INTERIM APPLICATION NO. 1 OF 2019

17th December 2019

Petitioner Counsel: Mr. Advait M. Sethna Ms. Triveni Jani Mr. Tanay Mandot
Respondent Counsel: Ms. Anita Castellino Pritam Joshi Mr. Kartik S. Aiyer
Act Name: Code of Civil Procedure, 1908

Cases Cited :
Paras 18, 53: Colgate Palmolive Company & Ors. Vs. Anchor Health and Beauty Care Pvt. Ltd., 2003 (27) PTC 478 (Del)
Paras 19, 54: Seven Towns Ltd. & Ors. Vs. Kiddiland and Ors., 2016 (68) PTC 308 (Del)
Paras 21, 33, 42: The Indian Performing Right Society Ltd. Vs. Entertainment Network (India) Ltd., decided on 31st August 2016 in Arbitration Petition Nos.341 and 1017 of 2012
Paras 21, 34, 50, 52: La Opala R.G. Ltd. Vs. Cello Plast & Ors., 2018 (76) PTC 309 (Cal)
Paras 22, 33, 42: Eros International Media Limited Vs. Telemax Links India Pvt. Ltd. & Ors., decided on 12th April 2016
Para 50: Eicher Goodearth Pvt. Ltd. Vs. Krishna Mehta and Ors., (2015) 63 PTC 444

JUDGEMENT

1. The applicant (original plaintiff) seeks interim injunction under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908 against the defendants from using its trade dress and/or any products bearing its distinctive trade dress deceptively similar to that of the applicant’s registered trade mark including the applicant’s distinctive trade dress for the purpose of passing off its products/ articles/goods as that of the applicant and for various other reliefs.

2. The applicant has filed the suit for perpetual order and injunction from passing off or attempting to pass off its goods by using its distinctive trade dress and/or mark of the applicant as shown in Exhibits ‘G’ and ‘H’ as that of its own trade dress and/or marks.

3. By consent of parties, interim application is heard finally at the stage of considering the ad-interim relief. Some of the relevant facts for the purpose of deciding this interim application are as under :-

4. The applicant is engaged in the business of manufacture, marketing and sale of Cakes, Pastry, Bread, Pattice, Puffs, Cookies and other allied and related goods. The defendant no.1 was a Franchisee of the applicant from the year 2015-2019 vide Franchise Agreement dated 18th August 2015 recording terms and conditions agreed by and between the parties.

5. It is the case of the applicant that the applicant started the current business in the year 1930 as a family business owned by one Mr.K.M. Irani which became popular for its freshly baked products. Mr.Merwan Irani continued the legacy of his parents and introduced the brand ‘Merwans’ in the year 1972 which mark is used since 1st January 1978 filed with Trade Mark Registry. The applicant adopted and became user of the Trade Mark ‘Merwans’ and has been using the said Trade Mark continuously, uninterruptedly, persistently as an exclusive proprietor and owner thereof. It is the case of the applicant that the applicant has earned goodwill and reputation and brand image in the said mark ‘Merwans’ since 1st January 1978. The trade mark of the applicant is registered in the Classes 16, 30, 32, 35 and 43 as described in paragraph 11 of the plaint.

6. It is the case of the applicant that over years as the business grew and the trade mark became a well-known mark which is today bakery/confectinary industry. The applicant has total of 24 outlets through its Franchisees in Mumabi and Navi Mumbai.

7. In the year 2015, the applicant entered into the first Franchise Agreement at Andheri West Outlet and in last 4 years has built and developed a distinctive trade dress, more particularly detailed in the operations manual which originates from and identifies with the applicant and is thus distinctive, identifiable and associated only with that of the applicant. It is the case of the applicant that the applicant has also engaged a team of Architects and spent a considerable amount of time and money to ensure creating a decor unique, instinctive and identified only with that the applicant. It is the case of the applicant that the applicant provides drawing with regard to the precise layout (inclusive of furniture and fixture, colour scheme etc.) of the outlet at the time of entering into the Franchise Agreement. The applicant has provided one such drawing even to the defendants.

8. It is the case of the applicant that the colour coding, its proportion, the material, the tiling, the type, quality and colour of furniture and fixture is the same throughout all its outlet, which at present being 24. The said decor being distinctive originates only from the applicant and as a whole forms the trade dress of the applicant and its products. It is the case of the applicant that the distinctive trade dress originating from the applicant has attained the character of a mark as a whole and the same is distinctive of the decor of the applicant. The said trade dress has been created and/or conceptualised by and originates from the applicant.

