Dr. H.B. Prabhakara Sastry, J.

1. The appellant herein has filed a suit in O.S. No. 3121/2019, in the Court of learned XVIII Addl. City Civil Judge, at Bengaluru City (CCH No. 10), hereinafter for brevity referred to as 'trial Court'), seeking for permanent injunction restraining the defendant therein (respondent herein) from using the plaintiff's registered trade mark 'KRISHNA' though with the trade name 'Sri Krishna Sweets'. Along with the plaint, the plaintiff had also filed an interlocutory application bearing IA. No. 1 under Order XXXIX Rule 1 and 2 read with Section 151 of Code of Civil Procedure, 1973 (hereinafter for brevity referred to as 'CPC'), seeking an ad interim order of injunction restraining the defendant (respondent herein) from infringing the plaintiff's registered trade mark 'KRISHNA' by using offending mark 'Sri Krishna Sweets' and passing off plaintiff's trade mark 'Sri Krishna Sweets' or any other trade mark which are deceptively similar to plaintiff's trade mark for manufacturing and marketing sweets and saviors by using offending trade name 'Sri Krishna Sweets', pending disposal of the suit.

2. After haring both side, the trial Court by its impugned order dated 23.03.2021, dismissed the said IA. No. 1 holding that no person can claim monopoly in respect of deity 'LORD KRISHNA'. Challenging the said order dated 23.03.2021 passed by the trial Court, the plaintiff in the trial Court is before this Court as an appellant through this appeal. The defendant in the trial Court is the respondent herein.

3. In response to the notice, the respondent is being represented by its counsel.

4. Heard the arguments of learned Senior Counsel for the appellant and learned counsel for the respondent, who are present physically in the Court.

5. Perused the memorandum of appeal, impugned order and the materials placed before this Court.

6. The points that arise for my consideration are:

(i) Whether the appellant deserves an interim order of injunction under Order XXXIX Rule 1 & 2 of Code of Civil Procedure, as prayed, during the pendency of the Original Suit bearing O.S. No. 3121/2019

(ii) Whether the impugned order warrants any interference at the hands of this Court

7. The contention of the plaintiff both in its plaint, as well in IA. No. 1 in the trial Court is that, one Sri M. Krishna started the business in the year 1979 under the name and style of 'Sri Krishna Sweets' in partnership and thereafter, the firm was converted into a sole proprietorship concern. The trade name of the plaintiff 'Sri Krishna Sweets' has earned immense reputation and Goodwill due to quality, marketing, advertisement, salesmanship, manufacture of sweets, which were manufactured and sold by the establishment. The trade mark 'Sri Krishna Sweets' was identified with the products and services provided by the plaintiff. They have obtained the registration of the said trade mark under Class 30. The device of 'IDOL KRISHNA' and with the word 'Krishna' written in stylised form and also the word 'KRISHNA' in English, bold, capital letters, were all have been registered in the plaintiff's name under Class 30 with registration Nos. 404943, 484524 and 484525 respectively. It is further contended that the trade name 'Sri Krishna Sweets' inter alia contains the word 'KRISHNA' as plaintiff's distinctive, leading, essential and memorable feature. The said M. Krishna transferred his registered trade mark in favour of his wife Mrs. Usha Krishnan on 24.03.2002 and on 01.04.2015 under the Deed of Assignment. Thereafter, the rights of the above trade marks were transferred to the plaintiff by Mrs. Usha Krishnan.

It was further contended by the applicant in IA. No. 1 before the trial Court that the defendant, which is also a business concern and seller in the sweets, has deliberately adopted a phonetically, visually and structurally identical mark 'Sri Krishna Sweets' in order to associate them with the plaintiff's Company. The adoption of 'Sri Krishna' or 'Krishna' amounts to infringement of trade mark as the defendant has deliberately prefixed 'Sri' and suffixed 'Sweets' in order to mislead the customers to give an impression that the sweets and saviors sold by them are emanated from the plaintiff and it also amounts to passing off action. The plaintiff is the prior user of the trade mark, having used the same in respect of sweets and saviors over forty years. It was also contended that the plaintiff has made out a prima facie case for grant of injunction as sought for and balance of convenience lies in its favour. It was also averred that no hardship or loss would be caused to the defendant if temporary injunction was granted.

