division Bench has heavily

relied upon the principles distilled from the judgment of the Division Bench

of Commercial Court of England and Wales in the case of Alexendar

Tugushev v. Vitaly Orlov

8

. The Division Bench also referred to the judgment

of a learned Single Judge of this Court in the case of Sun Pharmaceutical

Industries Ltd. V. Emil Pharmaceutical Industries Pvt. Ltd. & Anr. (order

passed in Interim Application (Lodging) No.10937 of 2021 in Commercial IP

Suit (Lodging) No.10928 of 2021). The principles culled out in the aforesaid

Division Bench judgment in the case of Kewal Ashokbhai Vasoya & Anr. Vs.

Surabhakti Goods Pvt. Ltd. (supra), are elaborate and they cover multiple

situations where the Court can be faced with a prayer for discharging, varying

or modifying an

ex-parte ad-interim order on the ground that either false

statements were made or that the Court was misled into passing such an order.

7. It would be appropriate to specifically refer to some of those

principles, which in the opinion of this Court, can be said to be relevant for

the factual position that has emerged on the basis of the documents and facts

brought to the notice of this Court by the parties. The said principles

specifically relevant for the facts of this case are as follows :

8 (2019) EWHC 2031 (Comm).

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(i) The fundamental and the most important aspect in such

cases is the high duty on the part of the litigants before

this Court to ensure the integrity of the process of the

Court.

(ii) The party approaching the Court seeking urgent

ex-parte

ad-interim reliefs is not expected to act with the design of

only promoting its own interests but such a party is

expected, in a fair and and evenhanded manner to draw

the attention of the Court to the relevant material and also

arguments that can reasonably be anticipated in the

absence of the opposite party.

(iii) A high duty is cast upon the party seeking such

ex-parte

ad-interim reliefs to disclose all such matters of which it is

expected to be aware on making reasonable enquiries.

The material that has been disclosed through such

reasonable enquiries is required to be placed in all fairness

and without any attempt at presenting such material in a

particular manner, with the sole intention of promoting its

own interests.

(iv) It is not enough for such a party seeking

ex-parte ad-

interim reliefs to place documents on record amongst

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voluminous exhibits, without highlighting the most

crucial aspects of the matter. It is expected to clearly place

before the Court the possible arguments that can be raised

by the opposite party. This is crucial because such ad-

interim reliefs are sought without notice and in the

absence of the opposite party. All the issues that the

opposite party could raise if notice was to be issued must

be placed in an objective and neutral manner by the party

seeking such

ex-parte ad-interim reliefs.

(v) The party seeking such

ex-parte ad-interim reliefs cannot

merely highlight before the Court what it believes or

interprets to be the effect of the documents and material

placed on record, as this would encourage the tendency of

such a party deliberately giving a spin to the material on

record, so as to somehow lead the Court to grant such

reliefs.

(vi) Any act on the part of the party seeking to obtain

ex-parte

ad-interim reliefs by misleading the Court in the aforesaid

manner, after the same is brought to the notice of the

Court in such a proceeding under Order XXXIX Rule 4 of

the CPC, should result in such

ex-parte ad-interim reliefs,

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being vacated or varied.

(vii) At the same time, the first proviso to Order XXXIX Rule

4 of the CPC leaves enough scope for the Court, not to

vacate the

ex-parte ad-interim order either fully or partly if

the Court thinks it necessary to do so in the interest of

justice. This Court is of the opinion that by leaving such a

scope for the Court to ensure justice in the facts and

circumstances of each individual case, the aforesaid

provision ensures that a balanced approach is adopted and

in a given case such an

ex-parte ad-interim order can be

only partly vacated instead of the entire order being

vacated or set aside.

8. Keeping in mind the aforesaid principles, this Court proceeds to

now deal with the material on record in the light of the rival submissions.

While the learned senior counsel appearing for the defendants submits that in

the light of the plaintiff having misled this Court into passing the

ex-parte ad-

interim order, the entire order stands vitiated, it is submitted on behalf of the

plaintiff that in the facts and circumstances of the present case, firstly, there is

no ground for vacating the

ex-parte ad-interim order and that in any case, that

part of the order pertaining to the registered trade mark “SH” of the plaintiff

deserves to be retained without any interference.

