Granting an injunction (including ex-parte) is a discretionary power of the court.
Section 135(2) of The Trade Mark Act, 1999 says that order of injunction may include ex-parte injunction. Now, if Section 135(2) is read with section 29(3) of The Trade Mark Act, 1999.
Section 29(3) says that the court shall pressure that it is likely to cause confusion on the part of the public provided that the case falls under section 29(2)(c). So, we need to read section 29(2)(c) which says that a registered trade mark is infringed by a person who used in the course of trade, a mark which is identical with the registered trade mark for identical goods. It is clear that when the identical mark is used for identical goods in the course of trade, section 29(3) is invoked.
Reading of both Section 135(2) and Section 29(3) of the Act increases the chances of obtaining the EX- parte injunction as there is command of legislature for courts to presume that there is likelihood of confusion on the part of the public when the identical mark is used in the course of trade for identical goods by an infringer or by a defendant.
I would like to refer the landmark judgments of Hon’ble Supreme Court in respect of ‘identical marks’. What Hon’ble Supreme Court held when the mark of the defendant is identical to that of the plaintiff in the case of infringement and passing off action is as under.
1. Kaviraj Pandit Durga Dutta Sharma v. Navaratna Pharmaceutical Laboratories reported in AIR 1965 980 where the two marks are identical, no further questions arise, for then infringement is made out (Para No.20). In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. (Para No.21).
2. In the case of Parle Products (P) Ltd. v. J. P. & Co., Mysore reported in AIR 1972 SC 1359, In paragraph no.8, Hon’ble Supreme Court reiterated principle laid down in paragraph no.21 in case of Kaviraj Pandit Durga Dutta Sharma v. Navaratna Pharmaceutical Laboratories reported in AIR 1965 980.
3. ) Ruston & Hornsby Ltd. v. Zamindara Engineering Co. reported in AIR 1970 SC 1649 – Para No.7. In an action for infringement where the defendant’s trade mark is identical with the plaintiff’s mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion.
4. Supreme Court in the case of Laxmikant Patel v. Chetanbhai Shah – It is a case of passing off action. Para No.14 – wherein Supreme Court held that “once a case of passing off is made out, the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary.”
To conclude it can be said that, considering the ratio laid down by Hon’ble Supreme Court in the above mentioned cases, and in accordance with the facts of the case, injunction including ex-parte injunction should be granted if it is a just, proper and fit case to grant injunction.
Chirag Bhatt
IP Advocate