9. On 9th September 2019, the applicant terminated the said Franchise Agreement dated 18th August 2015 alleging various breaches on the part of the defendants. The defendants vide their advocate’s notice dated 13th August 2019 had already invoked the arbitration clause under the said Franchise Agreement. There was further correspondence exchanged between the parties.

10. Mr. Sethna, learned counsel for the applicant (plaintiff) invited my attention to some of the provisions of the Franchise Agreement entered into between the applicant and the defendants and some of the photographs annexed to the plaint. At the stage of hearing of ad-interim application, this Court passed an order on 18th November 2019 and after recording no objection from the defendants appointed a Court Commissioner to visit the suit premises on 20th November 2019 without prejudice to the rights and contentions of the parties, with liberty to take photographs and to submit a report regarding present status of the trade dress of the said outlet and the products bearing such trade dress.

11. Pursuant to the said order, the learned Court Commissioner appointed by this Court submitted a report dated 26th November 2019 with copies served upon the parties. Along with the said report, the parties have annexed large number of photographs taken by a photographer who had accompanied the learned Court Commissioner for carrying out the directions by this Court. Mr.Sethna, learned counsel for the applicant also invited my attention to some of the photographs annexed to the Court Commissioner’s report.

12. It is submitted by the learned counsel that un-audited figures of the financial year 2019-20 of the applicant would clearly show that the applicant has spent about Rs.28,62,731/- during the current financial year towards direct advertisement, professional fees, banners and posters and printing and stationery and web designing etc. The applicant has also spent substantial amount in last several years. He also invited my attention to a Certificate issued by the Chartered Accountant certifying that the turn over of the applicant for the financial year 2018-19 was Rs.48,37,18,722/-. He also invited my attention to the turn over of the applicant for the financial years 2016-17 and 2017-18 mentioned in the said certificate issued by the Chartered Accountant.

13. It is submitted that though the shop was opened by the defendants in the year 2015, the defendants in the affidavit-in-reply in paragraph 2(j) has falsely stated that the said shop was opened for business only on or about 21st August 2018. He invited my attention to the notice dated 21st September 2019 issued by the applicant through its advocate to the defendants thereby terminating the Franchise Agreement and calling upon the defendants to refrain from and stop using and/or dealing with Intellectual Property Rights of the applicant in any manner whatsoever; to deliver up all infringing material forthwith and also to furnish account of profit to the applicant. He also invited my attention to the reply of the defendants through advocate’s letter dated 27th September 2019 and would submit that several false and incorrect statements are made in the said letter addressed by the defendants’ advocate and more particularly in paragraph 11 alleging that that the defendants have started selling the products of another manufacturer w.e.f. 13th September 2019.

14. It is submitted by the learned counsel that the registration of its trade mark ‘Merwans’ under class 43 is valid until 26th June 2025 and thus the said mark is limited to the colour shown in the representation. He submits that both the parties are engaged in similar line of business/products, common to bakery. They are dealing with goods similar in nature. He submits that despite termination of Franchise Agreement, the defendants have dishonestly continued the same business at the same place with the same decor, lay out, design i.e. trade dress distinctive, identified and associated with the applicant only and thus are passing off the products/articles of the applicant while using the trade dress of the applicant. He submits that the defendants are causing confusion and deliberate deception to the public at large who identify the said outlet to be that of the applicant.

15. It is submitted by the learned counsel that the products/ articles of the defendants though being of similar nature, pertaining to backing have no connection, whatsoever, with the applicant whose distinctive trade dress, reputation and goodwill is being dishonestly used by the defendants. The use of trade dress of the applicant is continued illegally and is mala fide. The applicant has acquired tremendous goodwill and enviable reputation in the market and the products/articles making it a well known mark. It is submitted that trade dress of all 24 franchisees of the applicant are identical and in accordance with Operations Manual which has to be followed by all the franchisee including the defendants.

