Bombay High Court
Sapat International Pvt Ltd vs Niravi Consumer Llp on 21 July, 2026
CNR No : HCBM020189522025
2026:BHC-OS:16227
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 6387 OF 2025
IN
COMMERCIAL IP SUIT NO. 612 OF 2025
WITH
INTERIM APPLICATION (L) NO. 18951 OF 2025
IN
COMMERCIAL IP SUIT NO. 612 OF 2025
SAPAT International Private Limited ... Applicant.
In the matter between:
SAPAT International Private Limited ... Plaintiff.
Versus
NIRAVI Consumer LLP and Ors. ... Respondents/Defendants.
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Dr. Birendra Saraf, Senior Advocate a/w. Mr. Hiren Kamod, Mr. Praver
Sharma, Ms. Suchita Chavan i/by Mr. Prabhakar Jadhav for the
Applicant/Plaintiff.
Mr. Alankar Kirpekar a/w. Mr. Chinmay Pagedar, Mr. Ayush Tiwari, Mr.
Shekhar Bhagat i/by Shekhar Bhagat and Neelaja Kirpekar for the
Respondent/Defendants.
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Coram : Sharmila U. Deshmukh, J.
Reserved on : May 05, 2026
Pronounced on : July 21, 2026
ORDER :
1. The captioned Suit came to be filed alleging that the
Defendants acts constitute infringement of the plaintiff’s
registered trade mark “SAPAT” by unlawful use and constitutes
passing off their goods as that of the Plaintiff.
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2. The interim application seeks inter alia injunctive reliefs
against the Defendants from manufacturing or marketing the
impugned product i.e. tea bearing the impugned mark “SAPAT”
resulting in infringement of Plaintiff’s registered trade mark in
Class 30 and operating counters/outlets/stores for selling tea using
the mark “SAPAT” or similar goods or services and against passing
off the impugned goods as that of the Plaintiff.
3. The Plaintiff Company was earlier known as Sapat Packaging
Industry Private Limited. It is contended that in or around the year
1987, Late Ramashankar Haribhai Joshi founded Sapat & Co. and
started selling tea under the name “SAPAT” and also marketed
“SAPAT LOTION” followed by launch of tea outlet in the year 1905.
The Plaintiff claims to be successor in title of Sapat & Co. in so far
as the trade mark “SAPAT” in relation to tea is concerned. The
plaint sets out the trade mark registrations obtained by its pre-
decessor in title in Class 30 with the earliest registration of the year
1944 of the mark “ROSE PEKOE” with the device of half moon and
star. Subsequently in the year 1957, registration was secured of
the word mark “SAPAT” in Class 30. The Plaintiff’s pre-decessor in
title had also secured registrations in Class 5 in respect of SAPAT
Lotion, SAPAT Malam and the word mark SAPAT in Class 3 and 5.
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4. In the year 1995, the partners of Sapat & Co. which included
Anish Jayant Joshi and Nikhil Jayant Joshi, who are the present
directors of the Plaintiff company, assigned their businesses and
the business of tea was assigned to the Plaintiff and the business
of health care was assigned to M/s. Sapat & Co. Nashik (Bombay)
Private Limited now known as Sapat Global Health Private Limited
exclusively. In the records of the trade mark registry, the Plaintiff
and the said Sapat Global Health Private Limited came to be
recorded as subsequent proprietors of the registered trade marks
in Class 30 and Class 3 and 5 respectively.
5. The Plaintiff in the year 2006, secured registration of the
trade mark and it variants in various classes
including in Class 30. It is pleaded that every product packaging of
Plaintiff mentions the house-mark SAPAT. The sales turnover and
the advertisement expenses are set out in paragraph 18 of the
plaint.
6. The Defendant No.1 is a partnership firm of Ritu Nikhil Joshi
and Defendant No.3 and Defendant No. 2 is the partnership firm of
Nikhil Joshi (who is director of Plaintiff Company) and Ritu Nikhil
Joshi. The Defendant No.3 has filed rectification applications
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against the Plaintiff’s registered trade mark “SAPAT”. The
Defendant No.1 markets its product i.e. tea under the mark
“NIRAVI” through outlets/stores/ counters owned/managed by
Defendant No.2. Till 19th June, 2024, the Defendant No.2 was
procuring tea from the Plaintiff and selling the same under the
hoarding/signage/outlets depicting the trademark SAPAT of the
Plaintiff, which supply thereafter ceased. The Defendant No.2 while
dealing with the Plaintiff Company’s products as business
arrangement had been using the trade name Sapat & Co. for issuing
sales invoices in respect of Plaintiff’s tea sold by Defendant No.2.
7. In the last week of June, 2024, the Defendant No. 2 displayed
the signage depicting the brand name “NIRAVI”
along with the mark “SAPAT” over its counters/outlets/hoardings
without the consent of the Plaintiff. There is exchange of
correspondence/notices between the parties by which the
Defendant No.2 was called upon to cease and desist from using all
trade marks pursuant to the termination of supply of tea to the
Defendant No.2. It is submitted that the Plaintiff is not concerned
with the mark “NIRAVI” and the objection is to use the mark
“SAPAT” by placing the hoarding/signage and also by affixing
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adhesive tapes bearing the impugned mark “SAPAT” on the tea sold
under the brand name “NIRAVI”.
8. By order of 28th January, 2025 passed by this Court, the
Defendant’s statement was recorded that without prejudice to
their rights and contentions, wherever the Defendants are selling
tea in packaged form, they shall not use the mark “SAPAT” on the
packaging/trade dress and will not use the mark “SAPAT” while
advertising its product of packaged tea. Subsequently Interim
Application (L) No.18951 of 2025 was filed impleading the partners
of Defendant Nos.1 and 2 alleging use of “SAPAT” for marketing
“NIRAVI” tea and claiming violation of order dated 28th January,
2025.
9. In the reply affidavits to the Order 39 Rule 2A application, the
contention was that the statement made was that Defendants will
not use “SAPAT” while selling tea in packaged form and Defendants
are selling loose tea and there is no restriction on selling loose tea
using trading name “Sapat & Co”. The Defendants are engaged in
selling loose tea through outlets operating under the trading name
i.e Sapat & Co. Nashik since seven decades. The shops at Nashik are
displaying the signages to show that they are the authorised
re-sellers of SAPAT NIRAVI products originating from Sapat Global
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Health Private Limited. The Shop Act license of Sapat & Co. of the
year 1973 is annexed to the reply affidavit. It is further stated that
in order to avoid any allegation of contempt, the Defendant No.2
instead of issuing bills in the name of Sapat and Co. Nashik, have
started using new invoice/bill book.
10. The reply Affidavit to the Plaintiff’s application under Order
39 Rule 1 and 2 of CPC contends that the Defendant Nos.1 and 2
are selling health beverages marketed by Sapat Global Health
Private Limited and not using the mark “SAPAT” for manufacturing
or marketing tea, without prejudice to the contention that
Defendant No.2 is entitled to use the mark “SAPAT” even for tea.
