# Salik Mukhtar & Ors v. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors

- **Citation:** (2023) 11 ILRA 137
- **Court:** High Court of Judicature at Allahabad
- **Decided:** 2023-10-13
- **Case number:** First Appeal From Order No. 2170 of 2022
- **Bench:** Kshitij Shailendra
- **Source:** https://unisonlegal.in/judgment/allahabad-high-court/salik-mukhtar-ors-v-m-s-m-m-i-tabacco-pvt-ltd-ors-49410
- **Pages:** 16

## Headnote

A. Civil Law - Trade Marks Act,1999-Sections 29,
124, 134 & 135 - Copyrights Act,1956-Section
62-Infringement of trademark-Interim injunctionValidity- In the present case, the district court has
recorded cogent findings on all the three ingredients by
observing that the registered trademark of the plaintiffrespondents is valid upto 15.01.2024 and that the
defendant-appellants have failed to establish any
registered trademark or copyright with them. The court
below has also observed that any rights flowing from
Sri Subedar would be of no consequence as,
admittedly, Subedar had retired from firm 'Musa and
Sons' with effect from 01.04.1999. The court has
further observed that any activity of manufacturing and
sale of product which is deceptively similar with 'Musa
Ka Gul Super' would be contrary to law. Regarding
pecuniary and territorial jurisdiction of the district court,
it has been observed by the court below that at the
time of registration of the suit, the pecuniary
jurisdiction was found to have vested in the court and
the said issue along with an issue of territorial
jurisdiction would be decided after framing the issues
in the suit. manner in which injunction application has
been dealt with, findings on all three ingredients of
granting injunction is based upon cogent analysis of
material available on record-Even if, it is assumed that
a very detailed discussion of various documents has
not been made, after perusing entire record of present
appeal, documents which were sufficient to form an
opinion regarding grant or denial of injunction, have
been dealt by Court below-Even otherwise, it was not
required for district Court to hold a mini trial at time of
consideration of injunction application-Once Court
below was satisfied that registered trademark has been
prima facie infringed by defendant-appellants, in
absence of anything substantial which can persuade
Court to take a different view, there is no good ground
to interfere in order passed by Court below.(Para 1 to
32)

The appeal is dismissed. (E-6)

List of Cases cited:

## Text

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11 All. Salik Mukhtar & Ors. Vs. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
137
receipt of a copy of this judgment.
There shall be no order as to costs.
----------
(2023) 11 ILRA 137
APPELLATE JURISDICTION
CIVIL SIDE
DATED: ALLAHABAD 13.10.2023

BEFORE

THE HON'BLE KSHITIJ SHAILENDRA, J.

First Appeal From Order No. 2170 of 2022

Salik Mukhtar & Ors. ...Appellants
Versus
M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
 ...Respondents

Counsel for the Appellants:
Sri S.M. Iqbal Hasan, Sri Raghav Garg, Sri
Tarique Quasimuddin, Sri Anurag Khanna
(Sr. Advocate)

Counsel for the Respondents:
Sri Mohd. Waseem, Sri Arvind Srivastava,
Sri Ravi Kant (Sr. Advocate)

A. Civil Law - Trade Marks Act,1999-Sections 29,
124, 134 & 135 - Copyrights Act,1956-Section
62-Infringement of trademark-Interim injunctionValidity- In the present case, the district court has
recorded cogent findings on all the three ingredients by
observing that the registered trademark of the plaintiffrespondents is valid upto 15.01.2024 and that the
defendant-appellants have failed to establish any
registered trademark or copyright with them. The court
below has also observed that any rights flowing from
Sri Subedar would be of no consequence as,
admittedly, Subedar had retired from firm 'Musa and
Sons' with effect from 01.04.1999. The court has
further observed that any activity of manufacturing and
sale of product which is deceptively similar with 'Musa
Ka Gul Super' would be contrary to law. Regarding
pecuniary and territorial jurisdiction of the district court,
it has been observed by the court below that at the
time of registration of the suit, the pecuniary
jurisdiction was found to have vested in the court and
the said issue along with an issue of territorial
jurisdiction would be decided after framing the issues
in the suit. manner in which injunction application has
been dealt with, findings on all three ingredients of
granting injunction is based upon cogent analysis of
material available on record-Even if, it is assumed that
a very detailed discussion of various documents has
not been made, after perusing entire record of present
appeal, documents which were sufficient to form an
opinion regarding grant or denial of injunction, have
been dealt by Court below-Even otherwise, it was not
required for district Court to hold a mini trial at time of
consideration of injunction application-Once Court
below was satisfied that registered trademark has been
prima facie infringed by defendant-appellants, in
absence of anything substantial which can persuade
Court to take a different view, there is no good ground
to interfere in order passed by Court below.(Para 1 to
32)

The appeal is dismissed. (E-6)

List of Cases cited:

1. Arun Kumar Tiwari Vs Deepa Sharma & ors.
F.A.F.O. No.3481 of 2004

2. Indian Performing Rights Society Ltd Vs
Sanjay Dalia (2015) AIR SC 3479

3. Neon Laboratories Limited Vs Medical
Technologies Ltd & ors. (2016) 2 SCC 672

4. Renaissance Hotel Holdings Inc. Vs B. Vijaya
Sai & ors. (2022) 5 SCC 1

(Delivered by Hon'ble Kshitij Shailendra,
J.)