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9. The thrust of the submissions made on behalf of the defendants

is that while the registered trade mark of the defendants consists of six rhinos,

three on each side facing in the opposite directions, the plaintiff deliberately

projected the trade mark of the defendants in a truncated manner, showing

only a pair of rhinos facing each other in a fighting posture. This was done

deliberately to compare the same with the pair of elephants forming part of the

registered trade mark of the plaintiff, in order to allege that the defendants had

made an attempt to come as close as possible with the registered trade mark of

the plaintiff. In this regard much emphasis was placed on the number of times

the plaintiff showed only a pair of rhinos as the registered trade mark of the

defendants and particularly the manner in which the same was depicted in the

comparative table in the plaint. In this regard, a perusal of the plaint shows

that at several places in the plaint, the plaintiff has indeed boldly asserted that

the registered trade mark of the defendants consists of a pair of rhinos facing

each other in a fighting pose i.e. .

10. It is also a matter of record that the certificate of registration of

the entire trade mark of the defendants consisting of six rhinos was indeed

placed on record as an Exhibit alongwith the plaint. But, it is to be

appreciated that the same is part of the voluminous plaint running into

hundreds of pages. It is to be noted that while making specific allegations

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against the defendants in the plaint with regard to infringement of the

registered trade mark of the plaintiff or with regard to the action of passing of,

at every place the plaintiff depicted the registered trade mark of the defendants

as . In fact, the aforesaid depiction of the trade mark was shown in

conjunction with other trade marks of the defendants consisting of pair of

animals i.e. facing in a opposite directions and also . In

paragraph No.42 of the plaint, the plaintiff specifically placed a table of

comparison between its registered trade marks and the alleged infringing trade

marks of the defendants. In this table also, on the one hand the plaintiff

depicted its registered trade mark consisting of two elephants pulling in the

opposite directions and on the other hand the registered trade mark of the

defendants was depicted as consisting only of a pair of rhinos, without any

reference to the fact that the two rhinos facing each other in a fighting pose

formed only a truncated part of the entire registered trade mark of the

defendants consisting of six rhinos. Although in paragraph No.46 of the

plaint, the plaintiff has shown the registered trade mark of the defendants

consisting of six rhinos, but its depiction is in a smaller version and in any case

it is not highlighted as compared to the manner in which only a pair of rhinos

is shown.

11. These pleadings in the plaint are reflected in the contents of the

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ex-parte ad-interim order dated 24

th

October, 2024 in all the paragraphs

leading up to paragraph No.29 of the order, except paragraph No.24 thereof.

This Court in the order dated 24

th

October, 2024 has recorded the assertions

made on behalf of the plaintiff consisting of two elephants pulling in the

opposite directions i.e. / and it has considered and analyzed it

in the context of only the truncated version of the registered trade mark of the

defendants i.e. . In the said order, while recording the

assertions made on behalf of the plaintiff, it has been repeatedly recorded that

defendants have been using the logo/device of . This Court is

of the opinion that the manner in which the trade mark of the defendants has

been appreciated, examined and analyzed by this Court, while comparing the

same with the registered trade mark of the plaintiff, particularly in paragraph

No.29, which contains the comparative table, it becomes clear that the

conclusion regarding infringement was reached on the basis of such

comparison, without any reference to the entirety of the registered trade mark

of the defendants i.e. .

12. Although in paragraph No.24 of the

ex-parte ad-interim order

dated 24

th

October, 2024, this Court has recorded that attention was invited to

paragraph No.46 of the plaint, which consisted of various trade marks of the

defendants found in the Trade Mark Registry, including the aforesaid trade

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mark consisting of six rhinos, its depiction is in an extremely small size, in

black and white and there is nothing to indicate that the comparison between

the two marks was made on the basis of the entirety of the registered trade

mark.

13. Therefore, this Court is of the opinion that the manner in which

the case has been pleaded by the plaintiff in its plaint, particularly the manner

in which only the truncated version of the registered trade mark of the

defendants i.e. has been highlighted, it can be said that the plaintiff

knowingly made a misleading statement in relation to the most material

particular in the present case i.e. the true description and depiction of the

registered trade mark of the defendants. This Court is not impressed with the

contention of the plaintiff that the comparison table given in the plaint, which

was reflected in the

ex-parte ad-interim order also, was based on the contents

of the reply dated 19

th

May, 2022 sent by the defendants to the cease and

desist notice of the plaintiff. It was claimed that since the defendants

themselves perceived their trade mark as consisting of a pair of rhinos while

denying the claims made in the cease and desist notice, the plaintiff was

entitled to plead its case by treating the trade mark of the defendants as

consisting of only two rhinos facing each other in a fighting pose.

