Bombay High Court
Grasim Industries Limited vs Saboo Tor Private Limited on 6 April, 2026
Author: Bharati Dangre
Bench: Bharati Dangre
2026:BHC-OS:8587
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Salgaonkar
MANDIRA MILIND
SALGAONKAR
Digitally signed by MANDIRA
MILIND SALGAONKAR
Date: 2026.04.08 16:07:26 +0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.2849 OF 2026
IN
COMMERCIAL APPEAL (L) NO.39319 OF 2025
Grasim Industries Limited & Anr. .. Applicants/Appellants
Versus
Saboo Tor Private Limited & Ors. .. Respondents
...
Mr.Darius Khambata, Senior Advocate with Mr.Hiren Kamod,
Mr. Vinod Bhagat, Mr. Anees Patel, Ms. Nishtha Gupta, Ms.
Prachi Shah and Ms.Rashi Thakur i/b Mr. Vinod A. Bhagat for
the Applicants/Appellants.
Mr.Ravi Kadam, Senior Advocate and Mr.Ashish Kamat,
Senior Advocate with Mr. Thomas George, Mr. Rohan Kadam,
Mr. Navankur Pathak, Ms.Neeti Nihal, Ms. Tanvi Sinh,
Ms.Bargavi Baradhwaj, Mr.Ishaan paranjape, Mr.Ravi Varma
and Mr.Asheesh Gupta i/b Saikrishna & Associates for the
Respondent Nos.1, 4, 5 and 6.
CORAM: BHARATI DANGRE &
MANJUSHA DESHPANDE, JJ.
DATE : 06th APRIL, 2026
...
ORDER (PER BHARATI DANGRE, J.)
1. The present Commercial Appeal filed under Section 13 of
the Commercial Courts Act, 2015 read with Order XLIII Rule
1(r) of the Code of Civil Procedure, 1908 (For short, ‘CPC‘)
raise a challenge to the impugned order dated 16/10/2025
passed by the learned Single Judge (Sharmila U. Deshmukh,
J.), on Interim Application No.3888 of 2022, seeking
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injunction in the suit filed for infringement of trade mark and
passing off under the Trade Marks Act, 1999.
By the said order, the learned Single Judge, testing the
case of the Appellant (Plaintiff) on the parameters applicable
to grant of injunction in trade mark matter viz. prima facie
case, likelihood of confusion, relative merits of the parties
claim, balance of convenience and risk of irreparable harm
and public interest, concluded that absence of any one, is
sufficient to decline the interim relief.
On the detailed discussion about the factors being
weighed in favour of the Plaintiff, the learned Judge concluded
that considering that the Defendant was carrying on his
business using his registered trade mark since 2008, grant of
injunction would result in irreparable loss and by directing the
Defendant No.1 to maintain accounts of the sales of its
products till disposal of the suit, the Interim Application came
to be dismissed.
2. We have heard learned senior counsel Mr.Khambata for
the Appellant in support of the grounds raised in the Appeal
calling for an interference in the impugned order, as it is
alleged that the learned Judge has failed in appreciating the
case that the Appellants validly hold registered trade mark as
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early as in 1988 and the Respondents alleged use is much
subsequent for an identical and/or deceptively similar trade
mark and a case for infringement was made out.
The Respondent/Orig.Defendant is represented by
learned senior counsel Mr.Kadam, who would support the
impugned order by submitting that the learned Judge has
rightly appreciated the claim of the Plaintiff and has refused
the same by testing their case on the parameters for grant of
injunction in a trade mark case.
3. The Appellants have taken out an Interim Application
under Order XLI Rule 27(1) of CPC, for allowing the additional
documents to be taken on record in form of additional
evidence, which could not be produced before the trial court
despite exercise of due diligence and that the evidence is
relevant to the facts of the case, but could not be found earlier
despite exercise of due diligence as the Appellants were
unaware about the whereabouts of such documents.
Praying that since the documents annexed to the Interim
Application bear material relevance to the Appellants’ case, it
is requested to take the documents on record as additional
evidence, as it will meet the ends of justice for which the
Respondents can be adequately compensated.
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The Application received strong opposition from
Mr.Kadam, as according to him, if the Plaintiff was unable to
establish its prima facie case sufficient enough to grant
interim relief, there is no question of this material being
permitted to be admitted in evidence, despite establishing the
necessary parameters of consideration of additional evidence
under Order XLI Rule 27 of CPC and Mr.Kadam insisted that
the said Application shall be heard and pronounced upon prior
to the hearing of the Appeal.
4. For appreciating the contentions even as regards the
Application filed for bringing additional evidence on record, we
must refer to the factual background in which the present
Appeal is filed and only thereupon, we will be able to
appreciate whether the additional evidence deserve to be
permitted and this is what prompt us to refer to background
facts.
Plaintiff No.1-Grasim Industries Ltd., hereinafter
referred to as ‘Grasim’ and Ultra Tech Cement, hereinafter
referred to as ‘Ultra Tech’ filed a Commercial I.P. Suit for
infringement and trade mark passing off and the marked
involved is ‘BIRLA’.
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Plaintiff No.1 -Grasim pleaded that it is the flagship
company of global conglomerate ‘Aditya Birla Group’ and it
commenced its business in the year 1947 in textiles and
diversified the same under BIRLA and BIRLA formative trade
marks. According to the Plaintiffs, in the wake of the internal
business arrangement, only the Birla family group of
companies, owned and/or managed by the Birla family, are
entitled to adoption of the well-known trade mark BIRLA,
either stand alone or in conjunction with other one. As Grasim
diversified into business of manufacturing, marketing, selling
and/or exporting buildings and construction materials,
cement, white wall care putty, texture wall finish, paints,
chemicals for preserving food stuff, disinfectants, agricultural
scientific research, agriculture, horticulture and forestry
products etc., it was authorised to use BIRLA and BIRLA
formative trade marks. Stating that Plaintiff No.2 and its
subsidiaries are the seventh biggest cement manufacturer in
the world and one of the largest manufacturer of grey cement,
ready mix concrete and white cement in India, it has 20
integrated plants around the world of which 22 of its grinding
units are in India.
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5. Defendant No.1, hereinafter referred to as ‘ Saboo Tor’ is
alleged to be a private limited company with Defendant No.2
being a partnership firm and Defendant No.3, being a person
responsible for conduct of business of Defendant No.2.
Pleading that Defendant Nos.1, 2 and 3 engaged in the business
of manufacturing, marketing and selling of M.S. Bar(TMT),
M.S.Round, TOR Steel, Metals and their alloys, metal building
material etc. is also involved in manufacturing, selling and/or
marketing of electric vehicles, E-Rickshaw, Electric Scooters,
Electric Scooty and Electric motorcycles. Defendant No.6- the
Director of Defendant No.1 is alleged to be aware of the
business activities and involved in the conduct of its business.
They were arrayed as co-Defendants in the Suit, as the
Plaintiffs claim some alleged rights over the trade mark
‘BIRLA’ and involved in some business relationship with one
another.
6. According to Mr.Khambata representing Grasim, its
pleaded case is very specific, being that it is a flagship
company of global conglomerate Aditya Birla Group, which is
managed by the famous Birla family of India and being engaged
initially in textile business, the business was diversified under
the BIRLA and BIRLA formative trade-marks. In para 3 of the
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plaint, Grasim specifically pleaded about commencement of its
business as textile manufacturer and subsequently expanding
its business by use of mark ‘BIRLA’. In para 8, according to
Mr.Khambata, the plaint gave the relationship between the
Plaintiffs and the Aditya Birla Group, by specifically pleading
thus :-
“8. The Plaintiff No.1 was originally incorporated in 1947 as ‘The
Gwalior Rayon Silk Mfg. (Wvg.) Company Ltd.’, a textile
manufacturer, which trading name was changed to that of the
Plaintiff No.l’s present trading name i.e. ‘Grasim Industries Ltd.’ in
1986. The Plaintiff No.1 craves leave to refer to and rely upon a
copy of the Fresh Certificate of Incorporation dated 22 July 1986
issued by the Registrar of Companies, when produced. Today, the
Plaintiff No.1 has evolved into a leading and diversified player with
leadership presence across numerous sectors of industry. The
Plaintiff No.1 endeavours to create sustainable value for 24,000+
employees, 262,000+ shareholders, society and customers.”
