Imagine Marketing Pvt. Ltd. vs Exotic Mile
- Court
- Delhi High Court
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 06 July, 2026
+ CS(COMM) 519/2019
IMAGINE MARKETING PVT. LTD. .....Plaintiff
Through: Mr. Jayant Mehta, Senior Advocate
with Mr. Tushar Jarwal, Ms. Suman Yadav, Ms.
Nikhita K. Suri, Mr. Arunabha Gananguli, Ms.
Atishree Sood, Mr. Gurudas Khurana, Mr. Raghav
Dutt and Mr. Om Shelat, Advocates.
versus
EXOTIC MILE .....Defendant
Through: Mr. Akhil Sibal, Senior Advocate
with Mr. Sharabh Shrivastava, Ms. Taaniyaa
Dograa, Ms. Sarah Haque and Mr. Krishnesh
Bapat, Advocates.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J.
I.A. 25986/2025 in CS(COMM) 519/2019
1. This application is filed on behalf of the Plaintiff under Order XXXIX
Rules 1 and 2 CPC inter alia seeking interim injunction restraining the
Defendant and all others acting on its behalf from selling, exporting,
importing, offering for sale, distributing, advertising and/or directly or
indirectly dealing in goods and/or services under the mark BOULT and/or
any other mark deceptively similar to Plaintiff’s registered trademarks
BOAT/boAt and
and/or any other mark similar to
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and deceptively similar to Plaintiff’s
registered trademarks BOAT/boAt,
, amounting to
infringement and passing off.
2. Present suit was instituted by the Plaintiff inter alia seeking
permanent injunction restraining the Defendant from using the wordmark
BOULT and other device marks deceptively similar to Plaintiff’s registered
trademarks. By order dated 25.09.2019, Court granted ex parte ad interim
injunction restraining the Defendant in terms of prayer (i) of paragraph 15 of
I.A. No.13041/2019, filed by the Plaintiff seeking ex parte interim
injunction. For ready reference, paragraph 15(i) is as follows:-
“15. In light of the facts and circumstances mentioned hereinabove, it is
humbly prayed that this Hon'ble Court may pass:
i. An ex parte order for interim injunction restraining the Defendant,
its officers, servants, subsidiaries, and agents or others acting on its
behalf from selling, exporting, importing, offering for sale,
distributing, advertising, directly or indirectly dealing in goods and/or
or any other mark, or trade name, deceptively similar to the Plaintiff’s
services under the mark BOULT or
and
registered trademarks BOAT/boAt,
, amounting to
infringement of the Plaintiff’s copyright, Plaintiff’s registered
trademarks 2828749, 2828750, 2828752, 4038057, and 3456800,
passing off, and unfair trade competition, till the pendency of the
present suit.”
3. Aggrieved by the order, Defendant preferred an application under
Order XXXIX Rule 4 CPC being I.A. 14039/2019 seeking vacation of the
interim injunction. According to the Plaintiff, when this application was
filed even the Defendant understood that it was restrained from using the
impugned device marks as well as the wordmark BOULT and any other
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similar mark. Court disposed of both the applications vide judgment dated
21.01.2020 and operative part of the judgment is as follows:-
“18. Indubitably, the plaintiff is the prior user of the trademark BOAT
for the same category of goods with similar descriptions and had an
established market when the defendant's son acted as a consultant for a
distributor of the plaintiff’s product even as per its own averment. Thus,
the defendant was aware of the mark of the plaintiff. There being phonetic
similarity between BOAT and BOULT, the defendant's BOULT is
deceptively similar to the plaintiff’s mark. Supreme Court in the decision
reported as 1969 (2) SCC 131 K.R. Chinna Krishna Chettiar Vs. Shri
Ambal and Co., Madras & Anr. held that the resemblance between the two
marks must be considered with reference to the ear as well as the eye. It
was held:
“ 7. There is no evidence of actual confusion, but that might be due to
the fact that the appellant's trade is not of long standing. There is no
visual resemblance between the two marks, but ocular comparison is
not always the decisive test. The resemblance between the two marks
must be considered with reference to the ear as well as the eye. There
is a close affinity of sound between Ambal and Andal.”
xxx xxx xxx
21. The class of users of the product sold by the plaintiff and defendant is
all strata’s of the society including children as well. The similarity
between the two marks has not to be adjudicated by way of a precision but
the manner in which the senses perceive a fact and retain it in the memory.