16. Learned counsel for the applicant invited my attention to some of the photographs annexed to the plaint as well as to the Court Commissioner’s report. He submits that defendants have used vinyl tape to cover up the trade dress temporarily before visit of the Court Commissioner. He invited my attention to the photograph nos.20, 21 and 22 in support of this submission. He submits that the photographs taken by the photographer at the time of visit of the learned Court Commissioner would clearly indicate the gross violation of trade dress by the defendants.

17. Learned counsel sought to tender an affidavit of the learned advocate Ms.Triveni Jani to explain her Say about the observations made by the learned Court Commissioner in the said report along with photographs. Since the said affidavit was sought to be tendered at the stage of conclusion of arguments and a copy thereof was not furnished to the defendants’ counsel, the said affidavit was not taken on record.

18. Learned counsel for the applicant strongly placed reliance on the judgment of the Delhi High Court in the case of Colgate Palmolive Company & Ors. Vs. Anchor Health and Beauty Care Pvt. Ltd., 2003 (27) PTC 478 (Del) and in particular paragraph 62 thereof and would submit that significance of trade dress and colour combination is so immense that in some cases even single colour has been taken to be a trade mark to be protected from passing off action. He submits that all franchisees of the applicant had been using radish brown colour in the furniture. He submits that the said colour used by the applicant and all its franchisees had thus to be considered as a trade dress and the infringement of the said trade dress has to be preventive by way of injunction by this Court.

19. Learned counsel for the applicant placed reliance on the judgment of Delhi Court in the case of Seven Towns Ltd. & Ors. Vs. Kiddiland and Ors., 2016 (68) PTC 308 (Del) and more particularly in paragraph 57 in support of the submission that since the applicant has made out a strong case of passing off as there is no justification given by the defendants as to how the similar trade dress hits upon them and the applicant is entitled for infringement as prayed in the interim application. He submits that the defendants have been using the said trade dress for last 3 years.

20. Learned counsel invited my attention to some of the photographs prior to the termination of Franchise Agreement and the photographs after the date of termination of the Franchise Agreement and submitted that the defendants even after termination of the Franchise Agreement have continued to use the trade dress of the applicant in gross violation of the Franchise Agreement.

21. It is submitted by the learned counsel that though the defendants have invoked the arbitration agreement recorded in Franchise Agreement and this Court already having appointed an Arbitrator, since the dispute between the parties is in respect of the alleged violation of infringement of trade dress of the applicant, no such dispute can be adjudicated upon in the arbitration proceedings. He strongly placed reliance on the judgment of this Court in the case of The Indian Performing Right Society Ltd. Vs. Entertainment Network (India) Ltd., decided on 31st August 2016 in Arbitration Petition Nos.341 and 1017 of 2012 and in particular paragraphs 132, 140, 144, 151 and 152 thereof. He also placed reliance on the judgment of the Calcutta High Court in the case of La Opala R.G. Ltd. Vs. Cello Plast & Ors., 2018 (76) PTC 309 (Cal) and in particular paragraphs 85, 87, 90, 91, 98 and 107 thereof.

22. Ms. Castellino, learned counsel for the defendants, on the other hand, submits that her clients have already invoked arbitration agreement recorded in Franchise Agreement. This Court has already appointed an arbitrator in the dispute having arisen between the parties under the said Franchise Agreement. This Court in the said order, while appointing an arbitrator, kept the issue of maintainability of claim open. She strongly placed reliance on the judgment of this Court in the case of Eros International Media Limited Vs. Telemax Links India Pvt. Ltd. & Ors., decided on 12th April 2016 in support of the submission that dispute alleging infringement of copyright can be referred to arbitration and thus no interim relief as prayed in the interim application filed by the applicant can be granted by this Court. Without prejudice to the aforesaid submission, learned counsel for the defendants invited my attention to the plaint as well as the affidavit filed by the applicant and the affidavit-in-reply filed by her clients. She also invited my attention to various photographs annexed to the plaint, to the report submitted by the learned Court Commissioner and also annexed to the affidavit-in-reply filed by her clients.

23. It is submitted by the learned counsel that the date mentioned as 21st August 2018 in the affidavit-in-reply and more particularly in paragraph 2(j) of the affidavit-in-reply is an inadvertent error. The defendants had already commenced business in the year 2015 under the said Franchise Agreement and since then had commenced vending the products of the applicant and continued till the date of termination of Franchise Agreement. She submits that the applicant has committed various breaches of its obligations under the said Franchise Agreement. She submits that all the edible saleable products and movable proprietary materials of the applicant have already been returned by the defendants to the authorised representative of the applicant on 13th September 2019 admittedly. She submits that all the equipments were purchased by the defendants from generic suppliers who manufacture similar such cooled-cabinets, display cabinets and other such products to display food items to all food-selling outlets like shop of the defendants.

