Patna High Court
Johnson Paints Co vs Johnson Paints Private Limited on 24 April, 2026
Author: Rajeev Ranjan Prasad
Bench: Rajeev Ranjan Prasad
IN THE HIGH COURT OF JUDICATURE AT PATNA
COMMERCIAL APPEAL No.2 of 2025
======================================================
Johnson Paints Co. having its Registered Office at 11A, Ashoka Place,
Exhibition Road, Patna-800001, Bihar, through its Partner Namely Nitin
Krishna (M), aged about 43 Years, Son of Late Krishna Prasad Resident of 91,
Ashoka Place, Near Big Bazar, Exhibition Road, Post-G.P.O., P.S.-Gandhi
Maidan, District-Patna.
... ... Appellant
Versus
Johnson Paints Private Limited having Registered Office at Fatuha Road,
Sabalpur, Patna City, Patna-800009, Bihar.
... ... Respondent
======================================================
Appearance :
For the Appellant/s : Mr. Ajit Kumar, Advocate
For the Respondent/s : Mr. Gautam Kejriwal, Advocate
Mr. Mohit Agarwal, Advocate
Ms. Twinkle Kumari, Advocate
======================================================
CORAM: HONOURABLE MR. JUSTICE RAJEEV RANJAN PRASAD
and
HONOURABLE MR. JUSTICE PRAVEEN KUMAR
CAV JUDGMENT
(Per: HONOURABLE MR. JUSTICE RAJEEV RANJAN PRASAD)
Date : 24-04-2026
This appeal has been preferred for setting aside the order
dated 16.11.2024 passed by the learned Principal District Judge-
cum-Commercial Court, Patna (hereinafter referred to as 'the
learned Commercial Court') in Commercial Dispute Case No.
02/2023 by which the learned Commercial Court has been pleased
to refuse the prayer for interim/ad-interim injunction on the
petition dated 08.12.2023 filed by the plaintiff-appellant.
Brief Facts of the Case
2. The appellant is a registered partnership firm engaged
in manufacturing and trading of various types of products such as
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paints, lacquers, coatings, thinner, oxide colours, primer,
preservatives against rust and deterioration, cement paints, plaster
of paris, gypsum powder and its allied products ("hereinafter
cumulatively referred to as "the products").
3. According to the plaintiff, one Late Krishna Prasad is
the founder of the business who had coined and adopted a
trademark "JOHNSON", initially for only few products such as
red oxide, primer and cement paint known as 'CEM' in the year
1987. He had set up a proprietorship firm named as Johnson Paints
(1) in the undivided State of Bihar. The firm got a Sales Tax No. as
B.S.T. No. P.C.W. 690 (R) and C.S.T. No. P.C.W. 1874 (C).
4. It is stated that in the later stages, he had extended the
business and established an upgraded manufacturing unit. He was
using the widely accepted trademark "JOHNSON" named as
'Johnson Paints Co.' as a proprietorship firm and had been running
the business smoothly. On 01.04.2014, he admitted both his sons
in the existing business and converted it as 'Johnson Paints Co.' (a
registered partnership firm). On 11.06.2016, the same firm has
been reconstituted due to sudden demise of the founder of the firm.
Now, the both sons-cum-existing partners are running the existing
business of his father as successor of Late Krishna Prasad.
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5. Learned counsel for the appellant submits that the
appellant comprises a group of companies/firm namely Johnson
Paints (1), Johnson Paints Industries/Johnson Paints Co., glaze
paints limited, etc. collectively known as "Johnson Paints" group
which includes the companies represented through the group key
person Mr. Nishant Krishna and Mr. Nitin Krishna. The appellant
has three manufacturing units and more than 12 branches and
depots all across the country. It has a wide distribution network,
which serves more than 1000 dealers all across the country and has
turnover of several crores of rupees. The case of the appellant is
that he is using this trademark since 21 st April 1987 continuously
and extensively in respect of the said goods. Because of the long
and continuous use, extensive marketing and sales campaign, the
paints and building materials sold under the trademark
Johnson/Johnson Cem/Johnson Paints, has acquired enviable
goodwill and reputation amongst the members.
6. The grievance of the plaintiff-appellant is that the
respondent-defendant company i.e. Johnson Paints Pvt. Ltd.,
which has come into existence on 22.12.2009 has been using this
trademark in the similar products thus, continuing passing off is
taking place. The defendant-respondent is creating confusion in the
mind of the consumers with a dishonest intention to deceive the
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customers in selling their products in the same name as the
trademark of the plaintiff-appellant which is causing irreparable
loss and damage to goodwill and reputation of the plaintiff. The
plaintiff-appellant has given the description of the various
trademarks which are being used by the respondent in similar to
that of the plaintiffs. The claim of the defendant-respondent with
regard to the trade-marks being used by them are also shown in
paragraph '14' of the plaint, the same is being reproduced
hereunder:-
Plaintiff's Trademarks Defendant's Trademarks
TM No. Class Trademark User Date TM No. Class Trademark User Date
5746777 2 JOHNSONCEM 21/04/1987 2168151 2 01/04/2000
SUPER JOHNSON
CEM
5746794 2 JOHNSON PAINTS 21/04/1987 2241994 2 JOHNSON PAINTS 22/12/2009
(1) PVT. LTD
5746795 35 JOHNSON PAINTS 21/04/1987
(I)
5746796 2 JOHNSON PAINTS 21/04/1987 3692032 2 JOHNSON PAINTS 14/04/1990
5746797 2 JOHNSON 21/04/1987 1785981 2 J P (DEVICE 01/01/2005
5688927 2 RAINBOWCEM 16/12/1995 2168153 2 SUPER 01/04/2000
RAINBOWCEM
5688928 2 BILLION CEM 01/10/2018 5810039 2 BANJO* Proposed to be
used
5688929 2 RAMBO CEM 18/07/2018 4937417 2 RAMBO* Proposed to be
used
5688931 2 MILIONCEM 11/03/1999 2168154 2 SUPER MILLION 01/04/2010
5688932 2 PETALCEM 13/03/2003 2168152 2 SUPER PETAL 01/04/2010
5688933 2 GLOBECEM 16/12/1995 2168155 2 SUPER GLOBE CEM 01/04/2000
7. Learned counsel for the appellant submits that the
plaintiff-appellant filed the plaint seeking a decree of permanent
injunction against the defendant and in favour of the plaintiff
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restraining the defendant, their directors, officers and employees
etc. to refrain from offering for advertising, offering for sale,
stocking, adopting, using and/or dealing in any manner with the
well known trademark Johnson with prefixes and suffixes and
copyrighted art work logo/device of the plaintiff. The plaintiff-
appellant also filed an application dated 08.12.2023 under Section
135(1) of the Trade Marks Act, 1999 (hereinafter referred to as
'the Act of 1999) read with Section 151 of the Code of Civil
Procedure (in short 'CPC') for interim/ad-interim injunction.
8. The defendant-respondent opposed the application
dated 08.12.2023 as according to the respondent, the appellant had
filed a petition dated 08.12.2023 for grant of exemption from pre-
institution mediation and settlement under Section 12(a) of the
Commercial Courts Act, 2015 (hereinafter referred to as 'the Act
of 2015'). On the same date, the appellant further filed a petition
under Order 39, Rule 4 read with Section 151 of the CPC and the
court of learned Additional District Judge-XIV granted an ex-parte
order restraining the respondent, against which the respondent
filed a petition on 29.04.2024 seeking recall of the ex-parte order.
