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Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. .
Factual and Procedural Background
The appellants filed a suit seeking a perpetual injunction to restrain the respondent-defendant from using the expression “Super Cup” in the marketing of its tea. The trial court granted an interlocutory injunction in favour of the appellants. The respondent appealed, and a Division Bench of the High Court admitted the appeal and stayed the trial court’s injunction. The appellants then approached the Supreme Court by way of a special-leave petition. Although the Supreme Court normally does not interfere with interlocutory orders, it granted leave because of the significance of the Division Bench’s order.
Legal Issues Presented
- Whether the Division Bench erred in staying the interlocutory injunction on the premise that the appellant’s disclaimer of the words “Super Cup” in its registered trademark precluded it from asserting exclusive rights to those words in a passing-off action.
- Whether, in view of settled Supreme Court precedent, a disclaimer of words in a registered trademark bars a party from seeking relief in a passing-off action.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558; (1955) 2 SCR 252 | Even when certain words in a registered mark are disclaimed, the proprietor may still maintain a passing-off action based on those words. | Used to demonstrate that the Division Bench’s reasoning—namely, that a disclaimer of “Super Cup” extinguished any right to restrain its use—was contrary to settled law. |
Court's Reasoning and Analysis
The Supreme Court noted that the Division Bench’s sole reason for staying the injunction was its view that the appellant had disclaimed the words “Super Cup,” leaving “Tea City” as the only protectable element. This rationale, the Court held, squarely conflicted with its earlier decision in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., which affirms that a passing-off action remains available despite such a disclaimer. Counsel for the respondent did not defend the Division Bench’s reasoning, though he contended that the same ultimate conclusion could be supported on other evidentiary grounds.
Given this acknowledged defect in the High Court’s reasoning, the Supreme Court considered it inappropriate to decide the matter on an entirely new basis at the appellate stage. Instead, it set aside the impugned order and remitted the case to the Division Bench, directing it to reconsider the request for interim relief—and, if possible, dispose of the appeal itself—after hearing both parties. Pending that fresh consideration, the Court ordered maintenance of the status quo regarding the use of the mark “Super Cup.”
Holding and Implications
The Supreme Court set aside the Division Bench’s order staying the interlocutory injunction and remitted the matter to the High Court for fresh decision within three months, directing that status quo be maintained in the interim. The appeal was disposed of with no order as to costs.
Implications: The ruling reinforces that a disclaimer in a registered trademark does not, by itself, foreclose a passing-off action, aligning lower-court practice with established Supreme Court precedent. Beyond this clarification, the decision is procedural in nature and sets no new substantive precedent.
1. Leave granted.
2. The trial court granted an interlocutory injunction in favour of the appellants in a suit filed by it for perpetual injunction to restrain the respondent-defendant from using the expression “Super Cup” for marketing the tea sold by it. In appeal, the Division Bench has admitted the respondent's appeal and stayed the operation of the interlocutory injunction granted by the trial court. Hence, this appeal by special leave.
3. Ordinarily, special leave would not have been granted to appeal against an interlocutory order but the nature of the order in the present case is such that it has great significance and, therefore, we considered it appropriate to grant special leave in the matter.
4. Having heard the learned counsel for the parties, we find that the reason given by the Division Bench for its conclusion, even if correct, is against the settled principles in a matter of this kind. Shri Jaitley, learned counsel for the respondent, made no attempt to support the basis of the order made by the Division Bench but he added that the conclusion reached by the Division Bench is correct and can be supported on the basis of ample material on the record. In our opinion, it would be appropriate that the Division Bench, in the first instance, should consider this aspect instead of the same being considered by us in this appeal.
5. The order made by the Division Bench is based on its view indicated as under:
“In view of the mark which is now registered, the word ‘Super Cup’ having been disclaimed, the only effective part of the registered mark of the plaintiff is ‘Tea City’. The plaintiff/respondent therefore prima facie, cannot claim exclusive right to use the words Super Cup by virtue of any alleged user.”
6. The proposition in the above extract is clearly in conflict with the decision of this Court in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558, (1955) 2 SCR 252 (SCR at pp. 262-263). There is no dispute before us that even on disclaimer, a passing-off action lies and that is the reason why Shri Jaitley did not support the above reason given by the Division Bench in its order.
7. In the facts and circumstances of the case, we set aside the order of the Division Bench of the High Court and remit the matter back to the Division Bench for a fresh decision. In our opinion, the arguments required to be heard for making an interim order in the pending appeal before the Division Bench may itself be sufficient to dispose of the appeal and, therefore, it would be appropriate that the Division Bench disposes of the appeal as early as possible preferably within three months, after hearing both sides. Meanwhile, status quo would be maintained with respect to the use of the mark “Super Cup”.
8. The appeal is disposed of. No costs.
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