24. It is submitted that none of the equipments and cool-cabinets, counters etc. were uniquely or proprietarily designed by the applicant. She submits that the defendants have already removed stick-on lables which were affixed to those cabinets as soon as the applicant refused to supply the goods to the defendants.

25. Learned counsel for the defendants placed reliance on photographs annexed to Exhibit-L to the affidavit-in-reply and would submit that there cannot be any unique proprietorial design of the cabinets themselves and such design cabinets are available to all shops for purchase. She submits that the entire payment for purchasing those cabinets was made by the defendants exclusively. All such cabinets are freely available and generic design, manufactured locally. All electrical equipments were also purchased by the defendants with their own funds and none of the said equipments were supplied by the applicant nor any money was financed by the applicant to the defendants to purchase those equipments. She submits that the defendants being owners of those equipments and cabinets are entitled to use the same on their own rights for their own purposes. None of those equipments and cabinets can be identified in any manner as being or belonging to the applicant.

26. It is submitted by the learned counsel that since the date of termination of the Franchise Agreement, her clients have stopped dressing the staff in the uniforms which the defendants were using prior to the date of termination of Franchise Agreement in view of the fact that there are no products of applicant to sell in the shop run by the defendants. In support of this submission, learned counsel invited my attention to some of the photographs annexed to the affidavit-in-reply. She submits that with effect from 13th September 2019, staff of the said shop run by the defendants have never worn or put on any piece of or displaced the uniforms or any piece of or displayed the uniforms or any piece or garment thereof which would indicate any connection with the applicant in any manner whatsoever.

27. It is submitted by the learned counsel that in so far as the wall-finishes of the suit shop is concerned, the defendants have already removed, dismounted and scrapped all those materials and none of them was re-used or used in any form whatsoever with effect from 13th September 2019. Interiors flooring of the said shop was re-tiled at the insistence of the applicant with brown ceramic tiles. All these tiles have been removed along with other materials by the defendants. These generic brown floor tiles taken in their isolation cannot be said to violate any proprietary rights of the applicant. Those tiles are freely available in the market and that were purchased from Raj Contractor Shop. Various documents are annexed in support of the submission of the affidavit-inreply.

28. It is submitted by the learned counsel that the defendants have been using different software purchased by them from another vendor. The defendants have already taken up the agency from another bakery company and have been vending and selling their products from the said shop after the date of termination of the Franchise Agreement and have not been using any of the proprietary/promotional/ identifiable materials belonging to the applicant in the said shop. She submits that the suit shop is redecorated and re-opened with the goods of the new supplier for sale with effect from 14th September 2019.

29. Learned counsel submits that the applicant cannot claim proprietary rights or proprietary ownership over commonly available bakery products which are sold in large number of such shops purchased from other suppliers. She submits that there is no question of raising in the mind of any customers of the applicant that the said shop run by the defendants and products sold therein are the products of the applicant.

30. Learned counsel for the defendants invited my attention to some of the photographs and would submit that the name of the shop is admittedly different. Colour of the entrance of the shop is different. None of the colours used by the applicant has been used by the defendants.

31. It is submitted by the learned counsel that the defendants have used wall-papers and not vinyl tape as sought to be canvassed by the applicant. She submits that such wall-papers used by the defendants can be put up by over night.

32. Learned counsel invited my attention to one of the paragraphs of the Court Commissioner’s report and would submit that the learned advocate for the plaintiff who had visited the shop at the time of inspection carried out by the Court Commissioner had pulled out tape by force as was noticed by the Court Commissioner. She submits that the defendants have used wall-papers and not vinyl tape. She relied upon photograph no.54 and would submit that the colour used by the defendants was blue colour and not yellow colour. The entrance of the defendants would show different colour. The defendants have not used the logo of the applicant. She submits that in no manner whatsoever, the entries as well as the cabinets in the shop run by the defendants would indicate that any of the customers had entered ‘Merwans’ shop. She submits that decor in front of T. V. Screen, Cake reflected in the shop earlier is totally different. Dress and Uniforms of the staff is different. Staff of the defendants are using the orange colour uniform with gray colour apron and gray cap whereas the staff of the defendants are wearing yellow colour T-Shirt with no apron and cap.

