This case summary analyzes a case law regarding a passing off action between Nirapara Roller Flour Mills Pvt. Ltd. and K.K.R. Mills. The lower courts granted an interim injunction in favor of K.K.R. Mills. However, the appellate court set aside the lower court's judgment and remanded the case. The appellate court directed the lower court to reconsider issues such as whether K.K.R. Mills established prior use of the trademark and whether they acquiesced to Nirapara Mills' use by delaying the suit. The lower court was told to provide findings on these issues and permit further evidence from both parties.

1. Case Law Analysis: Nirapara Roller Flour Mills Pvt. Ltd. and Ors ... Appellant /Defendant vs. Ammini Karnan, Proprietrix, K.K.R. Mills and Ors … Respondent/Plaintiff Lakshminarayanan Alaguraja Advocate

2. TITLE & CITATION MANU/KE/0502/2010 MIPR 2010 (2) 0295 Nirapara Roller Flour Mills Pvt. Ltd. and Ors vs. Ammini Karnan, Proprietrix, K.K.R. Mills and Ors Order on I.A. No. 2677/07, In RFA. No. 371/2007 Decided on: 11.05.2010

3. PARTIES TO THE CASE Nirapara Roller Flour Mills Pvt. Ltd. represented by its Managing Director, Xavier Chacko, Xavier Chacko S/o Chacko, Managing Director, Rosamma Xavier W/o Xavier Chacko, Addl. Director and Sunitha Jose W/o P.F. Joseph, Addl. Director, Nirapara Flour Mills Pvt. Ltd. Vs. Ammini Karnan, Proprietrix, K.K.R. Mills and Ors.

4. FACTS OF THE CASE

5. A SUMMARY OF ACTIONS TAKEN BY THE LOWER COURTS in a passing off action, Relief of ad interim injunction

6. ISSUES OF THE CASE/QUESTIONS OF LAW 1. Whether the suit is maintainable? 2. Whether the plaintiffs are the prior users of an unregistered trade mark "Nirapara"? 3. Whether the plaintiffs are entitled to the injunction?

7. LEGAL STATUTES Cadila Health v. Cadila Pharma Heinz Italia and Anr. v. Dabur India Ltd. Lakshmikant v. Patel v. Chethanbhai Shah Mahendra and Mahendra Paper Mills (P) Ltd. v. Mahindra and Mahindra Ltd.

8. RELEVANT LAWS/RULES/ORDERS Companies Act, 1956 Section 20 Section 21 Section 39 Indian Evidence Act, 1872 Section 31 Section 32(2) Section 62 Trademark Act, 1999

9. DECISION/JUDGMENT the order of stay passed by lower Court in I.A. No. 2677/2007 will continue to the extent the same pertains to wheat and wheat products, but, not in respect of rice and rice products. The appeal is allowed by way of remand. The parties will enter appearance before the court below on 1.7.2010. The learned District Judge will complete the enquiry and pass a revised judgment early and at any rate within six months thereafter.

10. DECISION/JUDGMENT The impugned judgment and decree are set aside. The suit is relegated to the District Court, Kottayam. The District Court is directed to take a fresh decision, after entering specific findings on the following questions: Whether Ext.A40 mark has attained goodwill and reputation in the minds of potential consumers of the plaintiffs' products as on 25.3.1990 and whether the plaintiffs' mark has acquired a distinctive character among the consumers, so that the consumers identify the mark exclusively with the plaintiffs goods. Whether the plaintiffs have sustained any damages on account of the defendants' user of Ext.A41 mark during the period from 25.3.1990 till the date of institution of the suit.

11. DECISION/JUDGMENT The learned District Judge will also reconsider the plea of acquiescence raised by the defendants, in the context of the delay caused by the plaintiffs in instituting the suit after Ext-.B31 notice was issued. The learned District Judge will afford opportunity to the plaintiffs to adduce whatever further evidence they want to adduce in support of their case. The defendants also will be permitted to adduce further evidence. Fresh decision will be taken in the suit, in the Sight of the entirety of the evidence that comes on record.

12. REASONING OF THE JUDGMENT “ If the cause of action for passing of is not established then there is no necessity for the Court to look into other elements of misrepresentation and damage.” “ Plaintiff is not entitled to ad interim relief if acquiescence on part of Plaintiff is proved by Defendant.”

13. PRESENTER’S CASE ANALYSIS The first defendant is not legally entitled to pass off their goods using a trade mark which is identical or deceptively similar to that of the plaintiffs, the court below held that the plaintiffs being prior users are entitled for relief of injunction. The plea of acquiescence taken by the defendants was also repelled by the court on the basis that the plaintiff was resisting the defendants' application for registration before the registering authority and thus agitating though before other forums for protecting their trade mark.

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