"Relief Must Align with the Plea"—Bombay High Court Quashes Overreaching Trademark Injunction

In a recent judgment, the Bombay High Court overturned an interim injunction granted by the District Court, Satara, in a trademark infringement case. The High Court ruled that the trial court had overstepped by granting relief not explicitly sought by the plaintiff. The case involved a dispute over the use of a similar trademark in the packaging of a popular local snack, "Shev Chiwda."

The plaintiff, a business entity selling "Shev Chiwda" under the brand name "Mahalaxmi Chiwda Ritkawali," had registered a trademark in 2015 for the name "Ritkawali" along with the slogan "Ruchkar Swadistha Khamang." The plaintiff alleged that the defendant, who began selling a similar product under the brand "Shubhlaxmi Chiwda Ritkawali," was infringing on their trademark. The plaintiff sought a permanent injunction to restrain the defendant from using the contested trademark.

The trial court partially granted the plaintiff's interim application (Ex. 5), temporarily restraining the defendant from using the name "Ritkawali" in any form associated with their product. Dissatisfied with this decision, the defendant filed an appeal with the Bombay High Court.

The High Court, while examining the trial court's order, noted that the relief granted by the District Court went beyond what the plaintiff had requested. Specifically, the trial court's injunction prevented the defendant from using the terms "Ritkawali Special Shev Chiwda" and "Ritkawali Special," which the plaintiff had not explicitly mentioned in their plea. The High Court deemed this an error, emphasizing that courts should not grant relief that has not been sought by the parties​.

Another critical observation was that the plaintiff was not consistently using the registered device mark on their product packaging, which differed significantly from the registered trademark. The court reasoned that since the plaintiff was not utilizing their registered trademark, they could not claim infringement on the basis of the defendant's packaging​.

The High Court also analyzed the packaging of both products and found them to be sufficiently different. The defendant's offer to change the color of their product packaging from red to blue further diminished any likelihood of confusion among consumers​.

The judgment relied on established principles of trademark law, particularly the need for consistency in the use of registered trademarks and the boundaries of judicial relief. The High Court cited the Full Bench decision in Lupin Ltd. v. Johnson & Johnson, which permits courts to consider the validity of a trademark at the interlocutory stage, thereby reinforcing the requirement that any relief granted must be within the scope of the pleadings​.

The Bombay High Court's decision highlights the importance of precision in judicial orders and adherence to the relief sought by parties in trademark disputes. By quashing the trial court's injunction, the High Court has set a precedent for ensuring that judicial interventions do not overreach. The case also underscores the need for businesses to consistently use their registered trademarks if they intend to rely on them in legal disputes.

Date of Decision: 3rd September 2024

Santosh Vishnu Mardhekar vs. Arun Shamrao Mardhekar