Cfa / 516U / 2016M/S Dhanvarsha Oil … vs M/S Hari Industrieshari Oil Mill on 19 May, 2026

Rajasthan High Court – Jaipur

Urn: Cfa / 516U / 2016M/S Dhanvarsha Oil … vs M/S Hari Industrieshari Oil Mill on 19 May, 2026

[2026:RJ-JP:20124]

        HIGH COURT OF JUDICATURE FOR RAJASTHAN
                    BENCH AT JAIPUR

                     S.B. Civil First Appeal No. 283/2016

M/s. Dhanvarsha Oil Mills Pvt. Ltd., F-157-159, Industrial Area,
Kekri, Dist-Ajmer Raj. Through Director Vinod Mittal
                                                         ----Appellant-Defendant
                                       Versus
M/s. Hari Industries (Hari Oil Mill), Mal Godam Road, Bharatpur
(Raj.) Through Partner/Manager/Authorized Signatory
                                                          ----Respondent-Plaintiff

For Appellant(s)              :    Mr. Rishabh Bansal with
                                   Mr. Aman Goyal
For Respondent(s)             :    Ms. Gayatri Rathore, Sr. Adv. assisted
                                   by Ms. Neha Gupta
                                   Mr. Raj Singh Rathore
                                   Mr. Vishal Chauhan



                HON'BLE MR. JUSTICE SAMEER JAIN

                                    Judgment

1 Arguments concluded on                                            09.04.2026
2 Judgment reserved on                                              09.04.2026
3 Full judgment or operative part pronounced                        Full Judgment
4 Pronounced on                                                     19/05/2026



REPORTABLE

In S.B. Civil Misc. Application No. 01/2023

1. The instant application has been moved under the provisions

of Order XLI Rule 27 of CPC for placing additional documents on

record, by the non-appellant/applicant.

2. In compliance with the directions laid down in the ratio of

Iqbal Ahmed (Dead) through LRs vs. Abdul Shukoor,

reported in 2025 INSC 1027, and with the consent of learned

counsel for the respective parties, the application has been taken

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up for consideration and is being decided prior to entering into the

merits of the case.

3. Upon a perusal of the material available on record and

having heard the submissions advanced by the learned counsel

appearing for and on behalf of the respective parties, this Court is

not inclined to allow the said application, and permit placing of

additional documents on record, at this stage, for the reasons

noted ad infra:

3.1 That the instant application has been moved in the year 2023

and the instant appeal was admitted way back in the year 2016.

3.2 That Order XLI, Rule 27 of the Civil Procedure Code

establishes that parties cannot introduce new evidence in an

appellate court as a matter of right; and it is only upon the

discretion of the Court to accept additional oral or documentary

evidence or not. The exceptions to this rule are that the lower

Court has arbitrarily refused to take the documents, as pleaded, to

be taken on record; that the evidence was not discoverable

earlier; that the appellate Court itself requires the evidence, to

enable to pronounce the judgment, or for “any other substantial

cause”.

3.3 That as per the ratio encapsulated in the judgment of

Uttaradi Mutt vs. Raghavendra Swamy Mutt reported in

(2018) 10 SCC 484, the prayer in application and the reasons

stated in the memo therein, do not fall under the ambit of ‘special

cases’ whereby the said plea could be considered.

4. Accordingly, the instant application is dismissed in limine.

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In S.B. Civil First Appeal No. 283/2016:

5. The present appeal has been preferred under Section 96

read with Order XLI of the Code of Civil Procedure, 1908, by the

defendant-appellant assailing the judgment and decree dated

12.05.2016 passed by the learned Additional District Judge No. 1,

Bharatpur in Civil Suit No. 09/2009, whereby and whereunder the

suit for permanent injunction filed by the respondent-plaintiff

under the provisions of the Trade Marks Act, 1999 (hereinafter

referred to as ‘the Act of 1999’) has been decreed against the

defendant.

6. It is undisputed fact on record that the first appeal has been

admitted for hearing and during the course of hearing, execution

and implementation of the impugned final judgment and order

dated 12.05.2016 has been stayed vide order dated 05.10.2016;

and that the respondent-plaintiff moved an application dated

25.08.2020 seeking vacation of the stay order dated 05.10.2016,

stating inter alia, that in that year itself, the appellant has started

‘red color’ new packaging for its brand of edible mustard oil, just

to confuse the customers, being identical with the logo of the

respondent-plaintiff-company.

7. Learned counsel for the appellant-defendant submitted that

the civil suit was instituted by the plaintiff under Sections 27 and

134 of the Act of 1999 seeking reliefs of permanent injunction,

damages, rendition of accounts, and for restraining infringement

and passing off in respect of the trade mark “ENGINE”, depicted

through the device of a coal-based steam rail engine.