BOAT and BOULT being quite phonetically similar, a consumer would not
have a correct complete and reflection when he goes to buy the product
whether the product is of BOAT or BOULT because of the first two and the
last alphabet of the two words being the same. Further, the logo of the two
products is also similar in the form of a triangle. The tagline also uses the
word PLUG in both so as to cause a deception. As held by this Court in
Hindustan Sanitaryware (supra) relied upon by learned counsel for the
defendant, a mark has to be looked into as a whole and on looking at it as
a whole, if there is a phonetic similarity resulting in every likelihood of
deception the plaintiff would be entitled to grant of injunction. Learned
counsel for the defendant has also contended that the defendant is into this
business since the year 2017 and besides manufacturing goods has
invested huge amounts in promotion and advertising. Once the Court
comes to the conclusion that the adoption of the mark, logo and tagline by
the defendant is dishonest in order to ride on the good-will of the plaintiff's
product, then merely because the defendant is using it since 2017 or has
invested huge amounts in promotion and advertising would not tilt the
balance of convenience in favour of the defendant. In the present case the
defendant is not only using trademark, logo and tagline deceptively similar
to that of the plaintiff, but is also using deceptively similar name for its
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product i.e. “BoultBassBud”, and has also adopted a similar get up and
colour scheme for its products and packaging.
23. As held in (2016) 2 SCC 683 S. Syed Mohideen Vs. P. Sulochana Bai,
relied upon by learned counsel for the defendant, since the defendant is
owner of the registered trademark BOULT, no action for infringement
would lie viz-a-viz the said trademark, however an action for passing off
the trademark, infringement of the copyright and dilution of the mark
would certainly lie against the defendant and the plaintiff would be
entitled to an injunction on the said count.
24. Consequently, the applications are disposed of and an interim
injunction in respect of infringement of the plaintiff’s registered trademark
3456800, passing off in respect of plaintiff’s registered trademarks
2828749, 2828750, 2828752, 4038057, 3456800 and 3907213,
infringement of the copyright of the plaintiff’s marks, dilution of the mark
is granted in favour of the plaintiff and against the defendants and the
defendants, their agents are restrained from using the marks
and 'UNPLUG YOURSELF' till the
disposal of the suit.”
4. Defendant filed an appeal being FAO(OS)(COMM) No.20/2020
challenging the judgment dated 21.01.2020 and vide order dated 27.01.2020,
the Division Bench stayed the operation, implementation and execution of
the judgment on a prima facie observation that there was no similarity,
visually or phonetically, between the rival marks and the interim order
continued till the final disposal of the appeal on 15.09.2025. Division Bench
affirmed the judgment of the learned Single Judge to the extent Defendant
was injuncted from using the device marks
,
pending disposal of the suit, but set aside the direction restraining the use of
tagline UNPLUG YOURSELF. During the pendency of the appeal,
Defendant informed the Court that it had given up the use of the impugned
marks including BOULT, save and except, the marks
and
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, which it was intending to phase out from August, 2025 and had
transitioned to GOBOULT. Noting this fact, Division Bench clarified in the
judgment that use of the mark GOBOULT by the Defendant was never
under challenge before the learned Single Judge and hence, there was no
restraint against use of the said mark by the Defendant. It was, however,
observed that if the Plaintiff desired to challenge the said use, that would
form a separate cause of action which would have to be taken up in
appropriate proceedings and any such challenge, if initiated by the Plaintiff
would, needless to say, be decided in accordance with law. After the
disposal of the appeal, Plaintiff filed the present application seeking interim
injunction against the use of the wordmark BOULT and any mark
deceptively similar thereto.
