Rights to SHRIPHAL and Allegations of Infringement with Compliant Counter-Arguments


The post covers an appeal from the order of District Judge-2, Nagpur, to the Bombay High Court over the trademark rights ‘SHRIPHAL’. Plaintiff, Mysore Deep Perfumery Household (Mysore Perfumery) brought an action against Sunilkumar Amrutlal Jain (Sunilkumar) alleging misleading and to prevent the latter from using the mark SHRIPHAL in connection with agarbathies (incense sticks), perfumes, perfumes, etc.

Proceedings in Nagpur District Court

Mysore Perfumery brought an action based on its previous and extensive use of the mark SHRIPHAL since 1992 in connection with agarbathies (incense sticks), perfumes, perfumes, etc., in class 3. Mysore Perfumery brought alleged that in 2014, it occurred to them that Sunilkumar, buying SHRIPHAL branded products from Mysore Perfumery since 1994, began to use the same mark on their products clandestinely. In response to the cease and desist letter, Sunilkumar argued that “SHRIPHAL” is publici juris.

Sunilkumar, in support of his case:

  1. Filed documents evidencing sales of “SHRIPHAL” branded products to one entity, Aastha Sales, a sister company of Mysore Perfumery;
  2. relied on its registration of the SHRIPHAL trademark and use of the SHRIPHAL trademark prior to 2011, when Mysore Perfumery’s registrations had expired.

SunilKumar, based on the above assertions, pleaded acquiescence alleging that Mysore Perfumery was well aware of Sunilkumar’s use of the SHRIPHAL mark.

The District Court, after reviewing the pleadings, documents and arguments, quashed the injunction granted in favor of Mysore Perfumery. He got acquiescence from Mysore Perfumery. Aggrieved by the order, Mysore Perfumery appealed to the High Court.

Mysore Perfumery appealed on the ground:

  1. The trial judge found that Mysore Perfumery was a prior user of the SHRIPHAL mark, with reputation, goodwill and risk of deception. However, refused to grant an interim injunction solely on the basis of an erroneous acquiescence.
  2. Mysore Perfumery has filed documents in the High Court, which show that the documents Sunilkumar is relying on regarding Aastha Sales are falsified, and therefore the plea of ​​acquiescence will not succeed.

Sunilkumar responded to the appeal with the following:

  1. The High Court settled the issue of additional pleadings earlier and cannot be considered in this appeal.
  2. With respect to the documents filed by Mysore Perfumery in the appeal, it is well settled law that the Court of Appeal cannot review documents which are not before the court of first instance because they are not have not exercised due diligence.
  3. The appeal is likely to be dismissed on the grounds that Sunilkumar has been the registered owner of the mark “SHRIPHAL” since May 2011 and, therefore, is fully entitled by law to use the mark.
  4. Mysore Perfumery had failed to renew the trademark registration, which amounts to abandonment of its rights. Thus, no counterfeiting, deception or harm to customers and reputation would result.

The Court, after reviewing the arguments, case law and documents, said:

  • The argument regarding additional pleadings submitted by Sunilkumar should be disregarded as the matter was decided by a co-ordinated bench of the High Court in a written motion filed by Mysore Perfumery.
  • The trial court found that Mysore Perfumery was a prior user of the mark “SHRIPHAL” and had acquired goodwill. There is likelihood of deception, however, dismissed the discretionary relief of the temporary injunction on the grounds of acquiescence. In this regard, it should be noted that in response to the cease and desist notice, Sunilkumar did not assert its rights with respect to the “SHRIPHAL” trademark. Also, they have not claimed to be the registered owner since May 2011, which needs to be seriously questioned.
  • Sunilkumar vehemently objected to the additional documents filed in the appeal on the grounds that Mysore Perfumery failed to exercise due diligence in the trial court. At this stage, it should be considered whether the additional evidence sought to be produced would have a direct bearing on the delivery of the judgment or for any other substantial cause. It is the case of Sunilkumar that it has supplied products marked “SHRIPHAL” to Aastha Sales, a sister company of Mysore Perfumery. In this regard, the documents sought to be entered into the record as additional evidence are from “Aastha Sales”, which will have a direct bearing on the case in addition to advancing the cause of justice. The documents filed evidence that Aastha Sales has no connection with Mysore Perfumery and is not a sister company as claimed by Sunilkumar. The affidavit from the owner of Aastha Sales proves it. Thus, no acquiescence can be excluded from the elements in the file, and it cannot be said that the alleged nature of the acquiescence was such as to create a right in favor of Sunilkumar. In the circumstances, the doctrine of acquiescence is not applicable to the facts of this case.
  • The argument that Mysore Perfumery has waived its rights and cannot enforce its rights must fail. If a right is conferred by the registration of the mark, this is subject to the provisions of Article 27(2) of the Law. Thus, the common law right of substitution conferred on the benefit of Mysore Perfumery prevails over the rights conferred by the trademark registration.

In light of the above, the High Court upheld the appeal by Mysore Perfumery and quashed the order made by the District Judge.


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