S.N. Biri Factory v. Mukesh Chandra Khandelwal), by which interim injunction application

application (7C-2) was allowed and the defendant-appellant was restrained to produce and sell SHAHENSHAH NO.99 MATCHES during the pendency of suit.

2. The brief facts of the case are that the plaintiffs-respondents have filed Original Suit No.02 of 2021 against the defendant- appellant for permanent injunction to restrain the defendant, his agents, associates and representatives from manufacturing, selling of plaintiffs' product under the trademark "SHAHENSHAH NO.99". It was also prayed that defendant be directed to pay compensation of Rs.1,00,000/- for loss incurred to the plaintiffs.

3. It is alleged in the plaint that plaintiffs carries on business of manufacturing and marketing of Biri, Tobacco products and safety matches in the name and style of SHAHENSHAH NO.99 since

2000. The firm of plaintiffs is duly registered and the products of plaintiffs are supplied in whole country. The product of plaintiffs in the brand name SHAHENSHAH NO.99 was having a goodwill in the market. The plaintiffs had applied for registration of trademark before the Registrar of Trademark, Government of India. It is further pleaded by the plaintiffs that the defendant for taking advantage of goodwill of product of plaintiff had started manufacturing of same products in the name of same trademark "SHAHENSHAH MATCHES". It is further pleaded that the defendants only to get benefit of the goodwill of plaintiffs had started manufacturing of same products with the name of "SHAHENSHAH" which is similar to the trademark of plaintiffs as SHAHENSHAH NO.99. The plaintiffs are prior user of the trademark SHAHENSHAH NO.99. The plaintiffs had also filed an application for interim injunction under Order 39 Rule 1 and 2 C.P.C.

4. The defendant has put in appearance before the trial court and filed objection to the Application 7C denying the allegations of plaintiffs. It is pleaded by the defendant that the plaintiffs' factory being S.N. Biri Factory Private Limited produces Biri whereas the firm of defendant is producing Matches. It is also pleaded that the defendant is prior user of "SHAHENSHAH MATCHES". It is also pleaded that in the plaint it is nowhere mentioned that the plaintiff no.2 is power of attorney holder of plaintiff no.1 S.N. Biri Private Limited and as such has no right to file suit on behalf of plaintiff no.1. Lastly, it is stated by the defendant in his objection that the name of product of defendant is quite different with the name of product of plaintiffs being SHAHENSHAH whereas the product of plaintiffs was in the name of SHAHENSHAH NO.99 and also there are no similarity in the colour and packaging of both the products. Learned trial court after considering the rival contentions of both the parties had granted interim injunction in favour of the plaintiffs vide order dated 28.3.2024, which is impugned in the present appeal.

5. Heard Sri Rahul Sahai, learned counsel for the appellant, Sri Vineet Kumar Singh, learned counsel for the plaintiffs-respondents and perused the record.

6. It is submitted by learned counsel appearing on behalf of defendant-appellant that the trial court has erred in granting injunction in favour of the plaintiffs-respondents. The defendant- appellant is manufacturer of match box for last several years in the name and style of SHAHENSHAH and the plaintiffs-respondents being prior user of trademark SHAHENSHAH is entitled to use the name of SHAHENSHAH. The learned trial court has failed to consider that the defendant-appellant is prior user of the trademark SHAHENSHAH and as such is entitled to use the trademark SHAHENSHAH. The trial court has also failed to consider that the defendant-appellant had applied for registration of trademark SHAHENSHAH for matches in the month of January, 2020 whereas plaintiffs had applied for registration of trademark SHAHENSHAH NO.99 in the year 2021 which clearly established that the defendant-appellant is a prior user of SHAHENSHAH trademark.

7. It is further submitted that even otherwise the trademark SHAHENSHAH belonging to the defendant-appellant is entirely different with the trademark SHAHENSHAH NO.99 and even otherwise the colour and font of SHAHENSHAH and SHAHENSHAH NO.99 is different. Lastly, it is submitted that the SHAHENSHAH NO.99 was not registered trademark in the name of plaintiffs-respondents and as such the plaintiffs-respondents cannot claim the aforesaid trademark. The suit filed by plaintiffs- respondents through power of attorney holder Ms. Usha Rani, who is plaintiff no.2 but in the plaint it is nowhere mentioned that plaintiff no.2 is power of attorney holder of plaintiff no.1 S.N. Biri Factory.