5. Case of the Plaintiff in the present application, as articulated by Mr.
Jayant Mehta, learned Senior Counsel, is that the Defendant ought to be
restrained from using the wordmark BOULT, which is phonetically and
visually deceptively similar to Plaintiff’s mark BOAT and its formative
marks. The learned Single Judge in its judgment dated 21.01.2020 found
phonetic similarity between BOAT and BOULT and this finding was not
interfered with and has been upheld by the Division Bench vide judgment
dated 15.09.2025. No appeal has been preferred by the Defendant against
the said judgment and hence, the finding of phonetic similarity in the two
marks has attained finality. In any event, there is a restraint on the use of
device mark
which prominently features and includes the word
BOULT and as a logical sequitur, the wordmark BOULT ought to be
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injuncted. Axiomatically, if use of the mark
has been
restrained, it is unfathomable to argue that the wordmark BOULT, which is
phonetically similar to Plaintiff’s BOAT mark, cannot be restrained since
the test of passing off on the touchstone of phonetic similarity as a factor has
been upheld by the Division Bench and applies equally to determining
similarity in the wordmarks. In fact, the entire challenge in the suit is
predicated on the foundation that the marks BOAT and BOULT are
phonetically similar and Defendant is cleverly attempting to take advantage
of a mere technicality of an inadvertent omission in the judgment dated
21.01.2020 of the wordmark BOULT. The fact that this was a mere
oversight is visibly clear from the finding of the learned Single Judge that
the mark BOULT is deceptively similar to Plaintiff’s registered mark BOAT
in paragraphs 18 and 21 and it is only in the operative part in paragraph 24
that the mark BOULT was omitted. The inadvertent omission is further
corroborated if one reads the ex parte ad interim injunction order dated
25.09.2019, where Court had restrained the Defendant from using the
wordmark BOULT as also the application by the Defendant seeking
vacation of interim injunction, wherein no distinction was made between
wordmark BOULT vis-à-vis device mark
. In fact, knowing
that Defendant was unlikely to succeed in the appeal qua the wordmark
BOULT, it discontinued use of the mark during the pendency of the appeal
and also filed an affidavit stating that use of the said mark has been stopped
albeit the mark is being used. Even during the hearing before the Division
Bench, Defendant never argued that the competing wordmarks were
phonetically dissimilar.
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6. It was further urged that it is not open to the Defendant to even
contest this application since Defendant always understood that there was a
restraint both against the device marks and the wordmark BOULT and this
is fortified by the fact that after the grant of ex parte injunction on
25.05.2019, Defendant ceased selling its products bearing the impugned
marks including the wordmark and commenced the use only after the
Division Bench stayed the operation of the judgment. In fact, in ground (B)
of the appeal, Defendant clearly set out wordmark BOULT as one of the
impugned marks forming subject matter of the appeal and even the proposal
submitted before the Division Bench, proposing to change the same to
GOBOULT, included the wordmark BOULT.
7. It was argued that in any event, the label mark which has been
restrained is nothing but the word BOULT in a stylized form and therefore,
the wordmark must necessarily be injuncted. [ Ref.: Kaviraj Pandit Durga
Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, 1964 SCC
OnLine SC 14 ]. The argument of the Defendant that the relief claimed in the
present application is barred by res judicata , issue estoppel, delay and
suppression is devoid of merit. None of these grounds are tenable once the
phonetic similarity between BOAT and BOULT stands upheld by the
Division Bench and the judgment has attained finality. The continuous use
of the impugned mark BOULT is in the teeth of the findings of the learned
Single Judge affirmed by the Division Bench as also Defendant’s own stand
on an affidavit that it had discontinued the use of all impugned marks
including the tagline, except the marks
and
, which
it was intending to phase out and stop using from August, 2025, as the
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Defendant had transitioned to the mark GOBOULT. Moreover, there is no
finding either by the learned Single Judge or the Division Bench that
Plaintiff is not entitled to injunction on the wordmark BOULT and once
there is no decision on merit, neither the doctrine of res judicata nor issue
estoppel is attracted and this is fortified by the observation of the Division
Bench that the judgment of the learned Single Judge does not cover the
wordmark BOULT and being the Appellate Court, it is not in a position to
rectify the omission. It is also pertinent to note that the Division Bench has
not held that Defendant can continue to use the wordmark BOULT and
instead has observed that Defendant can use the wordmark GOBOULT and
it is for the Plaintiff to take recourse to appropriate remedy against the said
use and to this extent, there is no merger of the judgment dated 21.01.2020
with the judgment of the Division Bench dated 15.09.2025.