The Defendants have denied the exclusivity claim of Plaintiff over
the mark “SAPAT’ in relation to tea business. The Defendants
contend that there is no direct evidence of transmission of mark
“SAPAT” for tea business from Late Ramashankar Haribhai Joshi to
Plaintiff or Sapat & Co. (Bombay) and that the tea business was
individually owned by Late Ramashankar Joshi. As Late
Ramashankar Joshi died intestate in the year 1958, the rights
devolved on all the legal heirs by successorship and not by way of
assignment from one legal entity to another. It is stated that there
is no official partition between the family members of Late
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Ramsahankar Joshi and Late Jayant Joshi in relation to tea
business.
11. It is contended that in the year 1897, Late Ramshankar Joshi
started trading under the mark “SAPAT LOTION” and in the year
1905, started trading under the name and style “SAPAT” in relation
to tea. Thereafter, Late Ramashankar Joshi started conducting
business in Class 5 goods through Sapat and Co. Limited till 1947
and the trade mark applications were filed by Sapat and Co.
Limited, which came to be assigned to Sapat & Co.-the partnership
firm of Ramashankar Joshi in 1947 after the dissolution of Sapat &
Co. Limited. The tea business was not conducted under the mark
“SAPAT” by Sapat and Co. Limited but under the mark “Rose Pekoe”
with device of Chand and Tara, which was applied for registration
claiming user since 1907.
12. The mark of “Rose Pekoe” with device of Chand and Tara was
assigned to the partnership firm Sapat & Co. In the year 1947, the
partnership firm of Sapat and Co. (Bombay and Nashik) was
constituted from which Plaintiff seeks to derive the title, whereas
the partnership deed of Sapat & Co. of 1947 shows that the firm
was not conducting business of tea in the year 1947.
13. In the year 1957, for the first time it was proposed that tea
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business would be conducted by the partnership firm i.e. Sapat &
Co. and application for trade mark registration was filed on
proposed to be used basis and not by claiming user since 1905. It
was claimed that the tea business of Late Ramashankar Joshi was
never assigned or transferred to Sapat and Co. (partnership firm)
till his death and remained the joint property of all legal heirs and
no exclusivity can be claimed by Plaintiff over the mark “SAPAT” for
Class 30.
14. It is further submitted that Defendant No.1 is not using the
mark “SAPAT” in respect of any of the products falling in Class 30.
The Defendant No.2 through its trading name Sapat and Co., since
last seven decades is selling Class 3 and Class 5 products along with
Class 30 products. After the demise of Late Ramashankar Joshi, the
tea business was being conducted by Late Shri Jayant Joshi under
the trading name Sapat and Co. Nashik. Subsequently Nikhil Joshi
joined Late Shri Jayant Joshi and after the demise of Late Jayant
Joshi, the deponent i.e. Ritu Joshi is conducting business with her
husband in the name and style of Sapat and Co. Nashik, which firm
is the property of Defendant No.2 and Defendant No.2 is thus
entitled to conduct business of selling loose tea under the trading
style “Sapat and Co.” Nashik and/or under the trade mark “SAPAT”.
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15. The franchisees of Sapat Global Health Private Limited are
legally and validly depicting the registered mark “SAPAT” on the
signage of shops under the written permission of registered
proprietor i.e. Sapat Global Health Private Limited, which is
entitled to use the mark “SAPAT” with “NIRAVI” for Class 3 or Class
5 goods without any permission from any entity.
16. It is contended that the Defendant No.2 has been purchasing
loose tea from the Plaintiff as well as from other traders of loose
tea in the market and also reselling other products such as perfume
and coffee since the year 1990. Sapat and Co. Nashik was
independently carrying on business of selling loose tea from its
franchisees at Nashik and nearby vicinity. In the year 2024, as there
was FSSAI violation, the Defendant No.2 stopped purchase of the
tea from the Plaintiff and the present suit is a counterblast to the
NCLT proceedings filed by Nikhil Joshi.
17. The defence of acquiescence is raised as since past 7 decades
and at least since 1990, the Plaintiff is aware that the Defendant
No.2 and/or Sapat and Co. Nashik is buying loose tea powder from
the Plaintiff and also from market and selling it under the trade
name Sapat and Co. (Nashik) and also under the trade mark
“SAPAT”. The Defendant Nos.1 and 2 have decided to discontinue
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use of adhesive tapes bearing the mark “SAPAT NIRAVI”, which was
created solely for promoting Class 5 goods till the hearing of the
interim application. Insofar as the representation on the social
media pages is concerned, it is contended that the Facebook page
is created by a shopkeeper at Manmad, which has now been
updated to remove the infringing sentence.
18. Dr. Saraf, learned Senior Advocate appearing for the Plaintiff
points out the registration of the Plaintiff as subsequent proprietor
of the trade mark SAPAT under Class 30. He submits that the
Plaintiff has also applied for variants of the trade mark SAPAT and
considering the same, NIRAVI will be associated with the Plaintiff.
He submits that the Defendant No.1 was formed in 2024 and
Defendant No.2 is formed in 2017 and is converted from
partnership firm. He submits that till 2024, the Defendant No.2 was
engaged in procuring tea from the Plaintiff and was therefore
permitted to sell tea under the hoarding depicting the trade mark
SAPAT. He would further point out the admissions in the reply
communication addressed by Nikhil Joshi on 23rd April, 2024 that
the Plaintiff is entitled to claim exclusivity in the trade mark SAPAT
in respect of tea.
19. He submits that a formal cease and desist notice was issued
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to the Defendant No. 2 on 4th July, 2024 to cease use of all trade
marks/logos belonging to the Plaintiff company as the franchise
agreement had expired/terminated, to which there was no
objection by Defendant No. 2 and points out the admission in the
email of 26th July, 2024 about stoppage of supply of tea by Plaintiff
since 19th June, 2024.
20. He submits that the Defendant No.2 claims to be prior
adopter and user of mark SAPAT by use of Defendant No. 2 and/or
Sapat and Co. Nashik since over five decades. He further points out
the affidavit-in-reply filed by Ritu Joshi stating on oath that the
Defendant Nos.1 and 2 are not using the mark SAPAT for
manufacturing and marketing of tea though at the same time,
claiming right to use the mark SAPAT even in respect of tea. He
submits that it has been reiterated that Defendant No.1 is not
using the mark SAPAT in respect of product in Class 30 voluntarily
though the said averment is without prejudice. He would further
point out that a claim has been made that Sapat & Co. Nashik is
property of Defendant No.2 without any document being on
record. He submits that based on a solitary invoice of the year 1990,
which is also prior to the assignment of mark in favour of Plaintiff,
the right of prior user is sought to be established.
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21. He submits that there is no question of acquiescence as the
permission to use the trade mark was by reason of Defendant No. 2
marketing the tea supplied by Plaintiff.
22. Drawing attention to the photographs annexed at Page 430
to 432, he submits that the Defendants are displaying the signage
of “SAPAT” along with name “NIRAVI” for selling tea and are also
affixing adhesive tapes having the mark “SAPAT” on NIRAVI
packaged tea. He would further point out the Facebook page of
SAPAT tea outlet, Manmad with the introduction that SAPAT tea is
now SAPAT NIRAVI loose Tea as also the rate card of NIRAVI which
shows SAPAT mixture being sold. He submits that the substantial
business of Defendants is tea and points out the photographs
annexed to the additional affidavit in Interim Application (L)
No.18951 of 2025 to demonstrate that the products which are sold
from the Defendant’s outlets are mainly tea. He submits that the
Defendants have adopted a dubious method of placing a counter of
healthcare products in the shops in an obscure manner to support
use of the mark SAPAT. He would submit that there are no
pleadings and material to show the products sold in these outlets.
