Delhi High Court Reiterates Limited Interference In Appeals Against Interim IPR Orders

The Delhi High Court has reiterated that appellate courts must remain highly circumspect before overturning discretionary orders issued by commercial courts in intellectual property matters.

The bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla dismissed an appeal in limine by the owners of the “Golden Eagle” brand against a rival “Golden Kingfisher” product, upholding the decision of the Commercial Court at Tis Hazari to refuse ex parte ad-interim injunction and appointment of a local commissioner.

The appeal was filed by Sanjay Gupta and Vinay Gupta, who were aggrieved by the Commercial Court's rejection of their request for an ex parte ad-interim injunction and the appointment of a local commissioner to seize allegedly infringing goods from the respondent, Vineet Jain.

The Guptas hold a device mark registration for “GOLDEN EAGLE” in Class 1 for chemicals, including mono sodium glutamate (MSG), effective from July 29, 2013. They sought to restrain Vineet Jain from using the mark “GOLDEN KINGFISHER” for identical products, alleging trademark infringement, passing off, and copyright infringement.

The judgment focused on the strictly limited scope of interference available to a court hearing an appeal against a discretionary order. Citing the Supreme Court precedent in Wander Ltd v. Antox India (P) Ltd, the bench reiterated that an appellate court will not substitute its own subjective view for that of the lower court unless the discretion was exercised arbitrarily, capriciously, perversely, or in disregard of settled legal principles.

The bench clarified that “in an appeal against an interlocutory order passed by the learned Commercial Court, the appellate Court would not substitute its subjective view for the view adopted by the learned Commercial Court. It is only if the learned Commercial Court errs on principle that the Court would interfere. Otherwise, factual and discretionary findings of the learned Commercial Court are ordinarily immune from interference in appeal.”

Applying these principles, the court stated that the Commercial Court had applied the correct standards. Upholding the Commercial Court's reasoning, the bench noted that “EAGLE” and “KINGFISHER” refer to entirely different types of birds with massive differences in size and behaviour.

The court further affirmed the Commercial Court's observation that the word “GOLDEN” often describes quality, and trademark law prevents a single entity from monopolising common words needed by other traders.

Rejecting the argument of conceptual similarity, or “idea infringement,” the High Court held that there was no connection whatsoever between either mark and the product, MSG, and therefore no basis to claim misappropriation of any unique idea.

Comparing the rival packaging, the court observed that the “GOLDEN EAGLE” pack used holographic text and dual logos, while the “GOLDEN KINGFISHER” pack featured a single blue bird and a different shade of gold. It found no visual similarity sufficient to establish infringement or passing off.

On passing off, the court noted that the appellants had not placed on record CA-certified sales figures or evidence of promotional expenditure to establish goodwill at the prima facie stage. It observed that mere unauthenticated turnover figures were insufficient to make out a case of goodwill.

Finding no error in the Commercial Court's reasoning and no prima facie case of trademark infringement, passing off, or copyright infringement, the High Court dismissed the appeal in limine.