8. It was strenuously argued by Mr. Mehta that it is a settled law that a
party can file multiple applications under Order XXXIX Rules 1 and 2 CPC
and there is no express bar in filing a subsequent application, when an
earlier one is decided in case of change in circumstances and/or undue
hardship. Order XXXIX Rule 4 CPC demonstrates the intention of the
Legislature that a party can seek variation or modification of an order, which
means that the injunction orders are merely interlocutory in nature and can
be modified. [ Ref.: Arjun Singh v. Mohindra Kumar and Others, 1963
SCC OnLine SC 43 and Rakesh Madan and Another v. Rajasthan
Financial Corporation and Others, 2009 SCC OnLine Del 39 ]. In the
instant case, the changed circumstance is the judgment of the Division
Bench where for the first time a finding was rendered that the learned Single
Judge had not expressly restrained the Defendant from using the mark
BOULT and any deceptively similar mark in the judgment dated 21.01.2020
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and till the passing of the judgment in appeal, both the parties also
understood that even the use of wordmark BOULT had been injuncted. This
changed circumstance thus enables and entitles the Plaintiff in law to seek
restraint against the wordmark BOULT. Mr. Mehta asserted that Plaintiff is
suffering undue hardship due to Defendant’s dishonest adoption and use of
BOULT, which is phonetically deceptively similar to Plaintiff’s prior
adopted and used mark BOAT, in respect of goods falling in the same
category with similar description and which is the whole foundation of the
subject matter of the suit. Since the Defendant is continuing to use the mark,
each use gives rise to a fresh cause of action and under the trademarks
regime, ‘use’ is interpreted as continuous actual commercial use, where each
instance of using a mark constitutes fresh cause of infringement and passing
off and even on that touchstone, this application is maintainable.
9. It was further urged that Plaintiff satisfies all parameters for grant of
interim injunction i.e. prima case , balance of convenience and irreparable
loss and injury. In the judgment dated 21.01.2020, learned Single Judge has
unequivocally held that Plaintiff is a prior user of the trademark BOAT for
same category of goods as under the mark BOULT; the rival marks are
phonetically similar; and the Defendant has dishonestly adopted the mark
BOULT and these findings regarding existence of prima facie case of
passing off have been upheld by the Division Bench as justifying no
interference. Even otherwise, the principles and findings laid down in both
the judgments in respect of device marks will equally apply to the wordmark
and/or any other mark similar to the impugned mark BOULT. Hence,
Plaintiff has a prima facie case in its favour. For the same reason, balance of
convenience also lies in favour of the Plaintiff and in effect, Plaintiff is only
enforcing its legitimate right for injunction against a phonetically similar
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mark and no prejudice will be caused to the Defendant. Plaintiff has invested
huge amount of money as also unparalleled efforts to promote its products
bearing the mark BOAT and use of the mark BOULT by the Defendant is
depriving the Plaintiff of monetary benefits, which it is lawfully entitled to
earn as also the opportunity to exploit its intellectual property according to
its own commercial strategies and options. Use of the mark BOULT by the
Defendant amounts to passing off and the misrepresentation of an
association with the Plaintiff is detrimental to the Plaintiff as well as public
interest and hence, if the interim injunction is not granted, irreparable harm
and injury shall be caused to the Plaintiff. In this backdrop, Mr. Mehta urged
that Defendant be injuncted from using the impugned wordmark BOULT
during the pendency of the suit while the Plaintiff reserves the right to take
recourse to appropriate remedies to challenge the adoption and use of the
mark GOBOULT, in terms of the liberty granted by the Division Bench.
10. Arguing on behalf of the Defendant, Mr. Akhil Sibal, learned Senior
Counsel urged that the present application be dismissed as not maintainable
as it is an abuse of process of law and also barred by doctrine of issue
estoppel. The instant application is Plaintiff’s second injunction application
seeking identical relief sought earlier and not granted by the learned Single
Judge in the judgment dated 21.01.2020 disposing of I.As. 13041/2019 and
14039/2019. Plaintiff accepted the judgment and neither challenged the
judgment before the higher forum nor sought any clarification/modification/
review of the judgment at the appropriate time before the Single Judge.
Defendant challenged the judgment in an appeal but even in these
proceedings, Plaintiff did not file any cross-appeal. The appeal has been
disposed of on 15.09.2025 noting that the learned Single Judge had
restricted the injunction order to impugned device marks and neither party
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has challenged this judgment which has thus attained finality. These
observations bind this Court and the parties. In fact, after the judgment by
the Division Bench, Plaintiff filed I.A. 25533/2025 seeking clarification to
the effect that by judgment dated 21.01.2020, Court has injuncted the
wordmark BOULT and any other mark or trade name deceptively similar to
Plaintiff’s trademarks. On this application, Court recorded Defendant’s
objections on maintainability on 14.10.2025 and expressed a prima facie
view that the application was beyond the scope of jurisdiction of this Court
in view of the judgment of the Division Bench. Plaintiff sought time to take
instructions and finally withdrew the application on 16.10.2025 and yet this
application has been filed. The instant application filed after 6 years from
the passing of the judgment dated 21.01.2020, is only an abuse of process of
law for an identical relief sought earlier and not granted and deserves to be
dismissed with exemplary costs.