23. He submits that reliance is placed on one document of 1990
to show use of trading name of Sapat and Co. which was also in
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respect of tea purchased from the Plaintiff. He submits that those
invoices which are used in the name of Sapat and Co. have now
been changed to the Defendant No.2’s name as set out in the
affidavit-in-reply to the Interim Application (L) No.18951 of 2025.
He submits that under the provisions of Section 29 of the Trade
Marks Act, 1999 (for short, “Trade Marks Act“) even the use of a
registered trade mark for the purpose of advertising the goods and
services, amounts to infringement. In support, he relies upon the
following decisions:
(i) Power Control Appliances and Ors. v. Sumeet
Machines Pvt. Ltd. and Ors.1
(ii) Lupin Limited vs. Eris Lifesciences Pvt. Ltd. and Ors. 2
(iii) Velcro Industries B.V. and Ors. v. Velcro India Ltd.3
(iv) MCAM Surlon India Ltd. vs. Metalon Marketing Delhi
Partnership Firm and Ors.4
(v) Minco India Pvt. Ltd. v. Minco India Flow Elements
Pvt. Ltd.,5
(vi) Bajaj Electricals Limited v. Metals & Allied Products
and Ors.6
(vii) Laxmikant V. Patel v. Chetanbhat Shah and Ors.7
(viii) Gujarat Bottling Co. Ltd. and Ors. v. Coca Cola
Company and Ors.8
(ix) Macleods Pharmaceuticals Limited v. Union of India
and Ors.9
1 1994 (2) SCC 448
2 2016 (67) PTC 144 (Bom)
3 1993 (1) ARBLR 465 (Bom)
4 MANU/DE/5691/2024
5 IA(L)/12616/2024 dated 06th January, 2026
6 1998 (8) PTC 133 (Bom
7 (2002) 3 SCC 65
8 (1995) 5 SCC 545
9 2023 SCC OnLine Bom 408sa_mandawgad 13 of 47
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24. Per contra, Mr. Kirpekar, learned counsel appearing for the
Defendants points out the array of parties to contend that the
dispute is between legal heirs of Late Jayant Joshi. He submits that
there is no absolute division of tea business between the family
members and if the corporate veil is lifted then it is only one family
being the legal heirs of Late Jayant Joshi. He would submit that
Defendant No.3 is impleaded unnecessarily and is unconnected
with present dispute.
25. Pointing out the pleadings in the plaint, he submits that there
is admission that Sapat & Co had been involved in selling Class 5
and Class 30 products simultaneously as one entity since 1905 and
there is uninterrupted use of SAPAT since 1897. He points out the
admission in the plaint that use of the mark SAPAT is first adopted
in relation to SAPAT Lotion. He points out that registration in Class
30 dated 27th July, 1944 was for “Rose Pekeo” with device of Chand
Tara Device and that the registration of the word mark SAPAT
dated 20th December, 1957 is much later than the use of trade
name Sapat & Co. as trade name since 1897 for Class 5 products
and/or 1905 for tea outlets. He submits that the plaint pleads that
in the year 1995, the trade mark SAPAT came to be assigned to two
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different entities for Class 30 and Class 5 and therefore one entity
cannot be restrained from advertising its mark as per trade
practices.
26. He submits that SAPAT is the house mark and the Plaintiff’s
websites represent that SAPAT has three sectors i.e. tea, consumer
health and social development and thus even after 1995, there is
no watertight separation of business of SAPAT group. He submits
that the Joshi family is known as Sapat family and hence their
personal identity is almost equivalent to their name.
27. He submits that the Plaintiff’s grievance is that the signage of
SAPAT NIRAVI at the outlets in Nashik from where Defendant No.2
earlier used to sell loose tea under the mark SAPAT will create
confusion and it will creation association of the mark NIRAVI with
SAPAT. He submits that SAPAT NIRAVI mark is owned by Sapat
Global Health Private Limited and used in relation to Class 3 and 5
products and hence there is no infringement. He submits that
Defendant No.2 is authorised re-seller of SAPAT NIRAVI Class 5
products and is entitled to display the signage at the outlet. He
submits that use of NIRAVI in relation to loose tea does not
constitute infringement. He submits that there are two registered
proprietors of the mark SAPAT in different classes and it has to be
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accepted that there is bound to be some association and does not
amount to actionable association due to use of SAPAT NIRAVI. He
submits that the association, if any, is between SAPAT NIRAVI
health beverages and/or NIRAVI tea, which cannot give cause of
action to the Plaintiff. He submits that as there are two registered
proprietors of mark SAPAT, even if the trade channel is common,
the same does not provide cause of action for infringement of
trade mark.
28. He submits that as Defendant No.2 is using the mark SAPAT
NIRAVI as permitted user of Sapat Global Health Private Limited in
respect of Class 5 and just because tea under different mark NIRAVI
is sold in the same shop does not constitute infringement.
29. In so far as passing off is concerned, Mr. Kirpekar submits that
Sapat Niravi health beverages are sold by Sapat Global Health
Private Limited who is the prior adopter and user of the mark
SAPAT and is entitled to claim goodwill and reputation from 1897
as Class 5 product i.e. Sapat Lotion were sold prior in point of time
as compared to tea. He submits that Plaintiff cannot claim any right
over the mark NIRAVI and cannot claim passing off by use of
NIRAVI for tea. He submits that signage outside the shop of
Defendant No.2 does not amount to misrepresentation. He submits
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that the signage represents that SAPAT NIRAVI health beverages
are available in the shop. He submits that the product categories in
the shop are kept separate for the purpose of indicating the trade
origin and points out photographs depicting the signage over the
counter.
30. He submits that even the slightest possibility of association is
nullified as there is clear notice at point of sale that NIRAVI tea is
product of Niravi Consumer LLP. He submits that Defendant No.1
is not interested in creating any association of NIRAVI with SAPAT
as loose tea of SAPAT has lost its goodwill.
31. He submits that having acquiesced for more than 30 years
accepting such situation, it is not open for Plaintiff to dictate the
manner of use by other group entities of their prior used, prior
adopted and prior registered mark for their own products.
32. He submits that Sapat & Co. is a partnership firm carrying on
its business as M/s Sapat & Co. at Bombay and Nashik since 1947.
He points out the annexures to limited affidavit in reply to contend
that Sapat & Co. was to conduct its business at Bombay, Nashik and
other places. He points out the pleading in the reply affidavit filed
by Ritu Joshi to contend that Sapat & Co. was carrying on business
at Nashik of trading in tea and Coffee atleast since 1 st June, 1973
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and the shop act license was renewed on 22 nd March, 2010, which is
subsequent to the family arrangement of 1995. He would further
point out to the purchase invoice of the year 1990 to substantiate
the case of Sapat & Co. Nashik being a different entity trading as
general merchants and also involved in tea business at Nashik,
which was buying tea not only from Plaintiff but also other
companies.
33. He submits that by the family arrangement of the year 1995,
only registrations of the trade mark were assigned and the business
of Sapat & Co. Nashik as general merchants and loose tea sellers
continued without any objection. He submits that there is no denial
by the Plaintiff to the contention of independent existence of
Sapat & Co. Nashik in the pleadings and seeks permission to bring
on record the extract of register of firms to show independent
existence. He submits that Plaintiff acquiesced in use of the mark
SAPAT by Sapat & Co. Nashik.
