As held by the Supreme Court in the case of Shiv
Kumar Chadha (supra), the power to grant
injunction is an extraordinary power vested in
the Court to be exercised taking into
consideration the facts and circumstances of a
particular case, and the Courts have to be more
cautious when the said power is being exercised
without notice or hearing the party, which is to
be affected by the order so passed. The Supreme
Court has also, inter alia, held that recording
the reasons for grant of ex parte injunction,
cannot be held to be a mere formality and that
whenever the Court considers it necessary in
the facts and circumstances of a particular
case to pass an order of injunction without
notice to other side, it must record the
reasons for doing so and should take into
consideration, while passing an order of
injunction, all relevant factors, including as to
how the object of granting injunction itself
shall be defeated if an ex parte order is not
passed. It has also been held that the proviso
to Rule 3 of Order XXXIX of the Code also
attracts the principle that if a statute requires
a thing to be done in a particular manner, it
should be done in that manner and not otherwise.
It is true that in the case of A. Venkatasubbiah
Naidu (supra) the Supreme Court has observed that
if the Court, passing ex parte injunction, did
not record reasons, such order can be deemed to
contain such requirements by implication, even
if they are not stated in so many words.
However, in the instant case, the trial Court has
failed to record reasons expressly or impliedly
as to how the object of injunction would be
defeated if the ex parte order was not granted.
The impugned order, therefore, could not be said
to be in conformity with the mandatory provision
contained in Rule 3 of Order XXXIX of CPC.
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 125 of 2016
M/S WIM PLAST LTD & 1
V
M/S SYMPHONY LTD & 1.
CORAM: MS.JUSTICE BELA M. TRIVEDI
Date : 26/04/2016
Citation: AIR 2017(NOC)76 GUJ
1. All the three Appeals arise out of the orders
passed by the Principal District Judge,
Gandhinagar (hereinafter referred to as “the
trial Court”) below Exh.5 in the Suits being
Trade Mark Suit Nos.2/2016, 3/2016 and 5/2016,
involving similar issues on facts and law between
the same parties and, therefore, this common
order is being passed.
2. The Suit being Trade Mark Suit No.2/2016 has been
filed by the respondent No.1 – (original
plaintiff), against the appellants and the
respondent No.2 (original defendants) in respect
of the registered designs bearing Registration
Nos.221068, 221084 and 220948. The suit being
Trade Mark Suit No.3/2016 has been filed in
respect of the registered design bearing
Registration No.198241 and the suit being Trade
Mark Suit No.5/2016 has been filed by the same
plaintiff and against the same defendants in
respect of the registered design bearing
Registration No.227069 for its products Air
Coolers. For the sake of convenience, the facts
of Appeal from Order No.125 of 2016 arising out
of the impugned order passed by the trial Court
in Trade Mark Suit No.3/2016 shall be considered.
3. The respondent No.1 herein – (original
plaintiff), is a Company incorporated under the
Companies Act, 1956 and is also a registered
Proprietor of various designs including the
design bearing Registration No.198241 for the
product Air Coolers. The appellant No.1
(original defendant No.1) is also a Company
registered under the Companies Act. The appellant
No.2 (original Defendant No.2) is a Firm and the
Sister concern of the Appellant No.1. According
to the respondent No.1 – original plaintiff, the
appellants were selling and pirating the
respondent No.1’s registered designs by using the
trade mark of the appellant No.2 i.e. ‘CELLO’,
and the respondent No.2 herein – original
defendant No.3 was selling the products of the
appellants in the city of Gandhinagar. It is
further case of the respondent No.1 – plaintiff
that the respondent No.1 is engaged in the
worldwide business of selling and marketing a
wide range of its products and has strong network
and well established “R & D” Division, comprising
of highly qualified and experienced engineers.
The respondent No.1 – plaintiff has launched
various models of Air Coolers with unique designs
having different models, names and trade marks.
The respondent No.1 had applied for and has
become the registered Proprietor of the design
for its product Air Coolers under the name
“Winter”, vide the Registration No.198241, since
20.1.2005. It is further the case of the
respondent No.1 that earlier in the month of
March 2015, the respondent No.1 had come to know
that the appellants had intended to start sale of
their products Air Coolers having similar shape,
configuration and replication of the four designs
i.e. Hi-Cool, Winter, Sumo and Diet, which were
registered in favour of the respondent No.1. The
respondent No.1, therefore, had moved the City
Civil Court, Ahmedabad by filing the Civil Suit
No.566 of 2015, in which the said Court had
issued the notices to the appellants – original
defendants. Being aggrieved by the said order,
the respondents No.1 had moved the High Court by
filing a petition being Special Civil Application
No.4624 of 2015, wherein the High Court vide the
order dated 17.3.2015 had restrained the
appellants – defendants from marketing, selling,
advertising and directly or indirectly dealing in
Air Coolers, which have same design, shape,
configuration, and design identical to and/or
imitation of the designs of the respondent No.1 –
plaintiff, bearing Registration Nos.194305,
198241, 227069, and 221068. Since, the
appellants – defendants had raised the issue of
validity of the said registrations in the said
earlier suit, the same came to be transferred to
the High Court with the consent of the parties.
