Trademark infringement is a serious offense that can cause irreparable harm to the reputation and goodwill of a trademark owner. The grant of a temporary injunction under Order 39, Rule 1 and 2 of the Civil Procedure Code provides an effective remedy to protect the rights of the trademark owner. The applicant must show a prima facie case of trademark infringement, irreparable harm or injury, and the balance of convenience in favor of granting the injunction to obtain a temporary injunction.

Trademark law is an essential aspect of commercial law that deals with the protection of intellectual property. A trademark is a symbol, word, or phrase that is used to distinguish a product or service from other similar products or services in the market. The registration of a trademark gives the owner exclusive rights to use that trademark, and any unauthorized use of that trademark by others can be considered an infringement. In such cases, the owner of the trademark can seek a temporary injunction under Order 39, Rule 1 and 2 of the Civil Procedure Code.

Understanding Trademark Infringement

Trademark infringement is the unauthorized use of a registered trademark or a trademark that is similar to a registered trademark in a way that may create confusion among consumers. The infringement of a trademark can lead to the dilution of the trademark and can cause harm to the reputation and goodwill of the trademark owner. Trademark infringement can occur in various ways, such as copying the trademark, using a similar trademark, or using the trademark in a way that may create confusion among consumers.

Temporary Injunction under Order 39, Rule 1 and 2

Order 39, Rule 1 and 2 of the Civil Procedure Code provide for the grant of temporary injunctions in cases of infringement of a trademark. A temporary injunction is an order of the court that restrains a person from doing an act that may cause irreparable harm or injury to the rights of the plaintiff. To obtain a temporary injunction, the applicant must show that there is a prima facie case of trademark infringement, and if the injunction is not granted, the applicant will suffer irreparable harm or injury. The applicant must also show that the balance of convenience is in favor of granting the injunction.

Prima Facie Case of Trademark Infringement

To establish a prima facie case of trademark infringement, the applicant must show that they have a valid and subsisting trademark, and the respondent is using an identical or deceptively similar trademark. The applicant must also show that the use of the trademark by the respondent is likely to cause confusion among consumers.

Irreparable Harm or Injury

The applicant must show that if the temporary injunction is not granted, they will suffer irreparable harm or injury. Irreparable harm or injury refers to the harm or injury that cannot be compensated by damages. For example, if the respondent is using a trademark that is similar to the applicant’s trademark, it may dilute the value of the applicant’s trademark and cause harm to the reputation and goodwill of the trademark.

Balance of Convenience

The balance of convenience refers to the balance of the harm or injury that may be caused to the applicant if the injunction is not granted and the harm or injury that may be caused to the respondent if the injunction is granted. The court will consider various factors such as the interest of the parties, the nature of the harm or injury, and the public interest before deciding on the balance of convenience.

How to challenge the Court’s temporary injunction?

If a defendant wishes to challenge a temporary injunction granted by the court in a trademark matter, they can file an application for the vacation of the injunction. The application should be supported by an affidavit, setting out the grounds on which the injunction should be vacated. The defendant must show that there is no prima facie case of trademark infringement, or that the balance of convenience is not in favor of granting the injunction, or that the injunction was granted without proper consideration of all relevant factors. In such situations, the expertise of a trademark and legal advisor like Prakasha & Co can be beneficial. They can advise the defendant on the legal and practical aspects of challenging a temporary injunction and help to prepare a robust defense. The advisor can also assist in gathering evidence and preparing affidavits to support the application for vacation of the injunction. They can also represent the defendant in court and make submissions on their behalf.

Reference Case Study: Savis Butter Sponge V/s Butter Sponge

where my client applied trademark “Savis Butter sponge”, the applicant who objected his trademark is Butter Sponge with different logo image, now the applicant has gone to City civil court for injunction of usage of our client trademark “Savis Butter sponge”, even though our client trademark is quite different in name, log etc. our observations and submissions to Court: we have made the following arguments to support the Defendant’s case (Savis Butter Sponge):

1. The name of the Plaintiff’s trademark “Butter Sponge” and the Defendant’s trademark “Savis Butter Sponge” are not similar. In the Hindustan Unilever Limited v. Gujarat Cooperative Milk Marketing Federation Ltd. case, the Bombay High Court had held that the word “Kwality” was a descriptive term and not distinctive. Similarly, the word “Butter” is a common term used in the food industry, and the Plaintiff cannot claim any exclusive rights over it. The use of the words “Butter Sponge” by the Plaintiff is therefore not distinctive or unique.