34. Dealing with the arguments of Dr. Saraf, Mr. Kirpekar would
submit that the Plaintiff’s claim that tea business started in 1897 is
not substantiated by any document and there is no document to
show that Late Ramashankar Joshi assigned his mark alongwith
goodwill to Sapat & Co. Bombay and Nashik. He submits that Sapat
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and Co. Nashik has separate shop act license of 1973 and there is an
admission that Late Ramashankar Joshi was carrying on business
since 1905 in relation to tea which was carried forward as inherited
business by legal entities including Sapat & Co. Nashik.
35. He submits that the SAPAT is a housemark used by all group
entities demonstrated from the extract of webpages. He submits
that there is no dispute to the assignments and Defendant No.2 is
raising the ground of prior and continuous user and acquiescence
under law.
36. He submits that the balance of convenience is in favour of
the Defendants as Defendant No.2 is continuously using Sapat &
Co. Nashik since the year 1897 and as an independent entity at
least since 1973 to the full knowledge of the Plaintiff and will
suffer irreparable loss despite taking all efforts to indicate the
origin of the products. He submits that any injunction will stall the
efforts of promotion of health beverages by Sapat Global Health
Private Limited which is not even a party to the present suit. In
support, he relies upon the following decisions:
(i) Proctor & Gamble Health Ltd. and Anr. Vs. Horizon
Biochemicals Pvt. Ltd. and Ors.10
(ii) Chemco Plastic Industries Pvt. Ltd. in Chemco Plastic
10 IA(L) No.39102 of 2025 in COMIP(L)/38975 of 2025
dated 17.03.2026sa_mandawgad 19 of 47
ia 6387-2025 (finalised).docxIndustries Pvt. Ltd. v. M/s. Chemco Plast.11
37. In rejoinder, Dr. Saraf would contend that once a mark is
assigned, no claim of prior user can be pressed. He submits that
every assignor will be a prior user and after the assignment cannot
continue to claim rights as a prior user. He would further submit
that the Defendant’s case in the limited affidavit-in-reply is that in
the year 1947, the partnership firm was constituted to conduct the
business under the name of Sapat & Co. at Bombay and Nashik and
not that there is any separate partnership firm of Sapat & Co.
registered at Nashik. He would further point out that the
Defendants have contended that the tea business was not carried
out by Sapat & Co. Bombay and Nashik after 1947. He submits that
Sapat & Co. Nashik Limited was voluntarily wound up and the
goodwill and assets were transferred to Sapat & Co. and from Sapat
& Co. to the Plaintiff. He submits that in the Plaintiff’s specific case
that the Defendant No.2 was selling the Plaintiff’s tea and
therefore common law license was given. He submits that there is
no document produced except the invoice of the year 1990,
whereas, he could have brought several invoices as well as the
Chartered Accountant’s certificate.
11 IA/2165/2024 in COMIP No.80/2024 dated 03.12.2025.
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38. Rival contention now falls for determination:
39. The cause of action for infringement of Plaintiff’s trademark
“SAPAT” in relation to tea is placement of hoardings/signages at
the outlets of Defendant No.2 bearing the trade mark SAPAT for
sale of NIRAVI tea, the sale of NIRAVI tea by Defendant No 2 by
affixing adhesive tapes bearing the mark SAPAT on the packaging
of NIRAVI tea and price list of tea products displayed from the
counters of Defendant No.2 using the mark SAPAT. The additional
act of infringement is claimed in the application under Order 39
Rule 2A by reason of advertisement of tea products by issuing
invoices in the name of Sapat & Co. Nashik in defiance of the
statement recorded in the order of 28th January, 2025 that the
Defendants while selling tea in packaged form will not use the
mark SAPAT on the packaging/trade dress and while advertising
their product of packaged tea.
40. The issues which would arise broadly arise for consideration
are:
(a) Whether Plaintiff has the exclusive right to use the
trade mark “SAPAT” in respect of tea.
(b) Whether the Defendant No.2 is prior user and adopter
of mark “SAPAT” by use of trading name Sapat & Co.
Nashik for selling tea and other products.
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(c) Whether consequent to the assignment of trademark
“SAPAT” in favour of Plaintiff in the year 1995, Sapat &
Co. can continue the use of the trademark “SAPAT” in
respect of tea.
(d) Whether Defendant No.2 is entitled to the use of
signages depicting the mark “SAPAT” alongwith
“NIRAVI” outside its outlets.
41. The reply affidavit of the Defendants assail the Plaintiff’s
claim to exclusive use of the trademark “SAPAT” in respect of tea
business. The conspectus of the Defendant’s case is that the tea
business was carried out by Sapat & Co. Nashik Limited under the
mark “ROSE PEKEO” with device of Chand-Tara. Sapat & Co. Nashik
Limited dissolved in the year 1947 and “ROSE PEKEO” trade mark
was assigned to Sapat and Co., a partnership firm which was
constituted on 1st August, 1947 and engaged only in business of
Class 5 products. On 20th December, 1957, Sapat and Co. filed an
application for registration of mark SAPAT on proposed to be used
basis in Class 30. Late Shri Ramashankar Joshi expired in the year
1958 and till his death was carrying on business of tea under the
mark SAPAT and had not assigned or transferred the mark “SAPAT”
to Sapat and Co. Bombay at any point of time. In the year 1958,
Jayant Joshi starting conducting business of tea under name and
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style of Sapat and Co. simultaneously in Bombay and Nashik and till
then Sapat and Co. only carried out business in Class 5 products.
The mark “SAPAT” and tea business remained the estate of Late
Ramshankar Joshi to be inherited by his legal heirs.
42. It is claimed that there is no assignment of tea business or
the mark SAPAT from Ramashankar Joshi to Sapat and Co.
partnership firm and consequently Sapat and Co. could not have
assigned the mark SAPAT in Class 30 product to the Plaintiff. The
records of trade mark registry presents a different picture. The
present action is for infringement of trade mark which is governed
by the statutory provisions of Trade Marks Act, 1999. The extract of
trade mark journal in respect of mark “SAPAT” as regards the
application No.182717 dated 20th December, 1957 by Sapat & Co.
shows user claim since the year 1896. Apart from the said
document, the Defendant’s submission overlooks the statutory
provisions of Trade Marks Act, 1999, which recognises the exclusive
right of a registered proprietor to the use of the trade mark in
relation to the goods and services in respect of which the trade
mark is registered and to obtain relief in respect of infringement of
the trade mark. Registered proprietor is defined under Section 2(1)
(v) of the Trade Marks Act, as the person who for the time being is
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entered in the register as a proprietor of the trade mark. Section 28
and Section 29(1) of the Trade Marks Act, read as under:
“28. Rights conferred by registration.–(1) Subject to the
other provisions of this Act, the registration of a trade mark
shall, if valid, give to the registered proprietor of the trade
mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade
mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by
this Act.