9. The Plaintiffs state that the Aditya Birla Group comprises of,
apart from the Plaintiff No.1, Plaintiff No.2 and other prominent
manufacturing and/or service providing companies such as Aditya
Birla Fashion & Retail Limited, Aditya Birla Science & Technology
Company Private Limited, Aditya Birla Grasun Chemicals Ltd.
etc.——”
The plaint also pleaded that several companies of the
Aditya Birla Group, including Plaintiff Nos.1 and 2, are listed
on the Bombay Stock Exchange and National Stock Exchange.
7. In Paragraph 15, the Plaintiffs connection with BIRLA
trade mark and its use is highlighted and Mr.Khambata has
emphasized on this particular pleading, which according to
him, the learned Single Judge has failed to consider.
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Staking its claim, the Plaintiff No.1 pleaded that its
trademark registrations are valid and subsisting and the mark
‘BIRLA’ is the leading, most prominent and essential feature of
its trade marks and its earliest registrations date back to the
year 1988. In addition, the pleading of the Plaintiffs is very
specific as below :-
“The Plaintiffs have been openly, continuously and extensively
using the Plaintiffs BIRLA trade marks including the “ADITYA
BIRLA GROUP” wordmark extensively in respect of their
goods/services. Copies of the respective trade mark registration
certificates/status reports are hereto annexed as EXHIBIT “B-1” to
“B-112″ respectively.”
In connection with the trademark “BIRLA WHITE”, the
plaintiffs pleaded thus :-
“18. The Plaintiff No.1 state that the abovementioned trademark
registrations under Nos.524399 and 524400 applied for /
registered prior to 1999 were applied / registered by the Plaintiff
No.1’s predecessor being the Indian Rayon and Industries Ltd. in
right, title and interest. In or about April 1988, the Plaintiff No.1’s
predecessor, Indian Rayon and Industries Limited adopted and
commenced using the trademark “BIRLA WHITE” upon and in
relation to its white cement. The said Indian Rayon Industries
Limited subsequently applied for and secured registrations of the
trademarks containing the mark “BIRLA WHITE” under Nos
524399 and 524400, both in class 19 under the Trade and
Merchandise Act, 1958. Since its adoption, the Plaintiff No. 1’s
predecessor has been openly, widely continuously and extensively
using the trademark “BIRLA WHITE” upon and in relation to its
white cement. Thereafter, on or about the 23rd January 1999, the
grey and white cement business of the said Indian Rayon and
Industries Limited demerged and transferred to the Plaintiff No.1
vide and order of the Hon’ble High Court of Madhya Pradesh in
Company Petition No 39 of 1988 connected with Company petition
No 33 of 1998, allowing the Scheme of Arrangement in the nature of
Demerger between Indian Rayon and Industries Limited and the
Plaintiff No 1. By Virtue of the Scheme of Arrangement, all the
intellectual property of the said Indian Rayon and Industries
Limited in respect of the transferred business, including the
trademark “BIRLA WHITE” came to be transferred to the Plaintiff
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the order dated 23rd February 1999 respect thereof, when
produced. Accordingly, the Plaintiff No.1 made the necessary
application on Form TM-23 dated 4th March 2005 before the
Registrar of Trade Marks to bring itself on record as the subsequent
proprietor of the aforesaid trade marks under Nos 524399 and
524400, both in Class 19. Subsequently, the Registrar of
Trademarks vide his order dated 13th April, 2018 was pleased to
allow the aforesaid application on Form TM-23 dated 4th March
2005 and order thereon dated 13th April 2018 when produced. The
expression ‘Plaintiff No.1’ used hereinafter shall, unless it is
repugnant to the context, be deemed to include their respective
predecessor/s in right, title and/or business interest.”
8. Alongwith the plaint, the Plaintiffs furnished list of their
trademark registrations ‘BIRLA’ with respect to its date and
user claim in clause 19 as well as in regards to the chemicals
used in the industries in Class 1 and in relation to
paints/colours in Class No.37.
The list include 112 registered trade marks, with ‘BIRLA
WHITE’ being listed at Sr.Nos.1 to 14. The registration of trade
mark ‘BIRLA WHITE’ dated 14/02/1990 is based on user claim
since 1988, the registration being granted on 14/02/1990 in
class 19. Thus, according to Mr.Khambata, the Plaintiffs
pleaded their case by submitting that registration of their
mark is prior to 1990 and the same was based on prior user
since 2007.
9. In the light of the specific pleadings in the plaint, the
Plaintiffs took out an Interim Application for grant of interim
reliefs by specifically averting as below :-
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“For the sake of brevity, the Applicants repeat all that is stated in
the Plaint as if the same forms a part and parcel of this application
and crave leave to refer to and rely upon all that is stated in the
Plaint without reproducing the same herewith to avoid repetition”.
10. The Application for grant of injunction contain an
assertion that trade-marks ‘BIRLA’ which is the leading,
essential and prominent feature of the Plaintiffs goods, have
acquired reputation, goodwill and instant recognition among
consumers and they have large distribution network
penetrating PAN India and the customers associate Plaintiffs
‘BIRLA’ trademarks and the word ‘BIRLA’ with the Applicants
and none else. The Application, in particular, pleaded as
below :-
“8.3 In view of the aforesaid, the Applicants have acquired
statutory as well as common law rights in the well-known trade
mark ‘BIRLA’ and are entitled to use the well-known trade mark
BIRLA in respect of all their respective goods and services to the
exclusion of other disentitled manufacturers and/or traders.”
The cause of action for the Suit as well as grant of injunction is
set out by alleging mala fide adoption and/or use of impugned
trade-mark by the Defendants by use of the words viz. ‘BIRLA’,
‘BIRLA TMT’, ‘BIRLA E-BIKE, the impugned trading name i.e.
‘BIRLA STEEL’ and the impugned device marks i.e. BIRLA E-
BIKE
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as well as the impugned domain
names i.e. ‘www.brilamsteel.com’ and ‘www.birlaebike.com’,
which are identical with and/or similar or deceptively similar
to the Plaintiffs BIRLA trademark,for acts of passing off,
damages and other consequential reliefs.
Interim Application No.3888 of 2022 sought restraint by
an interim order and temporary injunction, pending the
hearing and final disposal of the Suit, so as to restrain the
Defendants by themselves and all persons acting for and on
their behalf from infringing all or any of the Plaintiffs BIRLA
trade marks and the impugned domain names as well as
trading name, which is identical with and/or deceptively
similar to the Plaintiffs’ mark.
11. Respondent Nos.1, 4, 5 and 6 opposed the Application by
filing affidavit-in-reply and Defendant No.1 pleaded that it was
incorporated in the name ‘Sirmour Alloys Private Limited’ in
the year 1991, but in the year 1999, it changed its name to
‘Saboo Tor Private Limited’. It also pleaded that the company
has been carrying on business of manufacturing, processing,
importing, exporting and dealing in all kinds of ferrous, non-
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ferrous metals alloys and their products, and since 2004, and
it commenced manufacturing and supplying of iron and steel
products under the registered trademarks ‘BIRLA’ and/or
under the brand name ‘BIRLA TMT’. It pleaded that Defendant
No.1’s product ‘TMT Bar’ sold as ‘Birla TMT Steel Bar’ is one of
the top 10 TMT Bars in India and in manufactured in Himachal
Pradesh and marketed across various States in India and in
the course of its use for past 18 years, it has emerged to be one
of the most sought-after by the builders and engineers, it being
of superior quality, involving industry leading automation set-
up and being advanced and high strength variant of steel
meeting international quality standards.