9. It is stated that the respondent had also filed an
application under Order 7, Rule 11 of the CPC for rejection of the
plaint. The respondent had also filed a reply to the injunction
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petition dated 08.12.2023. It is the case of the defendant-
respondent that the defendant is a private limited company
registered under the provisions of the Companies Act, 1956.
Certificate of incorporation (Annexure 'D/1') to the written
statement has been brought to show that the company was
incorporated on 22nd day of December, 2009. It is engaged in the
business of manufacturing and marketing all kinds of paints,
cement paints, varnishes, thinners, distempers, colours, etc. It has
got three manufacturing units situated at Patna and Kanpur. It has
got distributors all over the country and serves more than 800 plus
dealers across the country.
10. Learned counsel for defendant-respondent would
submit that father of one of the directors of the defendant
company, namely Shri Shyam Narayan Khanna, was openly,
continuously and exclusively using the mark Johnson Paints,
Super Johnson Cem, J.P. Johnson Pigments and Johnson White
since 14.04.1990 after its assignment in their favour by Mr.
Ramesh Kumar Singh via an assignment deed. Thus, it is the case
of the respondent that the original user of the trademark is one
Ramesh Kumar Singh who, under an assignment deed, had
permitted the use of the trademark to Shri Shyam Narayan
Khanna. On 14.12.1999, Mr. Shyam Narayan Khanna, vide an
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assignment deed, assigned the marks to M/s Super Shalimar
Chemical Industry. Thereafter, on 13.05.2011, M/s Super Shalimar
Chemical Industries assigned the said marks through an
assignment deed to M/s Johnsons Pigment Private Limited.
Finally, on 27.06.2011, M/s Johnson Pigment Private Limited
assigned the said mark to the defendant - M/s Johnson's Paints
Private Limited. Subsequently, the defendant company got
certificate of registration of trademark bearing Certificate No.
1873895 dated 29.05.2018 for Johnson Paints Private Limited.
The defendant company also got a copyright registered for use of
the title and its graphical representation - Johnson Paints (Label)
from the Copyright Office, Government of India, bearing
Registration No. A-106717/2013. The defendant company also got
copyright for the use of label "Johnson Paints" from the Copyright
Office, Government of India, vide Registration No. A-
107104/2013.
11
. It is further case of the defendant that they procured
certificate of registration of trademark vide Certificate No. 1709
dated 22.05.2018 for trademark “Johnson Paints Super Johnson
Cem” in Class 2 under No. 2168151 in respect of waterproof
plastic finish cem. They also got copyright for artistic work
“Johnson Paints Super Johnson Cem”.
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12. The defendant has taken a plea that according to the
plaintiff, they applied for registration of multiple trademark under
the Act of 1999 but had deliberately not provided the dates of
filing of such claim trademark applications for different
trademarks. The defendant has shown that the plaintiff-respondent
has applied for registration of trademark on various dates only in
the year 2022, which have been objected to by the defendant. It is
their stand that the plaintiff firm is changing the date of its use of
the aforesaid trademarks as per its convenience with sole objective
to mislead the Registrar of the Trademarks. It is further stated that
the so-called founder of the plaintiff firm, namely Shri Krishna
Prasad, had applied as an individual for registration of trademark
with respect to trademark “Johnson Cem” vide trademark
application dated 14.06.1993, wherein the user’s date was stated
to be since 01.04.1991. The said application was not registered,
rather the same was abandoned. In the year 2003, the plaintiff
again applied for registration of said trademark with usage since
04.10.1991 which was registered vide certificate dated
23.05.2016. The defendant has filed rectification seeking
cancellation of the said certificate vide rectification application
dated 07.06.2016 i.e. within a month of grant of the registration.
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13. It appears from the records that the defendant-
respondent had filed its written statement in which a plea was
taken that the present suit was admitted on 04.01.2024 by the
learned Commercial Court and it was transferred to the court of
learned Additional District Judge for further proceeding. The
learned Commercial Court had also exempted the mandatory
requirement of re-institution mediation under Section 12(A) of the
Act of 2015 on an application dated 23.12.2023 filed by the
plaintiff seeking exemption from the same but it is the plea of the
defendant that the state exemption was granted without issuing
any notice to the defendant for hearing on the same. The
defendant raised a plea that the court of learned Additional District
Judge is not a Commercial Court.
Order of the Commercial Court
14. It appears from the records that the injunction
application referred by the plaintiff was taken up for consideration
by the learned Principal District Judge Patna. There is no dispute
that the court of learned Principal District Judge Patna is the
Commercial Court. The learned Commercial Court has taken note
of the submissions advanced on behalf of the plaintiff and the
defendant as also the case laws on the subject which were placed
before the court. The learned Commercial Court has taken note of
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the various pleas advanced on behalf of the defendant. The
defendant has inter alia pleaded that the plaintiff has admitted in
its plaint documents that the defendant has been shown as user
since 1990 in one of its applications referred in paragraph ’14’ of
the plaint, however, no objection in respect thereof has ever been
filed. The defendant pleaded that the plaintiff in its plaint shows
its purported sales figures from 1999-2022, however, they have
not shown any sale from 1987-1999 and apart from the four
invoices filed, not even a single document has been filed to show
actual and continuous use of the mark from 1987-2024. Thus, no
claim for prior use, goodwill or reputation concretely comes out
from the averments and the documents filed with the plaint.
15. The learned Commercial Court took a view that the
four invoices dated 21.12.1987, 26.12.1987, 19.01.1988 and
19.02.1988 issued by Johnson Paints (1) Patna having BST No.
P.C.W. 69 (R) and CST No. P.C.W. 1874 (C) have been brought on
record as Annexure ‘1’ series to the plaint, however, the certificate
of registration under the Central Sales Tax Rules in the name of
M/s Johnson Paints Company bears No. PCW-2117 and the same
is inconsistent with the invoices on two accounts. The court
further observed that in a RTI procured information as to the name
of the allottee of the aforesaid BST and CST numbers from the
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Department of Sales Tax, it has been revealed to the defendant
that the BST No. P.C.W. 690 (R) was allotted to Sri Shankar
Prasad and CST No. P.C.W. 1874 (C) was allotted in year 2006-
2007.
16. The learned Commercial Court has taken note of
Section 27 of the Trade Marks Act which deals with the case of
“passing off” and held that the foundation of claim of passing off
is prior use of trademark by the plaintiff, leading to existence of
goodwill and reputation connected with the said unregistered
trademark. The learned Commercial Court found that a license
issued by the Factory Inspector, Inspection Department of the
Government of Bihar which is annexed as Annexure ‘1’ series to
the plaint shows that the same has been issued by Inspector of
Factories on 27.05.2010, for the year 2010-14 in the name of M/s
Johnson Paints Company. Also, Certificate of Registration issued
in form B and Rule 5(1) of the Central Sales Tax (Registration and
Turnover) Rules, 1957 dated 07.12.1991 bearing number PCW-
2117 has been issued in favour of M/s Johnson Paints Company.