8. The defendant filed its written statement and also filed a memo adopting the written statement averments as objections to IA. No. 1. The contention of the defendant in the trial Court is that the shops of the plaintiff and the defendant are situated at different places and the trade mark 'KRISHNA' obtained by the plaintiff are entirely different with the defendant's trade mark 'Sri Krishna Sweets'. It was further contended that the proprietor of the defendant-establishment and his brothers having very good experience in preparation of sweets, have with an intention to come up in their life, started the sweet shop. The Lord Sri Krishna is their family deity, as well the astrologer has advised them to open the shop in the name and style of 'Sri Krishna Sweets'. They have obtained registration, GST and TIN numbers for their shops. The defendant also contended that they too have filed an application for registration of trade mark in No. 4197081.

9. The learned Senior Counsel appearing for the appellant/plaintiff in his argument vehemently submitted that plaintiff's is a registered trade mark, whereas, the defendant's is not. Further, the plaintiff has been carrying on its business through its eighty six Branches spread over in the country, among which, five Branches are in Bengaluru itself. Further, the plaintiff has also spent a huge amount of money on the business advertisement and lot of publicity materials have been printed and circulated among the public, whereas, the defendant/respondent has commenced its activity only in the year 2019. Therefore, the defendant if allowed and permitted to continue their business under the trade name and style 'Sri Krishna Sweets', the same would infringe the rights conferred upon the appellant/plaintiff under Section 28 of the Trade Marks Act, 1999 (hereinafter for brevity referred to as 'Act').

Learned Senior Counsel also submitted that the defendant/respondent has infringed the registered trade mark of the plaintiff/appellant in all the ways which are prescribed under Section 29(2) (a), (b) and (c) of the. Learned Senior counsel also submitted to the Court that the defendant/respondent has not questioned or challenged granting of registration of the word 'KRISHNA' in favour of the plaintiff, but, has only contended in the trial Court that 'Krishna' is a deity, as such, his name cannot be monopolised. He further submitted that, even the defendant/respondent also has attempted to register his trade name as a trade mark, but, failed in it. However, the trial Court without considering these aspects has referred to a Parliamentary Standing Committee on Industry's Eighth Report on the Trade Mark Bill, 1993, and ignoring the fact that it was only a recommendation, but, not the Law, and also on its own imagination that the word 'Krishna' being the name of deity cannot be made use of as a trade mark by the plaintiff, has denied the interim relief in favour of the plaintiff. As such, the same is erroneous and warrants interference at the hands of this Court. In his support, learned Senior Counsel relied upon few reported judgments which would be referred to at the relevant places hereafterwards.

10. Learned counsel for the respondent in his very brief argument submitted that defendant/respondent has been running the sweet shops at three places in Bengaluru since the year 2015 and it is their family business. Lord Krishna is their family deity also. He further submitted that in case the interim order as prayed is granted in favour of the plaintiff, the same would put the defendant into greater hardship.

11. It is not in dispute that both, the plaintiff as well the defendant, are running their respective business under the same name and style as 'Sri Krishna Sweets'. It is also an undisputed fact that both of them are involved in the business of manufacture and sales of sweets. Undisputedly, the plaintiff/appellant has obtained registration of its trade mark 'KRISHNA' in the form of device of Idol Krishna, the word 'Krishna' written in stylised form and also the word 'KRISHNA' in English language, bold, capital letters. The materials placed by the plaintiff/appellant at this stage and prima facie would go to show that, in all their business correspondences, the Name Board and also upon the packing items, the plaintiff has been mentioning their trade name 'Sri Krishna Sweets' in a distinctive manner, wherein, the first letters of these three words i.e., 'Sri Krishna Sweets' are in English capital letters.

12. The materials placed before the Court at this stage and prima facie would also go to show that the defendant/respondent is also running a business in sweets under the name and style 'Sri Krishna Sweets', wherein, the first letters in those three words are also in English and in capitals like the plaintiff's. The registration of the trade mark of the plaintiff is under Class 30 and undisputedly, the plaintiff is manufacturing and selling the sweets of various types.