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8. The brief facts, as set out by the plaintiff (non-appellant),

before the learned Trial Court were that:

8.1 The plaintiff is a registered partnership firm engaged in

the business of manufacturing and selling edible oil under the

trade mark “ENGINE BRAND”. It was asserted that the plaintiff is

the registered proprietor of the trade mark “ENGINE BRAND” in

respect of manufacturing and marketing of mustard oil, fats,

preserves, pickles, dray and cook vegetables gel, gem, eggs, milk

and other dairy products, by virtue of registration numbers

attained on 23.11.1959, 03.06.1988, and 07.03.1994, which have

been duly renewed from time to time.

8.2 The plaintiff has also obtained registration under the

Copyright Act on 18.02.1997, qua its artistic work of trade mark

“ENGINE” (steam, engine of rail). The plaintiff claims continuous

use of the said trade mark since the year 1957 across India and

asserts exclusive rights over the use of the trade mark “ENGINE”

under the Act of 1999.

8.3 The cause of action for filing the suit is stated to have

arisen when the appellant-defendant commenced a similar

business under the trade mark “METRO ENGINE”, which, according

to the plaintiff, is deceptively similar and likely to cause confusion

and deception among the general public.

8.4 That upon gaining knowledge of the appellant-

defendant’s activities, the non-appellant-plaintiff lodged a

complaint before the AGMARK Authorities on 12.11.2008,

pursuant to which action was taken against the defendant’s license

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on 18.12.2008. Thereafter, the suit in question came to be

instituted before the District Court, Bharatpur.

9. In this backdrop, learned counsel appearing on behalf of the

appellant-defendant stoutly submitted that the appellant herein is

a registered company under the Indian Companies Act, 1956,

dealing with manufacturing and sale of good, high quality

products; and that an application for registration of the trade

mark “ENGINE” (Electricity Engine) had already been filed before

the Registrar of Trade Marks and the same was pending at the

time when the suit in question was subjudice. It was further

contended that the complaint filed by the plaintiff before the

AGMARK Authorities was not in accordance with law and had been

challenged before the appellate court, where the matter, at that

time, remained pending for adjudication.

10. It was further argued that the defendant’s trade mark

“METRO ENGINE” is entirely distinct from the plaintiff’s trade mark

“ENGINE”, both visually and conceptually, and that the artistic

works involved are also dissimilar, thereby negating any likelihood

of confusion or deception among the public. Learned counsel had

further contended that the defendant had its complete address

qua the manufacturing unit at Kekri, and the same is prominently

displayed on its product packaging, which is geographically

distinct from the plaintiff’s manufacturing unit at Bharatpur,

thereby ruling out any possibility of confusion. It was also

submitted that the defendant’s trade mark and artistic features

are easily distinguishable by literate, semi-literate, and even

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illiterate consumers. Accordingly, all claims of the plaintiff were

denied in toto, before the learned Trial Court also.

11. It was apprised to the Court that on basis of the pleadings,

made by the parties, the learned trial court framed the following

issues:

3- mHk;i{kksa ds vfHkopuksa ds vk/kkj ij fuEufyf[kr
fook|d fcUnq dk;e fd;s x;s%&
1&D;k oknh VsªMekdZ ^^batu^^ ¼xksy ?ksjs esa
/kqvk NksM+rk LVhe jsyos batu½ ds ,dek= jftLVMZ
izksijkbZVj] Lokeh ,oa mi;ksxdrkZ gS\ ¼oknh½
2&D;k izfroknh }kjk oknh ds batu VsªaMekdZ
ls feyrk tqyrk esVªks batu ds uke ls 15 fdyks dk
ljlksa rsy dk iSafdx dk mRiknu ,oa fodz; vke
ifCyd esa lafnX/krk iSnk djus dh fu;e ls oknh dks
/kks[kk nsdj mRiknu ,oa fodz; djuk izkjaHk dj
fn;k\ ¼oknh½
3&vuqrks”k \

12. Further, the timeline of litigation and proceedings before the

learned Trial Court was apprised to this Court, stating that in

support of its case, the non-appellant-plaintiff presented two

witnesses, namely PW-1 Manu Agarwal and PW-2 Raj Kumar

Mathur, and produced eighteen documents on record; and

alongside the defendant examined DW-1 Vinod Kumar Mittal and

also placed certain documents on record. Thus, upon appreciation

of the evidence and after hearing arguments from both sides, the

learned Trial Court passed the impugned judgment and decree

dated 12.05.2016 (Annexure-1), whereby the appellant-defendant

was restrained from using the trade mark “METRO ENGINE”. The

relevant portion of the impugned judgment and decree reads as

under:

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” fook|d fcUnq la[;k&3 vuqrks”k