(2) The exclusive right to the use of a trade mark given
under sub-section (1) shall be subject to any conditions and
limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors
of trade marks, which are identical with or nearly resemble
each other, the exclusive right to the use of any of those trade
marks shall not (except so far as their respective rights are
subject to any conditions or limitations entered on the
register) be deemed to have been acquired by any one of
those persons as against any other of those persons merely by
registration of the trade marks but each of those persons has
otherwise the same rights as against other persons (not being
registered users using by way of permitted use) as he would
have if he were the sole registered proprietor.
29. Infringement of registered trade marks.–(1) A
registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which is identical with,
or deceptively similar to, the trade mark in relation to goods
or services in respect of which the trade mark is registered
and in such manner as to render the use of the mark likely to
be taken as being used as a trade mark.
(2) ………..
(3) ..........."
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43. Sections 28 and 29 of the Trade Marks Act,1999 uses the
expression “in relation to goods or services in respect of which the
trade mark is registered” and recognises the exclusive right of the
registered proprietor to use the mark in relation to the goods and
services in respect of which the trade mark is registered. Section 29
speaks of infringement of the trade mark by a person who is not a
registered proprietor and who uses an identical/deceptively similar
trade mark in relation to goods or services in respect of which the
trade mark is registered. Section 29(7) provides that a registered
trade mark is infringed by a person, who applies the registered
trade mark for advertising goods or services. Dr. Saraf has pitched
his case of infringement under Section 29(7) of the Trade Marks Act
by reason of the use of the signage outside the outlets of
Defendant No.2 depicting the mark SAPAT for selling tea and by
issuing invoice of Sapat & Co. Nashik for selling tea.
44. The online status and the legal proceeding certificate
pertaining to the trade mark application No.182717 for registration
of word mark SAPAT discloses that the application was filed on
20th December, 1957 in Class 30. The user detail is on proposed to
be used basis and the name of proprietor is Ramashankar Haribhai
Joshi trading as Sapat & Co. and the names of the other partners
sa_mandawgad 25 of 47
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Packaging Industries Pvt. Ltd. (erstwhile name of Plaintiff) as
subsequent proprietor by virtue of indenture dated 5th January,
1995, copy of resolution passed by assignor dated 4th January,
1995, copy of resolution of Sapat Packaging Industries Ltd dated
4th January, 1995, affidavit of Jayant Joshi dated 7th September,
1999 etc. The order of the Registrar was passed on the request on
Form â„¢ 25 dated 3rd February, 1995 and 4 th May, 1995 dated 12th
November, 1999 recording the name of M/s Sapat Packaging
Industries Pvt Ltd (erstwhile name of Plaintiff) as subsequent
proprietor of the trade mark SAPAT in respect of Class 30 product.
45. The trade mark application No.182717 applied on 20 th
December, 1957 shows the user detail as proposed to be used,
however, the extract of trade mark journal shows that the user is
claimed since the year 1896. In any event, the application shows
that the word mark was registered in favour of Sapat & Co. and in
1995, the Plaintiff’s name was entered as a subsequent proprietor.
46. In respect of the word mark “SAPAT” in Class 5 in respect of
Sapat Lotion, the user is claimed since 1907. The history details
discloses that the name of proprietor was Sapat & Company
Limited and the subsequent proprietor was recorded as Sapat & Co.
sa_mandawgad 26 of 47
ia 6387-2025 (finalised).docxand then Sapat & Co. Nashik (Bombay) Pvt Ltd on 24 th March, 1995
and thereafter the name of Sapat Global Health Pvt Ltd.
47. Since the year 1995, the name of Plaintiff has been recorded
as subsequent proprietor of the mark “SAPAT” in Class 30 products
by assignment from Sapat & Co. There is no rectification application
filed against the Plaintiff’s recordal as subsequent proprietor. The
records of the trade mark registry bears testimony to the
assignment of the tea business and health business respectively to
Plaintiff and Sapat Global Health Pvt. Ltd. as claimed by the
Plaintiff. In response to the show cause notice dated 10th April,
2024 issued by the Plaintiff, Nikhil Joshi-partner of Defendant No.2
has explicitly stated “Thus, it is inappropriate on behalf of the
Company to claim the exclusivity on the Trade Mark “SAPAT” in
relation to any goods except “TEA” and misusing the registration of
stopping the others family members or concerns of other family
members from filing the Application or obtaining the Registration
or using the mark. In other words, the family members are entitled
to use the mark “SAPAT” in respect of all other goods save and
except for which the mark was used. It is stated that “I further say
that, I have no problem if, the Trade Mark “SAPAT” is remaining on
sa_mandawgad 27 of 47
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not used by the Company for any goods or services except “TEA”.”
48. The documents produced on record are sufficient to prima
facie hold that the Plaintiff is the subsequent registered proprietor
of the trade mark “SAPAT” in respect of tea and Sapat Global
Health Private Limited is the subsequent registered proprietor of
the trade mark “SAPAT” in relation to Class 3 and 5 products and
are entitled to the statutory protection in their respective class.
49. Dealing next with the issue of Defendant No.2 being prior
user and adopter of the mark “SAPAT” even in respect of tea. The
claim is that Sapat Lotion was sold in 1897 prior to the registration
of the mark SAPAT in respect of tea, which came later in 1957. The
registered proprietor was however, Sapat & Co. which subsequently
assigned the mark to the Plaintiff in respect of tea and to Sapat
Global Health Pvt. Ltd. in respect of Class 3 and 5 products.
50. The Defendant No.2’s right is premised on the ground that
Defendant No.2 i.e. M/s Arjun Venture (India) LLP is selling class 3
and class 5 products along with Class 30 products, including but not
limited to tea through its trading name “Sapat and Co. Nashik” and
secondly by reason of entitlement to sell health beverages falling
in Class 5 under the mark “Sapat Niravi”. The history is traced
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claiming that the business of tea and other business was carried out
under the trading style Sapat & Co. Nashik, which was run
independently by Late Shri Jayant Joshi, after the death of Late
Shri Ramashankar Joshi, and, the subsequent joining of Nikhil Joshi
and Ritu Joshi in the said business. The firm of Sapat and Co. Nashik
is claimed to be the property of Defendant No.2 LLP and entitled to
conduct business of selling loose tea under the trade mark SAPAT.
51. The Defendant No.2 in order to substantiate its case of prior
use of the mark “SAPAT” by use of trading name Sapat & Co.
Nashik, even in respect of tea has produced a solitary purchase
invoice of 1990 claiming that Defendant No.2, since decades is the
purchaser of loose tea from Plaintiff as well as other traders of
loose tea in the market. There is no explanation as to how the
Defendant No 2 which is an LLP incorporated on 20 th January, 2015
could be trading as Sapat & Co. (Nashik) since last seven decades.
There is no document produced to show the manner in which the
business of firm Sapat & Co. Nashik devolved upon Defendant No.2.