1. Heard Sri S.M. Iqbal Hasan along
with Sri Raghav Garg and Sri Tarique
Quasimuddin, learned counsel for the
defendant-appellants and Sri Ravi Kant,
learned Senior Counsel, assisted by Sri
Arvind
Srivastava
and
Sri
Arvind
Srivastava separately too, as learned
counsel for the plaintiff-respondents.

THE APPEAL

2. This appeal under Order 43 Rule
1(r) CPC has been filed by the defendants
138 INDIAN LAW REPORTS ALLAHABAD SERIES
of Suit No.10 of 2021 (M/S. M.M.I.
Tobacco Pvt Ltd and another Vs. Salik
Mukhtar and five others) challenging the order
dated
21.09.2022,
whereby
the
learned
Additional District Judge, Court No13, Varanasi
has allowed the application seeking temporary
injunction, being Paper No.6-C, filed by the
plaintiff-respondents
and
restrained
the
defendant-appellants till disposal of the suit
from manufacturing or selling product namely,
'Musa Ka Gul Super' or any product with the
deceptively similar name and logo by which
any common man could be deceived.

BINDING EFFECT OF THE ORDER
UNDER CHALLENGE
 AND THIS ORDER

3. Since the present appeal has arisen out
of disposal of an application seeking temporary
injunction pending suit, the observations and
findings recorded in the present order would not
be treated as any final opinion on the merits of
rival claims of the parties as the same are yet to
be decided on the basis of oral and
documentary evidence to be produced in the
pending suit. It is well settled that the findings
recorded in an order granting or refusing
injunction are to be looked into only in
connection with three basic ingredients, i.e.
prima facie case, balance of convenience and
irreparable loss and any such order does not
affect final adjudication of substantive rights of
the parties. Therefore, the observations recorded
in the present judgment shall not affect the final
adjudication to be made by the court below,
independently, on the basis of oral and
documentary evidence led by the parties.

THE FAMILY TREE

4. The record of this case contains
discussion of various family members of
late
Mohd.
Musa,
therefore,
before
discussing the factual aspects of the case, it
would be necessary to draw a family tree
for understanding inter-se relationship
between the parties to the lis. It is described
as follows:-

FACTS OF THE CASE

5. The suit giving rise to the present
appeal was filed by M/s M.M.I. Tobacco
Pvt Ltd represented through its Director,
Mohd. Nazish son of Mohd. Khalique, as
plaintiff no.1 and Mohd. Nazish, in his
individual capacity, as plaintiff no.2 against
six defendants, under Sections 29, 134, 135
of the Trademarks Act, 1999 and Section
62 of Copyrights Act, 1956. As per the
plaint averments, the plaintiff-respondent
no.1 is a private limited company with the
plaintiff no.2 being its Director, involved in
manufacturing and wholesale business of
'Musa Ka Gul Super', a toothpaste, in
States of Uttar Pradesh, Bihar, Bengal and
other States of India for the last several
years, particularly, since 1994. The case of
the plaintiffs is that the plaintiff no.1 has
11 All. Salik Mukhtar & Ors. Vs. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
139
earned a very high goodwill being a
registered company manufacturing 'Musa
Ka Gul Super' which is famous all over
India and the company has its agency,
office and store in House No. C-20/6
Mohalla
Nawapura
(New
Pokhari)
Habibpura, Ward Chetganj, City Varanasi
wherefrom the aforesaid product, 'Musa Ka
Gul Super', is being sold in district
Varanasi as well as nearby districts. It is
further pleaded that the copyright office of
New Delhi has issued a registered No.
A132955
of
2020
dated
31.10.2020
conferring right to use the label over the
box for the product 'Musa Ka Gul Super'
and the similar rights have been conferred
in relation to use of wrapper also. It is
further pleaded that the plaintiff no.1 is
registered
at
registration
No.
U16004WB2011
PTC170780
and
trademark was registered on 15.01.1994 at
Trademarks
No.616611,
certificate
No.733679 and that in the year 2021, the
plaintiff-respondents came to know about
identical production and sale of 'Musa Ka
Gul Super Marka', 'Shahi Taj Marka Musa
Ka Gul' and 'Moti Marka Musa Ka Gul' at
the instance of the defendants and when the
latter were contacted and requested not to
use the said products, they showed
arrogance and did not stop manufacturing
and selling the products, due to which the
entire goodwill of the plaintiff-respondents
in the market was being adversely affected.
Under the said circumstances, a decree for
declaration
was
sought
against
the
defendants restraining them as well as their
shell companies or their agents and
employees
set
up
by
them
from
manufacturing and selling 'Musa Ka Gul
Super Marka', 'Shahi Taj Marka Musa Ka
Gul' and 'Moti Marka Musa Ka Gul'. The
plaintiff-respondents
also
claimed
temporary injunction pending suit on the
same lines by filing an application under
Order 39 read with Section 151 CPC
supported by affidavit.