Similarly, the nature of business of the defendant is also manufacture and sale of sweets which they are doing under the trade name and style of 'Sri Krishna Sweets', which in letters and phonetic is similar to that of the registered trade mark of the plaintiff. Undisputedly, the registration of its trade mark 'KRISHNA' and a device by the plaintiff under Class 30 is much prior to the defendant commencing its similar business of manufacturing and selling sweets.

13. Section 29 of thespeaks about the infringement of registered trade mark. Sub-section (2) of Section 29 of thereads as below:

"Section 29. Infringement of registered trade marks.-

(1) xxx xxx xxx

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark."

Though the learned Senior Counsel appearing for the plaintiff contends that the infringement being caused by the defendant falls under all the three Clauses (a), (b) and (c) of sub-section (2) of Section 29 of the Act, but, at this stage and prima facie, it cannot be denied that the use of his unregistered trade name or mark of 'Sri Krishna Sweets' by the defendant for its products in sweets is similar to the registered trade mark of the plaintiff and since both the plaintiff and defendant are involved in the business of manufacture and sale of sweets, the goods are identical. Therefore, the argument of learned Senior Counsel for the plaintiff that the alleged infringement of the defendant falls under Clause (a) and (c) of sub-section (2) of Section 29 of the Act, is not acceptable, but, his argument that, it cannot be denied that the defendant's alleged infringement falls under Clause (b) of sub-section (2) of Section 29 of the Act, cannot be denied or disagreed at this stage. Rather, it can be observed that, as could be seen at this stage and prima facie, the business activity of the defendant in manufacture and sales of sweets under the trade name and style 'Sri Krishna Sweets' cannot keep away the attraction of Clause (b) of sub-section (2) of Section 29 of the. However, it would be only a finding at this stage and a final finding on the said aspect can be given only after the trial.

14. In the instant case, no doubt, the registered trade mark is not the entire trade name 'Sri Krishna Sweets', but, it is only the word 'KRISHNA' which is registered as a trade mark in English, bold, capital letters, in stylised form and in the form of an Idol. However, it is also not in dispute that the appellant, which is a registered Company, is doing the business in manufacture and sale of sweets under the trade name and style 'Sri Krishna Sweets', whereas, the respondent is also doing the similar business in the same trade name 'Sri Krishna Sweets'. Section 29(5) of thesays that, a registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

15. It is analysing the said provision of Section 29(5) of the Act, the Full Bench of Bombay High Court in Cipla Ltd., Mumbai vs. Cipla Industries Pvt. Ltd., Delhi and another, reported in 2017 (2) Mh.L.J. 877, at Paragraph-25, was pleased to observe that, Section 29(5) of theapplies when a person uses a registered trade mark as his trade name or part of his trade name or name of his business concern or part of the name of his business concern provided his trade or business is of dealing with goods or services in respect of which the trade mark is registered. If both the conditions are satisfied, it is not necessary to prove anything further for establishing the infringement. It is not necessary to prove that the use of trade mark as a trade or business name is likely to cause any confusion on the part of the public.

Therefore, even though the name that is registered by the appellant is 'KRISHNA', but not 'Sri Krishna Sweets', still the business that is being carried on by the respondent in the name and style of 'Sri Krishna Sweets', which is exactly the trade and business name of the appellant, may cause confusion in the mind of the people, who may be under the impression that the sweets that they have purchased from the respondent is of the appellant's manufacturing.

16. The trial Court while rejecting the application of the plaintiff before it (appellant herein), filed under Order XXXIX Rule 1 and 2 of CPC, observed that the word 'KRISHNA' is a name of deity worshipped by Hindus as an incarnation of Lord Vishnu and the word 'Sweet' is a generic word. The plaintiff cannot claim exclusive monopoly over the words 'Krishna' and 'Sweet'.