According to Defendant No.1, under the brand name
‘BIRLA TMT’, various products are covered, including Birla
Thermo Mechanically Trusted (TMT) Steel Bar, Mild Steel
(M.S.) Square Bars used in cranes gantry, bullock carts axles,
truck trailers and tippers; Mild Steel (M.S.) Flat Bars used by
Grafting manufacturers, Railways, Bus Body, Ship Building
etc. According to the Defendant No.1, from the nature and use
of the products which are in the market for last 15 years, those
involved in commerce and trade, take informed decision and
there is no scope for any confusion or deception.
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12. Mr.Kadam, representing the Defendants, would rely
upon the defence set out in the affidavit in clause 6.2, when it
pleaded thus :-
“6.2 I say that Defendant No.l’s prior adoption and use of the
marks ‘BIRLA’ and ‘BIRLA TMT’ is highly fanciful, and inherently
distinctive coined composite word mark, which when taken as a
whole, is inherently distinctive of Defendant No.1’s products alone.
It is further stated that the relevant class of consumers of
Defendant No.1’s products only associate with the brand name
‘BIRLA TMT’ to that of Defendant No.1 owing to the long,
continuous, consistent and uninterrupted usage of the trademark
by Defendant No, 1 qua its products such as TMT Bar, MS Square,
MS Flat, MS Round and Angle and Channel etc.”
In addition, in para 6.6, the Defendants adopted a stand that
by filing the present action, the Plaintiffs were wrongfully
trying to claim a monopoly over the word ‘BIRLA’, which is in
fact a dictionary word and means, ‘scarce, rare, uncommon’
and reliance is placed upon the dictionary meaning of the term
‘birla’.
According to Mr.Kadam, Defendant No.1 was desirous of
indicating the rare character of its goods, being a superior
strength and, therefore, the word ‘BIRLA’ was adopted and
used.
According to him, Defendant No.1 is the proprietor of
the registered trademark in Class 6, whereas the Plaintiffs do
not enjoy any registration and, therefore, the Plaintiffs claim
to the word ‘BIRLA’ cannot and does not come in the
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Defendants’ way or prejudice exercise of its rights as a
registered proprietor of the Defendants’ trademarks.
13. In short, Defendant No.1 set up its case by attempting to
demonstrate that the word was coined on account of an
assigned meaning attached to it indicating ‘rare’ and the
Defendant was always vigilant in protecting its intellectual
property rights.
In paragraph 13.2 of the reply, Defendant No.1 enlisted
its marks under Class 6 for Iron and Steel products and claim
to be the registered proprietor of those marks, which include
the trademark ‘BIRLA’, ‘BIRLA TMT’ being registered in 2008
with its user claim of 2004, the registration granted in Class 6-
M.S.Bar(TMT), M.S.Round, TOR Steel, M.S.Angle,
M.S.Channel, M.S.Square. The Defendant has also secured
trademark registration in Class 10, 11, 18 with the trademark
‘BIRLA’. In addition, it also filed several trademark
applications for the mark ‘BIRLA’ across various classes,
which are pending for registration and this include goods in
Class 8, 20, 21, 17, 5, 9, 12, by describing the user as ‘proposed
to be used’ and which has received objections from the
Plaintiffs.
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14. According to Mr.Kadam, the defence of the Respondents,
which was also evidently made clear in the reply affidavit was
of they being the prior user in Class 6, in contrast to the
Plaintiffs, neither having registered or not conducting any
business in respect of those goods in which Defendant No.1 is
carrying its business. Therefore, according to Mr.Kadam, the
case of Defendant No.1 was and is about selling of its product
under brand name ‘BIRLA TMT’ atleast since the year 2004
with the trademark registration having secured since the year
2008 and, therefore, Defendant No.1 is not only the owner but
also the prior user of ‘BIRLA’ and ‘BIRLA TMT’ under Class 6.
Harping upon the well settled position in law, according to
Mr.Kadam, the prior use of the goods will override the
subsequent user, even though the subsequent user has a
registered trademark and in this case, the Plaintiffs have
never used its mark as against goods in Class 6 and have never
applied for registration.
15. In short, the submission of the contesting Defendant is of
harmonious existence. In addition, Mr.Kadam relying upon
the reply filed by Defendant No.1, has also urged that in fact
the word ‘BIRLA’ is a subject matter of several registered
trademarks and the search on the official website of
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Trademark Registry, has lead to several entities across
classes, who have registered or have applied for registration
trademarks containing the word ‘Birla’, and therefore,
according to Mr.Kadam, there is no reason why the Plaintiffs
shall claim exclusivity to the use of the word ‘Birla’.
Paragraph 15.2 of the reply affidavit enlisted atleast 29 such
entities in various classes which have made the use of the
word ‘BIRLA’ in conduct of their activity.
16. While defending the claim in the Suit as well as the
Appeal before us, Mr.Kadam specifically urged that the Interim
Application and the Suit suffer from gross delay and latches as
Defendant No.1 has been honestly, continuously, openly,
widely, exclusively and with bona fide intent using the
trademark ‘BIRLA’ and ‘BIRLA TMT’ since the year 2004 and
when it applied for registration in the year 2008 and 2009, it
was published in the Trademark Journal on September
29/09/2014 and 31/10/2015 respectively and if the Plaintiffs
were vigilant as claimed by them, they should have known and
objected to it, but they did not choose to do so, clearly
indicating acquiescence in the use and adoption of the mark
by the Defendant No.1. According to Mr.Kadam, the very fact
that for last over 15 years, both the Applicants and Defendant
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No.1’s goods have been sold openly, extensively and through
common trade channels clearly indicate that the trade has
accepted their harmonious co-existence with a clear
understanding that there is no scope for any deception and
confusion and that is the reason, there were no complaints
ever made by the Plaintiffs and even at present, there is no
cause of action to complain or institute the present
proceedings.
17. In light of the aforesaid pleaded case of the Plaintiffs and
the Defendants, Mr.Khambata has urged that the relief in
favour of the Plaintiffs is denied for the reason that though the
Plaintiffs had dedicated substantial portion of the plaint to
plead about the Birla Group’s reputation, goodwill and
association of the Plaintiffs with the Birla group, they have
failed to substantiate the pleading by way of documentary
material and in this regard, the trial Judge, after noticing the
pleading that Plaintiff No.1 is a flagship company of Aditya
Birla Group incorporated in the year 1947 and on account of
the internal arrangement between Birla Group of Companies,
Plaintiffs got exclusive right to use ‘BIRLA’ trademark,
observed thus :-
“41. ….There is not a single document on record to prima facie
demonstrate : (a) the prior use and registration of the “BIRLA”
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marks by the BIRLA group of companies in respect of its products;
(b) the registrations of “BIRLA” mark and its Formative marks
secured by Birla group of companies in respect of its diverse
products which marks have become distinctive of the BIRLA group
(c) the Plaintiffs being part of the Birla group and thus acquires
right to use the “BIRLA” trade mark and formative trade marks by
internal arrangement or the right being devolved upon the
Plaintiffs through the Birla group of companies”.
Accepting that the pleading in the plaint refer to the
history of origin and user of ‘BIRLA’ trademark, its reputation
and goodwill, it is held by the learned Judge that the prior
registration of domain name by Birla Group of Companies
cannot assist Plaintiffs sans any material to demonstrate
connection between the Plaintiffs and Birla Group of
Companies and it is held conclusively that, “there is no
averment in the plaint to justify this connection between the
domain name and Ultratech Cement Ltd.. The pleading per se
cannot confer any cannot confer any benefits associated with
the Birla trade marks upon the Plaintiffs.”