10& fook|d fcUnq la[;k&1 o 2 oknh ds i{k esa
fu.khZr fd;s x;s gS ,slh fLFkfr esa oknh }kjk izLrqr okn
fo:) izfroknh ckcr LFkkbZ fu”ks/kkKk fMdzh fd;s
tkus ;ksX; gSA
vkns’k
^^oknh }kjk izLrqr okn fo:) izfroknh ckcr LFkkbZ
fu”ks/kkKk fMdzh fd;k tkdj izfroknh dks bl gn rd
tfj;s LFkkbZ fu”ks/kkKk ikcan fd;k tkrk gS fd izfroknh]
oknh ds LokfeRo ,oa vkf/kiR; ds jftLVMZ VsªMekdZ okys
batu ljlksa rsy ds mRikfnr ,oa fod; fd;s tkus
okys ,d] nks] ikap ,oa 15 fdyks iSfdax ds blls feyrs
tqyrs esVªks batu ,oa blls feyrs tqyrs VsªMekdZ ds
fdlh iSfdax esa ljlksa rsy dk mRiknu ,oa fodz; u djsa]
fdlh dks cspus dk vuqcU/k u djsa rFkk foKkiu ,oa VsªM
u djsa vkSj ,slk dksbZ dk;Z u djsa ftlls oknh }kjk
mRikfnr ,oa fofdzr jftLVMZ VsªM ekdZ batu ds mi;ksx
,oa miHkksx esa ck/kk mRiUu gks ;k mlds VsªMekdZ
vf/kfu;e ds rgr iznÙk vf/kdkjksa ij foijhr vlj iM+sA
i{kdkjku [kpkZ eqdnek viuk&viuk Lo;a ogu djsaxsA
vkns’kkuqlkj fMdzh ipkZ tkjh gksA^^

13. It was further contended that as the applications for vacation

of stay order dated 05.10.2026, were moved and the same

remained pending, while the appeal awaited final hearing, the

non-appellant preferred a Special Leave Petition against the order

dated 05.10.2016. However, by order dated 26.04.2024, the

Hon’ble Supreme Court declined to interfere with the stay order on

account of delay, while granting liberty to the non-appellant to

move an application for vacation or modification of the stay order.

Pursuant to the liberty so granted, an application was filed on

03.05.2024 seeking vacation of the stay. It was thereafter

observed by a Coordinate Bench of this Court on 10.02.2025 that,

subsequent to the interim order, the appellant-defendant had

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misused the benefit of the stay and had begun imitating the red

and yellow color scheme on the packaging of mustard oil in a

manner that was deceptively and substantially similar to that of

the plaintiff’s product. Howsoever, despite the aforesaid facts

being specifically denied and controverted by the appellant-

defendant; the interim protection order dated 05.10.2016 came to

be modified in the following terms vide order dated 10.02.2025:

“16. Accordingly, the application (IA No.2/2024)
is hereby disposed of, by varying stay order dated
05.10.2016 in following terms:

(i). The stay order dated 05.10.2016, staying the
execution & implementation of judgment and decree
dated 12.05.2016, shall remain continue to operate,
but to the limited extent of staying the decree,
restraining the appellant-defendant from using the
deceptively similar trade-mark of “ENGINE” mustard
oil, which is registered brand and trade-name of
respondent-plaintiff, it means the resplendent-

plaintiff would be at liberty to use trade-name “Metro
ENGINE” to manufacture and sell the mustard oil.
But;

(ii). Until decision of the present first appeal,
appellant- defendant shall not use red, yellow and
other similar colour themes, on the packaging/
pouches of its brand of mustard oil i.e. “Metro
ENGINE”, which colours are being used by the
respondent-plaintiff in packaging/ pouches of
mustard oil of its brand i.e. “ENGINE”.”

14. It was submitted that vide the said interim relief modification

order, directions were also issued for the expeditious and final

disposal of the present appeal.

15. Consecutively, the non-appellant/plaintiff moved an

application under Order XLI Rule 27 CPC seeking permission to

adduce additional evidence in the form of invoices and other

supporting documents. The said application was vehemently

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opposed by the appellant-defendant, as by placing reliance upon

the ratio passed by the Hon’ble Supreme Court in Uttaradi Mutt

vs. Raghavendra Swamy Mutt, reported in (2018) 10 SCC

484. It was contended therebefore that the application was

nothing but an attempt to fill up lacunae in the plaintiff’s case at

the appellate stage and to improve upon deficiencies in evidence

which existed before the Trial Court. It was further submitted that

the power to allow additional evidence under Order XLI Rule 27

CPC is an exception and not the rule, and can be exercised only in

limited circumstances, namely where the learned Trial Court has

wrongly refused to admit evidence, or where despite due

diligence, such evidence could not have been produced at the

stage of trial; and the present case did not fall within any of the

recognized parameters warranting the exercise of such discretion.

16. Learned counsel for the appellant-defendant further

contended that the plaintiff had failed to discharge the burden of

proof as required under law, as it was incumbent upon the plaintiff

to establish its locus standi, prior use, proprietorship of the trade

mark, and the likelihood of deception or confusion. However, no

cogent documentary evidence, such as invoices, sales records,

advertisements, or books of accounts was produced before the

Trial Court to substantiate continuous or prior use of the trade

mark. Therefore, the findings recorded by the learned Trial Court

were based on presumptions and assumptions in the absence of

legally admissible and reliable evidence, rendering the impugned

judgment and decree unsustainable in law.