The said suit has been registered as the Civil
Suit No.2/2015 before this Court. In the said
suit, the Single Bench after hearing the parties,
vide its interim order dated 5.5.2015 had
continued the earlier order dated 17.3.2015
passed in Special Civil Application No.4624 of
2015, pending the said suit. Being aggrieved by
the said order, the appellants had preferred the
O. J. Appeal No.32 of 2015 before the Division
Bench, however, the same was dismissed.
4. It is further case of the respondent No.1 that in
the third week of March, 2016 the respondent No.1
came to know that the appellants had again under
the name ‘Cello Marvel’ started to sell its
products i.e. Air Coolers making minor
alterations and cosmetic changes in their designs
for which they were restrained by the High Court
in the Civil Suit No.2 of 2015. According to the
respondent No.1, the recently adopted design of
the appellants in the name of ‘Cello Marvel’ was
the obvious imitation of the respondent No.1’s
registered design and hence, the appellants have
committed an act of infringement as per the
provisions contained in Section 22 of the Designs
Act, 2000 (hereinafter referred to as “the said
Act”). The respondent No.1, therefore, has filed
the present suit along with the two other suits
seeking permanent injunction in respect of their
designs registered for their products Air
Coolers.
5. The respondent No.1 had also filed an Application
at Exh.5, seeking temporary injunction against
the appellants and respondent No.2 for
restraining them from manufacturing, marketing,
selling, advertising, and directly or indirectly,
dealing in the Air Coolers, which have the same
design, shape, configuration, and design
identical to and/or imitation of plaintiff’s
registered designs and from committing an action
of infringement of the registered design bearing
No.198241 pending the suit. The trial Court,
vide the impugned order dated 6.4.2016, without
issuing notices to the appellants, granted adinterim
injunction as prayed for by the
respondent No.1 – plaintiff till 13.4.2016.
Being aggrieved by the said order, the appellants
– defendants have preferred the present Appeals.
6. The learned Sr. Counsel, Mr.Shalin Mehta for the
appellants, assailing the impugned order passed
by the trial Court, vehemently submitted that the
said order has been passed in utter disregard of
the proviso to Rule 3 of Order XXXIX of Civil
Procedure Code (hereinafter referred to as “the
Code”), inasmuch as the trial Court has failed to
record reasons as to how the object of granting
the injunction would be defeated by the delay.
Placing heavy reliance on the decision of the
Supreme Court in the case of Shiv Kumar Chadha Vs
Municipal Corporation of Delhi, reported in
(1993) 3 SCC 161, he submitted that the trial
Court is obliged to give reasons while granting
ex parte injunction, as the compliance of Rule 3
of Order XXXIX is not a mere formality. He has
also relied upon the decision of this Court in
the case of the 3 I Infotech Consumer Services
Limited Vs. Gujarat Narmada Valley Fertilizers
Co. Ltd. & anr., reported in 2009(3) GLH 49 and
in the case of Percept Picture Company Pvt. Ltd.
Vs. Shree Karma Production Pvt. Ltd. and Anr.,
reported in 2008(1) GLH 598 to buttress his
submission that the satisfaction of the trial
Court that object of grant of injunction would be
defeated by delay, is the sine qua non, for
operating the proviso to Rule 3 of Order XXXIX.
He also submitted that the trial Court had
committed jurisdictional blunder by omitting to
record reasons and even otherwise, had committed
an error in granting ex parte injunction in the
suit, which suffers from delay and laches,
inasmuch as the respondent No.1 was aware about
the change of designs made by the appellants in
September 2015, whereas the suits were filed by
the respondent No.1 – plaintiff in April 2016,
which was the peak season for selling the Air
Coolers. He also submitted that the on-going
business of the appellants has been affected by
the ex parte order, which deserves to be set
aside. Reliance was also placed on the decision
of the Supreme Court in the case of A.
Venkatasubbiah Naidu Vs. S. Chellappan and Ors.,
reported in (2000) 7 SCC 695 to submit that the
Appeal from Order under Order XLIII Rule 1 of the
Code is maintainable against the ex parte
injunction order passed by the trial Court.
