MAHENDRA AND MAHENDRA PAPER MILLS LTD. versus MAHINDRA AND MAHINDRA LTD.

Citation: [2001] SUPP. 5 S.C.R. 225 · Decided: 09-11-2001 · Supreme Court of India · Bench: D.P. MOHAPATRA · Disposal: Dismissed

cites 2 · see the full citation network in Lexace

Judgment (excerpt)

MAHENDRAAND MAHENDRAPAPER MILLS LTD. 
v. 
MAHINDRA AND MAHINDRA LTD. 
NOVEMBER 9, 2001 
[D.P. MOHAPATRA AND SHIVARAJ V. PATIL, JJ.] 
Civil Procedure Code, 1908-0rder 39, Rule I. 
Plaintiff-Company using registered trade mark.for a long time-D~fend­
ant-Company subsequently using almost identical and deceptively similar 
corporate na111e-lts business yet to commence-Suit.for if1:fringement of trade 
mark-Grant of Interim injunction from using the name-Propriety of-Held, 
order of interim injunction rightly passed since plaintiff-company established 
a prima facie case that such user of name would affect the plaintiff-company 
prejudicially in its business-Trade and Merchandise Marks Act, 1958-Sec-
A 
B 
c 
~ 
l~~IM 
D 
Plaintiff-respondent filed suit against defendant-appellant seeking 
decree of permanent injunction from using the name "Mahendra & 
Mahendra" or any word deceptively similar as part of its corporate name 
or trading style. Plaintiff-respondent also filed application seeking in-
terim order of injunction to the same effect. The case of the plaintiff 
respondent was that it had been using the word "Mahindra" and 
"Mahindra and Mahindra" since 1948 and the same were its registered 
trade mark in respect of the goods in clause 12 of the Trade and Mer-
chandise Marks Act, 1958, which was popular in India and was associated 
with the products and services of the plaintiff. In 1996 plaintiff came to 
know about the existence of the defendant and its corporate name which 
was phonetically, visually and structually almost identical and decep-
tively similar to the names of the plaintiff company. The intention of the 
defendant by the use of the said words was trading on the goodwill and 
E 
F 
reputation of the plaintiff. 
G 
Single Judge of High Court passed order of interim injunction 
holding that the plaintiff had established a prinw facie case. Appeal 
against the same was summarily dismissed by the Division Bench. 
In appeal to this Court, Respondent-plaintiff contended that it had 
H 
225 
226 
SUPREME COURT REPORTS 
[2001] SUPP. 5 S.C.R. 
A 
successfully established a strong prima facie case in its favour and denial of 
order of interim injunction would result in irreparable loss and injury to· 
its business, while the business activity of appellant-defendant was yet to 
commence. 
B 
Dismissing the appeal, the Court 
HELD : 1.1. The Trial Court rightly held that the plaintiff has 
established a primafacie case and irreparable prejudice in its favour which 
calls for passing an order of interim injuntion restraining the defendant-
company which is yet to commence its business from utilising the name 
C 
"Mahendra" or "Mahendra & Mahendra" for the purpose of its trade and 
business. [241-G-H] 
1.2. Plaintiff has been using the word "Mahindra" and "Mahindra & 
Mahindra" in its companies/business concerns for a long span of time · 
extending over five decades. The name has acquired a distinctiveness and 
D 
a secondary meaning in the business or trade circles. People have come to 
associate the name "Mahindra" with a certain standard of goods and 
services. Any attempt by another person to nse the name in business and 
trade circles is likely to and in all probability will create an impression 
E 
F 
G 
that it has connection with the plaintiffs' group of companies. Such user 
may also affect the plaintiff prejudicially in its business and trading 
activities. [241-D-F] 
Corn Products Refining Co. v. Shangrila Food Products Ltd., [1960) 1 
SCR 968; Wander Ltd. & Anr. v. Antox India P. Ltd., [1990) Supp. SCC 727; 
S.M. Dyectem Ltd. v. Cadbury (India) Ltd., [2000) 5 SCC 573; Cadila Health 
Care Ltd. v. Cadila Pharmaceuticals Ltd., [2001) 5 SCC 73; Dunder Parmanand 
La/wani & Ors. v. Caltex (India) Ltd., AIR (1969) Bombay 24 (V 56C 5); 
Batra India Ltd. v. Mis. Pyare lal & Co., AIR (1985) Allahabad 242 and 
Kirloskar Diesel Recon Pvt. Ltd. & Anr. v. Kirloskar Proprietary Ltd. & Ors., 
AIR (1996) Bombay 149, referred to. 
CIVIL APPELLATE JURISDICTION : Civil Appeal No. 7805 of 200 I. 
From the ludgment and Order dated 2.12.98 of the Bombay High Court 
in CAN. No. 1058 of 1998. 
H 
P.N. Misra, K.L. Janjani and Pankaj Kumar Singh for the Appellant. 
MAHENORA AND MAHEl\'DRAPAPAER MILLS LTD.1·. MAHINDRA AND MAHINDRA LTD. [MOHAPATRA,J.] 227 
R.F. Nariman, Nikhilesh Panchal, Mahesh Agarwal, Rishi Agarwal, Manu 
A 
Krishnan, Alok Kumar Agarwal and E.C. Agrawala for the Respondent. 
The Judgment of the Court was deliv

Excerpt shown. Read the full judgment & AI analysis in Lexace.