6. The trial court, by an ex-parte adinterim injunction order dated 08.07.2021,
restrained
the
defendants
from
manufacturing and selling product 'Musa
Ka Gul' or any other product of deceptively
similar name till the next date fixed in the
suit. It appears that after the defendants
filed objections against the injunction
application and their objections were not
being decided, few appeals were filed
before this Court, as there were other
identical matters also, and the said appeals
were decided by order dated 02.11.2021
directing the trial court to decide the
objections
expeditiously.
The
order
impugned in the present appeal has been
passed thereafter.

7. The defendant-appellants filed
objections
against
the
injunction
application. The defendant no.5 Mohd.
Kashif came up with the stand that the
entire business was, in fact, a family
business being run by the members of the
same family, being descendants of Mohd.
Musa and it was agreed in between the
parties that every member of the family
would use the same name and goodwill
associated with Musa Ka Gul product and
that the defendant no.5 had not infringed
any trademark or copyright of the plaintiffs
and that the product being manufactured
and sold by the defendant no.5 was totally
different. Reference to certain proceedings,
without their specific disclosure, pending in
Calcutta District Court and Calcutta High
Court was also given and, in sum and
substance, the objection was that there
being no connection in between the
plaintiffs' product and defendants' product,
the injunction application had no force and
be rejected.
140 INDIAN LAW REPORTS ALLAHABAD SERIES

8. The defendants no.1 and 2 filed
separate objections against the injunction
application and, apart from factual aspects,
they objected to the valuation of the
property and also took a ground that the
application
was
barred
by
territorial
jurisdiction. On merits, it was stated as
follows:-

"a. That the defendant no. 3 and 4
namely Iftekhar Alam and Imtiaz Alam are
the sons of Late Md. Subedar. Md. Nazish
(plaintiff no. 2) and defendant no. 5 Md.
Kashif are the grandsons of Late Md.
Subedar. Defendant no. 1 and 2 are the
grandsons and daughter in law of late Md.
Subedar, defendant no. 2;

b. A business of 'Gul' and/or
tobacco based tooth powder was initiated
by one Md. Musa, the deceased grandfather
of the defendant no. 1 father/ husband
namely
Mukhtar
Alam,
under
the
distinctive trademark of 'Ghora Marka Gul'
in Hindi, Urdu & English script & 'Musa
Ka Gul', in Hindi script with the device of
the head of a horse. The said mark has been
used by Md. Musa openly & extensively
since March, 1974.

c. The said Md. Musa died
intestate on 1st January, 1977. On and from
1st January, 1972 the said business was
continued by his sons Md. Subedar, (the
father of Mukhtar Alam) and his brother,
Md. Islam under the name and style of the
partnership firm M/S. Md. Musa & Sons.
The said M/S. Md. Musa & Sons applied
for registration of the trade mark "Ghora
Marka Musa Ka Gul" on 22 October, 1979
claiming a date of user since 4th March,
1974. Such registration was granted on
15.07.1982 being Trade Mark No. 354633
in Class 3. The said business through Md.
Musa & Sons was carried on by the sons of
Md. Musa, being Md. Subedar and Md.
Islam since 21st November, 1977 from 41,
P. K. Biswas Road, Khardah, North 24
Parganas.

d. By a Partnership Deed dated
4th April, 1983, the said firm M/s.
Mohammad
Musa
&
Sons
was
reconstituted by inducting Mohammad
Khalique, (father of plaintiff no. 2), who
was also the eldest son of Md. Subedar and
his wife, Zohra Bibi as partners of the firm
on and from 01.04.1983, they have equal
share i.e. 1/3rd share each in the said
partnership firm. Moreover Md. Khalique
is also the director of the plaintiff company
M/s. M.M.I. Tobacco Pvt. Ltd.

e. The "Ghora Marka Musa Ka
Gul" Registered Trade Mark No. 354633 in
Class 3 was renewed from time to time by
M/S. Md. Musa & Sons. On 25th January,
1989, the address of the said Partnership
firm was changed to 145-B, Rabindra
Sarani, Kolkata - 700073 and the requisite
Form - 34 was also submitted to that effect.

f. On 15th January, 1994 M/s.
Mohammad Musa & Sons applied for
registration
of
a
separate
trademark
comprising of the bust photo of Md. Musa
with respect to Gul, a toothpowder made of
tobacco. The bust photo which has been in
use as a Trade Mark since 4th March, 1994.

g. In 1989-1990 Mukhtar Alam
(father of the defendant no. 1 and husband
of defendant no. 2 / son of Late Md.
Subedar) started a separate business under
the name and style of M/s. Md. Musa &
Co., as his sole proprietorship. The said Fir
used to carry on business of Gul and/or
tobacco based tooth power under the trade
mark "Musa Ka Gul".