7. However, the learned Sr. Counsel, Mr.Kamal
Trivedi for respondent No.1 submitted that the
appellants, instead of appearing before the trial
Court on the returnable date, has rushed to this
Court without any justification. According to
him, though the appellants were injuncted by the
High Court in the suit filed by the respondent
No.1 earlier, from imitating the registered
designs of the respondent No.1, the appellants
making only cosmetic changes in their designs of
the air coolers, have committed the infringement
as contemplated under Section 22 of the said Act.
He further submitted that the trial Court had
passed the order, considering the proceedings
pending in the High Court and the orders passed
therein and, therefore, it could not be said that
the trial Court had passed the impugned order
without applying its mind or giving any reason.
Relying upon the decision of the Apex Court in
the case of A. Venkatasubbiah Naidu (supra), he
submitted that even if the reasons are not
recorded by the Court while granting ex parte
injunction, the same is required to be treated as
deemed compliance of the Order XXXIX Rule 3 of
the Code. Mr.Trivedi has also relied upon the
decision of the Division Bench of this Court in
the case of Patel Jasmat Sangaji Vs. The Gujarat
Electricity Board and Others, reported in 1982
GLH 463 to submit that in the rarest of rare
cases, the appeal against the ex parte orders
should be entertained and still more in the
rarest of rare cases, the operation of ex parte
order should be suspended. While fairly
submitting that the Appeal from Order would be
maintainable against the ex parte order passed by
the trial Court, he submitted that this Court,
being the appellate Court, should not interfere
with the discretionary order passed by the trial
Court, which otherwise does not suffer from any
perversity or illegality. Mr.Trivedi also placed
reliance on various decisions of the Supreme
Court to submit that the plaintiff being the
registered proprietor of the designs in question,
and the appellants having infringed the said
designs by imitating the designs of the
respondent No.1, though injuncted by the High
Court, the present appeals deserve to be
dismissed.
8. Mr.Mihir Thakre, learned Sr. Counsel appearing
for the respondent No.1 – plaintiff in other
appeals while supporting the submissions made by
the learned Sr. Counsel, Mr.Trivedi, relied upon
the decision of the Supreme Court in the case of
Wander Limited Vs. Antox India Pvt. Limited,
reported in 1990 (1) SCC (Spl.) 727 to submit
that the appellate Court should not interfere
with the discretion exercised by the trial Court,
except where the discretion has been shown to
have been exercised arbitrarily or capriciously
or perversely, or where the Court had ignored the
settled principles of law regulating the grant or
refusal of interlocutory injunctions.
9. On careful consideration of the submissions made
by the learned Counsels for the parties, it
appears that the respondent No.1 – plaintiff is
the registered Proprietor of the designs bearing
Registration No.198241 and others for their
products Air Coolers. It is not disputed that
earlier the respondent No.1 – plaintiff had filed
the Civil Suit No.566/2015 on the apprehension
that the appellants would infringe the registered
designs of the respondent No.1 – plaintiff. In
the said suit, the trial Court having issued
notice, the respondent No.1 – plaintiff had
approached the High Court by filing the Special
Civil Application No.4624/2015. This Court in
the said Special Civil Application had passed the
order on 17.3.2015, restraining the appellants
from marketing, selling, advertising, directly or
indirectly dealing in ‘Air Coolers’, which have
the same design, shape, configuration and design
identical to and/or imitate the petitioner’s
design bearing registration No.194305, 198241,
227069, and 221068. The said suit was
subsequently transferred to the High Court in
view of the provisions contained in Sub-section
(4) of Section 22 of the said Act, as the
appellants had contended that the said
registrations of the respondent No.1 were liable
to be cancelled under Section 19 of the said Act.
The said suit was registered as Civil Suit
No.2/2015 before this Court. The Single Bench,
after hearing the learned Counsel for the
parties, had continued the interim injunction
granted by the Court in Special Civil Application
No.4624 of 2015 vide order dated 5.5.2015. The
said order, having been challenged by the
appellants in the O.J. Appeal before the Division
Bench, the same was confirmed by the Division
Bench also. Under the circumstances, the order
dated 17.3.2015 passed by this Court in SCA
No.4624 of 2015 has been continued in the suit
bearing Civil Suit No.2/2015 pending before this
Court.