These documents do not show that the said business concerned
commenced business in the year 1987 rather, these documents
relate to a later period. The learned Commercial Court held that
absence of sales figures for 12 years, i.e. from 1987-88 to 1999-
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2000, is intriguing for which no explanation has been offered on
behalf of the plaintiff.
17. It has been held that, on the contrary, father of one
of the directors of the defendant, namely Shri Shyam Narayan
Khanna, was openly, continuously and exclusively using the mark
Johnson Paints, Super Johnson Cem, JP Johnson Pigments and
Johnson White since 14.04.1990, after its assignment in their
favour by Mr. Ramesh Kumar Singh via a notarised assignment
deed. On 14.12.1999, via a notarised assignment deed Shri
Shyam Narayan Khanna had assigned the marks to M/s Super
Shalimar Chemical Industries. Thereafter, the same was assigned
to M/s Johnson Pigments Private Limited and finally it came to
M/s Johnson Paints Private Limited. All these assignment deeds
have been brought on record by the defendant by way of
Annexure ‘D/3′ series to the reply of the defendant dated
28.09.2024. Subsequently, the defendant company got Certificate
of Registration of trade bearing Registration Certificate No.
1873895 wherein registration date is 30.11.2011 for good and
description of Class 2 and the certificate date is 29.05.2018. The
defendant company has also obtained Certificate of Registration
of Trademark as per description provided in paragraph ’18’ and
’19’.
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18. The learned Commercial Court, therefore, took a
view that the foundation of claim of the plaintiff for passing off,
i.e., prior use of the trademark similar to Johnson by the plaintiff
i.e. since 21.04.1987 leading to existence of goodwill and
reputation could not prima facie be made out. Therefore, the
Commercial Court held that there would be no question of
‘misrepresentation’, i.e., unauthorized use of trademark that
confuses customers about the origin of products and/or are likely
to cause public association with the plaintiff’s trademarks. It has
been held that the plaintiff has not been able to establish actual or
potential harm. No prima facie case has been made out, therefore,
the interim injunction application has been rejected.
Submissions on behalf of the Plaintiff-Appellant
19. Learned counsel for the appellant submits that on
transfer of the records of the case by the learned Commercial
Court, the learned Additional District Judge firstly granted ad-
interim injunction vide order dated 06.03.2024, however, on the
defendant filing the petition under Order XXXIX Rule 4 CPC,
vide order dated 06.06.2024 dismissed the application dated
08.12.2023 of the plaintiff, thereby the interim injunction stood
vacated vide order dated 06.06.2024 passed by the learned
Additional District Judge-XIV, Patna. Later on, in Commercial
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Appeal No. 08 of 2024, this Court set aside order of the
Commercial Court by which the records were transferred to the
court of leanred Additional District Judge, all the orders passed by
learned Additional District Judge-XIV, Patna were declared non-
est. In these circumstances, petition dated 08.12.2023 for
injunction was heard afresh by the learned Commercial Court. It is
submitted that the plaintiff-appellant filed documents as per List
of Documents dated 03.06.2024 and also filed a written notes of
argument on the point of injunction which were available on the
record but while passing the impugned order dated 16.11.2024
those have not been taken into consideration.
20. Learned counsel has drawn the attention of this
Court towards the supplementary affidavit filed before this Court
with which the list of documents filed before the learned
Commercial Court has been brought on record as Annexure ‘A-
30’. It is submitted that the defendant-respondent got a wrong
information under the RTI from the Public Information Officer
from Assistant Commissioner of State Tax, Patna City, West Circle
with regard to the date of registration under the BST and the date
of registration of the CST number. In this regard, Annexure ‘A/20’
has been placed on record to submit that the same Public
Information Officer has admitted the mistake in providing
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information with regard to the year of registration of BST No. –
P.C.W. 690 (R) and CST No. P.C.W. 1874 (C). In Annexure ‘A/20’
he has given the reason behind the mistake. Annexure ‘A/20’
would show that both the registration numbers are of the year
1986-1987.
21. Learned counsel further submits that from the list of
documents and the documents annexed therewith, it would appear
that M/s Johnson Paints Private Limited made an application for
registration of a trademark in Class 2 in respect of goods/services
such as cements paint, paint, lacquers, varnishes (not being
insulating varnishes), thinners, distemper and dry colours,
colouring matters (not for laundry or toilet purposes) etc on 24 th
day of November 2011. The company claimed its users since
19.04.1990. The application was notified for objection. The
affidavit enclosed therewith would show the sale figures provided
by the respondent, however, the defendant filed Form TM-16 for
correction of clerical error and amendment in the application.
Request was made to change the date of user from 14.04.1990 to
22.12.2009 in TM-1 an additional representation. Thus, the
respondent itself corrected its mistake and showed the date of user
as 22.12.2009. The plaintiff-respondent has filed opposition in
form TM-6 and has also filed rectification/cancellation to register
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trademark number 216815. It is submitted that these documents
have not been considered by the learned Commercial Court,
despite those being available on the record.
22. Learned counsel for the plaintiff-appellant has
placed on record the computer generated TM search report
showing that they have made as many as 24 applications on
different dates for registration of the various trademarks. They
have shown the user date of those trademarks. As regards the mark
‘Johnson’, the plaintiff has made an application vide no. 5746797
on 31.12.2022 showing the user date as 21.04.1987. This has been
opposed by the respondent. This report further shows that the
plaintiff-appellant had filed application no. 599275 for Johnson
Cem on 14.06.1993 showing the user date 01.04.1991, application
no. 636957 dated 16.08.1994 showing user date 01.11.1993 but
these two applications were abandoned. As regards Johnson Cem,
another application bearing no. 1214876 was filed on 16.07.2003
and according to the plaintiff, this has been registered in favour of
the plaintiff. The plaintiff filed applications on 01.01.2010 vide
no. 1904110 and 1904111 for registration of the mark ‘Johnson’
showing the user name on 23.09.1995. It appears that while
application no. 1904110 was abandoned, application no. 1904111
has been opposed. This TM search report only showed that the
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parties are contesting the registration of trademark against each
other.
23. Learned counsel for the appellant has relied upon
the judgment of the Hon’ble Supreme Court in the case of Neon
Laboratories Limited vs. Medical Technologies Limited and
Ors. reported in (2016) 2 SCC 672. It is submitted that the
predecessor in interest of the plaintiff had initiated user of the
trademark ‘Johnson’ in the year 1987 and since then they have
continued with this trademark. The plaintiff had applied for
registration of this trademark several years prior to the defendant-
respondent. The Hon’ble Supreme Court considered Section 34 of
the Act of 1999 and considered whether the prior registration
would have the effect of obliterating the significance of the
goodwill that had meanwhile been established by the plaintiff-
appellant. The question before the Court was as to whether a
deeming provision i.e. relating registration retrospectively prevail
on actuality – competing equities oscillate around prior
registration and prior user. While interpreting Section 34, the
Hon’ble Supreme Court held thus:- “this Section palpably holds
that a proprietor of a trade mark does not have the right to prevent
the use by another party of an identical or similar mark where that
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user commenced prior to the user or date of registration of the
proprietor. This “first user” rule is a seminal part of the Act….”