In this regard, learned Senior Counsel for the appellant relied upon the judgment in The Andhra Perfumery Works joint family Concerns vs. Karupakula Suryanarayanaiah and others, a copy of which from the website http://indianjanoon.org/doc, was placed before me, wherein the dispute was regarding use of word 'GANESH' by the opposite parties for their trade and business. A Division Bench of Madras High Court in its judgment in that case, at Paragraph-28 observed as below:

"Before leaving these appeals, we may refer to one argument, that the word 'GANESH' applies to the Lord Ganesa who is the deity of auspicious commencement of all undertakings in Hinduism, and hence that it would be wrong to create a monopoly in respect of such a term, for one particular proprietor. But it was never pretended that the word 'GANESH' cannot become distinctive for respondent firm's Agarbathis, or that it is not registrable. We need only observe, without proceeding further into this aspect, and leaving the issue quite open, that there are several other names of the deity (Vigneswara, Vinayaka etc.) which could be appropriately used by persons, desiring to associate their goods with the favour of the deity, if the Mark and device, which are thus invented, do not otherwise infringe any Prior registered device under the Trade Mark Law."

Relying upon the judgment in the Andhra Perfumery Works's case (supra), the Hon'ble Single Judge of Andhra Pradesh High Court in Sri Sai Agencies Pvt. Ltd., vs. Chintala Rama Rao, a copy of which from the website http://lawfinderlive.com was placed before me, in its last paragraph has made an observation that, the device of any deity with a particular name monogram, colour combination and picture pattern one can develop a right, in such a device, as his trade mark, and such a trade mark can also be registered. Some other trader may use some other name of a particular deity with a different phonetic and visual structure. What ultimately that has to be considered by the Court in cases of this type is its distinctiveness and independence as a trade mark quite different and dissimilar to any other trade mark in existence. Once a particular type of trade mark of a particular trader with particular name and picture of a deity assumes popularity as a trade mark, the others cannot imitate it only on the ground that he is also a devotee of a 'deity' used by the earlier trade mark. Therefore, the contention of the learned counsel for the defendant that Lord Krishna being the deity of the defendant, the defendant is entitled to make use of it cannot be accepted.

17. The learned Senior Counsel for the appellant also relied upon a case in M/s. Durga Fabrics, Chennimalai, represented by its Partner, A.M. Ratnaswami Mudaliar and others vs. M/s. Sri Durga Textiles, Karur, represented by its Partner K.N. Ramamurthi reported in (1980) 93 L.W. 863, wherein with respect to Sections 29, 31 and 33 of the Indian Trade and Merchandise Marks Act, 1958, it was held that the plaintiff's trade mark 'Sri Durga Textiles' was infringed by defendant's trade mark 'Durga Textiles'. It was also observed that the same was not a case of even a phonetic similarity as the word used was identical. The words was also used in relation to the identical types of goods. In such a case, it has to follow inevitably, as a consequence that, as soon as the plaintiff proved that the defendant was using the trade mark, there was infringement.

18. Learned Senior Counsel for the appellant also relied upon the judgment in Gangotree Sweets and Snacks Pvt. Ltd. Chennai vs. Shree Gangotree Sweets, Snacks & Savouries, wherein the registered trade mark was 'Gangotree' and it was alleged that the same was infringed by the defendant by the use of the words 'Shree Gangotree'. Admittedly, in the said case also, the plaintiff had registered the trade mark 'Gangotree' and it was subsequently renewed. Observing that the cumulative effect of the provision of the Trade Marks Act makes it clear that, once a trade mark is registered with the Registrar, any infringement of such registered trade mark by any person would entitle the holder of the registered trade mark a statutory right to protect itself from such infringement from such persons, made absolute the injunction granted earlier to the appellant and dismissed the application filed by the defendant for vacating the interim order.

19. Thus, the above cases makes it clear that, merely because a registered trade mark includes the name of the celebrated deity, by that itself, it cannot be held that the registered holder of that trade mark is not entitled for protection in the form of an injunction against the infringement of his registered trade mark. However, the question whether such a registered trade mark is so general and can the person merely because using a word as a part of his trade mark, restrain others from using the same word, may be in different device or format or style, is not the question to be looked into at this stage in this appeal, the same is required to be kept open for the trial Court to consider those aspects, provided the same are necessary at the appropriate stage in the trial. Thus, the finding of the trial Court that the word 'KRISHNA' being the name of a deity worshipped by Hindus as an incarnation of Lord Vishnu, the plaintiff cannot exclusively claim monopoly over the word 'KRISHNA', is to be considered as a reason without proper analysis of the materials placed before it. It is for the reason that the trial Court has not noticed that the registration of the word 'KRISHNA' was only in Class 30 and that too, as a device. Therefore, the limitation for the protection in the light of the registration being under Class 30 only and also only as a device, has not been ascertained by the trial Court.