18. According to Mr.Khambata, the learned Single Judge
failed to consider that the Plaintiff No.1 is a registered
proprietor of 112 marks and what is held by the learned Judge
in paragraph 42 was never his case as it was pleaded that
Plaintiff No.1 was in textile business, but later on shifted the
business. According to him, the whole basis of rejection of the
interim relief in favour of the Plaintiffs is their failure to
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establish any connection with Birla Group of Companies and
the reference to the registration mark ‘BIRLA WHITE’, has
reflected that the registration is in the name of Indian Rayon
and Industries Ltd., but since the scheme of the arrangement
was not placed on record, the Single Judge failed to accept the
contention about user of the trademark ‘BIRLA WHITE’ by
Indian Rayon and Industries Ltd.
Another reason, according to Mr.Khambata, when the
learned Single Judge refused the relief is that there is no
single registration with the word ‘BIRLA’ i.e. the name.
19. It is in this background, the Appellants have taken out an
Interim Application No.2849 of 2026, bringing on record the
additional evidence at the stage of Appeal by invoking Order
XLI Rule 27, seeking permission to file the additional
documents appended at Exh.A-E collectively, for the purpose of
effective adjudication of the Appeal arising out of the
impugned order.
We have perused the Interim Application which seeks to
bring on record the following documents;
(a) The scheme of arrangement between :-
Indian Rayon and Industries Ltd.
Grasim Industries Ltd.
and
Their respective shareholders and creditors providing for the
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(b) Copy of the Petition filed before the High Court of Madhya
Pradesh in form of Company Petition No.1 of 2001 for sanction of
amalgamation under Section 394 of the Companies Act, 1956 for
amalgamation of Dharni Cements Ltd., transferor company with
Grasim Industries Ltd. i.e. transferee company alongwith the order
passed by the Madhya Pradesh High Court on 09/03/2001.
(c) Application for registration filed by Plaintiff No.1-Grasim
Industries securing registration in Class 9 on 14/02/1990 for
trademark ‘BIRLA WHITE’ with its user dated 30/04/1988 and the
certificate granted on 14/08/1996 alongwith the Directors Report
of Indian Rayon Industries Ltd., which has a reference to its
business in Cement Division, Insulator Division apart from Cotton
and Synthetic Division, with specific reference to the new project of
White Cement, Grey Cement Expansion, Ceramics etc., the report
being of 10/08/1987 accompanied with the balance sheets.
20. The Interim Application has specifically pleaded thus :-
“4. With regard to the contents of clauses (c) mentioned in
para 2 above, the Appellants submit that while instituting the
present suit, certain documents could not be placed on the Court’s
records before the Ld. Single Judge as they were not found by the
Appellants despite exercise of due diligence and/or were not within
the knowledge of the Appellants. The Appellants submit that
pursuant to the order being passed, they have undertaken a
detailed exercise of tracing such old records from their archives,
warehouses including looking into archives of the newspaper
agencies, taking inspections and have been able to collate such
evidence which is materially relevant to the present proceedings.
The Appellants are desirous that such evidence collected by them
be placed and brought on record before this Hon’ble Court as
additional evidence of the Appellants and therefore most humbly
seeks permission of this Hon’ble Court, under Order XLI Rule 27 of
the Code of Civil Procedure, 1908 to be permitted to produce the
documents before this Hon’ble Court at the appellate stage .
5. The Appellants submit that such evidence is relevant to the
facts of the present case and the same could not be found earlier
despite exercise of due diligence on the part of the Appellants, who
were unaware of the whereabouts of such documents. The
Appellants submit that the aforementioned documents have a
bearing and are materially relevant to the Appellants’ case and this
Hon’ble Court in exercise of its inherent powers can take such
documents on record as additional evidence in the present
proceedings. Such documents are also necessary to meet with the
ends of justice for which the Respondents can be adequately
compensated.”
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In paragraph 26, the Application also proceed to state
that the additional evidence could not be produced before the
trial court despite exercise of due diligence, but the documents
are utmost necessary so as to enable the Appellants to
effectively plead its cane before the Court.
21. Mr.Kadam has vehemently opposed the Application by
submitting that such an application shall only be entertained
by the Appellate Court, when the contingencies set out in the
said provision are made out, but not otherwise.
He would place reliance upon the decision of the Full
Bench of this Court in the case of Uto Nederland B.V. & Anr. Vs.
Tilaknagar Industries Ltd.1 where the principle in Wander Ltd.
(supra) has been reiterated when the issue came to be
determined as to whether the order passed on an application
for temporary injunction is prima facie adjudication and not an
exercise of discretion and secondly, as regards the scope of
appeal from an order of the trial Court on an application of
injunction. Mr.Kadam has also focused his attention on the
conduct of the Plaintiffs, as he has invited our attention to the
joint statement of truth filed by the General Manager of
Plaintiff No.1, the suit being filed as Commercial I.P. Suit,
warranting a joint statement of truth under the first scheme
1 2025 SCC OnLine Bom 6140
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Order VI Rule 15A, where a following statement is made in
support of the plaint.
“We say that, all the documents in our power, possession, control or
custody pertaining to the facts and circumstances of the
proceedings initiated by us, have been disclosed and/or copies
thereof annexed with the Plaint, and we do not have any other
documents in our power, possession, control or custody.”
In light of this statement, Mr.Kadam has urged that the
Plaintiffs are not entitled for permission to produce the
documents. He would place reliance upon the decision of Privy
Council in the case of Parsotim Thakur & Ors. Vs. Lal Mohar
Thakur & Ors. revolving around Order XLI Rule 27 and in
specific, he would point out to the relevant observation where
it is held that the provision of Section 107 , Civil Procedure
Code, as elucidated by O. 41 R. 27 are clearly not intended to
allow a litigant who has been unsuccessful in the lower Court
to patch up the weak parts of his case and fill up omissions in
the Court of Appeal. Reliance is also placed upon the decision
of the Apex Court in Arjan Singh alias Puran Vs. Kartar Singh
& Ors.2, where the Three Judge Bench of the Apex Court has
held that where additional evidence is allowed to be adduced
contrary to the principles governing reception of such
evidence, it would amount to improper exercise of discretion
and additional evidence so brought on record shall be ignored.
2 1951 Supreme Court Cases 178
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As held by the Apex Court, Mr.Kadam would rely upon the
proposition that the discretion to receive and admit additional
evidence is not an arbitrary one, but is a judicial one
circumscribed by the limitations specified in Order 41 Rule 27
of CPC. According to him, under Order 41 Rule 27 it is the
Appellate Court, which must require the evidence to enable it
to pronounce the judgment and this is the true test, to be
applied by the Appellate Court, is to determine, whether it is
able to pronounce the judgment on the material before it
without taking into consideration the additional evidence
sought to be adduced.
22. At this stage, in order to consider whether the
Application seeking production of additional evidence deserve
consideration, we deem it appropriate to reproduce Order 41
Rule 27 of CPC, which reads thus :-
“27. Production of additional evidence in Appellate Court.–(1) The
parties to an appeal shall not be entitled to produce additional
evidence, whether oral or documentary, in the Appellate Court. But
if —
(a) the Court from whose decree the appeal is preferred has refused
to admit evidence which ought to have been admitted, or(aa) the party seeking to produce additional evidence, establishes
that notwithstanding the exercise of due diligence, such evidence
was not within his knowledge or could not, after the exercise of due
diligence, be produced by him at the time when the decree appealed
against was passed, or
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24/49 COMAPL-39319-25.odtfor any other substantial cause, the Appellate Court may allow such
evidence or document to be produced, or witness to be examined.
(2) Wherever additional evidence is allowed to be produced by an
Appellate Court, the Court shall record the reason for its
admission.”
