P.K. Misra, J.

1. The defendants have filed this appeal against the order of the District Judge, Keonjhar, in M.J.C. No. 1 of 1997 restraining the defendants from using the impugned trade-mark till disposal of Title Suit No. 1 of 1997, pending before the District Judge. The aforesaid suit had been filed by the plaintiff-respondents under Section 105(c) of the Trade and Merchandise Marks Act, 1958 (Act 43 of 1958) claiming damages of Rs. 49,000/- and for permanent injunction. According to their allegation, their firm had been carrying on manufacturing business of chewing tobacco (Khaini) under Certificate No. 21/Rourkela-II/92 dated 31-7-1992 issued under the Central Excises and Salt Act, 1944 (1 of 1944) and the Rules framed thereunder. It is alleged that the plaintiffs have been marketing their products under "Shankar" brand since 1992 as per the said Certificate. It is further alleged that the defendants obtained Certificate on 20-10-1992 under the very same Act by imitating the wrapper and packet of the plaintiffs, thereby passing off their Khaini as that of the plaintiffs, thus causing damage to the business of the plaintiffs. The plaintiffs also filed an application under Order 39, Rules I arid 2, Code of Civil Procedure, for temporary injunction to restrain the defendants from using the impugned trademark till disposal of the suit.

2. The defendants, in their written statement, claim that their business in manufacturing and selling Khaini was much prior to the business initiated by the plaintiffs. They further took the plea that the plaintiffs firm got the Certificate amended in 1996 to use the trade-name "Shankar", and as a matter of fact, the plaintiffs are passing off, their goods as that of the defendants. In fact, the Defendants claim a sum of Rs. 40,000/- as counter claim. It is further alleged that the defendants have lodged F.I.R. against the plaintiffs in September, 1994, and also filed complaints before the Inspector of Central Excise and the Superintendent of Central Excise and the police has seized the imitated packets of the plaintiffs, and the present suit has been filed on false allegations as a counter-blast. The assertions made in the petition under Order 39, Rules 1 and 2, were also similarly refuted by the defendants.

3. The trial Court allowed the prayer for temporary injunction in favour of the plaintiffs primarily on the findings that (i) plaintiffs got the certificate under the Central Excises and Salt Act and the Rules to manufacture Khaini earlier than the defendants; and (ii) the print, design, colour and pictures on the wrapper and packet of the defendants were deceptively similar to those of the plaintiffs and thus the plaintiffs had been able to make out a prima facie case.

4. The learned counsel appearing for the defendant-appellants submitted that the licence given to the plaintiffs was in the name of "Bishnu Prasad and Company" for manufacturing branded chewing tobacco and the said registration certificate dated 31-7-1992 was subsequently amended on 13-2-1995 and 9-12-1996 for manufacturing "Shankar" brand chewing tobacco. It is, therefore, submitted that the defendants original certificate was earlier to the amended certificate of the plaintiffs and as such, there was no prima facie case in favour of the plaintiffs. It has been further submitted that the trial Court without at all discussing the questions of balance of convenience and irreparable loss has jumped to the conclusion that balance of convenience was in favour of the plaintiffs and irreparable loss would be caused to the plaintiffs if injunction is not granted, merely because it found a prima facie case in favour of the plaintiffs.

5. The principle of law relating to temporary injunction during pendency of the suit is well recognised and in view of the decision of the Supreme Court reported in (Dalpat Kumar v. Prahlad Singh), it is unnecessary to refer to other decisions of various High Courts including those of Orissa High Court on the point. For convenience, the relevant portions of the observations of the Supreme Court in the said case are extracted hereundcr:--

"..... .It is settled law that the grant of injunction is a discretionary relief. The exercise thereof is subject to the Court satisfying that:

(1) there is a serious disputed question to be tried in the suit and that an act, on the facts before the Court, there is probability of his being entitled to the relief asked for by the plaintiff/defendant;

(2) the Courts interference is necessary to protect the party from the species of injury. In other words, irreparable injury or damage would ensue before the legal right would be established at trial; and

(3) that the comparative hardship or mischief or inconvenience which is likely to occur from withholding the injunction will be greater than that would be likely to arise from granting it."

The Supreme Court further observed :--

"..... .Prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The Court further has to satisfy that non-interference by the Court would result in irreparable injury to the party seeking relief and that there is no other remedy available to the party except one to grant inj unction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely one that cannot be adequately compensated by way of damages. The third condition also is that the balance of convenience must be in favour of granting injunction. The Court while granting or refusing to grant inj unction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunction is granted. If on weighing competing possibility or probabilities of likelihood of injury and if the Court considers that pending the suit, the subject-matter should be maintained in status quo, an injunction would be issued. Thus the Court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit."

In subsequent paragraph, the Supreme Court further observed :--

".... .The phrases prima facie case, "balance of convenience and irreparable loss are not rhetoric phrases for incantation, but words of width and elasticity, to meet my riad situations presented by mans ingenuity in given facts and circumstances, but always is hedged with sound exercise of judicial discretion to meet the ends of justice. ......"

6. Keeping in view the aforesaid principle, it has to be seen whether the trial Court as justified in granting injunction. The question as to whether the plaintiff had a prima facie case or not, need hot be re-determined in view of the fact that the order of the trial Court is liable to be set aside on the ground that there is no discussion relating to balance of convenience and irreparable loss. As has been observed by the Supreme Court, merely because prima facie case is established, an order of temporary injunction should not be passed unless the Court comes to a conclusion that the balance of convenience is in favour of the plaintiffs and irreparable loss would be caused unless such injunction is granted. These expressions are not magic expressions on the incantation of which, an order of injunction balance of convenience and irreparable loss. In the present case, it is apparent that the trial Court has not discussed anything regarding balance of convenience and irreparable loss. The entire discussion of the trial Court on these two aspects is as follows :--

".".... The balance of convenience is also in favour of the petitioner and in case the O.Ps., are not restrained, the petitioner is likely to suffer irreparable loss......."

Without at all discussing these two aspects, the trial Court seems to have jumped to the conclusion merely because it found prima facie case. In fact, a perusal of the judgment displays singular lack of application of judicial mind on the part of the District Judge to these two vital aspects. Moreover, while considering the question of prima facie case, the trial Court does not appear to have referred to the documents relied upon by the defendants and as such, the discussion on the question of prima facie case appears to be lopsided. For the aforesaid reasons, I am unable to confirm the order passed by the trial Court. In normal course; this Court could have re-appreciated the entire matter. However, any detailed discussion on the point is likely to prejudice the parties. As such, I would like to direct the trial Court to reconsider these questions afresh. It is also made clear that all endeavours should be made by the trial Court to dispose of the suit within a period of six months from the date of receipt of this order and the pendency of an application under Order 39, Rules 1 and 2, C.P.C. and reconsideration thereof should not be considered as a ground for delaying the trial and disposal of the suit.

7. The Miscellaneous Appeal is accordingly allowed and the matter is remitted to the trial Court. There will be no order as to costs. Parties through their counsel are directed to appear before the trial Court on 15th October, 1998.