There is nothing on record to show the nexus between Defendant
No.2 and Sapat & Global (Nashik), even assuming for the moment
that there was an independent existence of Sapat and Co. (Nashik).
sa_mandawgad 29 of 47
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52. The invoice of 1990, even otherwise, is prior to the
assignment of the mark SAPAT in respect of tea in favour of
Plaintiff. Defendant No.2 seeks to raise a claim of independent
existence of Sapat & Co. Nashik and right to use “SAPAT” as part of
trading name and not as trade mark. If the material on record is
perused, the partnership deed of 14th November, 1947 of the
constitution of Sapat and Co. placed on record by the Defendant
No.2 records that Ramashankar Haribai Joshi, Jadeshvar
Kripashankar Joshi, Suryakant Ramashankar Joshi and Priyavadan
Ramashankar Joshi have been carrying on business together in
partnership under the name and style of Messers Sapat & Co. at
Bombay and Nashik. The records of trade mark registry recording
the names of subsequent proprietors shows that pursuant to
request on Form â„¢ 24 dated 6th November, 1958, the names of all
partners except Ramashankar Joshi and with the addition of name
of Jayant Joshi trading as Sapat and Co. were recorded as
subsequent proprietors. It appears that Jayant Joshi was inducted
in place of Ramashankar Joshi after his expiry in the year 1958.
Subsequently Nikhil Joshi entered the partnership firm of Sapat &
Co. There is no document produced on record to show either
induction of Ritu Joshi in the firm of Sapat & Co. after death of
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Jayant Joshi or that Sapat & Co Nashik was a distinct entity.
Pertinently the purchase invoice of the year 1990 of Sapat & Co.
Nashik bears the same address of head office as that of Sapat & Co.
Bombay i.e. 113, Cavel Street, Bombay 400 002.
53. The reply affidavit of Ritu Joshi that tea business was not
carried out by Sapat & Co. after 1947 runs contrary to the
submission that Sapat & Co. (Nashik) was carrying on independent
business of loose tea since several decades. It is also pertinent to
note that reliance is placed on solitary document of 1990, whereas
an entity functioning since seven decades would be in possession
of voluminous documents to show its existence. On the other hand,
the use of GST registration of Defendant No.2 on invoices of Sapat
& Co. Nashik militates against the independent existence of Sapat &
Co. Nashik. The solitary purchase invoice of the year 1990 and shop
act license of 1973, are not sufficient to persuade this Court to
come to a prima facie finding that Sapat & Co., Nashik is an
independent entity carrying on business under the trade mark
SAPAT not only in respect of tea but other products and is now the
property of Defendant No.2.
54. In the written submissions filed after conclusion of
arguments, permission is sought to bring on record extract from
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Register of Firms to demonstrate independent registration of
Sapat & Co. Naik since the year 1973, however, no application
seeking such relief was filed.
55. Dr. Saraf is also right in contending that once there has been
an assignment of the trade mark in Class 30 in favour of the
Plaintiff, thereafter the assignor cannot claim any right of prior
user. Such conduct would render the assignment nugatory. It
cannot be accepted that Sapat & Co. would retain its claim of prior
use even after the assignment of the year 1995. It is not the
Defendant’s pleaded case that Sapat & Co. Nashik was a distinct
and separate entity from Sapat & Co. Bombay. In the limited
affidavit-in-reply dated 18th December, 2024 in paragraph 24(g), it is
pleaded that in the year 1947, a partnership firm was constituted to
conduct the business under the name and style of “Sapat & Co.
(Bombay and Nashik)”. Similar pleadings can be found in paragraph
24(l) that since 1958 onwards Jayant Joshi started conducting
business of tea under the name and style of Sapat & Co.
simultaneously in Bombay and Nashik. Prima facie from the
material on record, the defence of Defendant No.2 being prior user
and adopter of the mark SAPAT through the trading name of Sapat
& Co. Nashik cannot be accepted.
sa_mandawgad 32 of 47
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56. The Plaintiff claims that Defendant No.2 was permitted under
common law license to use the mark “SAPAT” on the signages
outside its outlets as it was selling Plaintiff’s product i.e. tea till 19 th
June, 2024. The contents of the email of 2 nd July, 2024 produced at
Exhibit V of the plaint refers to the expiry of previous agreement
for sale of loose tea between the Plaintiff and the Defendant No 2.
The cease and desist notice of Plaintiff dated 4 th July, 2024 calls
upon the Defendant No.2 to cease use of the Plaintiff’s intellectual
property. There is response email by the Defendant No.2 stating
that the Plaintiff has unilaterally stopped supplies to them since
the last supply on 19th June, 2024 and sets out the outstanding
amount. The correspondence discloses the business relations
between the parties and about the procurement of tea by the
Defendant No.2 from the Plaintiff, which explains the use of the
mark SAPAT by Defendant No.2 in respect of tea. Defendant No.2
claims that apart from Plaintiff, Defendant No 2 was procuring tea
from other vendors. Again, apart from the invoice of 1990, no
document has been produced to substantiate the same. Sapat &
Co. Nashik is neither shown to be a distinct entity or an entity
trading independent of Plaintiff’s business relation after the
assignment in favour of Plaintiff. The defence of acquiescence also
sa_mandawgad 33 of 47
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fails as the use by Defendant No.2 was by reason of common law
license given by the Plaintiff during the subsistence of commercial
transaction between the Plaintiff and Defendant No. 2.
57. In the limited affidavit-in-reply,there is bare denial to
Plaintiff’s contention that the supply to the Defendant No.2 has
stopped due to illegal activities of Defendant No.2. The affidavit-in-
reply however does not deal with the claim of the Plaintiff that the
Defendant No.2 was procuring tea from the Plaintiff and selling the
same by depicting the trade mark SAPAT of the Plaintiff on the
boards/signage of outlets.
58. The Plaintiff has instituted the present proceedings due to
the Defendant’s continued usage of signage outside its outlets
depicting the mark SAPAT along with mark NIRAVI. It cannot be
disputed that in so far as use of the mark NIRAVI for tea is
concerned, the Defendants are entitled to use the mark. In so far as
the mark SAPAT NIRAVI is concerned, the Defendants are entitled
to use the mark for marketing products under Class 3 and 5.
However, the use of mark “Sapat” for tea would constitute
infringement of Plaintiff’s trade mark.
59. Mr. Kirpekar would not deny that the Defendant No.2’s shops
are selling tea under the mark NIRAVI and are also selling Class 5
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products under the mark SAPAT NIRAVI. His contention is that by
use of SAPAT NIRAVI, there is bound to be association with Sapat
Group. The point is that it is not merely an association with mark
SAPAT but an association with SAPAT in respect of tea which is
actionable. Considering that there are distinct assignments of the
mark SAPAT in regard to Class 30 and Class 5 and 3, the use of
SAPAT alongwith NIRAVI in outlets selling tea, is bound to create
confusion. A trade mark is brand identifier and has the ability to
simulate sales. The statutory provisions afford protection by
conferring exclusive use of trade mark in relation to products in
respect of which the trademark is registered. Mr. Kirpekar would
contend that Defendant No.2 has always endeavoured to make
efforts to keep the product categories sold under its shops
separate for indicating the source. In the written submissions, the
Defendants have annexed photographs to show signs at the sales
counter indicating the source of origin of SAPAT NIRAVI and that
NIRAVI is a product of Defendant No.1. These photographs are not
part of the Defendant’s pleadings and have been produced in the
written submissions. This development appears to have taken place
during the pendency of the present proceedings.
sa_mandawgad 35 of 47
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60. The signage depicts the mark SAPAT
alongwith the mark NIRAVI. Admittedly, in the same outlets,
NIRAVI tea as well as SAPAT NIRAVI Class 3 and Class 5 products
are sold. The concept of initial interest confusion recognizes that
the confusion in the minds of the consumers arises at the stage of
purchase and at the time of completing the transaction there is no
doubt in the minds of customers regarding the origin of goods. The
test which is required to be applied is whether the customer would
be confused at the initial stage and would be in a state of transient
wonderment, which would apply where the goods are marketed
through same trade channels. Even if the sale counters at the
Defendant’s outlets display the source of origin, the consumers
would enter the shops being drawn by the signages outside the
outlets under the belief that SAPAT tea is being sold in the shops.