33. Learned counsel for the defendants invited my attention to some of the photographs annexed to the affidavit-in-reply and would submit that every shops run by the franchisees of the applicant have different colour of furniture. The sitting area in those shops are also different. In the shop run by the defendants, no sitting area is provided. The name of the shop is different. Layout, colour scheme and packaging of the defendants is different from the layout, colour scheme and packaging of the applicant. The entire billing system followed by the defendants is different from the system followed by the applicant. Leaned counsel for the defendants submits that the judgment of this Court in the case of The Indian Performing Right Society Ltd. (supra) is clearly distinguishable in the facts of this case. In the said judgment, there was dispute about payment of royalty. Facts in this case are different. She submits that the judgment of this Court in the case of Eros International Media Limited (supra) would not apply to the facts of this case.

34. Learned counsel distinguishes the judgment of the Calcutta High Court in the case of La Opala R.G. Ltd. (supra) on the ground that mark used by the defendants was identical with the mark used by the applicant therein. However, in this case, the facts are totally different. The defendants are not using any mark of the applicant. She strongly placed reliance on paragraph 113 of the said judgment. Learned counsel also distinguishes the other judgments relied upon by the learned counsel for the applicant on the ground that the facts before the Courts in those judgments were totally different. She submits that the learned Court Commissioner could not have been allowed to enter the kitchen of the defendants.

35. Mr. Sethna, learned counsel for the applicant in rejoinder submits that none of the ‘Merwans’ outlets have different colours of furniture or decor. He invited my attention to the photographs annexed at pages 142, 146, 147, 152, 154, 155, 159 and 160 of the affidavit-in-reply and would submit that all these alleged photographs are downloaded by the defendants from various websites on internet which do not have any authencity. He submits that all 25 Franchise outlets of the applicant has run identical trade dress. In so far as the submission of the defendants that the defendants have used wall-paper and not vinyl tape is concerned, he submits that this Court cannot ignore the report submitted by the learned Court Commissioner in this regard. It was not the case of the defendants before the learned Court Commissioner that the defendants had used wall-paper and not vinyl tape.

36. It is submitted that the photographs produced by the learned Court Commissioner clearly indicates the use of vinyl tape by the defendants which can be easily removed. He submits that the learned advocate who had visited at the time of inspection of the shop by the learned Court Commissioner, on behalf of the applicant, was assisting the learned Court Commissioner to find out the truth. He submits that dissimilarity in the name of the applicant and the defendant no.1 is irrelevant. This Court has to consider the trade dress in entire perspective. The actual confusion in the minds of the customers is irrelevant. Even if the confusion is likely to take place, that is sufficient to grant injunction.

REASONS AND CONCLUSIONS :-

37. There is no dispute that Franchise Agreement entered into between the applicant and the defendant no.1 is terminated by notice dated 21st September 2019. It is not the case of the applicant that the defendants have been using the products supplied by the applicant to the defendants in the shop run by the defendants after the date of termination of the Franchise Agreement. All such products were supplied to the defendants by the applicant have already been returned to the applicant which is duly acknowledged by the applicant.

38. A short question that arises for consideration of this Court at this prima facie stage in this interim application is whether the trade dress of the applicant is continued to be used by the defendants in the said shop while carrying on its business and if so, whether there is any infringement of the mark claimed by the applicant or not. Both the parties have relied upon various photographs placed on record by the parties in their respective pleadings as well as by the learned Court Commissioner in the report submitted before this Court who was appointed by this Court pursuant to the order dated 18th November 2019.

39. There is no dispute that the applicant had registered its trade mark ‘Merwans’ under Class 43 which is still valid. Both the parties are engaged in similar line of business/products, common to bakery. It is not the case of the applicant that after the date of termination of the Franchise Agreement, the defendants have continued to sell the products of the applicant in the said shop run by the defendants. It is the case of the applicant that the defendants have continued the same business at the same place with the same decor, lay out, design i.e. trade dress distinctive, identified and associated with the applicant only and thus are passing off the products/articles of the applicant while using the trade dress of the applicant thereby causing confusion and deliberate deception to the public at large who identify the said outlet to be that of the applicant.