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17. It was further submitted that the learned Trial Court failed to

take into due consideration the categorical admissions made by

PW-1 during the course of his cross-examination, which go to the

root of the matter. The relevant portion of the cross-examination

is reproduced as under:

^iSjk la[;k 3 esa of.kZr mRiknksa ds fuekZ.k ,oa fodz; ds
leFkZu esa dksbZ fcy ;k nLrkost izLrqr ugha fd;s gSaA^^

18. Whilst placing reliance upon the aforesaid admission, it was

contended that the plaintiff had failed to produce any

documentary evidence in support of the alleged manufacture and

sale of the goods in question, thereby failing to establish actual

commercial use of the trade mark. It was further argued that the

plaintiff had not been able to prove the actual use of the alleged

trade mark and label. In this regard, whilst placing reliance upon

the documents annexed it was pointed out that Exhibits 5 and 6

do not disclose any particulars relating to user and, in fact,

specifically state that the said certificates are not meant for use in

legal proceedings. This aspect also stands admitted by PW-1 in his

cross-examination, which reads as under:

^^;g ckr lgh gS fd izn’kZ&5 ij ds fupys fgLls esa ,
ls ch Hkkx ij ;g fy[kk gS fd ;g izek.k i= fof/kd
dk;Zokgh ds fy, mi;qDr ugha gSA izn’kZ&6 ij , ls ch
ekdZ ;g vafdr gS fd ;g izek.k i= fof/kd dk;Zokgh;ksa
esa iz;ksx ds fy, vfHkizkIr ugha gSaA^^

19. Thus, drawing attention of this Court, upon the impugned

findings and rationale articulated qua the same, it was contended

that the learned Trial Court committed a manifest error in treating

the date of filing of the trade mark application as the date of user,

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in the absence of any cogent or supporting evidence to that effect,

as no legal proceedings certificate under Section 137 of the Act of

1999 was produced for registration number 139425 and the only

certificate which was placed on record was qua registration

number 621570, which is merely a word mark “ENGINE” and does

not establish use of the claimed label. The relevant finding

recorded by the Trial Court is reproduced hereinbelow:

^^oknh }kjk izLrqr VsªMekdZ iath;u la[;k 193425 fnukad
23-11-1959 ls batu ekdkZ ljlksa dk rsy mRiknu ,oa
fodz; djuk izrhr gksrk gS bl izdkj oknh }kjk 1959 ls
vius VsªMekdZ batu czk.M ljlks dk rsy mRiknu ,oa
fodz; djuk ik;k tkrk gS rFkk oknh ds brus iqjkus
O;olk; ij feyrs tqyrs czk.M uke dk fuf’pr :i ls
dqizHkko iM+uk ik;k tkrk gSA oknh }kjk izfroknh dks
uksfVl fn;s tkus ds i’pkr Hkh izfroknh us viuk
mRiknu ,oa fodz; pkyw j[kk rFkk ,xekdZ foMªks djus ds
i’pkr Hkh izfroknh ljlks rsy cukrs jgsA
izfroknh }kjk ,slk dksbZ nLrkost U;k;ky; ds le{k
izLrqr ugha fd;k gS fd oknh QeZ can gks xbZ gks vkSj 5
o”kZ ls vf/kd le; ls oknh QeZ ljlksa rsy dk fuekZ.k]
fodz; ,oa iSfdax ugha djus ls mldk ,xekdZ ls
,dkf/kdkj lekIr gks x;k gks ,slh fLFkfr esa izfroknh ds
fo}ku vf/koDrk }kjk bl laca/k esa cgl esa mBk;s x;s
rdZ esa dksbZ cy jguk ugha ik;k tkrk gSA^^

20. On the strength of the submissions made insofar, it was

urged that the findings of the Trial Court are legally unsustainable,

as they proceed on presumptions rather than on proof of actual

user. It was further submitted that it is a settled principle of trade

mark law that mere registration of a trade mark does not, by

itself, confer an enforceable right in the absence of proof of actual

use. The burden to establish prior and continuous use squarely

lies upon the party asserting such right, which, in the present

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case, the plaintiff has failed to discharge. In support of the

submissions made insofar, learned counsel had placed reliance

upon a catena of judgments, inter alia, Century Traders vs.

Roshan Lal Duggar & Co. reported in 1977 SCC OnLine Del

50, Corn Products Refining Co. Vs. Shangrila Food Products

Ltd. reported in 1960 SC 142, Santosh Devi Vs. Ramesh

Kumar reported in 2006 SCC OnLine Raj 1169, Smithkline

Beecham Plc. Vs. Sunil Sarmalkar reported in 2012 SCC

OnLine Del 5223, Cluett Peabody & Co. Inc. Vs. Arrow

Apparels reported in 1997 SCC OnLine Bom 574, Veerumal

Praveen Kumar Vs. Needle Industries (India) Ltd. reported

in 2001 SCC OnLine Del 892, Malar Network (P) Ltd. Vs.

Arun Prasath D reported in 2011 SCC OnLine Mad 472, and

Marc Enterprises (P) Ltd. Vs. Five Star Electricals (India)

reported in 2008 SCC OnLine Del 310.

