The Delhi High Court recently modified an interim injunction granted by the Commercial Court, Saket, in a trademark dispute over the mark SALONI between M/s. Nakoda Food Marketing & Ors. (“Appellant”) and M/s. Mahesh Edible Oil Industries Ltd. (“Respondent”).
The Respondent, proprietor of the trademark SALONI, had secured an interim injunction restraining the Appellant from using the mark SALONI.
The Appellant appealed the order of Commercial Court asserting continuous use of mark SALONI since 1993. It is the Appellant’s case that the Respondent was aware of the Appellant’s use of the mark SALONI for for over five years and therefore, was estopped by law of acquiescence. Significantly, it was submitted that in August 2024, after the grant of the interim injunction, the Appellant obtained registration for the mark SALONI in Class 30. Therefore, it was submitted that, as per Section 28(3) of the Trade Marks Act, 1999, where two parties hold valid registrations for same marks, neither can restrain the other for infringement.
The Respondent argued that it is the prior registered proprietor of the mark SALONI and that the Appellant had failed to provide any documents that establish any credible or continuous use of the mark SALONI prior to the adoption established by the Respondent. It was further argued that the Appellant’s registration was obtained only after the grant of the interim injunction and hence, cannot have a retrospective effect.
The court observed that the Appellant’s subsequent registration of the mark SALONI does not amount to a ground for setting aside of the interim injunction but constituted a “change in circumstances”. Based on this, the court was of the opinion that since both the Respondent and Appellant are now registered proprietors of the mark SALONI, they are barred from suing the other for infringement.
Accordingly, the Court modified the injunction by allowing the Appellant to use the mark SALONI strictly for goods covered by its registration, i.e., namkeen/cereal preparations and seeds under Class 30, while remaining restrained from using the mark for other goods.
M/S NAKODA FOOD MARKETING & ORS. VERSUS M/S MAHESH EDIBLE OIL INDUSTRIES [FAO (COMM)-92/2024]