40. There is no provision in the Franchise Agreement that after the date of termination of the said Franchise Agreement, the defendants would not be permitted to carry on any business of similar nature by purchasing those products from some other suppliers in the market. In support of the submission that the applicant has distinctive trade dress, reputation and goodwill, learned counsel for the applicant has placed reliance on the Certificate issued by the Chartered Accountant showing un-audited figures of the financial year 2019-20 of the applicant and the amounts alleged to have been spent by the applicant under different heads and expenses in last several years.

41. Learned counsel for the defendants opposes this interim application also on the ground that the said Franchise Agreement records an arbitration agreement and the defendants have already invoked the said arbitration agreement for referring the disputes between the parties to the arbitration. It is vehemently urged by the learned counsel for the defendants that this Court has already appointed an arbitrator to adjudicate upon those disputes between the parties though having made it clear that the issue of arbitrability would be decided by the learned arbitrator and the said issue was kept open.

42. Reliance is placed by the learned counsel for the defendants on the judgment of this Court in the case of Eros International Media Limited (supra). On the other hand, Mr.Sethna, learned counsel for the applicant has placed reliance the judgment of this Court in the case of The Indian Performing Right Society Ltd. (supra). This Court in the said judgment in the case of The Indian Performing Right Society Ltd. (supra) has distinguished the judgment of this Court in the case of Eros International Media Limited (supra) and has held that the reliefs sought by the claimant in that matter in respect of the copyright was an action in rem and could not have been adjudicated upon by the learned arbitrator at all and could be decided only by a Civil Court. In my view, the principles of law laid down by this Court in the case of The Indian Performing Right Society Ltd. (supra) would apply to the facts of this case.

43. It is not disputed by the applicant that all the equipments were purchased from generic suppliers who manufacture similar such cooled-cabinets, display cabinets and other such products to display food items to all food-selling outlets like shop of the defendants. It is also not the case of the applicant that the applicant claims any ownership rights or any other rights of any nature whatsoever on those equipments purchased by the defendants which were being used by the defendants while carrying on business before the date of termination of Franchise Agreement or even thereafter.

44. A perusal of the photographs produced by the defendants as well as the applicant and the learned Court Commissioner prima facie does not indicate that the stick-on lables which were affixed to those cabinets prior to the date of termination of Franchise Agreement have been continued to be used by the defendants after the date of termination of the said Franchise Agreement.

45. A perusal of the photographs further prima facie indicates that the equipments used by various alleged franchisees of the applicant look partly different. The defendants have already stopped dressing the staff in the uniforms which were worn by the staff of the defendants prior to the date of termination of Franchise Agreement. The colour of uniform itself used by the staff of the defendants is totally different than the colour of the uniform used earlier. I am inclined to accept the submission of the learned counsel for the defendants that interiors flooring of the said shop was re-tiled at the insistence of the applicant with brown ceramic tiles which have already been removed along with other materials by the defendants. In my view, there is no substance in the submission of the learned counsel for the applicant that the generic brown floor tiles taken in their isolation had allegedly violated any proprietary rights of the applicant. The applicant could not demonstrate before this Court by producing any material at this stage in support of this submission.

46. The defendants have already purchased different software from another vendor which is being used in the said shop. The defendants have already started purchasing the bakery products from another bakery company and selling their products from the said shop after the date of termination of the Franchise Agreement. I am inclined to accept the submission made by the learned counsel for the defendants that the defendants have not been using any of the proprietary/promotional/ identifiable materials belonging to the applicant in the said shop. The applicant could not demonstrate before this Court that the applicant has any proprietary rights or any ownership over the bakery products being sold by the defendants in the said shop. In my prima facie view, there is no substance in the submission of the learned counsel for the applicant that the customers of the applicant would be confused while visiting the shop of the defendants or carry an impression that the products sold by the defendants in the said shop are the products of the applicant.

47. The name of the shop run by the defendants is totally different then the name prior to the date of termination of Franchise Agreement. The colours used in shop is also prima facie different than the colours used earlier by the defendants prior to the date of termination of Franchise Agreement. The entrance of the shop of the defendants shows different colour which was not used prior to the date of termination of Franchise Agreement. The defendants have not used the logo of the applicant. The decor in front of T. V. Screen, Cake reflected in the shop earlier is totally different.