10.Now, the present suits have been filed by the
respondent No.1 – plaintiff alleging, inter alia,
in the plaint that the appellants – defendants
have again adopted the designs making minor
alteration or cosmetic changes for their
products, for which they were restrained by the
High Court. In the opinion of the Court, when
the High Court was seized with the matter as
regards the infringement of the registered
designs of the respondent No.1 at the instance of
the appellants and as regards the validity of the
very registered designs of the respondent No.1,
in the suit being Civil Suit No.2/2015, and when
the respondent No.1 has alleged in the present
suits that the appellants have committed
infringement of the said designs, for which they
were injuncted by the High Court, the trial Court
has committed a jurisdictional error in
entertaining the application for temporary
injunction and granting the ex parte injunction
in respect of the very registered designs of the
respondent No.1. The trial Court, while passing
the impugned order, had the entire record and
proceedings before it, which were also perused by
the trial Court, as transpiring from the order
itself. It is pertinent to note that in the
earlier suit filed by the respondent No.1, the
appellants having challenged the validity of the
registration of the designs of the respondent
No.1 by taking up the contention as available
under Section 19 of the said Act, the said suit
was transferred to the High Court. When the
issue with regard to the infringement of the
registered designs of respondent No.1 at the
instance of the appellants and the issue with
regard to the validity of the said registrations
of the designs of the respondent No.1 are pending
before the High Court, in the opinion of the
Court, the proper course available to the
respondent No.1 was to approach the High Court by
filing appropriate application in the pending
suit, and not to file suits in the trial Court,
more particularly when the respondent No.1 has
specifically alleged that the appellants had
started selling their products imitating the
registered designs of the respondent No.1, though
the appellants were injuncted by the High Court
from doing so.
11.At this juncture, it is required to be noted that
as per Section 22(4) of the said Act, where any
ground on which the registration of a design may
be cancelled under Section 19 of the said Act has
been availed of as a ground of defence in any
suit or other proceeding for relief under SubSection
(2) i.e. when the person acts in
contravention to the Sub-section (1) of Section
22, the suit or such other proceedings are
required to be transferred by the said Court to
the High Court for decision. Hence, when the
earlier suit proceedings were transferred to the
High Court, on the appellants availing of the
ground of defence under Section 19 in respect of
the same registered designs of the respondent
No.1, the trial Court has committed an error in
granting the ex parte injunction in favour of the
respondent No.1.
12.As held by the Supreme Court in the case of Shiv
Kumar Chadha (supra), the power to grant
injunction is an extraordinary power vested in
the Court to be exercised taking into
consideration the facts and circumstances of a
particular case, and the Courts have to be more
cautious when the said power is being exercised
without notice or hearing the party, which is to
be affected by the order so passed. The Supreme
Court has also, inter alia, held that recording
the reasons for grant of ex parte injunction,
cannot be held to be a mere formality and that
whenever the Court considers it necessary in
the facts and circumstances of a particular
case to pass an order of injunction without
notice to other side, it must record the
reasons for doing so and should take into
consideration, while passing an order of
injunction, all relevant factors, including as to
how the object of granting injunction itself
shall be defeated if an ex parte order is not
passed. It has also been held that the proviso
to Rule 3 of Order XXXIX of the Code also
attracts the principle that if a statute requires
a thing to be done in a particular manner, it
should be done in that manner and not otherwise.
It is true that in the case of A. Venkatasubbiah
Naidu (supra) the Supreme Court has observed that
if the Court, passing ex parte injunction, did
not record reasons, such order can be deemed to
contain such requirements by implication, even
if they are not stated in so many words.
However, in the instant case, the trial Court has
failed to record reasons expressly or impliedly
as to how the object of injunction would be
defeated if the ex parte order was not granted.
The impugned order, therefore, could not be said
to be in conformity with the mandatory provision
contained in Rule 3 of Order XXXIX of CPC.
13.Although it is true that the appellants should
have appeared before the trial Court on the
returnable date, however, as observed by the
Supreme Court in the case of A. Venkatasubbiah
Naidu (supra), the party affected by the order
passed by the trial Court granting ex parte
injunction could either move the appellate Court
or to approach the same Court, which passed the
ex parte order for any relief. Hence, it cannot
be said that the appellants should have
approached the trial Court only and should not
have filed the present appeals. Of course, this
Court being appellate Court should normally not
interfere with the discretionary order passed by
the trail Court as held by the Supreme Court and
this Court in catena of decisions relied upon by
the learned Counsels for the respondent No1.
However, in the peculiar facts and circumstances
of the case, the Court is of the opinion that the
trial Court having committed jurisdictional error
and having failed to comply with the requirements
of the proviso to Rule 3 of Order XXXIX CPC, the
impugned orders deserve to be set aside and are
hereby set aside.
14. All the three Appeals stand allowed
accordingly. It is clarified that the Court has not
expressed any opinion on the merits of the case.
The trial Court is directed to decide the
Application Exh.5 in all the three Suits, in
accordance with law, without being influenced by the
order passed by this Court. Copy of this order be
placed in other appeals.
15. At this juncture, the learned Counsel
Mr.Tolia for the respondents has requested to
stay the operation of the present order to enable
the respondent No.1 to approach the higher forum.
The said request cannot be accepted in view of
the afore-stated reasons.