24. It is thus submitted that in the case of Neon
Laboratories Limited (supra), the Hon’ble Supreme Court has
categorically held that Section 34 gives rights to a subsequent user
when its user is prior to the user of the proprietor and prior to the
date of registration of the proprietor, whichever is earlier. The
intention of the section is to protect the prior user from the
proprietor who is not exercising the user of its mark. It is
submitted that the defendant-respondent has not brought on record
any prima facie material to show that Shri Shyam Narayan
Khanna was openly, continuously and extensively using the mark
Johnson Paints, Super Johnson Cem, J.P. Johnson Pigments and
Johnson White since 14.04.1990. No prima facie document has
been produced to show that the assignor of the mark, namely
Ramesh Kumar Singh, had been using the trademark. Further,
nothing has been brought on record to show that Mr. Shyam
Narayan Khanna or Super Shalimar Chemical Industry were using
this mark. It is the own case of the defendant-respondent that they
got the assignment of marks through an assignment deed dated
27.06.2011 in favour of M/s Johnson Paints Pvt. Ltd.
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25. Referring to the judgment of the Hon’ble Supreme
Court in the case of S. Syed Mohideen vs. P. Sulochana Bai
reported in (2016) 2 SCC 683, learned counsel for the appellant
submits that the Hon’ble Supreme Court affirmed the views of the
Hon’ble Delhi High Court that a “passing off” action can even lie
against a registered proprietor of the mark against which the
action has arisen. Their Lordships held that a trade mark exists
independently of the registration which merely affords further
protection under the statute, the common law rights being left
completely unaffected. It has been held that the registration is only
a recognition of the rights that have been pre-existing in common
law in case a conflict arises between the two registered
proprietors, the evaluation of the better rights in common law is
essential as the same would determine whose rights between the
two registered proprietors are superior.
26. Learned counsel has also relied upon the judgment
of the Hon’ble Supreme Court in the case of N.R. Dongre and
Ors. vs. Whirlpool Corporation and Anr. reported in (1996) 5
SCC 714.
27. Learned counsel for the appellant submits that the
learned Commercial Court could not apply the three tests for
injunction in the light of the judicial pronouncements in the facts
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of the case, which has led to perversity, the order of the learned
Commercial Court is liable to be set aside and the injunction
application is fit to be allowed.
Submissions on behalf of the Respondent-Defendant
28. On the other hand, learned counsel for the
respondent has opposed the appeal. Initially, the respondent filed
an affidavit raising preliminary objection, however, in course of
submissions, Mr. Kejriwal, learned counsel for the respondent, has
made his submissions by placing on record the complete written
statement and the affidavits filed before the learned Commercial
Court. A written notes of submissions has also been filed on behalf
of the respondent. Annexure ‘D/1’ to Annexure ‘D/23’. Xerox
copies of GST registration certificate dated 05.02.2021 has been
brought on record, which shows that the respondent company got
the registration number in form GST REG-06 from the registering
authority in the State of Bihar for the trade name “Johnson Paints
Pvt. Ltd. Unit-2”. Another registration certificate dated 10.05.2023
is in the trade name “Johnson Paints Pvt. Ltd. Unit-3”.
29. The assignment deed dated 14th day of April, 1990
(xerox copy) has been placed on record to show that one Ramesh
Kumar Singh assigned the trademark J.P. Johnson Pigment,
Johnson Paints, Super Johnson Cem and Super White in favour of
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one Shyam Narayan Khanna, son of Lakshmi Narayan Khanna. In
this deed, the assignor has described himself as the proprietor of
the trademark. It is, however, admitted that the assignment deed
does not mention the date of user of these products by the
assignor.
30. Another assignment deed (Xerox copy) is dated
14.11.1999 said to have been executed by Shyam Narayan Khanna
in favour of M/s Super Shalimar Chemical Industries. In this deed
also, the assignor claims himself the proprietor of the seven
trademarks J.P. Johnson Pigments, Johnson Paints, Super Johnson
Cem and Johnson White. It is evident that all the seven trademarks
name has not been mentioned.
31. The another deed of assignment is dated 13 th day of
May, 2011 by which said Shyam Narayan Khanna and Vikram
Khanna trading as M/s Super Shalimar Chemical Industries,
Gulmahiya Chak, Sabalpur, Patna has assigned seven trademarks
J.P., Johnson Pigments, Johnson Paints, Super Johnson Cem,
Johnson White, Birla Oxide, and J.K. Oxide, which they claim
using as an artistic label on all types of goods of paints since
14.04.1990 in course of trade. This deed of assignment mentions
consideration in the sum of Rs. 1,500/- only paid in cash by the
assignee to the assignor.
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32. The another assignment deed is the last one dated
27th day of June 2011 between M/s. Johnson Pigments Pvt. Ltd.
and M/s. Johnson Paints Pvt. Ltd. By this assignment deed, the
assignor has claimed itself proprietor of the trademark-Johnson
Paints, J.P. and Super Johnson Cem. The assignor claimed that he
was using the said trademark since 14.04.1990 for all types of
goods. The consideration amount has been kept at Rs. 14,000/-
paid by cash. Although this deed of assignment dated 27th June
2011 is said to be executed between the two private limited
companies, it is admitted that the assignment deed does not bear
the seal of the company and/or signature of the authorised person
on behalf of the two companies. The deed does not mention the
name of the authorised person through whom the company is
represented.
33. On the strength of these documents placed on the
record, learned counsel for the defendant-respondent has defended
the order of the learned Commercial Court. It is submitted that the
learned Commercial Court has considered the essential
requirements to establish a case of “passing off”. The Commercial
Court has found that the plaintiff has brought on record four
invoices dated 21.12.1987, 26.12.1987, 19.01.1988 and
19.02.1988 issued by Johnson Paints (I), Patna having BST No.
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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P.C.W. 690 (R) and CST No. P.C.W. 1874 (C) but the certificate
of registration under the Central Sales Tax Rules in the name of
M/s Johnson Paints Company is inconsistent with the two invoices
of the year 1987, on two counts, i.e. name of business concern of
the invoices Johnson Paints Company and the certificate of
registration of Johnson Paints Company. The learned Commercial
Court has relied upon the RTI information. The Commercial Court
has held that the license issued by the Factory Inspection
Department of the Government of Bihar to the plaintiff shows that
the same has been issued by Inspector of Factories on 27.05.2010
for the year 2010-14. The Commercial Court held that the
certificate of registration issued in Form-B under Rule 5(1) of the
Central Sales Tax (Registration and Turnover) Rules, 1957 dated
07.12.1991 bearing no. PWC-2117 issued in favour of the plaintiff
company do not show that the said business concern commenced
business in the year 1987, rather these documents relate to a later
period. The Commercial Court further held that the sales figures
furnished by the plaintiff in the plaint commence from 1999-2000
up to the year 2022-2023, even though the claim of the plaintiff is
that their business commenced in the year 1987.
34. The learned Commercial Court has held that one of
the trademarks of the plaintiffs ‘Johnson Paints’ is being used by
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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the defendant since 14.04.1990. In these circumstances, the
learned Commercial Court has not committed any error in
rejecting the application for injunction. Learned counsel has relied
upon the judgments of the Hon’ble Supreme Court in the case of
Wander Limited and Anr. vs. Antox India Pvt. Ltd. reported in
1990 SUPP SCC 727, Power Control Appliances and Ors. vs.
Sumeet Machines Private Limited reported in (1994) 2 SCC
448, Pernod Ricard India Private Limited vs. Karanveer
Singh Chhabra reported in 2025 SCC OnLine SC 1701 and
judgment of Hon’ble Delhi High Court in the case of KRBL Ltd.