h. That by a Deed of Assignment
dated 1st November, 1991, Md. Subedar,
Md. Islam and Md. Khalique the .... M/S.
Md. Musa & sons .... of defendant no. 1 /
son of Late Md. Subedar) who is also a
grandson of Md. Musa, the "Ghora Marka
Musa Ka Gul" Trademark, registered under
11 All. Salik Mukhtar & Ors. Vs. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
141
the Trade & Merchandise Mark Act, 1958
being No. 354633 in Class 3, and the
'Ghora Marka Gul', 'Musa Ka Gul'
trademarks,
applications
for
registration of which were at the
time pending, together with the
goodwill of the gul tobacco business
in respect of which said marks were
used.

i. On 6th December, 1991
the
Mukhtar
Alam
made
an
application before the Trademark
Registry for recording his name as
the
proprietor
of
the
said
two
abovementioned marks, which had
since
been
registered,
and
also
submitted the requisite Forms for the
purpose.

j. From the aforementioned
facts it is clear that the business of
dentifrices made under the name and style
of 'Ghora Marka Gul', 'Musa Ka Gul' was
being run by the M/s. Md. Musa & Sons by
Md. Khalique (father of Md. Nazish,
plaintiff no. 2 therein and also one of the
director of the plaintiff's company) being
the eldest son of Md. Subedar and
thereafter by Mukhtar Alam (husband of
the
defendant
no.
2)
through
his
proprietorship firm M/S. Md. Musa & Co.
At all material times, it had been the clear
understanding of the parties that each
branch of the heirs of Md. Musa and their
respective families will be entitled to
engage in the business of gul tobacco
which was started in the name of Md. Musa
as "Musa Ka Gul" and under the various
avatars of the same mark "Ghora Marka
Musa Ka Gul", each comprising of the
name of Md. Musa and a picture of his bust
or the bust of Md. Subedar as their
distinctive
components.
It
was
the
understanding between all the parties
herein and at material times, that each
branch of the family would be entitled to
exploit the said registered and unregistered
trade marks in furtherance of the business
of gul tobacco started by Md. Musa.

k. Thereafter in 1st April, 1992
partnership firm was formed under name
and style of M/s. Md. Musa & Co. which
took over the business of the proprietorship
Firm M/S. Md. Musa & Co. The reason for
converting the proprietorship business into
a partnership was to allow the family to
prosper in its entirety and not just Mukhtar
Alam's branch. The business was however
looked after by Mukhtar Alam up until
November 2018. Initially the partners to the
M/s. Md. Musa & Co. firm were Yasmin
Khalique (mother of Md. Nazish, plaintiff
no. 2) each having 50% share. That Md.
Khalique, (the father of Md. Nazish,
plaintiff no. 2) did not want to join Mukhtar
Alam in the business of the M/s. Md. Musa
& Co. directly. That Md. Shahid (brother of
Md. Nazish, plaintiff no. 2) at the age of 19
year, was inducted into the M/s. Md. Musa
& Co. as a partner on 1st April, 2006.

l. On 9 December, 1996, the M/s.
Md. Musa & Co., applied for registration of
the trade mark "Musa Ka Gul Super" again
comprising of the bust photo of Md.
Subedar. Registration of the said Trade
Mark No. 739085 was granted in class 34
in the name of Mukhtar Alam (father of the
defendant no. 1) as a partner of the M/s.
Md. Musa & Co. The same has been
renewed from time to time.

m. It may be noted that trade
mark "Musa Ka Gul Super" with the bust of
Md. Subedar is the registered trade mark of
the M/s. Md. Musa & Co. / partnership
firm. However, the original business was a
family business started by Md. Musa and
all his grandsons- Md. Khalique, Iftekhar
Alam and Imtiaz Alam, Mukhtar Alam, and
their respective branches of the family were
at all material times had the understanding
or had agreed that everybody in the family
142 INDIAN LAW REPORTS ALLAHABAD SERIES
would be entitled to benefit from the
goodwill earned by said family business
and would be entitled to carry on business
in gul tobacco under the trade mark Musa
Ka Gul" either by itself or in conjunction
with other words or devices. To facilitate
the use of the said trade mark held by the
M/s. Md. Musa & Co. firm by the other
branches of the heirs of Md. Musa and Md.
Subedar, and their respective families, it
was agreed that formal licenses would be
granted by the M/s. Md. Musa & Co.,
permitting the various branches of the
family to exploit the valuable "Musa Ka
Gul Super" held by the M/s. Md. Musa &
Co. It was clearly understood the Licenses
granted were mere formality and a means
to avoid outsiders to cash in on the
Goodwill earned by the Mark "Musa Ka
Gul' by citing user by various persons of
the said Mark. In reality, the licenses were
in recognition of the aforesaid family
agreement or understanding.