23. Interim Application No.2849 of 2026 filed by the
Applicants(Plaintiffs) pleaded that, while instituting the Suit
the relevant documents in form of scheme of arrangement
between the Plaintiff No.1 and Indian Rayon & Industries Ltd.
alongwith the Printout Status Report relating to the
trademark registration ‘BIRLA WHITE’ as well as the copies of
the annual reports of the Appellants’ predecessor and
brochure issued by Birla Management Corporation Ltd., which
the Plaintiffs wanted to be placed on record could not be
brought on record as they were not with the Plaintiffs and
despite exercise of due diligence not within their knowledge.
After the impugned order was passed, the Applicants
undertook detail search from their archives, warehouses
including archives of the newspaper agencies, taking
inspections and was able to collate such evidence which is
materially relevant and that is why the permission is sought to
place the evidence on record.
24. For deciding the Application, the question for
consideration before us is, whether despite exercise of due
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diligence, the documents could not be produced and whether
they have any bearing or relevance to the Appellants’ case.
According to Mr.Kadam, filing of the Application is
nothing but an attempt to fill in the lacuna, which was clearly
plucked by the learned Single Judge, when she refused to
grant injunction in favour of the Plaintiffs.
25. The scope of Order XLI Rule 27 also fell for consideration
in Colgate Palmolive Company & Anr. (supra), when the
question that arose for determination was, whether the
appellants may be permitted to tender additional evidence as
sought for. By relying upon the decision in the case of Mahavir
Singh Vs. Naresh Chandra3, the said provision was held to be
in form of exception to the general rule and the said provision
read with Section 107(d), which permitted additional evidence
to be taken, was held to be only permitted when the conditions
and limitations set out in the said rule are found to exist. It is
held that the Court is not bound by the circumstances
mentioned under the rule to permit additional evidence and
the parties are not entitled, as of right, to the admission of
such evidence and the matter is definitely in the discretion of
the Court, which is expected to be exercised judiciously and
sparingly. The Privy Council in Kessowji Issur Vs. Great
3 (2001) 1 SCC 309
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Indian Peninsula Rly.Co., highlighted the principle flowing
from the said provision in the following words :-
“In the third circumstance, the appellate Court may require any
document to be produced or any witness to be examined to enable it
to pronounce the judgment, or for any other substantial cause. The
expression “to enable it to pronounce judgment” has been the
subject of several decisions including Syed Abdul Khader v. Rami
Reddy wherein it was held that when the appellate Court finds itself
unable to pronounce judgment owing to a lacuna or defect in the
evidence as it stands, it may admit additional evidence. The ability
to pronounce a judgment is to be understood as the ability to
pronounce a judgment satisfactory to the mind of the Court
delivering it. It is only a lacuna in the evidence that will empower
the Court to admit additional evidence ( See : Municipal Corpn of
Greater Bombay v. Lala Pancham). But a mere difficulty in coming
to a decision is not sufficient for admission of evidence under this
Rule. The words “or for any other substantial cause” must be read
with the word “requires”, which is set out at the commencement of
the provision, so that it is only where, for any other substantial
cause, the Appellate Court requires additional evidence, that this
rule would apply…”
In paragraph 11, by applying the principle of limited
interference in exercise of the power of review, the Court
observed thus :-
“11. …..Whether the learned motion Judge was right or not in
passing the impugned order shall have to be seen in the light of the
material placed before the learned motion Judge by the parties.
With the limited jurisdiction that the appeal Court has in the matter
arising out of an application for temporary injunction, ordinarily
the appeal Court shall confine the consideration of the matter to
the pleadings and material that were under consideration before
the motion Judge. You cannot find fault with the discretionary
order of the learned Judge by relying upon the material placed in
appeal which was not under consideration at the time of
consideration of application for temporary injunction and interfere
with the discretionary order. The appeal Court. in an appeal from
discretionary order does not generally travel beyond the record of
the lower Court.”
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26. In K. Venkataramiah Vs. A. Seetharama Reddy & Ors. 4, a
reference is made to Section 107, which empowered the
Appellate Court “to take additional evidence or to require such
evidence to be taken”, “subject to such conditions and
limitations as may be prescribed” and Rule 27 of Order 41
prescribe the conditions and limitations.
The conditions for exercise of this power were
formulated by the Apex Court as below :-
“The rule first lays down that the parties to an appeal shall not be
entitled to produce additional evidence, whether oral or
documentary, in the appellate court. It then proceeds to lay down
two classes of cases where the appellate court may allow additional
evidence to be produced. One class is where the Court appealed
from has refused to admit evidence which ought to have been
admitted. The other class is where the appellate court requires such
additional evidence for itself- either to enable it to pronounce
judgment or for any other substantial cause. The second class of the
rule requires that when additional evidence is allowed to be
produced by an appellate court, the Court shall record the reason
for its admission.
When the contention was raised that the High Court, which
allowed the production of evidence for its own requirement,
had failed to apply their mind and did not record any reasons
for admission of additional evidence, the importance of the
provision for recording of reasons for admission of additional
evidence was noted though the contention that omission to
record reasons vitiated the admission of the evidence. The
4 1963 SCC OnLine SC 216
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object of the provision was highlighted by Their Lordships in
the following words :-
“Clearly, the object of the provision is to keep a clear record of what
weighed with the appellate court in allowing the additional evidence
to be produced-whether this was done on the ground (i) that the
court appealed from had refused to admit evidence which ought to
have been admitted, or (ii) it allowed it because it required it to
enable it to pronounce judgment in the appeal or (iii) it allowed this
for any other substantial cause. Where a further appeal lies from
the decision of the appellate court such recording of the reasons is
necessary and useful also to the Court of further appeal for deciding
whether the discretion under the rule has been judicially exercised
by the court below. The omission to record the reason must
therefore be treated as a serious defect. Even so, we are unable to
persuade ourselves that this provision is mandatory………….It may
be mentioned that as early as 1885 when considering a similar
provision in the corresponding section of the Code of 1882 viz.
Section 586, the High Court of Calcutta held that this provision for
recording reasons is merely directory and not imperative Gopal
Singh v. Jhakri Rai. We are aware of no case in which the
correctness of this view has been doubted. It is worth noticing that
when the 1908 Code was framed and Order 41 Rule 27 took the
place of the old Section 568, the legislature was content to leave the
provision as it was and did not think it necessary to say anything to
make the requirement of recording reasons imperative. It is true
that the word “shall” is used in Rule 27 (2); but that by itself does
not make it mandatory. We are therefore of opinion that the
omission of the High Court to record reasons for allowing additional
evidence does not vitiate such admission.”
27. In light of the observations of the High Court, it was
concluded that it was not possible to say that the High Court
made order for admission of additional evidence without
applying its mind and rather when the Appellate Court has the
power to allow additional evidence not only if it requires such
evidence “to enable it to pronounce judgment”, but also for
“any other substantial cause”. In no uncertain words, the
Apex Court expressed its verdict in the following words :-
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“16…..There may well be cases where even though the court finds
that it is able to pronounce judgment on the state of the record as it
is, and so, it cannot strictly say that it requires additional evidence
“be enable it to pronounce judgment”, it still considers that in the
interest of justice something which remains obscure should be filled
up so that it can pronounce its judgment in a more satisfactory
manner. Such a case will be one for allowing additional evidence
“for any other substantial cause” under Rule 27(1)(b) of the Code.
Reliance was placed upon the observations in Parsotim Thakur
(supra), where the Privy Council proceeded to point out, “it
may well be that the defect may be pointed out by a party, or
that a party may move the Court to supply the defect, but the
requirement must be the requirement of the Court upon its
appreciation of the evidence as it stands.”