14. This Court has perused the contents of the reply dated 19

th

May,

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2022, sent by the defendants to the cease and desist notice. The contents

thereof in no manner demonstrate any concession made on behalf of the

defendants or any impression given by them to the plaintiff that their trade

mark consisted of only two rhinos i.e. . In fact, the contents of the

reply indicate a vehement denial on the part of the defendants with regard to

the allegation of infringement. It is not enough for the plaintiff to claim that

since copy of the reply dated 19

th

May, 2022, was annexed as exhibit to the

plaint, it cannot be said that the plaintiff made any attempt to mislead the

Court. This is for the simple reason that nowhere in the pleadings in the

plaint is it stated that although the registered trade mark of the defendants

consists of six rhinos, three on each side facing in the opposite directions i.e.

, the plaintiff is claiming infringement on

the basis that even the defendants have treated their trade mark in a truncated

manner consisting of only two rhinos facing each other in a fighting pose. In

the absence of such pleadings, this Court finds that the defendants are justified

in claiming that throughout the pleadings in the plaint and considering the

number of times the plaintiff depicted the registered trade mark of the

defendants only as , an impression was sought to be created that the

defendants had made an attempt to come as close as possible to the registered

trade mark of the plaintiff i.e. / . This is also reflected in the

contents of the order dated 24

th

October, 2024 and therefore, this Court is of

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the opinion that the plaintiff did make the aforesaid misleading statements

with regard to the material particular of the true nature the registered trade

mark of the defendants.

15. This Court is also unable to accept the contention of the plaintiff

that since the registered trade mark of the defendants consisting of six rhinos

is depicted on the label wrapped around a circular jar in which the adhesive

product of the defendants is sold, from a particular angle only two of the six

rhinos are visible to the consumer. In that regard, reliance was sought to be

placed on exhibits showing the impugned goods of the defendants. This

Court is of the opinion that the plaintiff has nowhere pleaded in the plaint

that although the registered trade mark of the defendants consists of six

rhinos, it is seen and observed by the consumer only in the form of a pair of

rhinos on the label affixed in the alleged impugned goods of the defendants.

It is not the projected case of the plaintiff in the plaint at all. In fact, even

when the interim application of the plaintiff was taken up for consideration

urgently on 24

th

October, 2024, it was not argued in this manner and hence, it

is not even reflected in the

ex-parte ad-interim order dated 24

th

October,

2024. It is only when the defendants have filed the present application under

Order XXXIX Rule 4 of the CPC that the plaintiff has come up with the said

arguments, obviously as an afterthought and as an attempt to justify its

conduct of depicting the registered trade mark of the defendants in a truncated

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manner at various places in the plaint. This further reinforces the conclusion

of this Court that the plaintiff in that regard did indulge in making misleading

statements in respect of the most material particular in the facts and

circumstances of the present case. This is completely covered under the first

proviso to Order XXXIX Rule 4 of the CPC.

16. The second aspect highlighted by the defendants is that the

plaintiff deliberately quoted only part of a sentence from their reply dated 19

th

May, 2022 in response to the cease and desist notice of the plaintiff and that

this was done with the intention of creating a wrong impression before this

Court. It was emphasized that by slicing the entire sentence and quoting only

part of it, the plaintiff deliberately sought to given an impression that the

defendants had conceded to the plaintiff’s claim that the registered mark of the

defendants had a tendency of creating confusion in the minds of the

consumers when compared with the registered trade made of the plaintiff. The

plaintiff has resisted the aforesaid contention by claiming that in the paragraph

of the plaint in which a part of the sentence from the reply of the defendants

was quoted, the entire stand of the defendants in the said part of their reply

was paraphrased and thereafter, a part of the sentence was quoted.

17. This Court is of the opinion that the aforesaid explanation sought

to be given on behalf of the plaintiff can also be said to be an afterthought,

after the defendants have caught the plaintiff on the wrong foot. Here again

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the plaintiff is not justified in contending that since the entire copy of the

reply dated 19

th

May, 2022 was placed as an exhibit with the plaint, it cannot

be said that any misleading statement was made by the plaintiff.

18. This Court has perused the relevant paragraph of the reply dated

19

th

May, 2022, i.e. paragraph No.3(k). The entire portion from which only

part of the sentence is quoted in the plaint, reads as follows:

“k. With reference to point 11 statements made are not only

false but faux and erroneous in nature. We do not agree to

anything mentioned here from any length and breadth.

