Andhra Pradesh High Court Bars Deceptive Branding | Defendants Permanently Restrained From Using ‘Madras Filter Coffee’ Trade Name Citing “Irreparable Injury” And “Prior User Since 1978”
Safiya Malik
The High Court of Andhra Pradesh Division Bench comprising Justice Ravi Nath Tilhari and Justice Challa Gunaranjan held that the trial court failed to apply settled principles of law in granting a temporary injunction in a trademark dispute concerning the name "Madras Filter Coffee." The Bench set aside the trial court's orders granting injunctions, stating there was no material evidence of prior user by the plaintiffs. The Court concluded that the injunction was erroneously granted based on unsubstantiated claims and directed that the orders be set aside.
The dispute centers around a claim by the plaintiffs that their family had been using the trademark "Madras Filter Coffee" since 1978-79. The plaintiffs had sought a temporary injunction to restrain the defendants from using similar names or logos. The plaintiffs cited partnership deeds, a memorandum of understanding, and affidavits to support their claim. Specifically, they relied on Deed of Partnership dated 19.01.2023 and Retirement Deed dated 20.01.2023, both containing recitals asserting long-standing business in the name "Madras Filter Coffee."
The defendants contested the plaintiffs' claim, asserting that the alleged prior use since 1978-79 was fabricated. They submitted that the name first appeared in documents only in 2023, and no credible documentary evidence was provided to prove use of the name from 1978 onwards. They argued that if the business had existed since 1978-79, tax returns, licenses, or registrations should have been filed, but none were presented.
The defendants also contended that the plaintiffs and defendants had previously worked together under various partnership agreements including PSK Food and Beverages (22.06.2020), P.C. Enterprises (14.08.2020), and a comprehensive partnership deed (01.10.2020). However, none of these earlier deeds made any mention of the 1978-79 business lineage.
A Memorandum of Understanding dated 11.01.2023 was entered between the 1st plaintiff and 1st defendant for division of assets and brands. The 1st defendant agreed to have no rights over "Madras Filter Coffee," while the 1st plaintiff renounced claims over "Kumbakonam Degree Coffee." Subsequently, the 1st defendant retired from the partnership on 20.01.2023.
The trial court, based on the recitals in the 2023 deeds, found a prima facie case and granted temporary injunctions restraining the defendants from using the "Madras Filter Coffee" name or deceptively similar marks. The court found the balance of convenience in favor of the plaintiffs and held that refusal of injunction would cause irreparable harm.
The defendants filed appeals, arguing that the injunction was based on a single, recent document without corroborating evidence of prior user. They claimed the plaintiffs failed to meet the standard required for passing off actions, where prior use must be clearly established.
The High Court extensively reviewed the material relied upon by the trial court and recorded that the findings were not supported by objective evidence. It "found merit in the submissions advanced by the learned counsel for the appellant" and noted that "the learned trial Court has failed to apply the correct and settled principles of law in considering the temporary injunction in the matter of passing off action."
The Court stated that "the finding on prima facie case suffers from perversity" and "there was no evidence to establish, at this stage, the prior user by the plaintiffs." It reiterated that "mere recital in the 2023 partnership deeds could not substitute for documentary evidence of continuous use since 1978-79."
It was observed that "in such matters where the trademark is not registered in favour of any party and both the parties claim prior user, it is for the plaintiffs to establish prima facie case and for that to establish the prior user based on cogent material." The Court also cited multiple precedents including Wander Ltd. v. Antox India (P) Ltd. and Corn Products Refining Co. v. Shangrila Food Products Ltd., holding that prior user must be proved with substantial evidence.
The Bench recorded: "The learned trial Court committed error of law apparent, as even prima facie, for any prior user since 1978-79 by the plaintiffs, there was absolutely no evidence to show that." It stated that "based on stray statements in partnership deeds dated 19.01.2023 and 20.01.2023, without any corroborating documents, the trial court erred in granting the temporary injunction."
The Court concluded that the trial court failed to appreciate the requirement for establishing prior user through cogent and corroborated evidence in a passing off action. It stated:
"We are of the view that at this stage of the proceeding, to consider temporary injunction based on stray statements in the partnership deeds was not justified."
"The findings on prima facie case, balance of convenience and irreparable loss could not be in favour of plaintiffs in absence of material establishing prior user."
"The Orders passed by the learned trial Court cannot be sustained in the eyes of law and deserve to be set aside."
Accordingly, the Court directed:
"The Orders dated 21.10.2022 passed in I.A.Nos.536 & 537 of 2023 in O.S.No.68 of 2023, which are under challenge, are set aside. The Civil Miscellaneous Appeals are allowed."
"No Order as to costs. Pending miscellaneous petitions, if any, shall stand closed in consequence."
Advocates Representing the Parties:
For Appellant: Sri Balaji Medamalli
For Respondents: Sri O. Manohar Reddy, Senior Counsel, assisted by Sri Satya Sai Krishna Sistla
Case Title: Chidipothu Krishna Murthy Vs Paruchuri Yashwanth Kumar and Others
Case Number: CMA Nos. 522 & 523 of 2023 in O.S.No.68 of 2023
Bench: Justice Ravi Nath Tilhari, Justice Challa Gunaranjan
[Read/Download order]