11. It was strenuously argued by Mr. Sibal that it is trite that subsequent
applications for the same relief on the same grounds, after an earlier
application has been disposed of declining the relief, constitutes an abuse of
process of law, as held by the Supreme Court in S. Malla Reddy v. Future
Builders Cooperative Housing Society and Others, (2013) 9 SCC 349; K.K.
Modi v. K.N. Modi and Others, (1998) 3 SCC 573 and Arjun Singh
(supra). A bare reading of the averments in the present application leaves no
doubt that Plaintiff seeks identical relief on precisely the same grounds as
sought in I.A. 13041/2019 and to buttress this submission, attention of the
Court was drawn to paragraph 17 of the present application, where Plaintiff
avers that “ it is unequivocally clear that only on account of oversight was
the wordmark BOULT not mentioned expressly while restraining the use of
the device/logo marks.” The very fact that the Plaintiff accepts that the
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learned Single Judge allegedly omitted grant of injunction against the
wordmark BOULT is enough to show that this application seeks the same
relief as sought in the earlier application. The application is also barred by
principle of issue estoppel based on public policy and in this context,
reliance was placed on the judgment of the Supreme Court in Hope
Plantations Ltd. v. Taluk Land Board, Peermade and Another, (1999) 5
SCC 590.
12. It was argued that Plaintiff has heavily relied on the judgment of this
Court in Rakesh Madan (supra), but the judgment in fact supports the case
of the Defendant qua its objection on maintainability. In paragraphs 14 and
17 of the judgment, Court has held that in the absence of change in
circumstances and/or undue hardship, Court is not competent to grant an
interlocutory injunction which was sought and not granted earlier on the
same set of facts and also cautioned that exercise of power by the Court
should not lead to encouraging filing of applications before successive
Presiding Officers as no element of wager is to be attached to such
successive applications. This judgment was also distinguished in the case of
Smt. Raj Rani Sharma v. Smt. Gayatri Kukreja and Ors., 2012 SCC
OnLine Del 252.
13. It was further submitted that Plaintiff has not made out a case of
change in circumstances and/or undue hardship. These grounds are only an
afterthought as even the application lacks pleadings in this regard and the
averments are essentially confined to seeking injunction on the same
grounds as pleaded in the first application and on which the relief was not
granted albeit due to inadvertence, as per the Plaintiff. This itself negates
any possible argument of a change in circumstances, which requires some
additional facts or developments to be able to file a second application for
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injunction. The argument that judgment of the Division Bench brought
clarity that the learned Single Judge had not grant injunction on wordmark
BOULT and is a change in circumstance, is untenable in law and even
otherwise on facts, the judgment of the learned Single Judge is absolutely
clear wherein the interim injunction did not include the wordmark BOULT
and required no clarification.
14. It was further argued that Plaintiff has failed to establish any undue
hardship as there are no pleadings to this effect in the application, legal or
factual. The averments qua the prima facie case as also the balance of
convenience and irreparable injury are a mere repetition of the grounds set
out in the first application and allowing the application will set a trend where
every litigant will keep filing successive applications for identical reliefs
before successive Benches, when the reliefs are denied by earlier Benches.
The only factual foundation as regards the wordmark BOULT is in
paragraph 15 of the application, wherein Plaintiff alleges that taking
advantage of the observations of the Division Bench, Defendant is still
actively using the mark and reliance is placed on printouts of e-commerce
websites. The said allegations are denied by the Defendant asserting that the
documents relate to discontinued/unavailable products and archived listings
and there is no rebuttal in the rejoinder. Moreover, once the Defendant has
transitioned to a new trademark GOBOULT and is no longer using the mark
BOULT, there can be no case of undue hardship. Despite this fact,
Defendant is willing to take all necessary steps in coordination with the
Plaintiff to address any purported online residual presence of the mark
BOULT.