n. Three License Agreements
were initially granted by the M/s. Md.
Musa & Co. partnership firm. The first
License Agreement was executed in favour
of M/s. J.S. Engineering Work in 1992 run
by Iftekhar Alam and Zohra Bibi, the son
and wife of Late Md. Subedar. Thereafter
M/s. J.S. Engineering Work was converted
into proprietorship concern wherein Imtiaz
Alam / defendant no. 4 was the proprietor.
The name of the firm become M/s. J.S.
Industries. Thereafter the M/s. Md. Musa &
Co. executed a License Agreement from
1993 to 1995 in favour of M/s. J.S.
Industries interestingly no royalty charge
was claimed. Thereafter another Royalty
Agreement was executed in 1995 for a
period of 3 (three) years and Royalty was
charged @ 2.5%. In the year 1998 the said
proprietorship concern was converted into
partnership namely M/s. J.S. Industries,
wherein Iftekhar Alam / defendant no. 3
entered into as a partner along with his
brother Imtiaz Alam, the defendant no. 4
hereinabove. In the year 1998 a License
Agreement was issued and thereafter time
to time it was renewed / extended / newly
extend. The last of such renewal was on 1st
April, 2012. The said document of renewal
was signed by Mukhtar Alam, who was
then looking after the management of the
M/s. Md. Musa & Co.

o. The second License Agreement
was in favour of M/S. M.M. Industries, a
Partnership Firm of Md. Khalique (father
of plaintiff no. 2 therein and also one of the
director in plaintiff's company), Md.
Danish (brother of plaintiff no.2 therein)
and Md. Nazish, plaintiff no.2 therein. This
license was initially granted in 1998 and
lastly renewed on 1st April, 2011.

p. The third License Agreement
was executed on 1st August, 2012 in favour
of MMI Tobacco Pvt. Ltd., plaintiff No.1
hereinabove. The shareholders of the said
company are the aforesaid Md. Khalique,
Md. Danish and Md. Nazish, plaintiff no.2
therein.

q. By consent of all partners of
Md. Musa & Co., on 1st April, 2017
executed a fourth License Agreement in
favour of the defendant No.2 (wife of the
Mukhtar Alam therein), proprietor of M/s.
M.S. Industries, with conditions similar to
the other three License Agreements dated
1st April, 2011, 1st April, 2012 and 1st
August, 2012 executed in favour of M.M.
Industries, M.M.I. Tobacco Pvt. Ltd and
J.S. Industries. Subsequently in the year
2019 the proprietorship was converted into
partnership by inducting Salik Mukhtar,
son of Mukhtar Alam, who is also projected
as defendant no.1 in the suit.

r. It would be clear from the
above that the petitioner and the plaintiffs
were at all material times had and were
acting pursuant to the understanding that all
11 All. Salik Mukhtar & Ors. Vs. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
143
the descendants of Md. Subedar, together
with their spouses and children i.e. the
entire family, would be entitled to carry on
business in gul tobacco under the trade
mark "Musa Ka Gul Super".

9. The defendants also stated about
proceedings under Section 9 of the
Arbitration and Conciliation Act, 1996 held
at Calcutta and also of appeal filed under
Section 37 of the Act of 1996 before
Calcutta
High
Court
and
further
reference
of
various
partnerships
entered in between certain family
members was made. In sum and
substance, the case of the defendants
is
that
they
were
independently
manufacturing
and
selling
the
products of the identical names or
otherwise pursuant to various licences
and partnership agreements and since
the plaintiffs had not described the
same while claiming injunction and,
even otherwise, the business being
carried out by the defendants being
lawful and under full authority, the
application seeking injunction was
liable to be rejected.

10. Various documents were filed by
the parties before the court below and
even in the present appeal, very bulky
affidavits
have
been
exchanged
annexing therewith various documents
and the court is not fully sure as to
whether all documents filed before this
Court were or were not there on the
record of the court below. Nevertheless,
when the Court peruses the order
impugned with reference to the material
placed by the respective parties in
consonance with their applications and
the objections, the Court finds the
material sufficient for deciding the
present appeal.

11. I have heard learned counsel for
the parties and perused the record.

CONTENTIONS RAISED BY THE
DEFENDANTS-APPELLANTS;
DISCUSSION AND FINDINGS
THEREON

12. The first argument of the learned
counsel for the appellants is that once the
issue of under-valuation of the claim of the
plaintiff-respondents as well as territorial
jurisdiction of the court below was raised
by means of objections against the
injunction application, the court below was
not justified in deciding the injunction
application and it was under an obligation
to defer consideration of the injunction
application until the said issues were
decided
finally.
In
support
of
his
submissions, learned counsel for the
appellants has placed reliance upon the
following authorities:-

(i) Arun Kumar Tiwari Vs.
Deepa Sharma and others passed in
F.A.F.O. No.3481 of 2004,
 decided on 15.02.2006;

(ii) Indian Performing Rights
Society Ltd Vs. Sanjay Dalia: AIR 2015
SC 3479;

(iii) Neon Laboratories Limited
Vs. Medical Technologies Limited and
others: (2016) 2 SCC 672; and

(iv) Renaissance Hotel Holdings
Inc. Vs. B. Vijaya Sai and others: (2022)
5 SCC 1.