1. The Defendant’s trademark “Savis Butter Sponge” uses a completely different logo from the Plaintiff’s trademark “Butter Sponge.” As we saw in the Marico Limited v. Agro Tech Foods Limited case, the Bombay High Court had held that the word “Saffola” was a coined term and not descriptive in nature. Similarly, the Defendant’s use of the word “Savis” is a coined term and not descriptive in nature. The use of a different logo by the Defendant further strengthens the argument that there is no likelihood of confusion between the two trademarks.

The Defendant has invested heavily in the business, marketing, and expansion of their trademark “Savis Butter Sponge.” As we saw in the Bajaj Auto Ltd. v. TVS Motor Company Ltd. case, the Supreme Court had held that the plaintiff could not claim any exclusive rights in the technology or features of the product. Similarly, the Plaintiff cannot claim any exclusive rights over the term “Butter Sponge” or any similar-sounding term. The Defendant has invested significant resources in establishing their brand in the market, and an injunction against their use of the trademark would cause them significant harm.

Based on the case laws referenced earlier, it is evident that the Plaintiff’s case for an injunction against the Defendant’s use of the trademark “Savis Butter Sponge” is not sustainable. The use of a different name and logo by the Defendant, coupled with the Plaintiff’s lack of exclusive rights over the term “Butter Sponge,” makes it unlikely for confusion to arise in the minds of consumers. We had presented a detailed analysis of the differences between our client’s trademark “Savis Butter Sponge” and the opponent’s trademark “Butter Sponge”. these differences are substantial and support the distinctive nature of our client’s trademark.

1. Name: The primary point of difference between the two trademarks is the name. Our client’s trademark, “Savis Butter Sponge,” includes the word “Savis,” which is a unique and distinctive term that is not included in the opponent’s trademark. The word “Butter Sponge” is a generic term that is commonly used in the industry.

1. Logo: The logos of both trademarks are distinctly different. Our client’s trademark includes a logo with a unique font style, color, and design. The opponent’s trademark includes a different logo with a different font style, color, and design. The two logos are not similar in any way and can be easily differentiated.

1. Business Investment: Our client has invested heavily in the business, marketing, and expansion of the trademark “Savis Butter Sponge.” The trademark has gained significant recognition in the industry due to its unique name, logo, and quality of the product. Any injunction against our client’s trademark would cause substantial financial losses and harm the business’s reputation.

Consumer Confusion: The opponent’s trademark “Butter Sponge” may lead to consumer confusion. Consumers may mistake our client’s trademark “Savis Butter Sponge” with the opponent’s trademark due to the generic term “Butter Sponge.” However, the unique name and logo of our client’s trademark make it distinguishable from the opponent’s trademark.

We had requested the court to consider the substantial differences between our client’s trademark “Savis Butter Sponge” and the opponent’s trademark “Butter Sponge.” Our client’s trademark is unique, distinctive, and has gained significant recognition in the industry due to its quality and branding. Any injunction against our client’s trademark would cause irreparable harm to the business. We request the court to dismiss the opponent’s case and provide necessary protection to our client’s trademark.

Case reference: HUL vs Gujrat Co-opertive

Hindustan Unilever Limited v. Gujarat Cooperative Milk Marketing Federation Ltd. (2015) – In this case, the plaintiff Hindustan Unilever Limited had filed a suit seeking an injunction against the use of the mark “Kwality Walls” by the defendant Gujarat Cooperative Milk Marketing Federation Ltd. The plaintiff contended that the use of the mark “Kwality” by the defendant was an infringement of their trademark “Kwality” for ice creams. However, the Bombay High Court vacated the injunction, citing that the word “Kwality” was a descriptive term and not distinctive. The court held that the plaintiff’s case was not sustainable as they had failed to prove that the use of the mark “Kwality” by the defendant had caused confusion among the consumers.

It is crucial to note that challenging a temporary injunction can be a complex legal process and requires a comprehensive understanding of trademark law and civil procedure. Therefore, it is advisable to seek the guidance of a legal expert to ensure the best possible outcome. Prakasha & Co can provide legal and trademark advice and guidance to help the defendant challenge the injunction effectively.

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How to protect your Trademark with injunctions?

Understanding Trademark Infringement

Temporary Injunction under Order 39, Rule 1 and 2

Prima Facie Case of Trademark Infringement

Irreparable Harm or Injury

Balance of Convenience

How to challenge the Court’s temporary injunction?

Reference Case Study: Savis Butter Sponge V/s Butter Sponge

Case reference: HUL vs Gujrat Co-opertive

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