28. We must examine the Application before us seeking
production of additional evidence on record in the background
facts placed before us, as it is worthy to note that the
Application seeking additional evidence when filed, the Court
shall take up the same at the time of hearing of Appeal on
merits, so as to find out whether the documents and/or the
evidence sought to be adduced has any relevance or bearing to
the issued involved. If the Court arrives at the conclusion that
the Application deserve to be allowed, to test the validity of
these documents, it is permissible for the Appellate Court to
remand the matter to the trial Court for its consideration. In
light of the aforesaid situation emerging from the law before
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us, when we examined the impugned order in the light of the
rival contentions placed before us, based on the pleadings, in
the suit as well as the pleadings in the Interim Application,
with a specific statement being made that all the statements in
the plaint are to be considered as pleadings in the Interim
Application, we had carefully perused the pleadings and,
thereafter, analysed the reasoning of the learned Judge in the
impugned order.
29. Grasim claims to be a flagship company of Aditya Birla
Group and has pleaded that well-known famous Birla family
owns and administers the said Group and other Groups of Birla
family. Pleading that Birla family had engaged in a variety of
business activities with their respective ‘BIRLA’ and ‘BIRLA’
formative trade-marks, the Plaintiffs pleaded their case by
referring to the business conducted.
The plaint has categorically provide the details of
Plaintiff No.1, which was incorporated as “The Gwalior Rayon
Silk Mfg. (Wvg.) Company Ltd.”, a textile manufacturer whose
trading name was changed to that of ‘Grasim Industries Ltd.”
in 1986. In para 9, the Plaintiffs pleaded their case that
Aditya Birla Group comprises of various prominent
manufacturing and/or service providing companies, including
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Plaintiff Nos.1 and 2 and several other companies and both
Plaintiff Nos.1 and 2 are listed on the Bombay Stock Exchange
and National Stock Exchange alongwith Aditya Birla Capital
Ltd., Aditya Birla Sun Life Ltd., Aditya Birla Fashion & Retail
Ltd. etc.
We, prima facie, find substance in the submissions of the
learned senior counsel Mr.Khambata that a statement was
clearly made in the plaint that they were under the control of
Aditya Birla Group alongwith several other companies listed
on the Stock Exchange. Highlighting the reputation which
Aditya Birla Group has achieved in several industries and
market segments, in paragraph 14, the Plaintiffs have
highlighted their association with BIRLA trademark by stating
that the origin of the trade mark ‘BIRLA’ dates back to the 19 th
century when Seth Shiv Narayan Birla started trading in
cotton and presently Kumar Mangalam Birla is the current
Chairman of the Aditya Birla Group and the categorical
statement is made in para 14, which in our opinion could not
create any doubt about the Plaintiffs not establishing its
connect with Birlas, as we find the following pleading which
has probably escaped the attention of the learned Single
Judge.
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“Mr.Kumar Mangalam Birla chairs the Boards of all major Aditya
Birla Group companies in India and globally, including the
Plaintiffs.”
Another pertinent pleading and of much significance is to be
found in paragraph 15, when the Plaintiffs pleaded thus :-
“15. The Plaintiffs state and submit that on account of the
internal business arrangements of the groups of companies which
fall under the businesses of the Birla Family, only such groups of
companies owned and/or managed by the Birla Family are entitled
to the adoption and/or use of the well-known trade mark BIRLA
either stand-alone or in conjunction with other marks. One such
marks is the ADITYA BIRLA GROUP word mark and logo. The said
marks were adopted in the year 1996 and have been in Multiple
classes. The said marks have been openly, extensively and
continuously used by the Plaintiffs and other group companies. The
use of this mark comes also in conjunction with the other Plaintiff
BIRLA marks. The Plaintiffs craves leave to refer to and rely upon
copies and/or details of any pending trade-mark applications,
and/or trademark registration certificates obtained in relation
trade marks hereinabove, when produced.”
30. Plaintiff No.1 took its case ahead by stating that in order
to accord statutory protection and to prevent
misappropriation, dilution and misuse of the Plaintiffs BIRLA
trade-marks, Plaintiff No.1 by themselves or through their
predecessors in right, title and interest have secured
registrations for a number of ‘BIRLA’ trademarks and the list
thereof was exhibited at Exh.B-1 alongwith Exh.B–with
reference to the report of Plaintiff No.1 as well as Plaintiff
No.2, with a specific averment to the effect that the Plaintiffs
have been openly, continuously and extensively using the
Plaintiffs BIRLA trade marks, including the ‘ADITYA BIRLA
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GROUP’ wordmark extensively in respect of its goods and
services.
Exhibit A to the plaint is in form of details of the
trademark registration of Plaintiffs BIRLA trademarks and
the first 14 items except item No.2 is the registration in Class
19, the goods being cement/slag cements, white wall care putty
etc. The words ‘each of the trademarks’ against the said goods
include the word ‘BIRLA’. In no uncertain words, the
Plaintiffs, in the plaint as well as in the Interim Application,
pleaded their connect with BIRLA Group, but by way of
defence, Defendant No.1 adopted a stand that use of the mark
‘BIRLA’ and ‘BIRLA TMT’ is highly fanciful, and inherently
distinctive coined composite word mark, which, when taken as
a whole, is inherently distinctive of Defendant No.1’s products
alone. It is the case of the Defendant that the relevant class of
consumers of Defendant No.1’s products only associate with
the brand name ‘BIRLA TMT’ qua its products such as TMT
Bar, MS Square, MS flat, MS Round and Angle and Channel etc.
However, in paragraph 6.6 of the reply of the Defendant No.1,
the claim in the Interim Application is opposed by stating that
the Applicants were wrongfully trying to claim a monopoly
over the word ‘BIRLA’, which is in fact a word of general sense
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and meaning being ‘scarce, rate, uncommon’ and since
Defendant No.1 wanted to indicate the rate character of its
goods, being of superior strength, the word ‘BIRLA’ was
adopted and Defendant No.1 is now the proprietor of the
registered trademark in Class 6, where the Plaintiffs do not
enjoy any registration.
31. When we perused the pleadings in the Application and
the response of the Defendants through their reply affidavit,
the pleadings in para 4 to the Application where the Plaintiff
No.1 had pleaded about it being a flagship company of global
conglomerate of Aditya Birla Group, response of the
Defendants is want of knowledge. In para 20.16 of the reply
affidavit, it is suggested that no case for injunction is made out
as Defendant No.1’s mark ‘BIRLA’ and ‘BIRLA TMT’ and the
Applicants mark, when compared as a whole, will not cause
any confusion/deception, since they are different and
distinguishable to each other’s mark and are neither identical
nor deceptively similar and there is also a clear and stark
difference in services/goods being offered by them and that
there is no overlap in respect of the same. In para 20.17, there
is specific denial to the claim of the Plaintiffs that the adoption
of Defendant No.1’s mark is to come close to the Applicants
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mark, by reiterating that the services offered by the
Applicants and Defendant No.1 are under different classes. It
is also sought to be suggested that the Applicants and/or the
Birla family companies were aware and had knowledge about
the existence of Defendant No.1 and its mark and despite this,
they knowingly failed/neglected to take any action against
Defendant No.1 and rather having stood by for a substantial
period, have encouraged Defendant No.1 to carry on its
business in the manner to acquire reputation and to expend
money and after lapse of time, their business cannot be stpped.
32. Reading of the reply affidavit filed by the Defendants and
the stand adopted by them qua the specific pleadings by the
Plaintiffs, we find that the claim of the Plaintiffs in para 4 of
the plaint about its relationship with Aditya Birla Group, there
is simply denial for want of knowledge, which may not be
accepted as denial.
33. According to Mr.Kadam, if the Plaintiffs have filed a suit
as a Commercial Suit, all those necessary documents relied
upon by them ought to have been the part of the plaint.
According to him, the requirement is stricter in Commercial
Suit in the wake of the Commercial Courts Act, 2015, but all
the while the plaint only project that the Plaintiffs will produce
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the documents as and when required and the pleadings,
therefore, require substantiation by necessary documents, but
the Plaintiffs have miserably failed to do so. We have no doubt
in our mind that the one who asserts or claims existence of a
fact, must prove the same and the burden of proof is definitely
on the plaintiff to prove his case. Mr.Kadam has argued that if
Plaintiff No.1 has claimed that it got the title from Seth Shiv
Narayan Birla or whomsoever from Birla Family, it must prove
the same.