8. On the other hand, learned counsel appearing on behalf of plaintiffs-respondents has submitted that the plaintiffs are prior user of SHAHENSHAH NO.99 trademark and the defendant had started production in the name of SHAHENSHAH only to encash the goodwill of SHAHENSHAH NO.99. It is further submitted that the trial court after considering the entire evidence and materials which are available on record has recorded the finding that the production of matches by defendant-appellant in the name of SHAHENSHAH is similar to the production of plaintiffs' trademark SHAHENSHAH NO.99 and the plaintiffs are facing great financial loss.

9. Considered the submissions of learned counsel for the parties and perused the record.

10. From perusal of impugned order dated 28.3.2024 passed by learned trial court granting injunction in favour of plaintiffs- respondents, it appears that trial court has not recorded any finding in respect of prima-facie case in favour of plaintiffs. The trial court only recorded the averments of plaintiffs and objection filed by defendant and had granted injunction in favour of plaintiffs. The trial court has not recorded any finding in respect of prima-facie case in favour of plaintiffs and also that balance of convenience is in favour of plaintiffs and has also not recorded any finding that any irreparable loss would be caused to the plaintiffs. The trial court has erred in allowing the application of interim injunction filed by the plaintiff without discussing the evidence adduced by the plaintiffs. The trial court has failed to consider that the burden of proof is upon the plaintiffs to establish his prima facie case. The order impugned is unreasoned order and is liable to be set-aside. Without going into the merits of the case, it is appropriate that matter should be remanded before the trial court to decide the interim injunction application (Paper No.7C) as fresh.

11. In view of above discussion, this first appeal from order is allowed and the order dated 28.3.2024 passed by learned Additional District Judge, Court No.2, Hathras in Original Suit No.02 of 2021 (S.N. Biri Factory Vs. Mukesh Chandra Khandelwal) is set-aside and the matter is remanded back to the learned trial court to decide the interim injunction application (Paper No.7C) as fresh after affording opportunity of hearing to the parties concerned, without granting any undue adjournment to the parties unless there is any legal impediment. Order Date :- 12.3.2025 Kpy

application (7C-2) was allowed and the defendant-appellant was restrained to produce and sell SHAHENSHAH NO.99 MATCHES during the pendency of suit.

2. The brief facts of the case are that the plaintiffs-respondents have filed Original Suit No.02 of 2021 against the defendant- appellant for permanent injunction to restrain the defendant, his agents, associates and representatives from manufacturing, selling of plaintiffs' product under the trademark "SHAHENSHAH NO.99". It was also prayed that defendant be directed to pay compensation of Rs.1,00,000/- for loss incurred to the plaintiffs.

3. It is alleged in the plaint that plaintiffs carries on business of manufacturing and marketing of Biri, Tobacco products and safety matches in the name and style of SHAHENSHAH NO.99 since

2000. The firm of plaintiffs is duly registered and the products of plaintiffs are supplied in whole country. The product of plaintiffs in the brand name SHAHENSHAH NO.99 was having a goodwill in the market. The plaintiffs had applied for registration of trademark before the Registrar of Trademark, Government of India. It is further pleaded by the plaintiffs that the defendant for taking advantage of goodwill of product of plaintiff had started manufacturing of same products in the name of same trademark "SHAHENSHAH MATCHES". It is further pleaded that the defendants only to get benefit of the goodwill of plaintiffs had started manufacturing of same products with the name of "SHAHENSHAH" which is similar to the trademark of plaintiffs as SHAHENSHAH NO.99. The plaintiffs are prior user of the trademark SHAHENSHAH NO.99. The plaintiffs had also filed an application for interim injunction under Order 39 Rule 1 and 2 C.P.C.

4. The defendant has put in appearance before the trial court and filed objection to the Application 7C denying the allegations of plaintiffs. It is pleaded by the defendant that the plaintiffs' factory being S.N. Biri Factory Private Limited produces Biri whereas the firm of defendant is producing Matches. It is also pleaded that the defendant is prior user of "SHAHENSHAH MATCHES". It is also pleaded that in the plaint it is nowhere mentioned that the plaintiff no.2 is power of attorney holder of plaintiff no.1 S.N. Biri Private Limited and as such has no right to file suit on behalf of plaintiff no.1. Lastly, it is stated by the defendant in his objection that the name of product of defendant is quite different with the name of product of plaintiffs being SHAHENSHAH whereas the product of plaintiffs was in the name of SHAHENSHAH NO.99 and also there are no similarity in the colour and packaging of both the products. Learned trial court after considering the rival contentions of both the parties had granted interim injunction in favour of the plaintiffs vide order dated 28.3.2024, which is impugned in the present appeal.

