By Lucy Rana and Priya Adlakha
A Single Bench of the Bombay High Court in Siddhant Icecreams LLP and Ors. Vs Natural Ice Cream and Anr.[1] dealt with the issue of granting an ad interim injunction in the case of trademark infringement and passing off. The case took an interesting turn of events when the advocate who had been appearing on behalf of the defendant filed an affidavit in reply on behalf of a third party.
Facts:
Raghunandan Kamath (hereinafter referred to as Plaintiff No. 3) promoted Siddhant Icecreams LLP (hereinafter referred to as Plaintiff No. 1) and Kamaths Ourtimes Icecreams Pvt. Ltd. (hereinafter referred to as Plaintiff No. 2), which operated the business for manufacturing, selling and distributing ice cream and related products through their ice cream parlours under the NATURAL family of marks, which had been adopted in 1984.The plaintiff obtained the following trademark registration known as the Natural Family registered trademark –
| Application Number | Trademarks |
| 3177579 |  |
| 3177573 |  |
| 3177578 |  |
| 3177580 |  |
| 641592 |  |
| 1143035 |  |
| 1209159 |  |
| 1209160 |  |
Natural Ice Cream (hereinafter referred to as Defendant no.1), operated an ice cream parlour, using the impugned mark “NATURAL” in Manjalpur, Vadodara and Sanman Patel (hereinafter referred to as Defendant No.2) was its proprietor.
The plaintiff had claimed that the defendant runs and operates an ice cream parlour using a rival mark NATURAL in Manjalpur, Vadodara called ‘Natural Ice Cream’ and were advertising their ice cream business under the mark NATURAL on Facebook, Instagram as well as Zomato. The parlour signage had a legend ‘since 1992’.
Plaintiff’s submissions:
- That the plaintiff is in the business of manufacturing, selling and distributing ice cream and related products through their ice cream parlours under the “Natural” marks which had been adopted by Plaintiff No.3 in 1984.
- That the Defendants were advertising their ice cream business under the rival mark NATURAL on Facebook, Instagram and were using the email id “naturalmanjalpur@gmail.com”.
- That the Defendants’ names is also visible on the Zomato application, along with a parlour signage with the legend “since 1992”, while it has only opened recently.
- That the defendants are misrepresenting their goods and passing them off as the plaintiffs’ products.
Defendant’s Submissions
The defendants filed no affidavit in reply, however, the advocate who had been appearing on behalf of the defendants, filed an affidavit in reply before the Hon’ble Court in the name of Ambrish Chauhan, who was the authorised representative of Varshaben Avinashbhai Chauhan, the sole proprietor of the entity “Natural Ice Cream & Cold Drinks”.
Court’s Observations
The Hon’ble Court took note of the fact that the Defendant No. 1 is not “Natural Ice Cream & Cold Drinks”, but rather “Natural Ice Cream”, and thus the affidavit in reply filed on behalf of Ambrish Chauhan could not be taken into consideration, and that the third party would have to file an impleadment application to become a party to the suit.
The Hon’ble Court observed that the plaintiffs had made out a prima facie case against the Defendants, and since the actual defendants had failed to file an affidavit in reply, an ad-interim injunction in terms of the plaintiffs’ prayer clauses (a), (b) and (c) must be granted.
Conclusion
Therefore, the Court granted an ad interim injunction as per the prayer clauses (a), (b) and (c) of the Interim Application, which are as follows:
- That pending the hearing and final disposal of the suit, the Defendants, their subordinates, agents and all other persons claiming under or through the Defendants be restrained by an order and injunction of this Hon’ble Court from infringing any of the Plaintiffs’ NATURAL Family of Registered Marks, in any manner and from using the impugned mark NATURAL or any other mark similar to the NATURAL Family upon or in relation to any goods or services for which the NATURAL Family of Registered Marks are registered or upon or in relation to any goods or services similar thereto and from selling, offering for sale (either directly from their ice cream parlour or through Zomato or through any other platform or any other manner), advertising, or dealing in any products or rendering any services(including ice cream parlor or through Zomato or through any other platform or any other manner), advertising or dealing in any products or rendering any services (including ice cream parlour services) under the impugned mark or any mark similar to any of the NATURAL registered marks and from using the impugned mark or any other mark similar to the registered marks as part of the Defendants’ business name or trading style or upon or in relation to any products, signage, business card, packaging, advertisement or on the Defendants’ social media pages or in relation to Paytm online or any other online or mobile playment platform and from using the email address ‘naturalmanjalpur@gmail.com’ or any other email address having Natural or any other mark similar to the registered marks as a part thereof;
- That pending the hearing and final disposal of the suit, the Defendants, their subordinates, agents and all other persons claiming under or through the Defendants be restrained by an order and injunction of this Hon’ble Court from passing off their goods, business or ice cream parlor as that of or as connected with or associated with the Plaintiffs’ in any manner and from using NATURAL as part of the Defendants’ business name or trading style and from selling or offering for sale(either through ice cream parlor or through Zomato or through any other goods under or bearing or in relation to which the impugned mark NATURAL is used or under or bearing or in relation which any mark similar to any of the Plaintiffs’ NATURAL Family Marks are used and from using the impugned mark NATURAL or any other mark similar to the Plaintiffs’ NATURAL Family Marks in relation to any ice cream parlors in any manner or on the Defendants’ social media pages and from using the email address ‘naturalmanjalpur@gmail.com’ or any other email address having NATURAL or any other mark similar to the NATURAL Family Registered Marks as a part thereof and from using the impugned mark NATURAL in any manner;
- That pending the hearing and final disposal of the suit, the Defendants, their subordinates, agents and all other persons claiming under or through the Defendants be restrained by an order and injunction of this Hon’ble Court from using or displaying or depicting the impugned mark NATURAL or any mark resembling or similar to any of the NATURAL Family Marks upon or in relation to the Defendants’ signage, business card, packaging, advertisement or in relation to Paytm online or any other online mobile payment platform indicating or suggesting that the Defendants are authorized franchisees or dealers of the Plaintiffs or that the Defendants are related to, connected or associated with the Plaintiffs or in any manner passing off the Defendants’ business as authorized, franchised or connected with the Plaintiffs or the Plaintiffs’ business;”
The ad interim order will continue to operate till November 24, 2021.
Author’s Comments
The Hon’ble Bombay High Court has precisely noted that the parties “Natural Ice Cream and Cold Drinks” and Ambrish Chauhan could not file an affidavit in reply since they had no standing before the court, and could only have sought impleadment. Furthermore, noting the fact that the actual Defendants had failed to file an affidavit in reply before the court, and had appeared only once the order was being dictated, an ad interim injunction could be granted in favour of the plaintiff due to the prima facie nature of the case.
[1] COMMERCIAL IP SUIT (L) NO. 13957 OF 2021
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