After entering the shops, the consumers would be confused as to
whether the NIRAVI tea is associated with SAPAT tea. The
possibility of association and confusion arises as the same outlets
sell tea as well as health beverages. There would have been no
scope for confusion in event the outlets depicting the signage
SAPAT NIRAVI sells only Class 3 and 5 products.
61. The price list of NIRAVI tea outlets includes an item of “Sapat
sa_mandawgad 36 of 47
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mixture”, which is an indication of sale of tea under the mark
“SAPAT”. The photographs demonstrate use of adhesive tape
depicting the mark “SAPAT” in respect of NIRAVI tea. The social
media post of a franchisee of Defendants associates NIRAVI tea
with SAPAT. The invoices of the franchisees annexed to the Interim
Application (L) No.18951 of 2025 shows the use of trade mark
SAPAT on the invoices selling NIRAVI tea or as representing
themselves as SAPAT retail outlets, while selling NIRAVI tea.
62. The photographs produced on record along with the
additional affidavit of the Plaintiff would indicate that prominence
has been given in placards placed outside the outlets to the sale of
tea and in a portion of the shop, the health care products have
been placed for sale. There is no material produced on record to
show the extent of sale of Class 5 products from the shop to
substantiate that the outlets depicting the signage SAPAT are
essentially outlets for Class 5 products. The depiction of the mark
SAPAT along with the mark NIRAVI prima facie indicates an
association of the mark SAPAT with tea rather than with products
falling under Class 3 and 5.
63. The Defendant No.2 having failed to prove its right to use
“SAPAT” in respect of tea, the Plaintiff is entitled to injunctive
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reliefs. It is not a case of Plaintiff seeking to decide the manner of
use of trade mark by Sapat Global Health Private Limited but to
restrain the Defendant No 2 who raises an independent claim to
use SAPAT in relation to tea. Defendant No.2 asserts an
independent positive claim to use the mark SAPAT as trading name
of Sapat & Co. in respect of tea on the strength of Sapat & Co
(Nashik) and the signages outside its outlets is prima facie a
representation of the assertion.
64. There can be no doubt that Sapat Global Health Private
Limited is entitled to use the mark SAPAT in respect of the Class 3
and 5. There cannot be any insistence by the Defendants to use the
mark SAPAT outside outlets selling NIRAVI TEA along with Class 3
and 5 products, when any such use indicates an association with the
Plaintiff’s mark SAPAT in respect of tea and is bound to lead to
confusion.
65. Prima facie the Plaintiff has established that it is the
registered proprietor of the trade mark SAPAT in relation to Class
30 products. The use of signages outside the Defendant No.2’s
outlets, after cessation of the business relationship between the
Plaintiff and Defendant No.2, the use of adhesive tape of SAPAT on
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NIRAVI tea-packaged or loose tea, issuance of
invoices by the Defendant’s franchisees using the trade mark
SAPAT and as Sapat retail outlets while selling NIRAVI tea, the
social media posts, the price list of Niravi tea outlets including an
item of “Sapat Mixture” prima facie constitutes
infringement of the Plaintiff’s trade mark “Sapat” in relation to tea.
66. Insofar as the action for passing off is concerned, the test
which is required to be applied is of goodwill and reputation,
misrepresentation and damage. In Laxmikant Patel vs Chetanbhat
Shah (supra), the Hon’ble Apex Court noted in paragraph 11 as
under:
“11. Salmond & Heuston in Law of Torts (Twentieth
Edition, at p.395) call this form of injury as ‘injurious
falsehood’ and observe the same having been
‘awkwardly termed’ as ‘passing off’ and state:-
“The legal and economic basis of this tort is to
provide protection for the right of property which
exists not in a particular name, mark or style but in
an established business, commercial or
professional reputation or goodwill. So to sell
merchandise or carry on business under such asa_mandawgad 39 of 47
ia 6387-2025 (finalised).docxname, mark, description, or otherwise in such a
manner as to mislead the public into believing
that the merchandise or business is that of
another person is a wrong actionable at the suit of
that other person. This form of injury is
commonly, though awkwardly, termed that of
passing off one’s goods or business as the goods
or business of another and is the most important
example of the wrong of injurious falsehood.
The gist of the conception of passing off is that
the goods are in effect telling a falsehood about
themselves, are saying something about
themselves which is calculated to mislead. The law
on this matter is designed to protect traders
against that form of unfair competition which
consists in acquiring for oneself, by means of false
or misleading devices, the benefit of the
reputation already achieved by rival traders.”
67. The Plaintiff has been registered as subsequent proprietor of
the trade mark SAPAT in relation to tea since 1995 and has placed
on record the sales turnover as well as the advertisement expenses
which are duly certified by the Chartered Accountant and shows
substantial sales. In fact the email from Defendant No.2 shows that
for the period from April, 2024 to 19th June, 2024, there was
outstanding amount of about Rs. 74 lakhs towards sale of Plaintiff’s
Sapat tea, which shows the volume of sales. There can be no debate
about the goodwill and reputation which has been earned by the
Plaintiff in respect of its trade mark SAPAT in respect of tea.
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68. Insofar as the misrepresentation is concerned, the use of
signages outside its outlets by Defendant No.2 depicting the mark
SAPAT, the use of the mark by its franchisees on its invoices,
misrepresentation of franchisees as Sapat retail outlets and use of
adhesive tape depicting the mark SAPAT for sale of NIRAVI tea
constitutes act of misrepresentation that the tea marketed under
the mark NIRAVI is associated with the Plaintiff’s Sapat tea.
Considering the goodwill and reputation of the Plaintiff’s mark, the
use of the mark by the Defendants would cause loss to its goodwill
and reputation. The use the registered mark by the Defendant
Nos.1 and 2 constitutes an act of passing off. In so far as Defendant
No.3 is concerned, the plaint does not set out any acts attributable
to Defendant No.3 which would constitute infringement of trade
mark or passing off.
69. In so far as balance of convenience is concerned, the use of
the mark SAPAT by Defendant No.2 was by reason of common law
license of Plaintiff, as the record shows that Defendant No.2 was
marketing tea procured from the Plaintiff. There is nothing on
record to show that Defendant No.2 was marketing tea bought
from other vendors or other products apart from tea under the
trading name of Sapat & Co. Nashik. The use of the mark since last
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several decades, if any, is by reason of being permitted by Plaintiff,
who had the exclusive right to use the mark SAPAT in relation to
tea after the year 1995. The balance of convenience does not
favour the Defendants but tilts in favour of Plaintiff.
70. Dealing now with the decisions cited, the case of Proctor &
Gamble Health Ltd. and Anr. Vs. Horizon Biochemicals Pvt. Ltd.
and Ors. (supra), was in respect of medicinal product and the
contest was between “LIVOGEN” and “LIVOGEM”. This Court in that
case had found the rival marks to be visually and phonetically
similar, however, had not granted the relief for passing off as there
was no material to show misrepresentation. The decision was
rendered on the facts of that case and is inapplicable here.