48. There is no sitting area provided by the defendants in the said shop. Layout, colour scheme and packaging of the defendants are prima facie different than the layout, colour scheme and packaging of the applicant. The entire billing system followed by the defendants is different than the system followed by the applicant.

49. In so far as the submission of the learned counsel for the applicant that the defendants have relied upon various photographs which are taken from websites on internet and do not have any authencity is concerned, the photographs brought on record by the learned Court Commissioner are sufficient to render a prima facie finding that the trade dress of the applicant is not continued by the defendants in the said shop run by the defendants post the date of termination of Franchise Agreement. In so far as the submission of the learned counsel for the applicant that the defendants have used vinyl tape and not wall-papers is concerned, in my prima facie view, there is no merit in this submission of the learned counsel for the applicant.

50. In so far as the submission of the learned counsel for the applicant that the actual confusion in the minds of the customers is irrelevant is concerned, he placed reliance on the judgment of Calcutta High Court in the case of La Opala R.G. Ltd. (supra). In the said judgment, the Calcutta High Court has adverted to the judgment in the case of Eicher Goodearth Pvt. Ltd. v. Krishna Mehta and Ors., (2015) 63 PTC 444 and has held that whether there is a misrepresentation by the defendant with regard to its goods and such misrepresentation is likely to lead to confusion in the minds of consumers, with the result that they may treat the defendant's goods as those of the plaintiff, the Court can allow an interlocutory injunction. It is also held by the Calcutta High Court in the said judgment that the elements making up the alleged trade dress must have been used in such a manner as to denote products source.

51. It is held that a product feature whose only impact is decorative and aesthetic with no source identifying role cannot be given exclusive rights under trade dress law. It is the likelihood of confusion with the total overall trade dress that is the test. The court is not required to find out whether there is confusion or deceptiveness. The test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name.

52. After considering the photographs and various other documents produced by both the parties and after considering the report submitted by the learned Court Commissioner along with photographs, in my prima facie view, there is no likelihood of any confusion or deceptiveness in the minds of any of the customers of the applicant that the products sold by the defendants in their shop are the products of the applicant duly registered its trade mark ‘Merwans’ which mark is allegedly used since 1st January 1978 filed with Trade Mark Registry. There is no dispute about the propositions of law laid down by the Calcutta High Court in the case of La Opala R.G. Ltd. (supra).

53. In so far as the judgment of the Delhi High Court in the case of Colgate Palmolive Company & Ors. (supra) relied upon by the learned counsel for the applicant is concerned, the said judgment is clearly distinguishable in the facts of this case in view of colour being used by the defendants as is prima facie reflected in the photographs being different than the colour of the equipments and furniture which was used prior to the date of termination of Franchise Agreement. The said judgment of the Delhi High Court would not assist the case of the applicant.

54. In so far as the judgment of the Delhi High Court in the case of Seven Towns Ltd. Ltd. & Ors.(supra) relied upon by the learned counsel for the applicant is concerned, the said judgment would not assist the case of the applicant on the ground that the applicant has not made out a strong case of passing off in this case.

55. I am inclined to accept the submission made by the learned counsel for the defendants that the date mentioned as 21st August 2018 in the affidavit-in-reply and more particularly in paragraph 2(j) of the affidavit-in-reply is an inadvertent error. It is not in dispute that the Franchise Agreement was executed in the year 2015 and that the defendants have continued the business under the Franchise Agreement since then till the date of termination. In so far as the observations made by the learned Court Commissioner against the learned advocate representing the applicant at the time of inspection of suit premises by the learned Court Commissioner is concerned, I do not propose to go into the said allegation at this stage. Though Mr.Sethna, learned counsel for the applicant had tendered an affidavit of the learned advocate in this regard since the copy thereof was not served upon the learned counsel for the defendants in advance, I did not permit the applicant to tender the said affidavit belatedly.

56. I do not propose to go into the issue whether entry of the learned Court Commissioner to the kitchen of the suit shop was restricted or not and what is the effect thereof at this stage in this order. In my view, the applicant has not made out any prima facie case in this interim application. The balance of convenience is in favour of the defendants.

57. I therefore pass the following order :-
(i) Interim Application No.1 of 2019 is dismissed.
(ii) There shall be no order as to costs.