The post covers an Appeal from the order of the District Judge-2, Nagpur, to the Bombay High Court over rights in the mark ‘SHRIPHAL’. The Plaintiff, Mysore Deep Perfumery Household (Mysore Perfumery) filed the action against Sunilkumar Amrutlal Jain (Sunilkumar), alleging passing off and to restrain the latter from using the mark SHRIPHAL in relation to agarbathies (incense sticks), scent, perfumes, etc.

Proceedings before the Nagpur District Court

Mysore Perfumery brough the suit relying on its prior and extensive use of the mark SHRIPHAL since 1992 in relation to agarbathies (incense sticks), scent, perfumes, etc, in class 3. Mysore Perfumery alleged that in 2014, it came to their notice that Sunilkumar, purchasing SHRIPHAL branded products from Mysore Perfumery since 1994, clandestinely started using the identical mark on their products. In response to the cease-and-desist letter, Sunilkumar contended that ‘SHRIPHAL’ is publici Juris.

Sunilkumar, in support of its case:

1. Filed documents evidencing sales of ‘SHRIPHAL’ branded products to an entity, Aastha Sales, a sister concern of Mysore Perfumery;
2. relied upon its registration of the mark SHRIPHAL and use of the mark SHRIPHAL prior to 2011 when Mysore Perfumery registrations had lapsed.

SunilKumar, based on the above contentions, argued acquiescence alleging Mysore Perfumery was well aware of the use of the mark SHRIPHAL by Sunilkumar.

The District Court, after considering the pleadings, documents and arguments, set aside the injunction granted in favor of Mysore Perfumery. It held acquiescence on the part of the Mysore Perfumery. Aggrieved by the order, Mysore Perfumery filed the appeal before the High Court.

Mysore Perfumery filed an appeal contending:

1. The Trial Judge held that Mysore Perfumery was a prior user of the mark SHRIPHAL, having reputation and goodwill and the likelihood of deception. However, refused to grant an interim injunction only on the ground of acquiescence which is erroneous.
2. Mysore Perfumery has filed documents before the High Court, which show that materials relied on by Sunilkumar concerning Aastha Sales are forged, and thus, the plea of acquiescence will not succeed. 

Sunilkumar countered the appeal with the following:

1. The High Court settled the issue regarding additional pleadings earlier and cannot be considered in the instant appeal. 
2. Regarding documents filed by Mysore Perfumery in the appeal, it is settled law that the Appellate Court cannot look into material not before the Trial Court as they failed to exercise due diligence. 
3. The appeal is liable to be rejected on the ground that Sunilkumar has been a registered proprietor of the trademark ‘SHRIPHAL since May 2011 and, therefore, is fully entitled in law to use the trademark. 
4. Mysore Perfumery had failed to renew the registration of the trademark, and the same amounts to the abandonment of his rights. Thus, no infringement, passing off, or damage to the goodwill and reputation would arise.

The Court after considering the arguments, case laws and documents, held:

• The argument regarding additional pleadings brought in by Sunilkumar ought not to be considered as the issue has been decided by a co-ordinate bench of the High Court in Writ petition filed by Mysore Perfumery. 
• The Trial Court has held that Mysore Perfumery is a prior user of the trademark ‘SHRIPHAL’ and acquired goodwill. There is likelihood of deception, however, rejected the discretionary relief of temporary injunction on the ground of acquiescence. In this regard, it is relevant to note that in reply to the cease and desist notice Sunilkumar has not asserted his rights in respect of trademark ‘SHRIPHAL’. Further, they have not contended that they are the registered proprietor since May 2011, which conduct needs to be seriously questioned. 
• Sunilkumar has vehemently opposed additional documents filed in the appeal on the grounds that Mysore Perfumery had not exercised due diligence in the trial court. At this juncture, it has to be considered whether the additional evidence sought to be adduced would have a direct bearing on pronouncing judgment or for any other substantial cause. It is Sunilkumar’s case that he has been supplying ‘SHRIPHAL’ marked products to Aastha Sales, a sister concern of Mysore Perfumery. In this regard, documents sought to be brought on record by way of additional evidence are coming from ‘Aastha Sales,’ which will have a direct bearing on the case apart from furthering the cause of justice. The documents filed evidence that Aastha Sales have no connection whatsoever with Mysore Perfumery and is not a sister concern as claimed by Sunilkumar. The affidavit of the proprietor of Aastha Sales substantiates this. Thus, no acquiescence can be culled out from the material on record, and it cannot be opined that the alleged character of acquiescence was of such a nature to create a right in favour of Sunilkumar. In the circumstances, the doctrine of acquiescence is not applicable in the facts of the present case.
• The argument that Mysore Perfumery has abandoned its rights and cannot enforce its rights ought to fail. If any right is conferred by registration of the mark, the same is subject to provisions of Section 27(2) of the Act. Thus, the common law right of passing off conferred in favour of Mysore Perfumery shall prevail upon the rights granted by registration of the trademark.

In light of the above, the High Court allowed the appeal filed by Mysore Perfumery and set aside the order passed by the District Judge.