In addition to the above, the trial Court also considered the opinion of the Parliamentary Standing Committee on Industry, which in its Eighth Report on the Trade Marks Bill, 1993, has opined at Para-13, Clause-9 (iii) that, any symbol relating to religion, gods, goddesses, places of worship should not ordinarily be registered as a trade mark. It also observed that, however, the Committee do not want to disturb the existing trade marks by prohibiting their registration as it will result in a chaos in the market.

20. The said report of the Committee is only a report wherein the said Committee has expressed its opinion. Until the said report is accepted and the recommendations are made into Law, it cannot be said that the name of the deity ought not to have been registered as a trade mark. Further, by giving reasoning in Paragraph-12 of its impugned order, the trial Court has shown its impression that the name of any deity shall not be the subject matter of registration. Though it is not expressly mentioned so, but, a reading of the paragraph gives the same meaning. In that manner, it has shown that the trade mark 'KRISHNA' ought not to have been registered as a trade mark by the registering authority. It is in that regard, learned Senior Counsel for the appellant in his argument submitted that a Civil Court cannot cancel the registration of a trade mark granted by the Registrar of Trade Marks. In that regard, he relied upon the judgment of Hon'ble Apex Court in Patel Field Marshal Agencies and another vs. P.M. Diesels Ltd., and others, a copy of which from the website http://indiankanoon.org/doc, wherein at Paragraph-27 of its judgment, the Hon'ble Apex Court was pleased to observe that, from the resume of the provisions of the 1958 Act, it becomes clear that all questions with regard to validity of a trade mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, in fact, is not empowered by the to decide the said question.

21. Therefore, when admittedly, the appellant/plaintiff is the holder of the registration of the trade mark 'KRISHNA' as a device under Class 30 and also when he has invested huge amount of money for the promotion of his business under the name and style 'Sri Krishna Sweets' across its eighty six Branches in India and also when admittedly the defendant is also running a similar business of manufacture and sale of sweets under the identical name and style 'Sri Krishna Sweets', for the purpose of temporary injunction under Order XXXIX Rule 1 and 2 of C.P.C., there was sufficient material before the Trial Court to find out a prima facie case in favour of the appellant/plaintiff. However, the actual hardship to the parties by granting permanent injunction and the balance of convenience being the subject matter of trial, the trial Court was expected to consider those aspects after a detailed trial in the suit. Needless to say that, it was at that time, the trial Court was also required to look into the parameters of the right of the user of a trade mark, that too, particularly when the trade mark is the name of a deity and registered only in Class 30, that also, as a device only. It is considering these aspects, the trial Court was required to arrive at a final finding after recording the evidence from both side in the trial. Thus, till then, the plaintiff before the trial Court, who is the appellant herein, deserves an interim protection in the form of an injunction, as prayed, as against the defendant. As such, the impugned order deserves to be set aside.

22. Accordingly, I proceed to pass the following order:

ORDER

The Appeal is allowed. The order dated 23.03.2021, passed by the learned XVIII Addl. City Civil Judge, at Bengaluru City (CCH No. 10), in O.S. No. 3121/2019, dismissing IA. No. 1, filed under Order XXXIX Rule 1 and 2 read with Section 151 of Code of Civil Procedure, stands set aside.

IA. No. 1 filed by the appellant/plaintiff under Order XXXIX Rule 1 and 2 read with Section 151 of CPC, before the trial Court, stands allowed and the interim order as prayed for in the said IA. No. 1 is granted, pending disposal of O.S. No. 3121/2019.

In view of disposal of the main appeal, the pending IA. No. 1/2021 and IA. No. 2/2021, filed in this appeal, does not survive for consideration.

It is made clear that the observations made in this order are confined to the interim order only and the trial Court without being influenced with the observations made above, to dispose of the main suit solely on its merits, after due appreciation of the evidence placed before it and in accordance with law.