15. It was also urged that the ulterior motive behind filing the present
application is to indirectly undo the judgment of the learned Single Judge
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where no injunction was granted qua the wordmark BOULT as also the
observations of the Division Bench that in the absence of any injunction qua
the wordmark BOULT or against any deceptively similar mark, there is
currently no injunction, direct or indirect, restraining the use of GOBOULT,
which would constitute a fresh cause of action to be agitated in separate
proceedings. Even otherwise, the argument of inadvertence and oversight by
the learned Single Judge is misplaced since the judgment has merged with
the judgment of the Division Bench and the only subsisting interim order
today is the judgment dated 15.09.2025. [ Ref.: Kunhayammed and Others
v. State of Kerala and Another, (2000) 6 SCC 359; Khoday Distilleries
Limited (now known as Khoday India Limited) and Others v. Sri
Mahadeshwara Sahakara Sakkare Karkhane Limited, Kollegal (under
Liquidation) Represented by the Liquidator, (2019) 4 SCC 376 and Balbir
Singh and Another v. Baldev Singh (Dead) through his Legal
Representatives and Others, (2025) 3 SCC 543 ].
16. Last but not the least, it was argued that Plaintiff cannot invoke even
the inherent powers of this Court under Section 151 CPC as these powers
cannot be exercised where the Civil Procedure Code contains a specific
provision entitling the Plaintiff to seek injunction, as held by the Supreme
Court in K.K. Velusamy v. N. Palanisamy, (2011) 11 SCC 275 and by the
Allahabad High Court in Satya Prakash Tiwari @ Kallu and Others v. Civil
Judge (Junior Division), Etawah and Others, 2005 SCC OnLine All 1313
and therefore, the application be dismissed with exemplary costs.
17. Heard learned Senior Counsels for the parties and examined their
contentions.
18. The controversy in the present application is in a narrow compass.
Plaintiff seeks interim injunction against the Defendant from using the
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wordmark BOULT, which according to the Plaintiff is deceptively similar to
its mark BOAT and any other deceptively similar mark. From the narrative
given above, it emerges that when the ex parte ad interim order was granted
on 25.09.2019, Court had restrained the Defendant from using the wordmark
BOULT in addition to the device marks
.
Defendant thereafter filed I.A. 14039/2019 under Order XXXIX Rule 4 CPC
seeking vacation of the ex parte injunction order dated 25.09.2019. Both
I.As. 13041/2019 and 14039/2019 were decided by judgment dated
21.01.2020, restraining the Defendant from using the marks
and tagline ‘UNPLUG YOURSELF’ till the
disposal of the suit. Defendant challenged the judgment and vide order dated
27.01.2020, Division Bench stayed the operation of the impugned judgment.
By judgment dated 15.09.2025, the Division Bench affirmed the order of the
learned Single Judge to the extent Defendant was injuncted from using the
marks
but set aside the direction restraining
the use of the tagline ‘UNPLUG YOURSELF’. During the pendency of the
appeal, Defendant apprised the Division Bench that it had stopped using the
impugned marks including the mark BOULT except the marks
and
, which it was intending to phase out and stop using from
August, 2025, as the Defendant had transitioned to the mark GOBOULT.
Defendant also filed an affidavit to this effect before the Division Bench on
06.04.2025 and both these facts are recorded in the judgment. The Division
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Bench, however, clarified that as the use of the mark GOBOULT was never
under challenge before the learned Single Judge, there was no restraint
against use of the said mark by the Defendant and if the Plaintiff desired to
challenge the same, it would form a separate cause of action. The appeal was
disposed of with these directions and post the filing of the appeal, present
application has been filed by the Plaintiff.
19. Broadly, the asseverations of the Plaintiff in the application are that:
(i) learned Single Judge had by ex parte ad interim order restrained the
Defendant inter alia from using the wordmark BOULT and it was only an
omission due to oversight and inadvertence that the wordmark BOULT was
not expressly mentioned in the judgment dated 21.01.2020; (ii) Court did not
intend to decline the interim injunction qua the wordmark BOULT in light
of the findings of deceptive similarity with BOAT in the earlier part of the
judgment and if that was so, there would have been an express reasoning for
declining the relief; (iii) Division Bench has affirmed the judgment granting
injunction in respect of the impugned device marks thereby accepting and
upholding the deceptive similarity in the competing marks and thus the same
principle of deceptive similarity and consequent finding of passing off is
equally applicable to the wordmark; (iv) Plaintiff has a prima facie case
being a prior user of the trademark BOAT and there being deceptively
similarity in BOULT and BOAT and rival goods being in the same category
with similar descriptions as also owing to dishonest adoption by the
Defendant and two Courts having concurrently found and affirmed phonetic
similarity between BOAT and BOULT; (v) irreparable loss is caused to the
Plaintiff which has made substantial investments, both in terms of money
and efforts, to promote the products and trademarks and because the
Defendant continues to actively use the mark BOULT despite an affidavit
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before the Division Bench that it has stopped the use of all marks except
and
and was intending to discontinue them also
from August, 2025 since it has transitioned to GOBOULT; (vi) balance of
convenience is in favour of the Plaintiff since Defendant has been injuncted
to use similar marks owing to their phonetic similarity with Plaintiff’s
trademarks. Be it noted that there are no specific pleadings in the application
with respect to changed circumstances or undue hardship and these were
urged during oral arguments and stated in the written submissions.