The trademarks used by our clients are honestly coined,

conceived, continually used on bonafide grounds since

inception and they are only connected to our client’s

company. Person with any kind of intellect/stature can

very much differentiate or register some aspects of the

product very much that can maintain one’s identity and

not correlate or associate with each other’s product i.e. the

tradenames/ labels/ devices/ packaging/ size/ color

combination/ shape of the container/ quantity of the

products etc. We have no doubt in regards to any

educated person getting confused while buying your

products/brands but when it comes to an average person

like a carpenter or construction worker, possibly they may

forget the names but will surely register/remember the

device mark/colour of packaging etc. and can very well tell

the shop vendor to give either Hippo/ Rhino/ Elephant

items without any apprehension/confusion. We are living

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in 21

st

century and in such high-tech world where

everyone learnt to use smart phone, device, gadgets,

digital transactions etc. do you honestly feel such things

matter or really consumer will be misguided or will fall

prey to wrong products or associate between two products

and companies. Thus, our client is not able to understand

how using of their own coined marks be unauthorized

that could lead to civil and criminal offense? Rather our

client’s feel the matter is unnecessarily hyped/publicized

with wrong intentions. Your client is trying to

monopolize the market and eat away all small/average size

manufacturers and traders by sending such notices.”

19. A perusal of the above quoted entire paragraph No.3(k) of the

reply dated 19

th

May, 2022, would show that the defendants nowhere

conceded that their trade mark could be said to be infringing the registered

trade mark of the plaintiff and the entirety of the sentence, only part of which

is quoted in the plaint, specifically asserts that the persons, who actually go to

buy the products would be able to distinguish between the products of the

plaintiff on the one hand and the those of the defendants on the other,

without any apprehension or confusion. This Court is of the opinion that by

quoting only part of the sentence, the plaintiff can be said to have made an

attempt to give an impression that the defendants had admitted the charge

levelled against them about having adopted the impugned trade mark in order

to create confusion amongst the consumers. The attempt on the part of the

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plaintiff to claim that it had paraphrased the meaning of the aforesaid

paragraph No.3(k) of the reply dated 19

th

May, 2022 in its plaint, can be of no

consequence, as this Court finds that the plaintiff was expected to honestly

reproduce the entire sentence, or better still, the entire paragraph in the plaint,

if at all it did choose to incorporate part of the reply dated 19

th

May, 2022, in

its pleadings in the plaint. Such pick and choose and slicing of sentences does

constitute an act on the part of the plaintiff to mislead or to present the stand

of the defendants in a manner that would advance only the interests of the

plaintiff, without giving a balanced and appropriate depiction of the same.

Hence, the aforesaid second ground raised on behalf of the defendants while

alleging that the plaintiff indeed made misleading statements, also deserves to

be accepted.

20. This Court is the opinion that the entire thrust in the

aforementioned provision i.e. first proviso to Orde XXXIX Rule 4 of the CPC

and the settled position of law recognized in the various judgments,

particularly in the Division Bench judgment of Kewal Ashokbhai Vasoya &

Anr. Vs. Surabhakti Goods Pvt. Ltd. (supra), is on maintaining the integrity of

the process of the Court. Hence, any attempt on the part of the plaintiff to

pollute the process, is to be frowned upon and the plaintiff cannot claim that it

innocently placed the aforementioned comparison of the two marks, in the

facts of the present case, on its interpretation of the reply of the defendants

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dated 19

th

May, 2022, to the cease and desist notice. Once it is found that the

plaintiff indulged in an act which has the effect of polluting the process of the

Court, the consequences as indicated in Order XXXIX Rule 4 of the CPC

must follow. It is for this reason that in the case of Ramrameshwari Devi &

Ors. Vs. Nirmala Devi & Ors. (supra), the Supreme Court has cautioned that

the better course for the Court is to give a short notice and then to pass

suitable bipartite orders. It is also observed that experience has shown that

ex-

parte

ad-interim injunction orders in some cases can create havoc and to get

them vacated or modified in our existing judicial system has become a

nightmare. Consequently, the burden on the plaintiff approaching the Court

for

ex-parte ad-interim reliefs is that much more and any impression gathered

by the Court that the plaintiff indulged in acts that could be said to be

misleading the Court into granting

ex-parte ad-interim injunctions must result

in adverse orders against such a plaintiff.

21. In this regard, it is also to be appreciated that if notice was to be

issued to the defendants, they could have remained present before this Court

to indicate their stand in the matter and to highlight the fact that their

registered trade mark consists of six rhinos facing each other and not just a pair

of rhinos in a fighting pose. The defendants were deprived of this opportunity

and this led to a situation where the plaintiff walked away with an

ex-parte ad-

interim order, which perhaps may not have been granted, had the defendants

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been given an opportunity to appear before the Court. It is a different manner

that this Court even after the hearing the defendants may well have found it fit

to grant ad-interim reliefs, but the crucial aspect in such cases is that the

defendants are deprived of an opportunity to place their version before the

Court. If only the defendants were put to notice, they could have very well

relied upon their own reply dated 19

th

May, 2022, to demonstrate that the

plaintiff cannot claim any act of infringement on their part on a proper

comparison of the registered trade mark of the defendants with the registered

trade mark of the plaintiff. It cannot be said that the plaintiff in the present

case truthfully and honestly stated the possible defense of the defendants,

which was reflected in their reply dated 19

th

May, 2022, sent to the cease and

desist notice. This Court is unable to accept the contention of the plaintiff

that the stand of the defendants in their reply to the cease and desist notice

indicated that they themselves were treating only the pair of rhinos as their

registered trade mark.

