A Division Bench (“DB”) of the Hon’ble Delhi High Court has set aside an injunction order
passed by the Trial Court against the appellant, Ganesh Gouri’s adoption of the new AQUA
PLAST device mark after finding that the rival marks are different based on overall commercial impression.
The brief facts of the case are that, Ganesh Gouri has entered into a settlement agreement with the respondent, RC Plasto, pursuant to an earlier suit in Nagpur court involving the rival parties, under which Ganesh Gouri agreed to not use the mark PLASTO or the tagline NAAM HI GAURANTEE HAI but could use the mark AQUA PLAST. Ganesh Gouri’s subsequent adoption of a new device mark for AQUA PLAST was challenged by the respondent in the form of a suit for injunction before the Trial Court, which allowed the interim injunction motion moved by the respondent.
Ganesh Gouri, aggrieved by the order, preferred an appeal against the order. Ganesh Gouri
argued that the present suit is a clear case of Forum shopping, since both the parties are based in Nagur and the prior suit was also filed in Nagpur court. Ganesh Gouri also placed reliance on his registration for the copyright over the work subsisting in the new device mark. While RC Plasto filed a copyright cancellation against this device mark, it was dismissed, first by a single judge, and then in appeal by the DB, since the DB concluded that the only similarity between the rival marks was the word PLAST or the colour blue, which was not held to be sufficient to hold Ganesh Gouri’s work as a colourable imitation or substantial reproduction of RC Plasto’s device mark.
RC Plasto rebutted the allegations of forum shopping and argued that the present suit was based on new cause of action involving different device marks. RC Plasto also argued the rival marks to be nearly identical/deceptively similar.
As regards maintainability of the suit, the DB reiterated the well-settled law that for every fresh cause of action, a fresh suit would lie. The DB also observed that while the Safe Distance Rule allows a party to act against another party from making minor changes to circumvent a court order by moving to the same court that passed the earlier order, the rule does not bar a party from filing a fresh suit.
On merits, the DB held that the injunction passed by the Trial Court is misplaced since there is no commonality in the rival device marks, apart from the color blue and the word PLAST, which is derivative of plastic. The DB also ruled that, while it is a settled law that an appellate court ought not to disturb the prima facie findings, they may exercise discretion when the trial court has acted in ignorance of settled principles of law. The DB, accordingly, set aside the impugned interim injunction order.
M/s. Ganesh Gouri Industries & Ors. v. R.C. Plasto Tanks & Pipes Pvt. Ltd. [FAO (COMM) 54/2022] and R.C. Plasto Tanks & Pipes Pvt. Ltd. v. Ganesh Gouri Industries & Anr. [RFA(OS)(IPD) 1/2023] Judgements dated August 5, 2024 Click here to access the judgement copy
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