21. It was next contended that the non-appellant-plaintiff lacks

locus standi to institute and maintain the suit in question, and the

said fact was also left unaddressed by the learned Trial Court. It

was submitted that the suit was filed by one Mr. Kedarnath

Agarwal, claiming himself to be a partner of the plaintiff firm;

however, he neither entered the witness box nor led any evidence

in support of the plaintiff’s case. Instead, one Manu Agarwal

appeared as PW-1, claiming himself to be a partner as well as an

authorized representative of the firm. It was argued that no

documentary evidence, such as a partnership deed or any

authorization, has been placed on record to substantiate either his

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status as a partner or his authority to depose on behalf of the

firm. Thus, as per the dictum enunciated in Janki Vashdeo

Bhojwani vs. Industrial Bank Ltd., reported in (2005) 2 SCC

217, it is settled that a person who has no personal knowledge of

the facts of the case and whose authority is not duly established

cannot depose in place of the principal. The relevant portion of the

cross-examination in this regard reads as under:

^^eSa bl QeZ dk ikVZuj gwaA ;g ckr lgh gS fd eSaus
U;k;ky; ds le Hkkxhnkjh izi= is’k ugha fd;k x;k
gSA ;g ckr lgh gS fd eq>s vU; Hkkxnkjksa us
U;k;ky; esa xokgh nsus ds fy, vf/kd`r fd;k gSA
;g ckr lgh gS fd eSa U;k;ky; esa xokgh vU;

Hkkxhnkjh ds dgus ij nsus vk;k gwaA^^
^^izn’kZ&5 ij lh ls Mh gjhpj.k] }kfjdk] iwju
dsnkjukFk orZeku esa gekjh QeZ easa Hkkxhnkj ugha gS
D;ksafd buesa ls rhu Hkkxhnkj gjhpj.k dsnkjukFk
o }kfjdk dk LoxZokl gks pqdk gSA izn’kZ&6 ij
vafdr Hkh gekjh QeZ eas Hkkxhnkj ugha gS mudk
LoxZokl gks pqdk gSA^^

22. Learned counsel had further placed reliance upon Sections 6

and 68(2) of the Indian Partnership Act, 1932, and to fortify the

aforesaid submissions, it was contended that, in the absence of

any legally admissible evidence establishing the existence of a

valid partnership, no person could legitimately claim the status of

a partner or institute proceedings on behalf of the firm. It was

argued that the plaintiff failed to substantiate its constitution and

legal status by producing essential documentary evidence, such as

a duly executed partnership deed or entries from the Register of

Firms. It was further submitted that the learned Trial Court fell

into error in treating the rival labels as deceptively similar so as to

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constitute infringement. It was urged that a bare comparison of

the two labels would reveal clear and distinguishable features,

negating any likelihood of confusion or deception.

23. In this context, it was specifically emphasized that both PW-1

and PW-2, in the course of their cross-examination, have admitted

that the respective labels are distinguishable and capable of

differentiation. Such categorical admissions, demolish the

foundation of the plaintiff’s case regarding deceptive similarity.

The relevant extracts from the cross-examination are reproduced

hereunder:

^^;g ckr lgh gS fd izn’kZ&7 ij layXu ysfcyksa ij oknh
rFkk izfroknh ds irs iw.kZr;k fHkUu fHkUUk vafdr gSa^^
^^jsy ds dbZ izdkj ds batu gksrs gSa fctyh dk dks;ys dk
LVhe dkA esa bu rhuksa batuksa dh QksVks xzkQ ns[kdj
ifgpku ldrk gwa fd fdl izdkj dk batu gSA izn’kZ&7 ij
LVhe batu gSA izn’kZ&8]9 ij bysDVªhdy batu gSA ;g ckr
lgh gS fd izn’kZ&la[;k 8]9 ihys dyj esa cus gSaA izn’kZ&7
yky jax ls cuk gSA^^
^^esVªks batu ls pyus okyh Vsªu o /kqvka ls pyus okyh Vsªu
dks ifgpku ldrk gwaA nksuksa esa vUrj Hkh dj ldrk gwa^^

24. It was lastly contended that the reliance placed by the

learned Trial Court upon Section 31 of the Trade Marks Act, 1999

is misconceived. It was submitted that registration of a trade mark

merely constitutes prima facie evidence of validity and does not

amount to conclusive proof of the proprietor’s exclusive rights,

and that in the absence of any cogent evidence establishing the

plaintiff as a prior or concurrent user of the trade mark, the

registration itself remains open to challenge, particularly on the

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ground of non-use. In such circumstances, the statutory

presumption attached to registration stands rebuttable.

25. In support of the aforesaid proposition, reliance was placed

upon the ratio encapsulated in Man Mohan Sharma vs. Manjit

Singh, reported in 2016 SCC OnLine P&H 19412, read in

conjunction with Section 28(2) of the Act of 1999, to contend that

rights conferred by registration are subject to limitations,

especially where issues of prior use and concurrent rights arise.