5. Heard Sri Rahul Sahai, learned counsel for the appellant, Sri Vineet Kumar Singh, learned counsel for the plaintiffs-respondents and perused the record.

6. It is submitted by learned counsel appearing on behalf of defendant-appellant that the trial court has erred in granting injunction in favour of the plaintiffs-respondents. The defendant- appellant is manufacturer of match box for last several years in the name and style of SHAHENSHAH and the plaintiffs-respondents being prior user of trademark SHAHENSHAH is entitled to use the name of SHAHENSHAH. The learned trial court has failed to consider that the defendant-appellant is prior user of the trademark SHAHENSHAH and as such is entitled to use the trademark SHAHENSHAH. The trial court has also failed to consider that the defendant-appellant had applied for registration of trademark SHAHENSHAH for matches in the month of January, 2020 whereas plaintiffs had applied for registration of trademark SHAHENSHAH NO.99 in the year 2021 which clearly established that the defendant-appellant is a prior user of SHAHENSHAH trademark.

7. It is further submitted that even otherwise the trademark SHAHENSHAH belonging to the defendant-appellant is entirely different with the trademark SHAHENSHAH NO.99 and even otherwise the colour and font of SHAHENSHAH and SHAHENSHAH NO.99 is different. Lastly, it is submitted that the SHAHENSHAH NO.99 was not registered trademark in the name of plaintiffs-respondents and as such the plaintiffs-respondents cannot claim the aforesaid trademark. The suit filed by plaintiffs- respondents through power of attorney holder Ms. Usha Rani, who is plaintiff no.2 but in the plaint it is nowhere mentioned that plaintiff no.2 is power of attorney holder of plaintiff no.1 S.N. Biri Factory.

8. On the other hand, learned counsel appearing on behalf of plaintiffs-respondents has submitted that the plaintiffs are prior user of SHAHENSHAH NO.99 trademark and the defendant had started production in the name of SHAHENSHAH only to encash the goodwill of SHAHENSHAH NO.99. It is further submitted that the trial court after considering the entire evidence and materials which are available on record has recorded the finding that the production of matches by defendant-appellant in the name of SHAHENSHAH is similar to the production of plaintiffs' trademark SHAHENSHAH NO.99 and the plaintiffs are facing great financial loss.

9. Considered the submissions of learned counsel for the parties and perused the record.

10. From perusal of impugned order dated 28.3.2024 passed by learned trial court granting injunction in favour of plaintiffs- respondents, it appears that trial court has not recorded any finding in respect of prima-facie case in favour of plaintiffs. The trial court only recorded the averments of plaintiffs and objection filed by defendant and had granted injunction in favour of plaintiffs. The trial court has not recorded any finding in respect of prima-facie case in favour of plaintiffs and also that balance of convenience is in favour of plaintiffs and has also not recorded any finding that any irreparable loss would be caused to the plaintiffs. The trial court has erred in allowing the application of interim injunction filed by the plaintiff without discussing the evidence adduced by the plaintiffs. The trial court has failed to consider that the burden of proof is upon the plaintiffs to establish his prima facie case. The order impugned is unreasoned order and is liable to be set-aside. Without going into the merits of the case, it is appropriate that matter should be remanded before the trial court to decide the interim injunction application (Paper No.7C) as fresh.

11. In view of above discussion, this first appeal from order is allowed and the order dated 28.3.2024 passed by learned Additional District Judge, Court No.2, Hathras in Original Suit No.02 of 2021 (S.N. Biri Factory Vs. Mukesh Chandra Khandelwal) is set-aside and the matter is remanded back to the learned trial court to decide the interim injunction application (Paper No.7C) as fresh after affording opportunity of hearing to the parties concerned, without granting any undue adjournment to the parties unless there is any legal impediment. Order Date :- 12.3.2025 Kpy