Versus Lal Mahal Ltd. And Anr. reported in 2015 SCC OnLine
DEL 7598. It is submitted that as per the case of the appellant
itself, both the parties have been using the trademark ‘Johnson’ for
the last several years. Both the parties have got the customer base
of thousands all across the country. Both the parties have got their
factory units and a brigade of employees fully dependent upon the
production and trading of the products of the units. The plaintiff
has simply expressed likelihood of loss and no details of any loss
has been presented. No instance of any loss suffered has been
shown.
35. Learned counsel further submits that the respondent
is already a registered trademark holder with respect to seven
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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trademarks consisting of name ‘Johnson’ therefore the rights of
the respondent are protected under Section 28 to 31 of the Act of
1999. It is his submission that at this stage no mini-trial can be
conducted to record finding at the stage of temporary injunction.
No interference is required in the order of the learned Commercial
Court unless the order of the court is found suffering from
perversity and arbitrariness.
Consideration
36. At the outset, this Court would make it clear that the
impugned order of the learned Commercial Court is being
examined keeping in view the scope and ambit of the principles
governing grant of injunction. In the case of Pernod Ricard India
Private Limited (supra), the Hon’ble Supreme Court has
discussed these legal principles in paragraph nos. ’36’, ‘36.1’,
‘36.2’, ‘36.3’ and ‘36.4’, which are being reproduced hereunder:-
“36. The Trade Marks Act, 1999 does not prescribe any
rigid or exhaustive criteria for determining whether a mark
is likely to deceive or cause confusion. Each case must
necessarily be decided on its own facts and circumstances,
with judicial precedents serving to illuminate the
applicable tests and guiding principles rather than to dictate
outcomes.
36.1. As a general rule, a proprietor whose statutory or
common law rights are infringed is entitled to seek an
injunction to restrain further unlawful use. However, this
remedy is not absolute. The considerations governing the
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
26/44grant of injunctions in trademark infringement actions
broadly apply to passing off claims as well. That said, a
fundamental distinction remains: while a registered
proprietor may, upon proving infringement, seek to restrain
all use of the infringing mark, a passing off action does not
by itself confer an exclusive right. In appropriate cases, the
court may mould relief in passing off so as to permit
continued use by the defendant, provided it does not result
in misrepresentation or deception.
36.2. The grant of injunction – whether for infringement or
passing off – is ultimately governed by equitable principles
and is subject to the general framework applicable to
proprietary rights. Where actual infringement is
established, that alone may justify injunctive relief; a
plaintiff is not expected to wait for further acts of defiance.
As judicially observed, “the life of a trademark depends
upon the promptitude with which it is vindicated.”
36.3. The principles laid down in American Cyanamid Co.
v. Ethicon Ltd.30 continue to guide the Courts while
determining interim injunction applications in trademark
cases. The following criteria are generally applied:
(i) Serious question to be tried/triable issue: The plaintiff
must show a genuine and substantial question fit for trial. It
is not necessary to establish a likelihood of success at this
stage, but the claim must be more than frivolous, vexatious
or speculative.
(ii) Likelihood of confusion/deception: Although a detailed
analysis of merits is not warranted at the interlocutory
stage, courts may assess the prima facie strength of the
case and the probability of consumer confusion or
deception. Where the likelihood of confusion is weak or
speculative, interim relief may be declined at the threshold.
(iii) Balance of convenience: The court must weigh the
inconvenience or harm that may result to either party from
30. (1975) AC 396
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
27/44the grant or refusal of injunction. If the refusal would likely
result in irreparable harm to the plaintiff’s goodwill or
mislead consumers, the balance of convenience may favor
granting the injunction.
(iv) Irreparable harm: Where the use of the impugned mark
by the defendant may lead to dilution of the plaintiff’s
brand identity, loss of consumer goodwill, or deception of
the public – harms which are inherently difficult to quantify
– the remedy of damages may be inadequate. In such cases,
irreparable harm is presumed.
(v) Public interest: In matters involving public health,
safety, or widely consumed goods, courts may consider
whether the public interest warrants injunctive relief to
prevent confusion or deception in the market place.
36.4. In conclusion, the grant of an interim injunction in
trademark matters requires the court to consider multiple
interrelated factors: prima facie case, likelihood of
confusion, relative merits of the parties’ claims, balance of
convenience, risk of irreparable harm, and the public
interest. These considerations operate cumulatively, and the
absence of any one of these may be sufficient to decline
interim relief.”
37. The legal principles being crystal clear from the
judgment of the Hon’ble Supreme Court quoted hereinabove, this
Court would apply the same in the facts of the present appeal. The
bone of contention between the parties is over the use of the
trademark “JOHNSON” for the wide range of paint products.
38. It is the case of the plaintiff-appellant that on or about
the year 1987, Late Krishna Prasad had coined and adopted
trademark ‘JOHNSON’. He had set up a proprietorship firm
named ‘Johnson Paints (I)’ in the undivided state of Bihar and
obtained Sales Tax Registration No. B.S.T. No. P.C.W. 690 (R)
and C.S.T. No. P.C.W. 1874 (C) from the Commercial Taxes
authority. Later on, his both sons were admitted in the business
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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and the proprietorship firm was converted into a registered
partnership firm vide Deed No. 564 dated 19.08.2014. The
plaintiff claims prior user of the trademark
“JOHNSON/JOHNSON CEM/JOHNSON PAINTS, JP”
(collectively called “Trademark”). They have claimed that they
have continuously and extensively used this trademark since
adoption in the year 1987, therefore, it has attained distinctiveness
and has become popular trademark in the domestic markets over
the three decades in India.
39. It is a matter of record that the plaintiff had applied
for registration of trademark ‘JOHNSON CEM’, ‘JOHNSON
PAINTS (I)’, ‘JOHNSON PAINTS’, ‘JOHNSON GLOBE CEM’,
‘RAINBOW CEM’, ‘GOLDEN CEM’, etc., showing their user
date between 21.04.1987 and 29.01.1996. The plaintiff has shown
the sales figure since 1991-1992 and the advertisement expenses
since 1996-97.
40. The defendant-respondent has submitted that the
plaintiff has filed an application under Order VI, Rule 17 of the
CPC in which certain amendments have been sought for. The
submission is that the said amendment petition is still pending in
the learned Commercial Court, but it has not been disclosed. In
sum and substance, it is submitted that the present appeal cannot
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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be considered on the basis of the new facts and the documentary
materials which are yet to be incorporated in the plaint.
41. This Court makes it clear that the Court is not
considering the new facts and materials and the impugned order of
the learned Commercial Court is being examined keeping in view
only those documents of the plaintiff and the defendants which
have been discussed by the learned Commercial Court or have not
been considered even as those were available on the record of the
Court hearing the injunction petition.
