Mahesh Value Products Private Limited v. Rikhab Chand Jain & Ors.

1. This appeallays challengeto an order dated14.03.2026passedby the learned District Judge (CommercialCourt-10), Central, Tis Hazari Courts, Delhi whereby the learned District Judge has by appointing a Local Commissioner, on an application under Order XXXIX Rule 1 and 2, CPC filed by the respondent nos. 1& 2 restrained the appellant from using the trademark ‘TT’ in the following manner: “ In the facts and circumstances as already discussed a prima facie case appears in favour of plaintiff. Initial balance of convenience also appears in his favour as plaintiff is registered trademarkowner and prima facie defendantdo notappearto have any right to store or sell counterfeit goods containing mark of plaintiff. In the facts and circumstances, till further orders, by way of an ad-interim ex-parte injunction, the Defendants, their directors, partners, servants, principals, agents, stockiest, associates or any of them acting for, claiming under or through or on behalf or in concert with them arc restrained from manufacturing, selling, offering for sale, advertising, directly of indirectly dealing in goods bearing the trademark or any other trademark which is deceptively similar to the Plaintiff No. 1' s trademark. They are further restrained from infringing the trademark of the Plaintiff No.1 in the work “TI” by reproducing the same in any manner on the goods manufactured by the Defendants or on stationary, letter heads, GuaranteeCards, packing materials used by the Defendants. They are further restrained from adopting/using, manufacturing, selling, offering for sale, advertising, directly or indirectly dealing under the mark and name which is visually similar to the Plaintiff No. 1’s trademarkTT/ so as to misrepresent their services as those of the Plaintiff No. 1 and from doing any other thing as may cause confusion or deception leading to passing off their services and business as those of the Plaintiff No. 1.”

2. The submission of Mr. C.M. Lall, learned senior counsel for the appellantis that thesaid order hasbeen passed by thelearned District Judge in a suit/plaintwheretherespondent nos. 1 and 2 herein have concealed the material facts.

3. Accordingto him, the plaint has been filed seeking a restraint order against theappellant withregard to thetrademarksTT/TT Tasty Tasty/Tasty Tasty, by concealingthat theappellantis the prior adopter andlong-standing registered proprietor of the mark ‘TT’ in respect of Asafoetida tracing its adoptionto theyear 1895 through its predecessors and had registration as early as 1950 and also extensive portfolio of registrations across classes even thereafter.

4. He states that the appellant has been continuously and extensively usingthis mark and hassubstantial goodwilland reputation. In this regard he has drawnour attention to various documents filed along with the appeal. His submission is thattherespondent nos. 1 and 2 had issued a legal notice on 05.05.2017 of which no reference has been given in the plaint.

5. In fact, the appellant had replied to the legal notice wherein it is specifically mentioned that the mark ‘TT’ with regard to the aforesaid product has been adoptedin the year 1895 with registration dating as early as 1950. It is becauseof concealment of important facts including issuance of legal noticeand the reply ofthe appellant, the impugned order has been passed.

6. He also states thattheimpugnedorder is also passed overlooking and without consideringtheappellant’sstatutoryright as a registered proprietor; its prior useand existenceof multiple prior litigations between the parties.

7. In any case, it is his submission that the Trial Court has failed to appreciate the fact that an action for infringement is not maintainable between two registered proprietorsas it is the case of the respondent nos. 1 and 2 herein that they also haveregistrations with regard to the mark ‘TT’. He states that the effect of the order is very drastic as the same has resulted in the closureof thebusinessofthe appellantwith respect to the trademark ‘TT’.

8. He states that nothing precluded the District Judge to issue a day’s notice to the appellant herein; hear the appellant and then decide the applicationfiled by therespondent nos. 1 and 2 under Order XXXIX Rules 1 and 2 CPC. Moreover, there was no urgency as the plaint was actually filed in the monthofDecember, 2025 and listed before the learned District Judgeonly in the month ofMarch, 2026i.e., threemonths after the filing of theplaint. Hestatesthathehas no objection if the matter is remanded back to the learned DistrictJudgefor him to consider theapplicationunder Order XXXIX Rules 1 and 2 CPC afresh and decide the same after hearing both thepartiesbut tillsuch time, the injunction order which has been passed be vacated.

9. On the other hand, Mr. Mukul Raao, learned counsel for respondent nos. 1 and 2 would justify the order passed by the learned District Judge. Accordingto him thereis no concealment offacts as sought to be alleged by Mr. Lall.

10. He also states that even the respondent nos. 1 and 2 are registered owners ofthemark ‘TT’ and are using the same in all classes w.e.f. 1968. He has drawn ourattentionto theimpugnedorder to contend that the mark which was registered in the year 1950 has lapsed and as such cannot be relied upon by theappellant. Healso states that concededly as per theappeal itself, theregistrationofthe mark which is still valid was registered only on 05.05.1979 and in that sense the usage is subsequent to the usage of the mark by therespondent nos. 1 and 2 herein. This submissionis contested by Mr. C.M. Lall, by stating that the mark which has been registered on 05.05.1979 has the usage from 1921.

11. On this, learned counselfor therespondent nos. 1 and 2 submits that the said mark is a composite mark as different from the mark ‘TT’ of the respondent nos. 1 and 2, which is in usage since the year 1968.

12. Having heard the learned counsel for the parties and perused the impugned order passed by the learned District Judge, we find the only reason given by the learned District Judge, for allowing the application under Order XXXIX Rules 1 and 2 CPC can be seen at internal page 24 of the impugned order which we have already reproduced above.

13. The facts which have been urged by Mr. C.M. Lall, learned senior counselfor the appellanthavenot been averred in theplaint. Prima facie, we areof theview, that in a matterofthis natureit is required thattheCourthas all the facts beforeit for a considereddecision. For this purpose, the Court should haveissued a shortnoticeto theappellantfor its appearance. Surely, theappellantis justified to contend that absenceofnotice has resulted in the impugned order, which causes prejudice to the appellant.

14. This Courtis of the view that appropriate shall be that the matter is remanded back to the learned District Judgefor a fresh consideration of the applicationfiled by therespondent herein under Order XXXIX Rules 1 and 2 CPC.

15. At this stage, Mr. Lall, states that the appellant shall file the reply to the application filed under Order XXXIX Rules 1 and 2 CPC by the respondent withintwo [2]days from today i.e., on or before 18.04.2026. If that beso, rejoinder, if any, befiled by the respondent no. 1 and respondent no. 2 on or before 20.04.2026.