(BELA M. TRIVEDI, J.)
Kumar Chadha (supra), the power to grant
injunction is an extraordinary power vested in
the Court to be exercised taking into
consideration the facts and circumstances of a
particular case, and the Courts have to be more
cautious when the said power is being exercised
without notice or hearing the party, which is to
be affected by the order so passed. The Supreme
Court has also, inter alia, held that recording
the reasons for grant of ex parte injunction,
cannot be held to be a mere formality and that
whenever the Court considers it necessary in
the facts and circumstances of a particular
case to pass an order of injunction without
notice to other side, it must record the
reasons for doing so and should take into
consideration, while passing an order of
injunction, all relevant factors, including as to
how the object of granting injunction itself
shall be defeated if an ex parte order is not
passed. It has also been held that the proviso
to Rule 3 of Order XXXIX of the Code also
attracts the principle that if a statute requires
a thing to be done in a particular manner, it
should be done in that manner and not otherwise.
It is true that in the case of A. Venkatasubbiah
Naidu (supra) the Supreme Court has observed that
if the Court, passing ex parte injunction, did
not record reasons, such order can be deemed to
contain such requirements by implication, even
if they are not stated in so many words.
However, in the instant case, the trial Court has
failed to record reasons expressly or impliedly
as to how the object of injunction would be
defeated if the ex parte order was not granted.
The impugned order, therefore, could not be said
to be in conformity with the mandatory provision
contained in Rule 3 of Order XXXIX of CPC.
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 125 of 2016
M/S WIM PLAST LTD & 1
V
M/S SYMPHONY LTD & 1.
CORAM: MS.JUSTICE BELA M. TRIVEDI
Date : 26/04/2016
Citation: AIR 2017(NOC)76 GUJ
1. All the three Appeals arise out of the orders
passed by the Principal District Judge,
Gandhinagar (hereinafter referred to as “the
trial Court”) below Exh.5 in the Suits being
Trade Mark Suit Nos.2/2016, 3/2016 and 5/2016,
involving similar issues on facts and law between
the same parties and, therefore, this common
order is being passed.
2. The Suit being Trade Mark Suit No.2/2016 has been
filed by the respondent No.1 – (original
plaintiff), against the appellants and the
respondent No.2 (original defendants) in respect
of the registered designs bearing Registration
Nos.221068, 221084 and 220948. The suit being
Trade Mark Suit No.3/2016 has been filed in
respect of the registered design bearing
Registration No.198241 and the suit being Trade
Mark Suit No.5/2016 has been filed by the same
plaintiff and against the same defendants in
respect of the registered design bearing
Registration No.227069 for its products Air
Coolers. For the sake of convenience, the facts
of Appeal from Order No.125 of 2016 arising out
of the impugned order passed by the trial Court
in Trade Mark Suit No.3/2016 shall be considered.
3. The respondent No.1 herein – (original
plaintiff), is a Company incorporated under the
Companies Act, 1956 and is also a registered
Proprietor of various designs including the
design bearing Registration No.198241 for the
product Air Coolers. The appellant No.1
(original defendant No.1) is also a Company
registered under the Companies Act. The appellant
No.2 (original Defendant No.2) is a Firm and the
Sister concern of the Appellant No.1. According
to the respondent No.1 – original plaintiff, the
appellants were selling and pirating the
respondent No.1’s registered designs by using the
trade mark of the appellant No.2 i.e. ‘CELLO’,
and the respondent No.2 herein – original
defendant No.3 was selling the products of the
appellants in the city of Gandhinagar. It is
further case of the respondent No.1 – plaintiff
that the respondent No.1 is engaged in the
worldwide business of selling and marketing a
wide range of its products and has strong network
and well established “R & D” Division, comprising
of highly qualified and experienced engineers.
The respondent No.1 – plaintiff has launched
various models of Air Coolers with unique designs
having different models, names and trade marks.
The respondent No.1 had applied for and has
become the registered Proprietor of the design
for its product Air Coolers under the name
“Winter”, vide the Registration No.198241, since
20.1.2005. It is further the case of the
respondent No.1 that earlier in the month of
March 2015, the respondent No.1 had come to know
that the appellants had intended to start sale of
their products Air Coolers having similar shape,
configuration and replication of the four designs
i.e. Hi-Cool, Winter, Sumo and Diet, which were
registered in favour of the respondent No.1. The
respondent No.1, therefore, had moved the City
Civil Court, Ahmedabad by filing the Civil Suit
No.566 of 2015, in which the said Court had
issued the notices to the appellants – original
defendants. Being aggrieved by the said order,
the respondents No.1 had moved the High Court by
filing a petition being Special Civil Application
No.4624 of 2015, wherein the High Court vide the
order dated 17.3.2015 had restrained the
appellants – defendants from marketing, selling,
advertising and directly or indirectly dealing in
Air Coolers, which have same design, shape,
configuration, and design identical to and/or
imitation of the designs of the respondent No.1 –
plaintiff, bearing Registration Nos.194305,
198241, 227069, and 221068. Since, the
appellants – defendants had raised the issue of
validity of the said registrations in the said
earlier suit, the same came to be transferred to
the High Court with the consent of the parties.