42. Copy of the plaint filed under Section 26 of CPC read
with Section 134(1)(c) and 135 of the Act of 1999 for permanent
injunction restraining passing off of the trademarks contains
reference to various documents. The details of some applied
trademarks with their respective user/adoption date as provided by
the plaintiff are being reproduced hereunder:-
S No. TM No. Trademark Class User Date
1 5746777 JOHNSONCEM 2 21/04/1987
2 5746794 JOHNSON PAINTS (I) 2 21/04/1987
3 5746795 JOHNSON PAINTS (I) 35 21/04/1987
4 5746796 JOHNSON PAINTS 2 21/04/1987
5 5746797 JOHNSON 2 21/04/1987
6 5688925 METAL CEM 2 01/09/2018
7 5688926 GOLDENCEM 2 29/01/1996
7 5688927 RAINBOWCEM 2 16/12/1995
8 5688928 BILLION CEM 2 01/10/2018
9 5688929 RAMBO CEM 2 18/07/2018
10 5688931 MILLIONCEM 2 11/03/1999
11 5688932 PETALCEM 2 13/02/2003
12 5688933 GLOBECEM 2 16/12/1995
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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43. The plaintiff has adopted artwork for their trademark
under the Copyright Act, 1957. The copyright registration details
have been brought on record as Annexure ‘III’ series. The
description of the artistic work is as under:-
S No. COPYRIGHT REG. NO. LABEL DATED
1 101243/2013
JP 19/06/2023
44. In support of their claim of user of this trademark,
the plaintiff has provided the sales figure and advertisement
expenses for the various financial years from the year 1999-2000
to the financial year 2022-23, which we reproduce as follows:-
FINANCIAL SALE FIGURE ADVERTISEME
YEAR (Rs) NT EXPENSES
(Rs)
1999-00 6,955,662.00 83,656.00
2000-01 10,245,435.00 87,976.00
2001-02 10,910,921.00 105,011.00
2002-03 10,868,760.00 7,401.00
2003-04 10,818,789.00 124,723.00
2004-05 12,153,930.00 147,361.00
2005-06 12,304,965.73 123,027.00
2006-07 13,638,222.51 438,409.00
2007-08 17,037,676.09 183,854.00
2008-09 19,590,663.21 84,042.00
2009-10 22,799,889.81 445,197.00
2010-11 34,943,281.59 619,043.00
2011-12 55,903,679.74 2,153,186.00
2012-13 74,915,455.02 3,019,692.00
2013-14 97,284,466.64 2,412,411.74
2014-15 123,336,362.72 4,797,896.00
2015-16 123,982,056.33 2,638,891.00
2016-17 109,807,328.34 2,027,606.00
2017-18 348,924,455.36 2,694,301.12
2018-19 522,079,511.58 7,578,135.43
2019-20 440,149,473.00 10,121,370.00
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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2020-21 487,654,662.00 12,510,586.63
2021-22 430,138,515.44 8,990,257.54
2022-23 560,045,907.21 1,580,660.00
45. The plaintiff has also brought on record the
photocopy of the newspaper advertisements and other documents
in support of continuous usage which have been annexed as
Annexure ‘IV’. Annexure ‘A-3’ is a copy of the invoice number
JPI/8210/87-88 dated 18.04.87 showing sale of cement-coating
(Johnson Cem), red oxide, white putty, etc., to Lal & Company,
Main Road, Katra Garh (Dhanbad). The another invoice number
JPI/27/87-88 is dated 15.07.87 by which Johnson Cem and red
oxide were sold to S.K. Mitra of Pakur in the district of Sahebganj.
The third invoice is dated 07.01.1989 showing sale of Johnson
Cem Ivory, the fourth invoice is dated 05.05.88 showing sale of
Johnson Cem and various other products to Samanta Hardware
Stores, Barbil (Orissa). All these invoices are bearing B.S.T. No. –
P.C.W. 690 (R) and C.S.T. No. P.C.W. 1874 (C) and the telephone
number. The plaintiff has also brought on record the invoice-cum-
despatch advice of the year 1998 showing registration no.
1/BKP/CH-32/96 dated 12.04.1996. Another invoice-cum-
despatch advice dated 10.03.2000 has been brought on record
which shows the place of business, office and the telephone
number of the plaintiff firm. Several such invoice-cum-despatch
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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advice are available on the record prima facie to satisfy this Court
that the plaintiff was using the trademark “JOHNSON” since the
year 1987-88.
46. On record, this Court finds a copy of assessment
order under Section 17(2)(a) of the Bihar Finance Act for the year
1988-89. It shows that Shri Krishna Prasad was served with a
notice under Section 17(2)(a) of the Finance Act, whereafter he
had appeared before the Assessing Officer with his accountant Shri
N.K.P. Sharma and had produced the cash book, bill, invoices,
cash memo, sale register, stock register, etc. Those were examined
and from the records, the Assessing Officer concluded that those
were tallying with the yearly return showing gross sale amount at
Rs. 5,68,976.46. The order of the Assessing Officer is dated
31.08.1993.
47. From Annexure ‘A-4’ to the plaint, this Court finds
that it is a letter of Tiffin’s Barytes, Asbestos and Paints Limited,
vide Reference No. 931/71B addressed to M/s. Johnson Paints (I)
wherein the firm was requested to despatch one wagon load
containing 24.5 metric tons (490 bags) of CR-1 Grade Barytes
Powder from Cuddapah to Patna Saheb on their account. The
details of the banker’s name, etc., were provided. A bill drawn by
Tiffin’s Barytes, Asbestos and Paints Limited on 25th December
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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1987 through Allahabad Bank, Chowk, Patna City is also available
on the record. A bill dated 6.10.1988 of Chemical Agency, Indian
Bank Building, Jhauganj, Patna City addressed to M/s Johnson
Paints, bill of G.S. Mineral Industries dated 20.12.1986 and bill of
Bhatia Rasayan Udyog in the name of M/s Johnson Paints are on
the record. Copy of the Form-C issued by M/s Samanta Hardware
Stores to M/s Johnson Paints (I), Patna is also on the record.
48. This Court further finds that challans of the amount
paid in the branch of the State Bank of India on account of taxes
under the Central Sales Tax Act by the plaintiff for the year quarter
ending June 1988 are on the record.
49. On record there is also an order dated 23 nd January,
2024 passed by the Trade Marks Registry in the matter of an
application number 3692032 for registration of a trade mark in
Class 2 “Johnson Paints” filed by the defendant-respondent which
has been shown abated. The order of the Trade Marks Registry has
been passed after the objections were raised by the plaintiff-
appellant. The said order is being reproduced hereunder:-
“THE TRADE MARKS ACT, 1999
(Before the Registrar of Trade Marks,)
IN THE MATTER OF an Application No. 3692032
for registration of a trade mark in class 2
trading as JOHNSON PAINTS PVT. LTD.
SABALPUR, PATNA-800009…. Applicants
AND
IN THE MATTER OF Opposition No.- 1020123
thereto by JOHNSON PAINTS CO.