13. In so far as the valuation is
concerned, I find that the suit was valued at
Rs.2,00,000/-. The suit, irrespective of its
valuation, would lie before the District
Court as per the provisions of the
Trademarks Act, 1999 and, hence, whether
the suit is under-valued or correctly valued
144 INDIAN LAW REPORTS ALLAHABAD SERIES
or over valued, the same has nothing to do
with the claim for injunction as, during the
course of trial, issue of valuation may be
framed and decided by the District Court
on the basis of material on record. Even if
the suit is found to be under valued, neither
the court below is powerless to pass an
order directing the plaintiffs to correct the
valuation nor can the plaintiffs be treated as
incompetent to correct the valuation, if at
all the said issue is decided against them.
Therefore, the argument of the appellants in
this regard has no force and is rejected.

14. As regards the judgment in the
case of Arun Kumar Tiwari (supra),
reliance placed on paragraph no.12 of the
same
appears
to
be
misconceived,
inasmuch as, the Division Bench was of the
view that whenever serious challenge is
made to the jurisdiction of the court as well
as to the valuation of the suit and
sufficiency of the court fees or to the
maintainability of the suit, then if there
appears prima facie some substance in
those pleas, the proper procedure for the
court is to first decide these issues and then
to decide the injunction application and
other matters. The said judgment was
passed in an appeal arising out of a suit for
permanent prohibitory injunction in which
a sale deed was also claimed as void,
inoperative and ineffective and the trial
court had decided two preliminary issues
framed on the basis of written statement of
the concerned defendants. The Division
Bench, after discussing the peculiar facts of
that case, opined that such issues of
valuation of suit and sufficiency of court
fees be decided before deciding injunction
application in case there appears prima
facie substance in the pleas. The present
case has arisen out of a stage when neither
any issue has been framed by the court
below nor decided. Even otherwise, the
court does not find any substance with
regard to the half-hearted challenge to the
valuation of claim made and, in any case,
irrespective of valuation of the claim, the
suit would lie before the District Judge as
per the provisions contained under Section
134 of the Trademarks Act, 1999 and
would not change the forum, hence, the
judgment in the case of Arun Kumar
Tiwari
(supra)
does
not
help
the
appellants.

15. The judgment in the case of
Indian Performing Rights Society Ltd
(supra) is on the point of territorial
jurisdiction and the Apex Court discussed
the provisions contained under Section
134(2) of the Trademarks Act, 1999 and
also Section 20 of the Code of Civil
Procedure in relation to the plea of
territorial jurisdiction and held that if cause
of action arises either wholly or in part at
any place where the plaintiff is residing or
doing business, the suit can be filed at such
place. This Court does not find any good
reason to read the said judgment in favour
of the appellants, rather the same is against
them and irrespective of applicability or
non-applicability of Section 20 of Code of
Civil Procedure, this Court finds that in
view of Section 134(2) of Trademarks Act,
1999 read with pleadings contained in the
plaint, the District Court, Varanasi has
territorial jurisdiction to entertain the suit.
In this regard, reference to Section 134 of
the Trademarks Act, 1999 can be made.
The same is quoted herein below:-

"134. Suit for infringement,
etc., to be instituted before District
Court.- (1) No suit-

(a) for the infringement of a
registered trade mark; or

(b) relating to any right in a
registered trade mark; or
11 All. Salik Mukhtar & Ors. Vs. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
145

(c) for passing off arising out of
the use by the defendant of any trade mark
which is identical with or deceptively
similar to the plaintiff's trade mark,
whether registered or unregistered, shall be
instituted in any court inferior to a District
Court having jurisdiction to try the suit.

(2) For the purpose of clauses
(a) and (b) of sub-section (1), a "District
Court
having
jurisdiction"
shall,
notwithstanding anything contained in
the Code of Civil Procedure, 1908 (5 of
1908) or any other law for the time being
in force, include a District Court within
the local limits of whose jurisdiction, at
the time of the institution of the suit or
other proceeding, the person instituting
the suit or proceeding, or, where there
are more than one such persons any of
them, actually and voluntarily resides or
carries on business or personally works for
gain.

Explanation.-For the purposes of
sub-section (2), "person" includes the registered
proprietor and the registered user."

16. A bare perusal of contents of paragraphs
no.6 and 7 of the plaint of the suit in question
shows that the place of work has been clearly
shown at city and district Varanasi and nearby
areas also and, hence, in the considered opinion of
the Court, the District Court Varanasi has territorial
jurisdiction to entertain the suit or at least the
injunction application inasmuch as the territorial
jurisdiction would be governed prima facie by the
averments contained in the plaint which are
sufficient to confer jurisdiction upon the
District Court Varanasi. Hence, argument of
the appellants in this regard also stands
rejected.

