The Bombay High Court recently considered two applications alleging wilful breach and disobedience of an injunction granted on 24 November 2010 in a trademark and copyright dispute concerning the mark “NOVA” and its associated artistic work. Since both applications arose from substantially the same alleged violations, the Court considered them together and disposed of them by a common order.

The proceedings are significant because they illustrate the consequences of disregarding an existing injunction and clarify the limited scope of proceedings under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (“CPC”). The Court emphasised that once an injunction has been granted, the party restrained by the order must comply with it in letter and spirit. The subsequent registration or independent justification for the impugned mark cannot, in contempt proceedings, be used to justify conduct that falls within the injunction.

Background of the Dispute

The Applicant/Plaintiff was the registered proprietor of the trademark “NOVA” and the corresponding artistic work, both used in connection with brilliantine hair cream. In 2007, the Plaintiff discovered that Respondent No. 1, the sole proprietor of M/s Ravi Industries, was selling counterfeit brilliantine hair cream bearing a label deceptively similar to the Plaintiff’s NOVA label. The Plaintiff consequently instituted proceedings alleging trademark infringement, copyright infringement and passing off.

On 24 November 2010, the Court granted an injunction restraining the Respondents from using the “NOVA” mark, any deceptively similar mark, and the Plaintiff’s original NOVA artistic carton and label.

The dispute, however, did not end with the injunction. In December 2013, the Plaintiff discovered that Respondent No. 1 was using the mark “NONI” on brilliantine hair cream, with a label which was alleged to be virtually identical to the Plaintiff’s registered artistic work. The Plaintiff accordingly initiated proceedings alleging breach of the injunction.

The matter resurfaced again in February 2025 when, during execution of an order in another suit, the Court Receiver found “NOVA MINI” goods and “NONI” labels at Respondent No. 1’s premises. Respondent No. 1’s son identified himself as the proprietor of M/s Ravi Industries. The Plaintiff thereafter sought his impleadment as Respondent No. 3 and alleged a further breach of the injunction.

Contentions of the Plaintiff

The Plaintiff contended that the issue before the Court was not whether a fresh injunction should be granted against “NONI”, but whether the existing injunction had been wilfully breached.

According to the Plaintiff, the injunction expressly prohibited the use not only of “NOVA” but also of deceptively similar marks and, importantly, the Plaintiff’s registered artistic work. The Plaintiff argued that the “NONI” label substantially reproduced the protected artistic work and therefore fell within the scope of the injunction, irrespective of the separate registration of the “NONI” trademark.

The Plaintiff also relied upon Respondent No. 1’s own Written Statement, which allegedly acknowledged that the same artistic work was used on both the NOVA and NONI labels. This, according to the Plaintiff, demonstrated that the Respondent was aware that the injunction extended to the artistic work appearing on the NONI label.

The Plaintiff further argued that the Respondent’s subsequent attempt to obtain clarification that “NONI” was outside the injunction was itself significant. The Plaintiff characterised this application as a counterblast to the contempt proceedings and as evidence that the Respondent understood the scope of the injunction.

As regards “NOVA MINI”, the explanation that its use resulted from an employee’s mistake was contended to be implausible, particularly in light of the alleged history of infringement. The Plaintiff also alleged suppression of material facts, false statements on oath and failure to provide complete sales information despite directions of the Court. It invoked the Safe Distance Rule, contending that the Respondents were required to maintain a clear distinction from the Plaintiff’s protected mark and artistic work.

Defence of the Respondents

The Respondents disputed the allegation of contempt. Their principal contention was that the injunction did not extend to the “NONI” label. According to them, the restraint was confined to the NOVA label and specific NOVA products, cartons and labels. “NONI”, being a separately registered mark and label, was outside the scope of the original injunction.

The Respondents relied upon the history of the NONI registration, claiming registration dating back to 1966 and use since 1958, supported by advertisements, invoices and licences. They also relied upon an earlier IPAB decision, which had recognised prolonged and concurrent use of the NONI label and permitted the Respondent’s registration to continue as a special circumstance under Section 12 of the Trademarks Act.

It was argued that the Safe Distance Rule could not enlarge an injunction so as to cover a separately registered mark which had been known to the Plaintiff but had never been adjudicated upon. The Respondents further relied on the Plaintiff’s first contempt application, which had specifically sought restraint against the use of “NONI”. According to them, this demonstrated that the original injunction did not cover NONI.

The Respondents also emphasised that contempt proceedings are quasi-criminal in nature and that breach had to be established beyond reasonable doubt. A silent injunction, they argued, could not subsequently be judicially expanded to prohibit conduct that the original order had not expressly restrained. Respondent No. 3’s impleadment was also challenged for want of evidence connecting him with the alleged contempt.

Without prejudice, Respondent No. 1 offered to discontinue the NONI label, adopt a distinct label and pay ₹2 lakhs to Tata Memorial Hospital as part of a proposed settlement.

The Court’s Analysis and Findings

The Bombay High Court ultimately rejected the Respondents’ defence and found that they had wilfully and deliberately breached the injunction, acting in a brazen and dishonest manner to defeat the Court’s orders. Respondent No. 1 was described as a habitual counterfeiter, while Respondent No. 3 was held complicit in the breach.

A central aspect of the Court’s reasoning was the limited scope of proceedings under Order XXXIX Rule 2A CPC. The Court held that the question in such proceedings is whether the injunction was breached. The Court cannot use those proceedings to reopen the merits of the original suit, reconsider the correctness of the injunction or adjudicate the ultimate rights of the parties.

The Court found that the original injunction extended to the Plaintiff’s registered artistic work. Therefore, Respondent No. 1’s use of virtually identical or deceptively similar artwork on the NONI label constituted a breach. The use of “NOVA MINI” was also found to fall within the restraint.
Importantly, the Court rejected the argument that registration of the NONI mark provided a defence to disobedience. The existence of a registration did not authorise Respondent No. 1 to disregard a subsisting injunction. The injunction remained binding and was required to be obeyed “in letter and spirit.”

The Court also rejected the Respondents’ reliance on the IPAB proceedings and their contention that NONI was outside the scope of the injunction. The Respondent’s own attempt to obtain clarification that the injunction did not cover NONI had been refused by the Division Bench. According to the Court, this demonstrated the Respondent’s awareness that the injunction applied to the label. The explanations that NONI was outside the suit and that NOVA MINI labels had been printed by mistake were therefore not accepted as legitimate justifications for non-compliance.

The Court further noted deliberate non-disclosure of sales despite admitted sales of approximately ₹83.46 lakh. This was viewed as an attempt to conceal the extent of the infringing sales and the commercial exploitation of the Plaintiff’s goodwill.

Reliefs and Directions

The Interim Application was allowed. Although Respondent No. 1 was found guilty of wilful breach and disobedience of the injunction dated 24 November 2010, the Court, taking into consideration his age, did not impose imprisonment at that stage.

The Court directed Respondent No. 1 to pay ₹32,42,868 towards legal costs and ₹50 lakh as exemplary costs, within four weeks. He was also directed to disclose on oath complete sales figures relating to the counterfeit label, NONI label and NOVA MINI mark/label. The amount to be deposited would thereafter be determined by the Court. Failure to comply with these directions would result in the Respondent’s defence being struck off.

Comment

The decision reiterates that an injunction must be strictly obeyed until it is modified or set aside. A separate trademark registration does not excuse breach of an existing injunction, and proceedings under Order XXXIX Rule 2A CPC focus on compliance rather than the merits of the underlying dispute. The imposition of substantial exemplary costs highlights the serious consequences of deliberate disobedience and concealment of sales.