308, VARDHMAN PLAZA, DB GUPTA ROAD, OPPOSITE
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
34/44POLICE STATION, PAHAR GANJ, DELHI also at 11 A/2,
ASHOKA PALACE, EXHIBITION ROAD, PATNA -800001,
BIHAR…. Opponents
Hearing Date : 18/01/2024
Present : Adv. Shekhar Kosta counsel for the Applicant
Adv. Ajit Kumar counsel for the Opponent
ORDER
Proceedings were initiated under Section 21 of the Trade Mark
Act, 1999, by the above named opponent to oppose the
registration of trade mark applied for by the above named
applicant. The opponent filed the rely letter in support of
opposition on 30/04/2020. Thereafter the applicant was required
to file the evidence in support of application within the
prescribed period as per rules and whereas within the time
prescribed under the rules, neither any evidence in support of
application was filed nor any statement was submitted on behalf
of the applicant to the effect that the applicant does not desire to
adduce evidence but wants to rely on the facts mentioned in the
Counter statement. An opportunity has also been provided to the
applicant by fixing a hearing on 18/01/2024 to explain that why
the above application shall not be abandoned under rule 46(2),
Counsel for the applicant appeared and submitted that applicant
has not received evidence under rule 45. Thereafter, counsel for
opponent was directed to submit the receipt of delivery of
evidence under 45. Thereafter by TM-M filed on dated
18/01/2024 opponent has submitted proof of service of evidence
under rule 45 by email dated 01/06/2020 to the applicant. As till
now applicant has not filed evidence under rule 46 nor has
submitted rely letter in this regard, thus the above mentioned
application is, therefore, deemed to have been abandoned under
Rule 46(2) of the Trade Marks Rules 2017 and the opposition
number 1020123 abates accordingly.
It is hereby further ordered that there shall be no order as to cost
of these proceedings.”
50. Learned counsel for the respondent has submitted
that the respondent has got registered several trademarks in its
name, however, it is not denied that those registrations are being
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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contested by the plaintiff-appellant by filing rectification
applications and the same are pending consideration.
51. As against the claim of the plaintiff of a prior user, the
defendant-respondent has mainly relied upon the four deeds of
assignment which this Court has taken note of while recording the
case of the defendant-respondent. The plaintiff has seriously
questioned the genuineness of these four deeds of assignments. At
this stage, without going into the issue of genuineness of the deeds,
we would only prima facie say that the deeds of assignment do not
inspire confidence and lead nowhere. Admittedly, the defendant-
respondent company came to be incorporated on 22.12.2009 vide
Corporate Identity No. (CIN) U24222BR2009PTC015136 having its
registered office at Fatuha Road, Sabalpur, Patna City, Patna. From
it’s own document annexed with the written statement which has
been brought on record before this Court it would appear that in the
Trade Marks Registry, while filing application number 2241994 for
the trademark as manufacturer, the respondent has shown the word
mark “Johnson Paints Private Limited” “used since : 22/12/2009”.
The defendant-respondent claims their rights of prior user by virtue
of the deed of assignments which are Annexure ‘D/3’ series. A bare
perusal of the deed of assignments would show that all these
assignors claim themselves proprietor of the trademarks, the
trademarks are not registered trade-marks in the name of the
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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assignor(s). The prima facie discrepancies noticed by this Court are
being provided hereunder:-
(i) Date of the deed of assignment: 14.04.1990
Name of the assignor: Ramesh Kumar Singh
Name of the assignee: Shyam Narayan Khanna
Trademark name: (1) J.P. (2) Johnson Pigments, (3) Johnson Paints
(iv) Super Johnson Cem (v) Johnson White
Discrepancies:- Ramesh Kumar Singh has described himself
proprietor of the trademark but the fact is that these trademarks were
never registered in the name of Ramesh Kumar Singh. There is no
iota of prima facie evidence that Ramesh Kumar Singh was dealing
in these paint products in the given trademark names. There is neither
seal of the firm nor any document showing registration of the
business firm. This document has not been referred by the respondent
in its earlier correspondences prior to filing of the written statement.
The deed does not mention a clear description of the mark
(unregistered).
(ii) Date of the deed of assignment: 14.12.1999
Name of the assignor: Shyam Narayan Khanna
Name of the assignee: Shyam Narayan Khanna and Vikram Khanna
Trading as M/s Super Salimar Chemical Industries
Trademark name: (1) J.P. (2) Johnson Pigments, (3) Johnson Paints
(4) Super Johnson Cem (5) Johnson White (6) not mentioned (7) not
mentioned
Discrepancies:- Apart from the above-mentioned discrepancies
which have been found in case of Ramesh Kumar Singh, in this
assignment deed, the assignor has assigned the trademark to himself
and received consideration. There is no detail of the registration or
about the business of the assignor. Trademarks names are not
mentioned in the deed of assignment. The deed has been shown
notarised only.
There is no indemnity clause to protect the assignee (buyer) from
future claim.
(iii) Date of the deed of assignment: 13.05.2011
Name of the assignor: Shyam Narayan Khanna and Vikram Khanna
Trading as M/s Super Salimar Chemical Industries
Name of the assignee: M/s Johnson Pigments Private Limited
Trademark name: (1) J.P. (2) Johnson Pigments, (3) Johnson Paints
(4) Super Johnson Cem (5) Johnson White (6) Birla Oxide (7) J.K.
Oxide
Discrepancies:-All such discrepancies which have been found above
are present in this deed of assignment as well. The assignment has
been made in favour of the company M/s Johnson Pigments Private
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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Limited and in this deed, two new trademarks have been introduced.
There is no information regarding registration of the trademarks or
about business of the assignor. The assignment deed is not even
notarised.
(iv) Date of the deed of assignment: 27.06.2011
Name of the assignor: M/s Johnson Pigments Private Limited
Name of the assignee: M/s Johnson Paints Private Limited
Trademark name: (1) Johnson Paints (2) J.P. (3) Super Johnson
Cem
Discrepancies:-All such discrepancies which have been found above
are present in this deed of assignment as well. The assignment has
been made in favour of the company M/s Johnson Pigments Private
Limited and in this deed, two new trademarks have been introduced.
There is no information regarding registration of the trademarks or
about business of the assignor. The assignment deed is not even
notarised.
52. If these four assignment deeds are looked into, without
much discussion, prima facie, this Court would have no hesitation in
recording that the assignment deeds, which have been seriously
questioned by the plaintiff, would not help the defendant-respondent
in making a submission that they had derived their rights to user by
virtue of these deed of assignments. These assignments are not
supported by any material at all. Moreover, the date of assignment to
the defendant is 27.06.2011. The learned trial court has noticed the
documents showing that the plaintiff was in this business with the
word mark “JOHNSON” much prior to 27.06.2011. The assignor of
the defendant-respondent never raised any issue against the use of the
word mark “JOHNSON” by the plaintiff.
53. It is evident from the case of the defendant-respondent
that only after its incorporation on 22.12.2009, the Company started
its business. All applications for registration of the trade marks filed
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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by the defendant-respondent are of the subsequent years. The
defendant-respondent has filed before this Court the copies of the
Certificate No. 1223622 showing the registration of the work mark:
Super Rainbow Cem (Label) with the name of the goods and
description: Class 2 waterproof plastic finish Cem. The registration
date is 20.03.2011. The parties are contesting the registration and
several rectification applications are pending before the Trademark
Registry. On record, this Court finds that the defendant-respondent
has placed copy of the legal notices exchanged between the parties.