We find this to be a misreading of the claim in the plaint
and this is what, according to us, has been patently ignored in
the impugned order, as the learned Single Judge has refused to
rely on the Plaintiffs’ association with Birla Group of
Companies giving exclusive right only to those companies,
which form part of the Birla Group to use the trademark,
containing the word ‘BIRLA’ and to institute action for
infringement of its well-known BIRLA mark, The learned
Judge refer to the pleadings of the Plaintiff No.1 about it being
flagship company and that on account of the internal
arrangement between by Birla Group of Companies which gave
the Plaintiffs exclusive right to use ‘BIRLA’ trademark and in
the words of the learned Single Judge, “the gist of the
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pleadings is that the use by a third party, outside the Birla
group of companies, of the mark using the word Birla infringes
upon the exclusive right of the Birla group of companies.
Considering the manner in which the plaint has been framed,
the basic requirement to be prima facie established by the
Plaintiffs is to demonstrate its association with the Birla group
of companies, even accepting the exclusive right of Birla
group. The Plaintiffs are independent corporate entities who
have initiated infringement action on the strength of
exclusivity to Birla trade mark, which right has to be prima
facie demonstrated.” The learned Judge has further recorded
that, “the Plaintiffs appears to be harboring a misconception
that reference to the well known name of Birla family is
sufficient to accept the exclusive right of Plaintiffs to use the
“BIRLA” trade marks”. It is also recorded in the impugned
order that the plaint pleads that Plaintiff No.1 is a limited
company incorporated in the year 1947 in textile business and
there is not even a bare assertion of user of the “BIRLA” trade
mark by the Plaintiff No.1 in the year 1947 for marketing its
textiles. The claim of the Aditya Birla Group being the user of
“BIRLA” trade mark since the year 1996 is not substantiated
by any document.
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It is further noted that there is no averment in the plaint
to justify the connection between the domain name and
Ultratech Cement Ltd. and the pleadings per se cannot confer
any benefits associated with the Birla trade marks upon the
Plaintiffs and all reference to Birla group is unsubstantiated,
that leaves the Plaintiffs with the claim of being a registered
proprietor of its trade mark which has instituted an action for
infringement of its registered trade mark. Excluding any
association with the Birla group, according to the learned
Single Judge, there is no much difference between the Plaintiff
No.1 and the Defendant No.1, which are both registered
proprietors of their respective trade marks containing the
word Birla.
The learned Judge further proceeded to note that the
registered trade mark ‘BIRLA WHITE’ was registered by
Indian Rayon and Industries Limited in the year 1999 with the
user claim of 1988 and the registration certificates in respect
of the trade mark ‘BIRLA WHITE’ under Registration
No.524399 and 524400 indicate that registration is in the
name of Indian Rayon and Industries Limited and though an
attempt is made that there is demerger between Indian Rayon
and Industries Ltd. and Plaintiff No.1, the scheme of
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arrangement is not placed on record. Thus, an inference is
drawn by the learned Single Judge that no a single document
is produced on record to demonstrate user of the trademark by
Indian Rayon and Industries Ltd. since the year 1988 and that
there is not a single registration of the stand alone word Birla
in registration marks of Plaintiffs in Class 19.
34. Rule 27 of Order XLI relating to Appeals from original
decrees is couched in a negative language by providing that
Parties to an Appeal shall not be entitled to produce additional
evidence, either oral or documentary before the Appellate
Court. It is, however, permissible to bring such evidence only
in the contingencies set out therein; being the Court from
whose decree the Appeal is preferred has refused to admit
evidence which ought to have been admitted or a Party
establish that despite exercise of due diligence such evidence
was not within his knowledge and even after exercise of due
diligence could not be produced at the time when the Decree
which is appealed was passed.
One more contingency stipulated in the provision is,
when the Appellate Court itself require any document to be
produced or any witness to be examined to enable it to
pronounce Judgment or for any other substantial cause and in
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such case the Court may allow such evidence or document to
be produced or witness to be examined.
Whenever additional evidence is allowed to be produced
it is imperative for the Appellate Court to record the reasons
for its admission. In K. Venkataramiah (supra), the Apex
Court, laid its emphasize on sub-clause (2) of Rule 27 as
regards recording of reasons for admitting additional evidence
and the intention of the provision is highlighted.
35. In Union of India Vs. K.V. Lakshman & Ors. 5 the scope of
Clause (1)(aa) of Rule 27 Order XLI came up for consideration
and the Court declared that the additional evidence may be
permitted if the Party seeking to file it satisfy the Court with
justiciable reason for its filing and is able to establish
relevance of such evidence for deciding right of Parties. But if
the application for filing additional evidence is allowed, then
the Appellate Court is obliged to afford opportunity to the
opposite Party to file additional evidence by way of rebuttal.
In Para 36 the Apex Court held that :-
“36. Order 41 Rule 27 of the Code is a provision which enables the
party to file additional evidence at the first and second appellate
stage. If the party to appeal is able to satisfy the appellate court
that there is justifiable reason for not filing such evidence at the
trial stage and that the additional evidence is relevant and material
for deciding the rights of the parties which are the subject-matter of
the lis, the court should allow the party to file such additional
evidence. After all, the court has to do substantial justice to the
5 (2016) 13 SCC 124
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parties. Merely because the court allowed one party to file
additional evidence in appeal would not by itself mean that the
court has also decided the entire case in its favour and accepted
such evidence. Indeed once the additional evidence is allowed to be
taken on record, the appellate court is under obligation to give
opportunity to the other side to file additional evidence by way of
rebuttal.”
36. In case of Union of India Vs. Ibrahim Uddin & Anr. 6, by
placing reliance upon the decision in K. Venkataramiah
(supra) and Municipal Corporation of Greater Bombay Vs.
Lala Pancham & Ors.7 it is categorically held that the Parties
are not entitled, as of right to the admission of evidence at
appellate stage and the provision do not apply, when on the
basis of evidence on record, the Appellate Court can
pronounce a satisfactory Judgment and the matter is entirely
within the discretion of the Court though by way of caution it
is expressed that the power shall be sparingly used and
ordinarily the Appellate Court shall not allow the evidence to
be adduced so as to enable the Party to raise a new point in
appeal, nor is a party on whom the onus of proving any point
lies fail to discharge the onus, he is not entitled to a fresh
opportunity to produce evidence, as the Court can in such a
case pronounce Judgment against him.
In short, at the stage of an Appeal, allowing a document
to be produced or a witness to be examined is only permissible
6 (2012) 8 SCC 148
7 AIR 1965 SC 1008
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when the Court find it necessary for enabling it to pronounce
Judgment, but this do not entitle the Appellate Court to let in
fresh evidence at appellate stage merely for the purpose of
pronouncing Judgment in a particular way i.e. evidence will
not be allowed for removing a lacunae which has caused the
Party and now such lacunae is tried to be filled in.
The words ‘substantial cause’ in the provision also
received interpretation when in Para 40 and 41 the Court
recorded thus :-
“40. The inadvertence of the party or his inability to understand
the legal issues involved or the wrong advice of a pleader or the
negligence of a pleader or that the party did not realise the
importance of a document does not constitute a “substantial cause”
within the meaning of this Rule. The mere fact that certain evidence
is important, is not in itself a sufficient ground for admitting that
evidence in appeal.
41. The words “for any other substantial cause” must be read with
the word “requires” in the beginning of the sentence, so that it is
only where, for any other substantial cause, the appellate court
requires additional evidence, that this Rule will apply e.g. when
evidence has been taken by the lower court so imperfectly that the
appellate court cannot pass a satisfactory judgment.”