26. Per contra, learned counsel appearing on behalf of the non-

appellant/plaintiff vehemently opposing the submissions made by

the learned counsel appearing for the appellant placed reliance

upon the registered trade mark of the plaintiff and the words

forming part thereof, which are reproduced hereinbelow:

Respondent/Plaintiff Registered Appellant/Defendant Impugned
trade mark & word word and mark
ENGINE Metro Engine

27. Per contra, learned counsel appearing on behalf of the non-

appellant/plaintiff submitted that the learned Trial Court had

framed only three issues, and the appellant is now seeking to

introduce entirely new grounds and issues at the appellate stage,

which is impermissible in law.

28. It was contended that the findings of the learned Trial Court

are firmly rooted in the statutory framework of the Trade Marks

Act, 1999. In this regard, reliance was placed upon Sections 2(h)

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and 2(zb), which define “deceptively similar” and “trade mark”

respectively; Section 28, which confers exclusive rights upon a

registered proprietor; Section 29, which deals with infringement of

trademarks; and Section 31, which provides that registration is

prima facie evidence of validity. It was further submitted that the

learned Trial Court, while adjudicating upon the issue of ownership

and rights in the trade mark, has rightly placed reliance upon

Section 31 and has held that the registration of the trade mark

constitutes conclusive proof, insofar as the plaintiff’s ownership

and exclusive rights are concerned.

29. Learned counsel further argued that the registration

documents produced by the plaintiff constitute unimpeachable

evidence of its rights in the trade mark, and clearly establish

infringement on the part of the defendant. It was submitted that

the learned Trial Court, upon a comparison of the competing

packaging, has recorded a categorical finding that the marks

“ENGINE” and “METRO ENGINE” are deceptively similar. It was

further observed by the learned Trial Court that the overall trade

dress, color scheme, and presentation of the defendant’s product

bear substantial resemblance to that of the plaintiff, thereby

indicating an intention to deceive. The Court also took note of the

design similarity between the two marks, observing that although

there exists a minor variation, namely, a steam engine in the

plaintiff’s mark as against an electric locomotive in the defendant’s

mark, thus, opining that the overall impression remains

confusingly similar and is likely to mislead consumers of average

intelligence and imperfect recollection.

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30. With respect to the AG-MARK certification, it was submitted

that the learned Trial Court has recorded a finding that the

suspension of the defendant’s certification was valid, and that the

defendant failed to place on record any material to demonstrate

that such suspension had ever been revoked or set aside. Insofar

as documentary evidence is concerned, the defendant has failed to

produce any credible material to substantiate its claim regarding

restoration of AG-MARK certification. The learned Trial Court has,

therefore, rightly drawn an adverse inference against the

defendant.

31. It was further submitted that the findings of the learned Trial

Court clearly establish that the conduct of the appellant-defendant

was not bona fide and reflected a deliberate intention to infringe

upon the plaintiff’s trade mark and goodwill. In light of the

aforesaid findings, it was contended that the decree of permanent

injunction has been rightly granted, whereby the defendant has

been restrained from manufacturing, selling, advertising, or

dealing in mustard oil under the trade mark “METRO ENGINE” or

any other mark deceptively similar to the plaintiff’s trade mark

“ENGINE”.

32. In summation of the aforesaid submissions, it was contended

that the plaintiff has been continuously using its registered trade

mark “ENGINE” since the year 1959, whereas the defendant has

failed to disclose or establish any specific date of commencement

of use of the impugned mark “METRO ENGINE”. It was pointed out

that this aspect has been specifically considered and dealt with by

the learned Trial Court in paragraph 8 of the impugned judgment.

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It was further submitted that the defendant’s impugned mark is

not registered with the Trade Marks Registry, whereas the

plaintiff’s trade mark “ENGINE” stands duly registered in Class 29,

thereby entitling it to a higher degree of protection under the law.

Thus, it can be concluded that by virtue of Section 28 of the Trade

Marks Act, 1999, the plaintiff is the exclusive proprietor and user

of the said trade mark, whether used independently or in

conjunction with its logo.

33. It was also contended that the defendant, with a mala fide

intention to encash upon and ride over the goodwill and reputation

of the plaintiff, has adopted a deceptively similar trade mark and

trade dress so as to mislead consumers and pass off its goods as

those of the plaintiff, thereby causing confusion in the market and

trade channels.

34. In support of the contentions made insofar, learned counsel

has placed reliance upon a catena of judgments, inter alia,

Hamdard National Foundation (India) & Anr. V. Sadar

Laboratories Pvt. Ltd. (2022) SCC OnLine Del 4523, Shree

Nath Heritage Liquor Pvt. Ltd. V. Allied Blender & Distillers

Pvt. Ltd.(2015 SCC Online Del 10164: (2015) 221 DLT 359:

(2015) 63 PTC 551), Renaissance Hotel Holdings Inc. V. B.

Vijava Sai And Others (2022) 5 SCC 1, Parle Products (P)

LTD vs J.P. AND CO., Mysore (1972) 1 SCC 618.