Mr. Shekhar Pal, learned Advocate for the defendant-respondent
served a notice on the plaintiff-appellant alleging infringement and
passing off of the trademarks “Super Petal Cem” and “JP” and
Artistic Work of the mark “Super Petal Cem” registered under the
Copyright Act, 1957. In the said notice, the defendant claimed that on
account of long and continuous use coupled with advertisement and
publicity and by virtue of the superior quality of the goods sold there
under, the said trademarks of defendant has acquired handsome
goodwill and impeccable trade reputation among the public and
trade. The defendant-respondent has though claimed infringement of
the trademark, in the legal notice, it nowhere mentions to have
acquired any proprietory right in those trademarks by virtue of the
assignment deeds. In an another notice addressed by Kosta Trade
Mark Company vide Reference No. KTMC/J0001 dated 29.10.2018
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
39/44addressed to the plaintiff-appellant, it is mentioned that the company
on whose behalf notice was issued (the defendant) is engaged in the
business of manufacturing and marking of synthetic paints,
distemper, paints, stainer, wall putti, cement paints, oxide colour
primers, waterproof cement, all kinds of paints, cement colour, oxide
colour and distemper for last several years. The notice talks of
registration, but in the whole notice, there is no mention of
acquisition of proprietory right with respect to those trademarks by
virtue of deeds of assignment. This only affirms and strengthens the
prima-facie view of this Court that the deed of assignments unless
those are duly proved by the defendant cannot be relied upon at this
stage to give any benefit to the defendant-respondent.
54. In the case of S. Syed Mohideen (supra), the Hon’ble
Supreme Court has held that a passing off action can even lie against
a registered proprietor of the mark against which the action has
arisen. It has been held that a trade mark exists independently of the
registration which merely affords further protection under the statute,
the common law rights being left completely unaffected. It has been
held that the registration is only a recognition of the rights that have
been pre-existing in common law in should a conflict arise between
the two registered proprietors, the evaluation of the better rights in
common law is essential as the same would determine whose rights
between the proprietors are superior. It is said that the later user of
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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the mark/name in the business cannot misrepresent his business as
the business of a prior user.
55. In the light of the materials which have been discussed
hereinabove, this Court is of the considered opinion that the learned
Commercial Court has grossly erred in saying that the plaintiff has
not established prior use of the trademark prima-facie. The learned
Commercial Court has though noticed the four invoices dated
21.12.1987, 26.12.1987, 19.01.1988 and 19.02.1988 issued by the
Johnsons Paints (I), Patna having B.S.T. No. P.C.W. 690 (R) and
C.S.T. No. P.C.W. 1874 (C). but could not appreciate that at the
relevant time, the business was operating as proprietorship firm of
Shri Krishna Prasad. The Public Information Officer who gave the
information under the RTI to the defendant vide its Letter No. 348
dated 17.08.2024 issued another letter which has been placed before
this Court bearing Letter No. 770 dated 19.12.2024 to show that he
has admitted that the earlier information was not correct. The learned
Commercial Court has noticed the certificate of Inspector of
Factories and Certificate of Registration issued in Form B under Rule
5(1) of the Central Sales Tax (Registration and Turnover) Rules, 1957
dated 07.12.1991 bearing No. PCW-2117 issued in favour of M/s
Johnsons Paints Company, despite these documents, the Commercial
Court has taken a view that those documents do not show that the
business concerned commenced business in the year 1987. The court
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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was required to see the better rights in the common law but the
learned Commercial Court went into an issue as to whether the
plaintiff commenced its’ business in the year 1987 or not. The sales
figure given by the plaintiff for the period 1999-2000 up to the year
2022-23 has not been duly considered on the ground that the plaintiff
was not showing the sales figure for the period 1987-88 to 1999-
2000. In our considered opinion, the learned Commercial Court,
despite having so much of overwhelming materials on the record
showing that the plaintiff firm had got the Certificate of Registration
in Form ‘B’ under Rule 5(1) of the Central Sales Tax Rules did not
take an appropriate view of the same.
56. We find that on the contrary, the learned Commercial
Court has placed much reliance on the deed of assignments which
were brought on record by the defendant by way of Annexure ‘D/3
Series’ to the reply. The Commercial Court did not mention the fact
that the plaintiff had raised serious questions with regard to the
genuineness of the deeds of assignments. The learned Commercial
Court has referred Trademarks Certificate No. 1873895 whereunder
the registration date 30.11.2011 and the certificate date is 25.09.2018.
In our opinion, the learned court could not appreciate that mere
registration of trademark would not confer a right upon the later user
to pass off its products in a deceptive manner.
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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57. The learned court has grossly erred and recorded
perversed finding in paragraph ’41’ of it’s order by relying upon
paragraph ’14’ of the plaint to take a view that from the details
mentioned in the said paragraph, one of the defendant’s trademark
‘Johnsons Paints’ is shown being used by defendants since
14.04.1990. The learned Commercial Court could not appreciate that
the plaintiff had only described what the defendant was claiming with
regard to the date of the user of the trademark ‘Johnsons Paints’ on
the strength of the deeds of assignment.
58. Having regard to the entire discussions hereinabove,
we are of the opinion that the order of the learned Commercial Court
suffers from infirmities to the extent of perversity. The plaintiff-
appellant has made out a strong prima facie case from the various
documents placed on the record which have been discussed
hereinabove. A better common law right has been established. The
common law rights of the plaintiff are being infringed, therefore, the
plaintiff is entitled to seek an injunction to restrain the defendant. In
case of Pernod Ricard India Private Limited (supra), the Hon’ble
Supreme Court has held that where actual infringement is
established, that alone may justify an injunctive relief and a plaintiff
is not expected to wait for further acts of defendant.
59. We are of the opinion that the plaintiff has shown
likelihood of confusion and deception, probability of consumer
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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confusion and all this shall cause inconvenience and loss to the
plaintiff. In our opinion, the refusal to grant injunction is likely to
cause irreparable loss to the plaintiff’s goodwill, therefore, the
balance of convenience lies in favour of granting injunction.
60. Further, this Court finds that the use of the trademarks
in question by the defendant would also lead to dilution of the
plaintiff’s brand identity. It is likely to cause deception of public
which could be inherently difficult to quantify and the remedy of
damages would be inadequate. Keeping in view the judgments of the
Hon’ble Supreme Court, this Court would further record that even
public interest warrants injunctive relief to prevent confusion or
deception in the mark.
61. For all the aforesaid reasons, this Court sets aside the
impugned order dated 16.11.2024 passed by the learned Principal
District Judge-cum-Commercial Court, Patna in Commercial Dispute
Case No. 02/2023 and allows the interim/ad-interim injunction on the
petition dated 08.12.2023 filed by the plaintiff-appellant.
62. By way of ad-interim injunction, this Court restrains
defendants, their directors, investors, officers, employees,
delegates, dealers, distributors, retailers, stockists, representatives,
assignees, associates, agents and all others acting for and on their
behalf from offering for advertisements, manufacturing, offering
for sale, stocking, adopting, using, and/or dealing in any manner
Patna High Court COMMERCIAL APP No.2 of 2025 dt.24-04-2026
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with the trademark “JOHNSON” with prefixes and suffixes or any
other trademark identical or deceptively similar to the plaintiff’s
trademark label/logo/name/trade dress and wrapper.
63. The learned Commercial Court is directed to
expedite the hearing of the suit.
(Rajeev Ranjan Prasad, J)
(Praveen Kumar, J)
Rishi/-
AFR/NAFR AFR CAV DATE 18.03.2026 Uploading Date 25.04.2026 Transmission Date 25.04.2026