The said suit has been registered as the Civil
Suit No.2/2015 before this Court. In the said
suit, the Single Bench after hearing the parties,
vide its interim order dated 5.5.2015 had
continued the earlier order dated 17.3.2015
passed in Special Civil Application No.4624 of
2015, pending the said suit. Being aggrieved by
the said order, the appellants had preferred the
O. J. Appeal No.32 of 2015 before the Division
Bench, however, the same was dismissed.
4. It is further case of the respondent No.1 that in
the third week of March, 2016 the respondent No.1
came to know that the appellants had again under
the name ‘Cello Marvel’ started to sell its
products i.e. Air Coolers making minor
alterations and cosmetic changes in their designs
for which they were restrained by the High Court
in the Civil Suit No.2 of 2015. According to the
respondent No.1, the recently adopted design of
the appellants in the name of ‘Cello Marvel’ was
the obvious imitation of the respondent No.1’s
registered design and hence, the appellants have
committed an act of infringement as per the
provisions contained in Section 22 of the Designs
Act, 2000 (hereinafter referred to as “the said
Act”). The respondent No.1, therefore, has filed
the present suit along with the two other suits
seeking permanent injunction in respect of their
designs registered for their products Air
Coolers.
5. The respondent No.1 had also filed an Application
at Exh.5, seeking temporary injunction against
the appellants and respondent No.2 for
restraining them from manufacturing, marketing,
selling, advertising, and directly or indirectly,
dealing in the Air Coolers, which have the same
design, shape, configuration, and design
identical to and/or imitation of plaintiff’s
registered designs and from committing an action
of infringement of the registered design bearing
No.198241 pending the suit. The trial Court,
vide the impugned order dated 6.4.2016, without
issuing notices to the appellants, granted adinterim
injunction as prayed for by the
respondent No.1 – plaintiff till 13.4.2016.
Being aggrieved by the said order, the appellants
– defendants have preferred the present Appeals.
6. The learned Sr. Counsel, Mr.Shalin Mehta for the
appellants, assailing the impugned order passed
by the trial Court, vehemently submitted that the
said order has been passed in utter disregard of
the proviso to Rule 3 of Order XXXIX of Civil
Procedure Code (hereinafter referred to as “the
Code”), inasmuch as the trial Court has failed to
record reasons as to how the object of granting
the injunction would be defeated by the delay.
Placing heavy reliance on the decision of the
Supreme Court in the case of Shiv Kumar Chadha Vs
Municipal Corporation of Delhi, reported in
(1993) 3 SCC 161, he submitted that the trial
Court is obliged to give reasons while granting
ex parte injunction, as the compliance of Rule 3
of Order XXXIX is not a mere formality. He has
also relied upon the decision of this Court in
the case of the 3 I Infotech Consumer Services
Limited Vs. Gujarat Narmada Valley Fertilizers
Co. Ltd. & anr., reported in 2009(3) GLH 49 and
in the case of Percept Picture Company Pvt. Ltd.
Vs. Shree Karma Production Pvt. Ltd. and Anr.,
reported in 2008(1) GLH 598 to buttress his
submission that the satisfaction of the trial
Court that object of grant of injunction would be
defeated by delay, is the sine qua non, for
operating the proviso to Rule 3 of Order XXXIX.
He also submitted that the trial Court had
committed jurisdictional blunder by omitting to
record reasons and even otherwise, had committed
an error in granting ex parte injunction in the
suit, which suffers from delay and laches,
inasmuch as the respondent No.1 was aware about
the change of designs made by the appellants in
September 2015, whereas the suits were filed by
the respondent No.1 – plaintiff in April 2016,
which was the peak season for selling the Air
Coolers. He also submitted that the on-going
business of the appellants has been affected by
the ex parte order, which deserves to be set
aside. Reliance was also placed on the decision
of the Supreme Court in the case of A.
Venkatasubbiah Naidu Vs. S. Chellappan and Ors.,
reported in (2000) 7 SCC 695 to submit that the
Appeal from Order under Order XLIII Rule 1 of the
Code is maintainable against the ex parte
injunction order passed by the trial Court.