17. The judgment in the case of Neon
Laboratories Limited (supra) is on the
point that mere registration of a trademark
does not vest permanent right in owner of
the said trademark and such a right is lost if
it is not exercised within a reasonable time.
The said judgment also does not help the
appellants as it is not the case where
despite registered trademark being existent
in favour of the plaintiff-respondents, it
was not used. Record, rather, reflects a
contrary situation.

18. The last judgment relied upon by
the appellants in the case of Renaissance
Hotel Holdings Inc. (supra) also does not
have any application as the Apex Court was
dealing with a case where Karnataka High
Court had allowed the appeal filed by the
defendants setting aside the final judgment
and decree of the Principal District Judge,
Bangalore
Rural
District,
Bangalore,
whereas the present appeal has arisen out of
disposal of an injunction application only.
Even
otherwise,
the
judgment
in
Renaissance Hotel Holdings Inc. (supra)
dealt with a controversy where the High
Court had misapplied certain sub-sections
and sub-clauses of Section 29 of the
Trademarks Act, 1999 and the Apex Court
was of the view that the case had fallen
under altogether different clauses and subclauses of the said section and reversed the
decision of the High Court. No such issue
is involved in the present case and, hence,
the said judgment is also of no help to the
appellants.

19. The contention of the appellants
on merits of the claim for injunction is that
though there may be a registered trademark
in favour of the plaintiff-respondents, there
being internal arrangements amongst the
members of the same family who are
descendants of late Mohd. Musa and there
being
partnership
deeds
and various
licences, the business run by the defendantappellants was separate from the business
run by the plaintiff-respondents and there
146 INDIAN LAW REPORTS ALLAHABAD SERIES
being no direct connection in between two,
the trial court was not justified in granting
injunction. It has further been argued that
since an objection was taken by them
regarding
validity
of
the
plaintiffs'
registered trademark and further they have
applied
before
the
Registrar
for
rectification, the proceedings of the suit
should have been stayed in view of Section
124 of the Trademarks Act, 1999 and,
therefore, the order granting injunction is
liable to be set aside. In this regard, the
submission of plaintiff-respondents is that
even if the proceedings of the suit are
stayed, the same will not preclude the
Court from making any interlocutory order,
including any order granting injunction,
during the period of stay of the suit and
reference to sub-section (5) of Section 124
of the Act, 1999 has been made in this
regard. For a ready reference, entire
Section 124 of the Act is reproduced
below:-

"124. Stay of proceedings where
the validity of registration of the trade
mark is questioned, etc.- (1) Where in
any suit for infringement of a trade mark-

(a) the defendant pleads that
registration of the plaintiff's trade mark is
invalid; or

(b) the defendant raises a defence
under clause (e) of sub-section (2) of
section 30 and the plaintiff pleads the
invalidity of registration of the defendant's
trade mark,

the
court
trying
the
suit
(hereinafter referred to as the court),
shall,-

(i) if any
proceedings
for
rectification of the register in relation to
the plaintiff's or defendant's trade mark
are pending before the Registrar or the
Appellate Board, stay the suit pending
the final disposal of such proceedings;

(ii) if no such proceedings are
pending and the court is satisfied that the
plea regarding the invalidity of the
registration of the plaintiff's or defendant's
trade mark is prima facie tenable, raise an
issue regarding the same and adjourn the
case for a period of three months from the
date of the framing of the issue in order to
enable the party concerned to apply to
the Appellate Board for rectification
of the register.

(2) If the party concerned
proves to the court that he has made
any such application as is referred to
in clause (b) (ii) of sub-section (1)
within the time specified therein or
within such extended time as the court
may for sufficient cause allow, the
trial of the suit shall stand stayed until
the final disposal of the rectification
proceedings.

(3) If no such application as
aforesaid has been made within the
time so specified or within such
extended time as the court may allow,
the issue as to the validity of the
registration
of
the
trade
mark
concerned shall be deemed to have
been abandoned and the court shall
proceed with the suit in regard to the
other issues in the case.

(4) The final order made in any
rectification proceedings referred to in subsection (1) or sub-section (2) shall be
binding upon the parties and the court shall
dispose of the suit conformably to such
order in so far as it relates to the issue as to
the validity of the registration of the trade
mark.

(5) The stay of a suit for the
infringement of a trade mark under this
section shall not preclude the court from
making
any
interlocutory
order
(including
any
order
granting
an
injunction directing account to be kept,
11 All. Salik Mukhtar & Ors. Vs. M/S. M.M.I. Tabacco Pvt. Ltd. & Ors.
147
appointing a receiver or attaching any
property), during the period of the stay
of the suit."