71. In the case of Chemco Plastic Industries Pvt. Ltd. v. M/s.
Chemco Plast (supra), the Court had considered whether the
concurrent user of “CHEMCO” can be said to be dishonest. In that
case there was material on record indicated that there were
multiple opportunities for the Plaintiff to become aware of the
presence of the Defendant in the market and that the user of
“CHEMCO” was either clandestine or dishonest and applying the
balance of convenience held that the blanket order of inunction
may not be justifiable. The Court also noted the distinction
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between user of “CHEMCO” and “CHEMCO PLAST” as trade mark
and “CHEMCO” as part of trade/business name and domain name
which was in use by the Defendant since last 25 years. In present
case, the Defendant No.2 has failed to prove honest and concurrent
use of the mark SAPAT independent of Plaintiff’s association.
72. In light of the above discussion, the Interim Application
No.6387 of 2025 is allowed in terms of prayer clauses (a) and (d),
reads as under:
“a. Pending the hearing and final disposal of the suit, the
Defendants, their directors, proprietors, partners, owners,
servants, subordinates, representatives, stockists,
retailers, distributors, third party sellers, wholesalers,
dealers, agents and all other persons connected with the
wrongful acts set out in this plaint (including all
distributors/sellers/retailers and marketplaces on the
internet) or such persons claiming through or under them
or acting on their behalf or under their instructions or
acting in concert with them be restrained by an order and
injunction of this Hon’ble Court from in any manner
manufacturing, packaging, marketing, selling, advertising
(including on the internet), offering to sell or dealing in
the Impugned Products or any similar goods or any other
goods or any material bearing the impugned mark SAPAT
or any features thereof or any other mark identical with or
similar to or comprising of trademark SAPAT or any part
thereof resulting in infringement of registered trade mark
no. 182717 in Class 30 in respect of the impugned goods
Tea and counters/outlets/stores for selling Tea or similar
goods or services or in any other manner whatsoever;
d. pending the hearing and final disposal of the Suit, this
Hon’ble Court be pleased to pass a temporary order and
injunction restraining the Defendants by itself, itssa_mandawgad 43 of 47
ia 6387-2025 (finalised).docxpartners, directors, servants, agents, dealers, distributors,
and all persons acting for and on its behalf from using or
causing to be used the impugned trademark SAPAT, the
impugned trade name SAPAT, and/or any other trading
mark/trade name which is identical with and/or
deceptively similar to the Plaintiff’s mark SAPAT in respect
of the goods and services including Tea, counters/outlets/
stores for selling Tea or similar goods or services or in any
other manner whatsoever so as to pass off or enable
others to pass off the Defendants’ businesses and/or the
impugned goods as and for the Plaintiff’s business andor
the said goods, or in any other manner whatsoever;
INTERIM APPLICATION (L) NO. 18951 OF 2025
73. The application under Section 39 Rule 2A of the CPC was
preferred claiming non-compliance of the order dated 28 th January,
2025, passed by this Court. The order of 28th January, 2025, reads
as under:
“. In the reply affidavit filed on behalf of the defendants, in
paragraphs 10, 56, 57 and 58, the defendants have stated,
without prejudice to their rights and contentions, that they are
not using the mark ‘Sapat’ for manufacturing or marketing tea
or any product falling in Class 30, although their specific case is
that, defendant No.2 is entitled to use the mark ‘Sapat’ for tea
also.
2. Apart from this, on instructions, the learned counsel for
the defendants makes a statement, without prejudice to the
rights and contentions of the parties, that wherever the
defendants are selling tea in packaged form, they shall not use
the mark ‘Sapat’ on the packaging / trade-dress and they shall
also not use the aforesaid mark ‘Sapat’, while advertising their
product of packaged tea. This statement shall continue to
operate during the pendency of this application.
3. It is further made clear that all rights and contentions of
the parties are kept open.
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4. Since the pleadings are complete in the present
application, list the same for hearing on 17.03.2025 at 3:30
p.m.”
74. The statement made by the Defendants was without
prejudice to their rights and contentions that wherever the
Defendants are selling tea in packaged form, they shall not use the
mark Sapat on the packaging/trade dress and they shall not use the
mark Sapat while advertising their product of packaged tea. The
application claims that the signages over the outlets owned by the
Defendant No.2 and the use of Sapat and Co. for selling Niravi tea
by issuing cash receipts constitutes non-compliance of the
statement made by the Defendants.
75. In the reply affidavit, it is claimed that the statement made
was in respect of use of the mark Sapat where tea is sold in
packaged form and the Defendants are not selling packaged tea
and are selling loose tea through the outlets that are operating
under the trading name of Defendant No.2. Insofar as the issuance
of invoices is concerned, it is claimed that the order of 28 th January,
2025 do not restrict the use of the trading name Sapat and Co.
Nashik in relation to loose tea.
76. The additional affidavit of Respondent No.4 claims that what
was being sold under the trading name of Sapat and Co. was loose
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tea, which is thereafter packed in pouches bearing the mark Niravi.
77. Perusal of the order would indicate that the statement was
confined to non-use of the mark Sapat in respect of packaged tea
and while advertising their product of packaged tea. There is no
material placed on record by the Plaintiff to show that the invoices
raised were in respect of packaged tea. The invoices indicate that
the most of the invoices raised are in respect of family mixture
which according to the Defendants is not packaged tea but loose
tea sold by the Sapat and Co. Nashik. There is no reason not to
accept the said statement in the absence of material to
demonstrate otherwise. Insofar as the application under Order 39
Rule 1 and 2 is concerned, I have already dealt with the same in the
preceding paragraphs. The use of signages or invoices etc. though
constitutes infringes of the registered trade mark of the Plaintiff, in
my view, the signages would not constitute the violation of the
statement made before this Court and recorded in the order of 28 th
January, 2025.
78. In the application there is no specific pleading that the use of
the mark Sapat or advertisement of the mark Sapat by the
Defendants is in respect of the packaged tea and it is only pleaded
that the Defendants are marketing, advertising and promoting sale
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of the product i.e. tea. The pleadings by itself is insufficient to
arrive at a finding of violation of the order of 28 th January, 2025.
The order of 19th December, 2025 was passed at the ad-interim
stage. Subsequently, in the order of January, 2026, the submission
of Mr. Kirpekar was recorded that insofar as the invoices of third
party dealers are concerned, the Defendants had communicated to
the third party dealers not to use Sapat logo.
79. Upon hearing the learned counsel for the parties at length,
this Court is of the opinion that the statement as recorded in the
order of 28th January, 2025 was only in respect of the use of mark
Sapat on the packaged tea and there is no material on record to
demonstrate to show violation of the said statement by use of the
mark Sapat in respect of packaged tea. Resultantly, Interim
Application (L) No.18951 of 2025 stands dismissed.
[Sharmila U. Deshmukh, J.]
80. At this stage, Mr. Kirpekar, learned counsel for the Defendant
seeks a stay of the order passed in IA(L) No.6387 of 2025. The said
request is opposed by Mr. Jadhav, learned counsel for the Plaintiff.
As there was no interim protection operating, this Court is inclined
to stay the order for a period of four weeks.
[Sharmila U. Deshmukh, J.]
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