Sona Mandhira PVT. LTD. & Anr. vs. Sona Blw Precision Forgings LTD. & Ors.

Facts

The appellants (Sona Mandhira Pvt. Ltd. & Anr.) are challenging an interim injunction granted by the learned Single Judge against them. The injunction, sought by the respondents (Sona BLW Precision Forgings Ltd. & Ors.), restrained the appellants from using the word 'SONA' in their corporate name, trademark, or domain name during the pendency of the suit. The respondents had applied for registration of the device mark 'SONA Driving Tomorrow' with a disclaimer that the applicant had no exclusive right to the word 'SONA' separately. The appellants resolved to change their name to Sona Mandhira Private Limited, which the respondents alleged they learned about on June 22, 2020. The respondents filed a suit and an application for ad-interim stay. The learned Single Judge initially refused an interim injunction, noting the respondents' alleged suppression of the disclaimer, but later granted the injunction, imposing a cost of ₹10 lakh on the respondents for suppression of material facts.

Held

The Court dismissed the appeal, upholding the learned Single Judge's order. Regarding the first issue, the Court agreed with the learned Single Judge's prima facie finding that the appellants changed their corporate name with mala fide intentions. The Court found the appellants' plea of ripple effect on the supply chain and financial impact unconvincing. The Court also agreed with the submission that changing the packaging of products to sell them would not be expensive and would cause no serious prejudice to the appellants, whereas granting their prayer would cause grave prejudice to the respondents. The Court noted that the goods were not perishable, which weighed against granting the appellants' prayer. Regarding the second issue, the judgment does not explicitly address the argument concerning the assignment of the 'SONA BLW' mark, but the overall dismissal of the appeal implies this point was not found to be a ground for interference. The Court found no merit in the appellants' application and dismissed it. The judgments relied upon by the appellants were distinguished as not applicable to the present facts. The Court found no reason to grant the prayer sought by the appellants in their application.

Key Issues

1. Whether the learned Single Judge erred in granting an interim injunction restraining the appellants from using the word 'SONA' in their corporate name, trademark, or domain name, despite the Trade Marks Registry imposing a disclaimer on the exclusive use of the word 'SONA' in the respondents' registered mark 'SONA Driving Tomorrow' (Registration No. 1707890)? 2. Whether the learned Single Judge erred in allowing the respondent No.1 to seek relief concerning the trademark 'SONA BLW' (Registration No. 1730148) when it was only a proposed assignee from the original registrant, SONA BLW Präzisionsschmiede GmbH, in breach of Section 17 of the Trade Marks Act? Appellants' arguments: The learned Single Judge erred by granting exclusive rights for the word 'SONA' despite the Trade Marks Registry's disclaimer. The mark 'SONA Driving Tomorrow' is in Class 35 for management and advisory services, making an infringement claim against the appellants inappropriate. The injunction has significant financial implications, affecting debt liability and daily operations. They also argued that the respondents suppressed the disclaimer. They relied on judgments in Alkem Laboratories, Lupin Limited, Sun Pharma Laboratories, and S. Oliver Bernd Freier GmbH. Respondents' arguments: The product manufactured by the appellants did not bear the mark 'SONA'; only the packaging did, and thus the packaging could be changed without affecting the goods. They argued that the appellants' plea of ripple effect on the supply chain and financial impact was not appealing, especially given the prima facie finding of mala fide intent in changing the corporate name. They also argued that only amendments to PAN and GST registrations would be required, not new ones. They contended that changing packaging would not be expensive and would cause no serious prejudice, unlike the grave prejudice to the respondents if the appellants' prayer was granted.