20. Perusal of judgment dated 21.01.2020 leaves no doubt that the Court
did not extend the injunction order to the wordmark BOULT and any other
deceptively similar mark to Plaintiff’s marks. Division Bench has taken note
of this fact in several paragraphs of the judgment and particularly in
paragraph 4, where the Court observed that Plaintiff neither filed any
application seeking any modification or clarification of the judgment dated
21.01.2020 nor any cross appeal. In my view, it was as clear as day that
there was no injunction qua the wordmark BOULT in the judgment dated
21.01.2020 but the Plaintiff admittedly took no steps to seek modification/
review or clarification of the judgment to include the wordmark BOULT.
The judgment was not challenged and even after the Defendant filed the
appeal, Plaintiff did not file any cross appeal. Plaintiff waited for six long
years to file the present application and that too after the appeal was
disposed of. There is no explanation for waiting for six years, save and
except, that realization dawned on the Plaintiff that the wordmark BOULT
was not injuncted only after Division Bench’s observation that learned
Single Judge restricted the interim injunction to the three device marks and
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tagline, which cannot be accepted after reading the operative part of the
judgment of the Single Judge wherein there is no mention of the wordmark
BOULT.
21. It is a settled law that a second injunction application should not be
entertained on identical set of facts and the exceptions carved out are
‘changed circumstances’ and/or ‘undue hardship’ and to the extent of the
said legal proposition, reliance by Mr. Mehta, learned Senior Counsel on the
judgment of this Court in Rakesh Madan (supra), is correct. In the said
case, Court was dealing with an identical question as to whether a second
application for the same relief as in the first application under Order XXXIX
Rules 1 and 2 CPC, is maintainable. It was observed by the Court that
though CPC does not contain any express bar to a second application and the
bar is restricted to a second suit only, but the Courts have held that
principles of Section 11 are applicable to successive stages of the same
proceedings also albeit this principle may not apply to orders of an
interlocutory nature as held in Prahlad Singh v. Col. Sukhdev Singh,
(1987) 1 SCC 727. Court thereafter referred to Order XXXIX Rule 4 CPC
and observed that the provision itself does not attach any finality to the
orders in the nature of interlocutory injunction and enables the Court to
discharge or vary or set aside an order on finding the same to be necessary
by change in circumstances or if the order is found causing undue hardship
to any party. One cannot gloss over the observations of the Court in
paragraph 14, where it was observed that without any change in
circumstances or without any case of undue hardship being made out, Court
is not competent to, in the same facts, grant an interlocutory injunction,
which was declined earlier. Caution has to be exercised that such power
does not lead to filing applications before successive presiding officers and
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there is no element of wager to be attached to such successive applications.
Therefore, applying this very judgment to the present case, the instant
application can be entertained only if Plaintiff pleads and establishes a case
of changed circumstances or undue hardship.
22. As for the changed circumstance, Defendant is right that this
argument will entail some altered or additional facts or development for the
Plaintiff to seek the relief not granted earlier and mere omission or oversight
in the judgment dated 21.01.2020 cannot be a ground to re-agitate the same
relief in the second application. On the same touchstone the judgment of the
Division Bench cannot be construed as a change in circumstance, whereby
the judgment of the learned Single Judge has been affirmed to the extent of
the device marks. Pertinently, even here the argument is not that the
Division Bench has made some new observations giving rise to a cause to
file a second application. The argument is that only after the Division Bench
observed that the Single Judge had restricted the interim injunction to device
marks that clarity came on the scope and ambit of the said judgment. This
argument is both factually and legally untenable. On a factual note, there is
no ambiguity or confusion in the judgment dated 21.01.2020 inasmuch as on
a plain reading there was no interim injunction for the wordmark BOULT.
The Division Bench has only referred to this as a fact and matter of record in
reference to the judgment impugned before it and stated the obvious as
emerging from the judgment and cannot constitute ‘changed circumstance’
in law.