7. However, the learned Sr. Counsel, Mr.Kamal
Trivedi for respondent No.1 submitted that the
appellants, instead of appearing before the trial
Court on the returnable date, has rushed to this
Court without any justification. According to
him, though the appellants were injuncted by the
High Court in the suit filed by the respondent
No.1 earlier, from imitating the registered
designs of the respondent No.1, the appellants
making only cosmetic changes in their designs of
the air coolers, have committed the infringement
as contemplated under Section 22 of the said Act.
He further submitted that the trial Court had
passed the order, considering the proceedings
pending in the High Court and the orders passed
therein and, therefore, it could not be said that
the trial Court had passed the impugned order
without applying its mind or giving any reason.
Relying upon the decision of the Apex Court in
the case of A. Venkatasubbiah Naidu (supra), he
submitted that even if the reasons are not
recorded by the Court while granting ex parte
injunction, the same is required to be treated as
deemed compliance of the Order XXXIX Rule 3 of
the Code. Mr.Trivedi has also relied upon the
decision of the Division Bench of this Court in
the case of Patel Jasmat Sangaji Vs. The Gujarat
Electricity Board and Others, reported in 1982
GLH 463 to submit that in the rarest of rare
cases, the appeal against the ex parte orders
should be entertained and still more in the
rarest of rare cases, the operation of ex parte
order should be suspended. While fairly
submitting that the Appeal from Order would be
maintainable against the ex parte order passed by
the trial Court, he submitted that this Court,
being the appellate Court, should not interfere
with the discretionary order passed by the trial
Court, which otherwise does not suffer from any
perversity or illegality. Mr.Trivedi also placed
reliance on various decisions of the Supreme
Court to submit that the plaintiff being the
registered proprietor of the designs in question,
and the appellants having infringed the said
designs by imitating the designs of the
respondent No.1, though injuncted by the High
Court, the present appeals deserve to be
dismissed.
8. Mr.Mihir Thakre, learned Sr. Counsel appearing
for the respondent No.1 – plaintiff in other
appeals while supporting the submissions made by
the learned Sr. Counsel, Mr.Trivedi, relied upon
the decision of the Supreme Court in the case of
Wander Limited Vs. Antox India Pvt. Limited,
reported in 1990 (1) SCC (Spl.) 727 to submit
that the appellate Court should not interfere
with the discretion exercised by the trial Court,
except where the discretion has been shown to
have been exercised arbitrarily or capriciously
or perversely, or where the Court had ignored the
settled principles of law regulating the grant or
refusal of interlocutory injunctions.
9. On careful consideration of the submissions made
by the learned Counsels for the parties, it
appears that the respondent No.1 – plaintiff is
the registered Proprietor of the designs bearing
Registration No.198241 and others for their
products Air Coolers. It is not disputed that
earlier the respondent No.1 – plaintiff had filed
the Civil Suit No.566/2015 on the apprehension
that the appellants would infringe the registered
designs of the respondent No.1 – plaintiff. In
the said suit, the trial Court having issued
notice, the respondent No.1 – plaintiff had
approached the High Court by filing the Special
Civil Application No.4624/2015. This Court in
the said Special Civil Application had passed the
order on 17.3.2015, restraining the appellants
from marketing, selling, advertising, directly or
indirectly dealing in ‘Air Coolers’, which have
the same design, shape, configuration and design
identical to and/or imitate the petitioner’s
design bearing registration No.194305, 198241,
227069, and 221068. The said suit was
subsequently transferred to the High Court in
view of the provisions contained in Sub-section
(4) of Section 22 of the said Act, as the
appellants had contended that the said
registrations of the respondent No.1 were liable
to be cancelled under Section 19 of the said Act.
The said suit was registered as Civil Suit
No.2/2015 before this Court. The Single Bench,
after hearing the learned Counsel for the
parties, had continued the interim injunction
granted by the Court in Special Civil Application
No.4624 of 2015 vide order dated 5.5.2015. The
said order, having been challenged by the
appellants in the O.J. Appeal before the Division
Bench, the same was confirmed by the Division
Bench also. Under the circumstances, the order
dated 17.3.2015 passed by this Court in SCA
No.4624 of 2015 has been continued in the suit
bearing Civil Suit No.2/2015 pending before this
Court.