20. Though, the learned counsel for
the appellants urged that power of the
Court to pass any injunction order is
confined only in relation to keeping of
accounts and appointment of receiver or
attaching any property, the Court is of the
view that the District Court entertaining a
suit based upon a registered trademark and
alleging
its
infringement,
is
fully
empowered to grant a temporary injunction
of the nature that has been granted by the
court below and neither stay of proceedings
of the suit nor any other provision of the
Act of 1999 restricts power of the district
court to pass injunction order, otherwise the
very purpose of the entire Act would stand
frustrated and any violator of law, i.e. the
infringer of registered trademark etc,
would, by merely moving an application
for rectification before the Registrar,
succeed to get the consideration of
injunction application held up and so long
as the application for rectification remains
pending before the Registrar, he would
continue to use trademark, infringement
whereof is alleged by the plaintiffs and,
therefore,
the
Act
would
loose
its
significance for all purposes and the district
court would become a mere spectator and,
in fact, subordinate to the Registrar or the
appellate
Board
dealing
with
the
application for rectification, its disposal
being an uncertain event. Hence the
arguments of the appellants on this score,
having no force, are turned down.

21. Learned counsel for the appellants
also
argued
that
under
identical
circumstances,
the
same
plaintiffrespondents filed another Suit No. 20 of
2022 against one Iftikhar Alam and though
the injunction application was allowed by
the court below by an order dated
10.10.2022, this Court, by a detailed order
dated 07.08.2023, recently allowed the
First Appeal From Order No.77 of 2023
(Iftikhar Alam Vs. M/s M.M.I. Tobacco
Pvt. Ltd. and another) and, therefore, the
present appeal is also entitled to be allowed
on the same lines.

PROCEEDINGS BEFORE CALCUTTA
HIGH COURT

22. Both the parties referred to certain
proceedings held at Calcutta and the Court
feels it appropriate to discuss effect of an
order dated 03.10.2018 passed by the High
Court of Calcutta in G.A. No.1331 of 2018
with A.P. No.282 of 2018 (Yasmin
Khalique and others Vs. Mukhtar Alam).
The said order was passed on an
application
under
Section
9
of
the
Arbitration and Conciliation Act, 1996. The
applicants before the High Court of
Calcutta were Yasmin Khalique, i.e. the
wife of Mohd. Khalique and mother of the
plaintiff-respondent Mohd. Nazish and the
opposite party was Mukhtar Alam, i.e. the
real brother of Mohd. Khalique. After
discussing the rival contentions in relation
to the identical issue associated with
manufacturing and sale of 'Musa Ka Gul
Super' and also the licences as well as
trademark etc, the High Court of Calcutta
passed injunction order dated 03.10.2018
with following operative portion:-

"For the reasons as aforesaid, I
find that the petitioners have made out a
prima facie case and the balance of
convenience and inconvenience also lies in
their
favour
for
obtaining
interim
production. The petitioners have fulfilled
the tests laid down by the Supreme Court in
the case of Adhunik Steels Ltd. (supra).
148 INDIAN LAW REPORTS ALLAHABAD SERIES
Accordingly, there shall be an order of
injunction restraining the respondent
whether by himself or through his agents
or assignees or nominees or otherwise
however
from
running
a
parallel
business of manufacturing or dealing
with or selling " Musa Ka Gul" or
"Tobaco Gul", by the name of M/S M. S.
Industries or in any manner whatsoever
until the publication of the arbitral
award. The respondent is also restrained
from making any false allegation or writing
any frivolous letter to any statutory
authority or to any person whosoever
affecting the business of the petitioner no. 3
firm, until publication of the arbitral
award."

23. The Calcutta High Court, as such,
passed a clear and specific injunction order
restraining Mukhtar Alam, whether by
himself or through his agents or assignees
or nominees or otherwise however from
running
a
parallel
business
of
manufacturing or dealing with or selling "
Musa Ka Gul" or "Tobaco Gul", by the
name of M/S M. S. Industries or in any
manner whatsoever until the publication of
the arbitral award. The said respondent was
also restrained from making any false
allegation or writing any frivolous letter to
any statutory authority or to any person
whosoever affecting the business of the
petitioner no.3 firm, until publication of the
arbitral award.

24. Learned counsel for the appellants
argued that the aforesaid order was passed
by the High Court of Calcutta on
03.10.2018,
however,
immediately
thereafter, on 17.11.2018, Mukhtar Alam
dissolved partnership dated 01.04.2006
terming the same to be a partnership at will
and the said dissolution, according to the
defendant-appellants, would nullify the
effect of the injunction order dated
03.10.2018 as no partnership remained
existent. It has also been argued that
dissolution of partnership was approved in
terms of an interim award dated 12.11.2010
passed by the Arbitrator and against the
said interim award, an application No.359
of 2020 was filed by Yasmin Khalique and
others against Mukhtar Alam before the
High Court of Calcutta, however, the same
was also rejected by the High Court by
order dated 25.03.2021. The submission,
therefore, is that once dissolution of
partnership deed has been approved upto
the level of the High Court of Calcutta, the
injunction order dated 03.10.2018 is of no
consequence.

25. It has also been argued that
Mukhtar Alam, by executing a document
dated 10.04.2019, being 50% undivided
owner of the trade mark bearing No.851957
in Class 3 and Trademark No.