23. As for undue hardship, there is no specific pleading in the application
and as rightly flagged by Mr. Sibal, Plaintiff has failed to establish undue
hardship. The only factual foundation is set out in paragraph 15 of the
application, wherein the Plaintiff alleges that taking advantage of the
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technicalities, Defendant is continuing to use the wordmark BOULT and
reliance is placed on screenshots of e-commerce websites to demonstrate the
same. Defendant categorically denied this assertion in its reply stating that
the documents filed by the Plaintiff related to discontinued/unavailable
products and archived listings. There is no rebuttal to this in the rejoinder by
the Plaintiff.
24. The only other ground asserted is that the wordmark BOULT is
deceptively similar to the BOAT mark and once Courts have found phonetic
similarity with the impugned device marks as the test for passing off, on the
same yardstick the wordmark BOULT ought to be restrained. Reading of the
first application shows that phonetic similarity was the ground taken by the
Plaintiff in the first application i.e. I.A. 13041/2019 also for the wordmark
BOULT, but no injunction was granted with respect the said mark and/or
any other similar mark. In effect this application is primarily founded on the
grievance that non-grant of injunction qua the wordmark was a mere
omission due to oversight and inadvertence. Paragraph 17 of the application
is testament to this fact and is in itself pointer to the fact that identical relief
is being claimed in the present application and is enough to dismiss this
application.
25. Defendant rightly urges that Plaintiff is unable to point out any
change in circumstance after the passing of the judgment dated 21.01.2020,
which has altered the position from the one that obtained when the judgment
was passed, which has now merged with the order of the Division Bench
restricting the relief of injunction to the three device marks
, and hence granting interim injunction on the
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wordmark BOULT on ground of deceptive similarity at this stage is beyond
the remit of this Court and will amount to rewriting both the judgments.
26. Be it also noted that prior to filing the instant application, Plaintiff had
filed I.A. 25533/2025 seeking clarification to the effect that judgment dated
21.01.2020 had injuncted the wordmark BOULT and any other mark or
trade name deceptively similar to Plaintiff’s trademarks. Court recorded the
objection of the Defendant on the maintainability of the application on
14.10.2025 and also expressed a prima facie view, as recorded in paragraph
5 the order that the application was beyond the scope of jurisdiction of this
Court. Plaintiff sought an adjournment and on 16.10.2025, withdrew the
application unconditionally, with no liberty. Thereafter, the present
application has been filed seeking the same relief circuitously and cannot be
entertained. In this context, Mr. Sibal rightly placed reliance on the
judgment in S. Malla Reddy (supra), K.K. Modi (supra) and Arjun Singh
(supra), to argue that filing subsequent applications for the same relief on
the same set of facts, where the relief is once declined and the application is
disposed of, constitutes abuse of process of Court. The argument that Court
may invoke its inherent powers under Section 151 CPC also cannot be
accepted in the aforesaid facts and more so, when exercising power under a
specific provision of the Code i.e. Order XXXIX Rules 1 and 2, Court
restricted the relief to the device marks and against which neither any
application for review/modification/clarification nor any appeal was filed
and even during the pendency of Defendant’s appeal, no cross appeal was
filed.
27. There is another aspect of the matter, especially in the context of the
alleged undue hardship, vociferously contended on behalf of the Plaintiff
and which is that Defendant is no longer using the wordmark BOULT.
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During the pendency of the appeal, Defendant had informed the Division
Bench that it had discontinued the use of the impugned marks, save and
except, the marks
and
, which too it had decided to
phase out from August, 2025. An affidavit dated 06.05.2025 was also filed
by the Defendant to this effect before the Division Bench. Even before this
Court, Defendant has reiterated this stand and stated that it has transitioned
to the new trademark GOBOULT and is no longer manufacturing any goods
under the trademark BOULT. In light of this, even assuming that the
application can be entertained, the ground of undue hardship has no
foundation. In fact, if one looks at the averments in the application, the case
of the Plaintiff appears to be that despite taking a position before the
Appellate Court that Defendant has not given up the use of the impugned
marks and is continuing to use the same. While the Defendant denies this
position in its reply, Mr. Sibal had during the course of hearing repeatedly
stated, on instructions, that if any stray listings are found to exist, Defendant
is willing to extend any assistance to take down the same to address any
purported online residual presence of the wordmark BOULT.
28. For all the aforesaid reasons, there is no merit in the application and
the same is accordingly dismissed.
JYOTI SINGH, J.
th
JULY 6 , 2026 / YA
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