35. Having considered the rival submissions advanced by learned

counsel for the parties, this Court has cautiously perused the

material available on record, examined the pleadings, scrutinized

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the oral and documentary evidence, and duly considered the

judgments cited at the Bar. Upon such comprehensive

consideration, the following aspects emerge for determination and

adjudication:

36. At the outset, it is noticed that the non-appellant/plaintiff

claims to be a partnership firm; however, no partnership deed has

been produced on record to substantiate its constitution, the

identity of its partners, or their authority to institute the suit.

Nonetheless, there is an averment in the pleadings before the

learned Trial inasmuch as that Shri Manu Agarwal claimed in the

year 2015 that he was authorized by other partners, whereas PW-

2 i.e. Shri Raj Kumar Mathur stated that Shri Kedarnath Agarwal

expired in the year 2010 (noted in para no.2 of the statements of

PW-2 – Examination-In-Chief), thus, the learned Court below

appears to have accepted the existence of the partnership firm

and the status of its partners primarily on the basis of Exhibit No.

16. In the considered opinion of this Court, such recognition, in

the absence of the foundational document i.e., the partnership

deed, is legally unsustainable, particularly when the issue of locus

standi was specifically raised. To attain more authority on this

stance, this Court deems it appropriate to place reliance upon the

ratio encapsulated in Corpn. Of City of Banglore v. Zulekha Bi:

(2008) 11 SCC 306, Allahabad Bank v. S.M. Engineering

Industries: 1992 SCC OnLine Cal 21; and Janki Vashdeo

Bhojwani (supra), relevant extract of which is reproduced

hereinbeow:

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“10. The second fallacy of the order of Tribunal was
allowing Mr. V.R.Bhojwani (power of attorney
holder), husband of appellant no. 2 Ms.Mohini
Laxmikant Bhojwani, to appear in the witness box on
behalf of the appellants. It may be noted that that
the appellants were shy away from gracing the box.

The respondent-bank vehemently objected to
allowing the holder of power of attorney of the
appellants to appear in the witness box on behalf of
the appellants. This Court clarified that the
burden of proving that the appellants have a
share in the property will be on the appellants
and it was incumbent on the appellants to have
graced the box and discharged the burden that
they have a share in the property, the extent of
share, the independent source of income from
which they have contributed towards the
purchase of the property. The entire context of
the order dated 10.2.2004 was forwarded to the
Tribunal for the purpose. It is unfortunate that the
Tribunal has framed its own issues not consistent
with the directions and recorded a finding contrary to
the directions as aforesaid.

11. xxx

12. In the context of the directions given by
this Court, shifting the burden of proving on
the appellants that they have a share in the
property, it was obligatory on the appellants to
have entered the box and discharged the
burden by themselves. The question whether the
appellants have any independent source of income
and have contributed towards the purchase of the
property from their own independent income can be
only answered by the appellants themselves and not
by a mere holder of power of attorney from them.
The power of attorney holder does not have the
personal knowledge of the matter of the
appellants and therefore he can neither depose
on his personal knowledge nor can he be cross-

examined on those facts which are to the
personal knowledge of the principal.

13. xxx

14. xxx

15. xxx

16. On the question of power of attorney, the High
Courts have divergent views. In the case of

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Shambhu Dutt Shastri v. State of Rajasthan,
1986 2 WLL 713 it was held that a general
power of attorney holder can appear, plead and
act on behalf of the party but he cannot
become a witness on behalf of the party. He
can only appear in his own capacity. No one
can delegate the power to appear in witness
box on behalf of himself. To appear in a
witness box is altogether a different act. A
general power of attorney holder cannot be allowed
to appear as a witness on behalf of the plaintiff in
the capacity of the plaintiff.”

(Emphasis laid)

37. Further, the plaintiff has asserted continuous use of the trade

mark “ENGINE” since the year 1959 in respect of edible oil.

However, significantly, no cogent documentary evidence has been

produced to substantiate such long, continuous, and prior use.

The record is conspicuously silent as regards essential supporting

documents such as manufacturing licenses, statutory approvals,

sales invoices, account books, advertisements, or any

contemporaneous commercial material demonstrating actual use

of the trade mark in the course of trade. The absence of such

evidence assumes greater significance in matters relating to trade

mark infringement and passing off, where prior use and reputation

constitute the bedrock of the claim.

38. In this context, the reliance placed by the learned Trial Court

on Section 31 of the Trade Marks Act, 1999, treating registration

as conclusive proof of validity and ownership, appears to be

misplaced. The presumption under Section 31 is, by its very

nature, rebuttable. The testimonies of PW-1 (Manu Agarwal) and

PW-2 (Raj Kumar Mathur), when read in conjunction with the

absence of supporting documents, lend credence to the contention

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of the appellant/defendant that such presumption stood effectively

rebutted. Notably, PW-1 has admitted that certain exhibits (Exhibit

5-6, being trade mark labels) are not usable for legal purposes,

and both witnesses have acknowledged the lack of documentary

proof such as bills, vouchers, or advertisements. To draw more

authority, reliance can be placed upon the ratio encapsulated in

Man Mohan Sharma (supra); relevant extract of which is

reproduced hereinbelow:

“77. Having said that, there is another facet to
Section 34, which is required to be addressed;
right of usage of a mark by a prior user is
saved not only if his user commenced earlier
in time than the registered proprietor but it
also preceded the date of registration of the
mark. What needs to be noticed is that plaintiffs
trade mark was registered on 04.02.2011, relating
back to the date of his application i.e. 10.10.2008.