10.Now, the present suits have been filed by the
respondent No.1 – plaintiff alleging, inter alia,
in the plaint that the appellants – defendants
have again adopted the designs making minor
alteration or cosmetic changes for their
products, for which they were restrained by the
High Court. In the opinion of the Court, when
the High Court was seized with the matter as
regards the infringement of the registered
designs of the respondent No.1 at the instance of
the appellants and as regards the validity of the
very registered designs of the respondent No.1,
in the suit being Civil Suit No.2/2015, and when
the respondent No.1 has alleged in the present
suits that the appellants have committed
infringement of the said designs, for which they
were injuncted by the High Court, the trial Court
has committed a jurisdictional error in
entertaining the application for temporary
injunction and granting the ex parte injunction
in respect of the very registered designs of the
respondent No.1. The trial Court, while passing
the impugned order, had the entire record and
proceedings before it, which were also perused by
the trial Court, as transpiring from the order
itself. It is pertinent to note that in the
earlier suit filed by the respondent No.1, the
appellants having challenged the validity of the
registration of the designs of the respondent
No.1 by taking up the contention as available
under Section 19 of the said Act, the said suit
was transferred to the High Court. When the
issue with regard to the infringement of the
registered designs of respondent No.1 at the
instance of the appellants and the issue with
regard to the validity of the said registrations
of the designs of the respondent No.1 are pending
before the High Court, in the opinion of the
Court, the proper course available to the
respondent No.1 was to approach the High Court by
filing appropriate application in the pending
suit, and not to file suits in the trial Court,
more particularly when the respondent No.1 has
specifically alleged that the appellants had
started selling their products imitating the
registered designs of the respondent No.1, though
the appellants were injuncted by the High Court
from doing so.
11.At this juncture, it is required to be noted that
as per Section 22(4) of the said Act, where any
ground on which the registration of a design may
be cancelled under Section 19 of the said Act has
been availed of as a ground of defence in any
suit or other proceeding for relief under SubSection
(2) i.e. when the person acts in
contravention to the Sub-section (1) of Section
22, the suit or such other proceedings are
required to be transferred by the said Court to
the High Court for decision. Hence, when the
earlier suit proceedings were transferred to the
High Court, on the appellants availing of the
ground of defence under Section 19 in respect of
the same registered designs of the respondent
No.1, the trial Court has committed an error in
granting the ex parte injunction in favour of the
respondent No.1.
12.As held by the Supreme Court in the case of Shiv
Kumar Chadha (supra), the power to grant
injunction is an extraordinary power vested in
the Court to be exercised taking into
consideration the facts and circumstances of a
particular case, and the Courts have to be more
cautious when the said power is being exercised
without notice or hearing the party, which is to
be affected by the order so passed. The Supreme
Court has also, inter alia, held that recording
the reasons for grant of ex parte injunction,
cannot be held to be a mere formality and that
whenever the Court considers it necessary in
the facts and circumstances of a particular
case to pass an order of injunction without
notice to other side, it must record the
reasons for doing so and should take into
consideration, while passing an order of
injunction, all relevant factors, including as to
how the object of granting injunction itself
shall be defeated if an ex parte order is not
passed. It has also been held that the proviso
to Rule 3 of Order XXXIX of the Code also
attracts the principle that if a statute requires
a thing to be done in a particular manner, it
should be done in that manner and not otherwise.
It is true that in the case of A. Venkatasubbiah
Naidu (supra) the Supreme Court has observed that
if the Court, passing ex parte injunction, did
not record reasons, such order can be deemed to
contain such requirements by implication, even
if they are not stated in so many words.
However, in the instant case, the trial Court has
failed to record reasons expressly or impliedly
as to how the object of injunction would be
defeated if the ex parte order was not granted.
The impugned order, therefore, could not be said
to be in conformity with the mandatory provision
contained in Rule 3 of Order XXXIX of CPC.
13.Although it is true that the appellants should
have appeared before the trial Court on the
returnable date, however, as observed by the
Supreme Court in the case of A. Venkatasubbiah
Naidu (supra), the party affected by the order
passed by the trial Court granting ex parte
injunction could either move the appellate Court
or to approach the same Court, which passed the
ex parte order for any relief. Hence, it cannot
be said that the appellants should have
approached the trial Court only and should not
have filed the present appeals. Of course, this
Court being appellate Court should normally not
interfere with the discretionary order passed by
the trail Court as held by the Supreme Court and
this Court in catena of decisions relied upon by
the learned Counsels for the respondent No1.
However, in the peculiar facts and circumstances
of the case, the Court is of the opinion that the
trial Court having committed jurisdictional error
and having failed to comply with the requirements
of the proviso to Rule 3 of Order XXXIX CPC, the
impugned orders deserve to be set aside and are
hereby set aside.
14. All the three Appeals stand allowed
accordingly. It is clarified that the Court has not
expressed any opinion on the merits of the case.
The trial Court is directed to decide the
Application Exh.5 in all the three Suits, in
accordance with law, without being influenced by the
order passed by this Court. Copy of this order be
placed in other appeals.
15. At this juncture, the learned Counsel
Mr.Tolia for the respondents has requested to
stay the operation of the present order to enable
the respondent No.1 to approach the higher forum.
The said request cannot be accepted in view of
the afore-stated reasons.
(BELA M. TRIVEDI, J.)
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