22. But, at the same time, this Court finds that the defendants cannot

claim that if notice was issued to them, they could have given their own

version in respect of the registered trade mark “SH” also. In the reply dated

19

th

May, 2022, to the cease and desist notice, the defendants themselves

specifically stated in paragraph No.3(e) that they would be removing the mark

“SH” from all their products. This was also stated in paragraph No.3(c) of the

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reply and it was asserted that the defendants have agreed to stop using the

“SH” mark to avoid confusion or chaos in the business and trade circles.

23. Having taken such a stand in the reply dated 19

th

May, 2022, the

defendants in the present application cannot be heard to say that they are

entitled to use their “SH” mark, as it is used in conjunction with other marks

or that such a mark can be said to be common to trade. This is because such

contentions would invite this Court to enter into the merits of the matter,

which is impermissible in the present application. Even if notice was to be

served on the defendants before considering ad-interim reliefs, in the light of

their own stand in the reply dated 19

th

May, 2022, concerning the trade mark

“SH” and the specific statement that they had agreed to stop and they would

stop using the said mark, the defendants may not have been able to resist ad-

interim reliefs in the face of the documents placed on record by the plaintiff as

regards its registrations for the trade mark “SH”. To that extent, the plaintiff is

justified in contending that this Court may consider retaining that portion of

the

ex-parte ad-interim order, which concerns the registered trade mark “SH”,

even if this Court were to partly vacate or vary the

ex-parte ad-interim order

dated 24

th

October, 2024. This Court is of the opinion that the first proviso to

Order XXXIX Rule 4 of the CPC leaves enough power with the Court to stop

short of vacating the entire

ex-parte ad-interim order for reasons to be

recorded and where it considers that it would be in the interest of justice so to

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do.

24. The judgments and orders relied upon by the plaintiff in this

context i.e. K.L.F. Nirmal Industries Pvt. Ltd. Vs. Marico Limited (supra) and

Asma Farid Noorani Vs. Haji Ali Fresh Juices and Others (supra), are apposite

and this Court is inclined to follow the dictum to partly retain the effect of the

ex-parte ad-interim order dated 24

th

October, 2024.

25. While reaching the conclusion that this Court in the facts and

circumstances of the present case ought to exercise power under first proviso

to Order XXXIX Rule 4 of the CPC to partly vacate the

ex-parte ad-interim

order dated 24

th

October, 2024, the position of law clarified in the judgments

in the case of

Kent Ro Systems Ltd. & Anr. Vs. Gattubhai and Ors. (supra),

ATYATI Technologies Private Limited Vs. COGNIZANT Technologies

Solutions US Corp. and another (supra), RKRM International Products

Private Limited & Ors. Vs. Laser Shaving (India) Private Limited (supra) and

Pidilite Industries Limited Vs. Chirpal Industries Limited (supra), is being

followed.

26. In view of the above, the application is partly allowed by

directing that

ex-parte ad-interim order concerning the registered trade mark

of the defendants

is vacated, with the

result that the ad-interim relief granted in terms of prayer clause (c) is entirely

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vacated, while the ad-interim order granted in terms of prayer clauses (e) and

(h) stands vacated to the extent that it concerns the aforesaid registered trade

mark of the defendants consisting of six rhinos

.

27. At the same time, the

ex-parte ad-interim reliefs granted in the

context of registered trade mark “SH” of the plaintiff are maintained. As a

consequence, the goods of the defendants that were seized and sealed by the

Court Receiver while executing the

ex-parte ad-interim order dated 24

th

October, 2024, which bear the registered trade mark of the defendants

consisting of six rhinos i.e.

, shall be de-

sealed and handed over to the defendants. It is made clear that all such goods

of the defendants that were seized and sealed by the Court Receiver while

executing the said order, which bear the mark “SH” shall continue to be seized

and sealed and in the constructive possession of the Receiver until further

orders in Interim Application (Lodging) No.33054 of 2024.

28. The instant application i.e. Interim Application (Lodging)

No.37828 of 2024, stands disposed of in above terms

(MANISH PITALE, J.)

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