But whenever the Court permit the additional evidence
to be led in form of a document or oral evidence, it shall record
its reason for doing so as reason is the heartbeat of every
conclusion and it substitute subjectivity to objectivity.
37. Another question that arise for consideration is at what
stage the Application under Order XLI Rule 27 is to be
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considered at the time of hearing the Appeal on merits and the
true test is whether the Appellate Court is able to pronounce
the Judgment on the material before it without taking into
consideration the additional evidence sought to be adduced
and such occasion would arise only if on examining the
evidence as it stands the Court comes to a conclusion that
some inherent lacunae or defect becomes apparent to the
Court, as the provision is not intended to assist an
unsuccessful litigant to patch up the weak parts of his case
and fill up the omissions or the lacunae when he file an
Appeal. It is, therefore, expected that when an Application is
filed for taking additional evidence on record before the
Appellate Court, it is only when the Court on appreciating the
reasoning adopted in the impugned Order/Judgment and on
appreciation of the evidence is of the view that the additional
evidence must be brought on record so as to enable it to
pronounce the Judgment or for doing substantial justice.
In Parsotim Thakur (supra), the Privy Council
expounded the principle underlying Order XLI Rule 27 and
with reference to Clause (1)(b) held that it is only when the
Appellate Court requires (i.e. finds it needful) that additional
evidence can be admitted and the legitimate occasion for the
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exercise of the discretion is not whenever before the Appeal is
heard a Party applies to adduce fresh evidence, but when on
examining the evidence as it stands some inherent lacunae or
defect becomes apparent. Though the defect may be pointed
out by a Party or that Party may move the Court to supply the
defect, but the necessary requirement of exercise of the power
is that of the Court, who is of the opinion that the additional
evidence is necessary to be brought on record and this could
be done upon appreciation of the evidence by the Court. In no
uncertain words, the Privy Council expressed thus :-
“If the Respondents desired to give evidence as to the thumb-
impression they had ample opportunity to do so in the trial Court.
The provisions of Section 107, Civil Procedure Code, as elucidated
by O. 41, R. 27 are clearly not intended to allow a litigant who has
been unsuccessful in the lower Court to patch up the weak parts of
his case and fill up omissions in the Court of Appeal……….Under Cl.
(1)(b) it is only where the appellate Court “requires”, the
additional evidence can be admitted.”
In Arjan Singh alias Puran (supra) it is ruled that the
discretion to admit additional evidence is not an arbitrary
one, but is a judicial one circumscribed by the limitations
specified in Order XLI Rule 27 and if additional evidence was
allowed to be adduced contrary to the principles governing
the reception of such evidence, it would be a case of improper
exercise of discretion and the additional evidence brought on
record will have to be ignored. Under Order XLI Rule 27 it is
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the Appellate Court that must require the evidence to enable
it to pronounce the Judgment and the legitimate occasion for
application of the rule was set out to be, on examining the
evidence as it stands, some inherent lacunae or defect
becomes apparent, not where discovery is made outside the
Court of fresh evidence and the Application is made to import
it.
38. From the various precedents cited before us, which had
focused upon the scope of the particular provision in form of
production of additional evidence by the Appellate court and
fulcrum of all the pronouncements seeking speak in one
voice, ‘that the said provision does not entitle the appellate
court to laid any fresh evidence, but the Court will exercise its
discretion if in its view any document to be produced or any
witness to be examined is to be examined, to enable it to
pronounce Judgment or for any other substantial cause.
In short, despite the power being conferred on the
Appellate Court to permit the evidence to be brought before it
which was not produced or adduced at the time of trial, the
discretion vested in the Court must be limited to those cases
where it found it necessary to secure such evidence which
would enable it to pronounce the Judgment and in no way it is
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to be construed as a provision to be invoked by a Party to fill
up the lacunae in his case.
39. Once we are clear on the principle flowing from the
aforesaid, when we focus our attention on the Application
filed before us, with reference to the documents which are
sought to be brought on record and this application is to be
appreciated by us in the factual background.
In this regard, it is to be noted that if the Plaintiffs have
associated their claim by pleading a statement of facts, unless
and until there is a denial, the learned Judge could not have
ignored the said pleading merely on the ground that there is
no proof produced alongwith the plaint. The Plaintiffs
alongwith the plaint have annexed several documents, which
included their registrations and it is to be noted that the
Plaintiffs have appended a list of 112 registered trade marks
with the use of the word ‘BIRLA’, with a pleading that on
account of the internal arrangement worked out with Aditya
Birla Group, they were entitled to use the said mark and in fact
have obtained registration in respect of 112 goods/services,
the oldest one to be found registered on 14/12/1990 based on
the user claim from 30/04/1988. When there is no denial of
the claim of the Plaintiffs about their relationship with the
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Aditya Birla Group and, therefore, their entitlement to use the
mark ‘BIRLA WHITE/BIRLA’ in their products, we are of the
view that the documents sought to be produced on record by
way of additional evidence would assist this Court in
appreciating the pleadings of the Plaintiffs as well as the
contest raised to the same.
40. In this background, the Application for bringing on
record the additional evidence and this comprise of a
document in form of scheme of arrangement between Indian
Rayon and Industries Ltd. and Grasim Industries Ltd. i.e.
Plaintiff No.1. The said scheme transferred the business of the
transferor to the transferee company i.e. Grasim and
transferred business in the scheme is the business of Grey
Cement and White Cement Undertaking, including other plants
of the transferor company as a going concern and included
white cement manufacturing unit in Rajasthan (known as
‘Birla White’) and grinding unit of 1.2 million tpa capacity in
the State of Maharashtra (known as ‘Birla Super Cement
Works’).
The aforesaid document sought to be produced in form of
additional evidence is only sufficient to establish the business
of Indian Rayon and Industries Ltd. of Grey Cement and White
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Cement was transferred to Grasim Industries Ltd. As regards
the trade mark ‘BIRLA WHITE’, in Class 19 presently
registered in the name of Plaintiff No.1-Grasim Industries Ltd.,
the trade mark applied for is ‘BIRLA WHITE’, the application
being preferred on 14/02/1990 and the registration being
granted on 14/08/1996.
The Application is accompanied with history/PR details,
which has a reference to the scheme of arrangement
sanctioned by the High Court of Madhya Pradesh under the
Company Petition No.39 and 33 of 1988, order dated
23/02/1999. The order of the Madhya Pradesh High Court,
which is annexed to the Application, is also perused by us. It is
an order passed on the Petition filed by Grasim Industries Ltd.
under Section 394 of the Companies Act, 1956 with a prayer
that the scheme of arrangement of the transferred business of
Indian Rayon and Industries Ltd. with the transferee company
be sanctioned from 01/09/1998. The said scheme of
arrangement also contain no reference to Aditya Birla Group.
The other documents, which are annexed which are conferred
upon the Plaintiff No.1 as well as Plaintiff No.2 as a unit of
BIRLA WHITE only establish that the Plaintiffs are using the
mark ‘BIRLA’ and it is a well-known mark.
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In our view, the relevance of the documents in the wake
of the pleadings in the plaint and the Interim Application, was
not warranted at that stage, as we find that the contingency
for production of the documents has arisen in the wake of the
finding in the impugned order that the Plaintiff No.1 has failed
to establish its relationship with Aditya Birla Group by any
documentary evidence.
In our view, these documents are necessary to be
brought on record to affirm the claim, which was already set
out in the plaint. In order to do substantial justice, we deem it
appropriate to allow the Application, but no way we are
pronouncing upon the admissibility of documents and on the
Application being allowed, we permit the Respondents to file
an additional affidavit, dealing with the said documents within
a period of one week from today.
Interim Application is allowed in the aforesaid terms.
41. The Commercial Appeal is directed to be listed for
further consideration on 23rd April, 2026 on Supplementary
Board.
(MANJUSHA DESHPANDE, J.) (BHARATI DANGRE, J.)
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