BHAVNESH MOHANLAL AMIN AND ANR. versus NIRMA CHEMICALS WORKS LTD. AND ANR.

Citation: [2005] SUPP. 5 S.C.R. 12 · Decided: 07-11-2005 · Supreme Court of India · Bench: ARIJIT PASAYAT · Disposal: Disposed off
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Judgment (excerpt)

A 
BHA VNESH MOHANLAL AMIN AND ANR. 
v. 
NIRMA CHEMICALS WORKS LTD. AND ANR. 
NOVEMBER ,7. 2005 
B 
[ARIJITPASAYAT ANDC.K. THAKKER,JJ.] 
Trade Marks: 
Trade and Merchandise Marks Act, 1958-Section /I /-Trade Marks 
C Act, 1999-Section 124-Passing off-Respondents owned the trademarks 
"NIRMA" and "NJMA "-NIRMA in respect of soaps and detergents and 
"NJMA" in respect of spices, match boxes and other consumer items-On 
appellants using the trademark "NJMA" for their flour mills, respondents 
filed suit for declaration and permanent injunction against them-Trial Court 
D granted ad-interim injunction restraining the appellants from using the trade 
mark "NIMA "-High Court upheld the order-On appeal, Held:- In the 
peculiar circumstances, it would be desirable to vary the interim order to the 
extent that there shall not be stay of operation of the High Court's order-
However without leave of the Trial Court the respondents shall not initiate 
any action for user of the mark "NIMA" by the appellants till disposal of the 
E suit-Trial Court directed to expeditiously dispose of the suit-Code of Civil 
Procedure, 1908-0rder XXXIX, Rules I & 2. 
Respondents owned the registered trademarks "NIRMA" and "NIMA'', 
NIRMA in respect of soaps and detergents and "NIMA" in respect of spices, 
F match boxes and other consumer items. On appellants using the trademark 
"NIMA" for their flour mills, the respondents served notice upon the 
appellants alleging that by using the word "NIMA" they were creating 
confusion and deception in the mind of general public because the word 
"NIMA" was identi~l and deceptively similar to the Respondents' very popular 
trade mark "NIRMA". However the appellants declined to stop using the word 
G "NIMA" for their products, whereupon the Respondents filed a civil suit for 
declaration and permanent injunction against the Appellants. Trial Court 
granted ad-interim injunction restraining the appellants from manufacturing 
and marketing their flour mills by using the word "NIMA" till final disposal 
of the suit. High Court upheld the order. 
H 
12 
BHA VNESH MOHANLAL AMIN ''- NIRMA CHEMICALS WORKS LTD. 
I 3 
In appeal to this Court it was contended that the High Court erred in A 
upholding the order of restraining appellants from using the mark "NIMA" 
as the action of passing-off was immaterial when the appellants and the 
respondents dealt with completely different class of goods with different prices 
and customers. 
Disposing of the appeal, the Court 
HELD: 1. In order to decide an action of passing off on the basis of 
unregistered trade mark, factors like nature of the marks i.e. whether the 
marks are word marks or label marks, the degree of resembleness between 
B 
the marks phonetically similar and hence similar in idea, the nature of the 
goods in respect of which they are used as trade marks, the similarity in the C 
nature, character and performance of the goods of the rival traders, the class 
of purchasers who are likely to buy the goods bearing the marks they require, 
the mode of purchasing the goods or placing orders for the goods and any 
other surrounding circumstances which may be relevant in the extent of 
dissimilarity between the competing marks are to be considered. (18-B-C] 
D 
Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., JT (2001) 4 SC 
243, relied on. 
2. Both the parties agreed that an early disposal of the matter would be 
in their interest. The appellants fairly stated that the question relating to bar 
of jurisdiction in terms of Section 111 of the Trade and Merchandise Marks E 
Act, 1958 corresponding to Section 124 of the Trade Marks Act, 1999 shall 
not be raised and the Trial Court would be free to proceed with the suit. In the 
aforesaid background the Trial Court is directed to dispose of the suit as early 
as practicable preferably by the end of January, 2096. In the peculiar 
circumstances, it would be desirable to vary the interim order to the extent F 
that there shall not be stay of operation of the High Court's order but without 
leave of the Trial Court the respondents shall not initiate any action for user 
of the mark NIMA by the appellants till disposal of the suit. 
[19-E, F, H; 20-BJ 
Mahendra & Mahendra Paper Mills Ltd v. Mahindra & Mahindra Ltd., G 
AIR (2002) SC 117 and Satyam lnfoway Ltd v. Sifynet Solutions (P) Ltd [2004) 
6 sec 145, referred to. 
CIVIL APPELLATE JURISDICTION : Civil Appeal No. 6622 of 2005. 
From the Judgment and Order dated
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