Therefore, the question that arises for
consideration is : Whether registration of a
mark by itself from a prior date, in the
absence of any proof of its actual usage, shall
prevail upon the prior and actual user of a
trade mark? Ex facie, the purport and intent of
the provision is to protect a prior user of a
mark from any interference in his right of
usage by the registered proprietor. The first in
the market test has always enjoyed pre-

eminence. Rather Section 47 of the Act
postulates the possibility of registered trade
mark being taken off the register, if needed
there was no actual use of the mark for a
period of five years and three months from
the date of its registration.”

(Emphasis laid)

39. Moreover, it is pertinent to observe that the plaintiff itself

sought to cure these deficiencies by filing an application under

Order XLI Rule 27 CPC at the appellate stage, thereby implicitly

admitting that crucial evidence had not been produced before the

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Trial Court. This conduct further weakens the evidentiary

foundation of the plaintiff’s case. Equally concerning is the manner

in which the burden of proof appears to have been shifted by the

learned Trial Court onto the defendant. The objection regarding

non-challenge to the interlocutory order under Order I Rule 10 of

CPC also appears to be misconceived, as such and order is not

appealable under Section 104 read with Order XLIII. Thus, in the

absence of primary evidence establishing prior use, goodwill, and

reputation by the plaintiff, the onus could not have been shifted

onto the defendant to disprove infringement. The essential

ingredients of infringement and passing off, such as deceptive

similarity, likelihood of confusion, and misrepresentation, ought to

have been established through clear, cogent, and convincing

evidence, which is lacking in the present case.

40. Additionally, this Court finds that the findings recorded by

the learned Trial Court on the aspect of deceptive similarity are

not supported by adequate reasoning. While it has been observed

that the defendant’s mark “METRO ENGINE” and the plaintiff’s

mark “ENGINE” are similar, there is no detailed analysis as to how

the essential features are deceptively similar so as to cause

confusion among an average consumer of ordinary intelligence

and imperfect recollection. The distinction noted in the marks such

as “METRO ENGINE” vis-a-vis “ENGINE” and the differences in

design elements (steam engine versus electric locomotive), has

not been meaningfully evaluated. The conclusion regarding

deceptive similarity, therefore, appears to be cursory rather than

reasoned. It is also noteworthy that disputes pertaining to

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intellectual property rights, particularly trade mark infringement,

have both statutory and common law dimensions and require

adjudication on the basis of comprehensive evidence. In the

present case, the absence of critical documents on both sides has

resulted in an incomplete factual matrix, thereby rendering the

findings of the Trial Court vulnerable.

41. In light of the aforesaid deficiencies, namely,

(i) absence of partnership deed and consequent doubt on locus

standi,

(ii) lack of documentary evidence establishing continuous use

since 1959,

(iii) erroneous application of presumption under Section 31 of the

Trade Marks Act,

(iv) improper shifting of burden of proof, and

(v) lack of reasoned findings on deceptive similarity,

This Court is of the considered view that the impugned

judgment and decree dated 12.05.2016 cannot be sustained.

42. Accordingly, the impugned judgment and decree dated

12.05.2016 is quashed and set aside. The matter is remanded to

the learned Trial Court, concerned, for fresh adjudication on a de

novo basis. The learned Court below is expected to dispose of the

suit expeditiously, preferably within a period of one year from the

date of receipt of a certified copy of this judgment.

43. Liberty is granted to both parties to adduce additional

evidence, including but not limited to partnership documents,

licenses, invoices, account books, advertisements, and any other

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relevant material, so as to enable the Court to adjudicate the

dispute in its correct factual and legal perspective.

44. Till such adjudication, it is directed that status quo as

existing on the date of pronouncement of this judgment shall be

maintained by the parties.

45. In view of the above, the instant Civil First Appeal stands

disposed of and the impugned judgment and decree dated

12.05.2016 is quashed and set aside, leaving the parties to bear

their own costs. Stay application as well as all pending

application(s), if any, also stand disposed of.

46. Needless to observe, the findings recorded by this Court are

only for the purpose of the disposal of the present appeal and the

application under Order XLI Rule 27 CPC. It is made clear that by

way of passing the judgment, this Court has not expressed any

opinion on the merits of the matter. The Trial Court will decide the

main suit on the basis of the evidence led by both the sides,

without being influenced by the observations made by this Court.

47. Registrar (Judicial) is directed to send a copy of this

judgment by mail/fax to the concerned Trial Court, for compliance.

(SAMEER JAIN),J

JKP/1

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