Delhi High Court
M/S J K Oil Industries vs M/S Adani Wilmar Limited on 10 February, 2010
Author: Rajiv Shakdher
Bench: Rajiv Shakdher
* THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 05.02.2010
Judgment delivered on: 10.02.2010
IA No. 107/2010 & IA No. 1405/2010
IN CS(OS) No. 13/2010
M/S J.K. OIL INDUSTRIES ..... Plaintiff
Vs
M/S ADANI WILMAR LIMITED ..... Defendant
Advocates who appeared in this case:
For the Plaintiffs : Mr Sudhir Chandra, Sr. Advocate with Mr S.K. Bansal & Mr
Saurabh Kapoor, Advocates.
For the Defendants : Mr Rajiv Nayar, Sr. Advocate with Mr Amar Dave, Advocate.
CORAM :-
HON'BLE MR JUSTICE RAJIV SHAKDHER
1.Whether the Reporters of local papers may be allowed to see the judgment ? No
2. To be referred to Reporters or not ? Yes
3. Whether the judgment should be reported in the Digest ? Yes RAJIV SHAKDHER, J IA No. 107/2010 (O. 39 R. 1&2 of CPC by Pltf.) IA No. 1405/2010 (O. 39 R. 4 of CPC by Deft.)
1. I propose to dispose of the captioned Interlocutory Applications (in short „IAs‟) by a common order. IA No. 107/2010 has been filed by the plaintiff under the provisions of Order 39 Rule 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to as the „CPC‟), while IA No. 1405/2010 has been filed by the defendant under the provisions of Order 39 Rule 4 read with Section 151 of the CPC to seek vacation of the order dated 08.01.2010. For the purposes of the disposal of the captioned applications the facts, which are relevant, are set out hereinbelow:
PLEADINGS CS(OS) 13/2010 Page 1 of 16
2. The plaintiff has averred that it is in the business of manufacturing and marketing edible oils and other allied products through its "trading wing" namely M/s J.K. Oil Industries. It is averred that the "J.K. Oil Industries trading wings" supplies the goods manufactured by the plaintiff to the ultimate customers. The two, according to the plaintiff, form a single economic unit.
2.1 It is the say of the plaintiff that since 1985 it has been using the trade label as its trade mark in relation to the goods manufactured by it. It is, therefore, the stand of the plaintiff that it has over the years earned a valuable goodwill and reputation in the trade. It is the say of the plaintiff that an application was filed on 20.02.1999 with the Registrar of Trade Marks (In short the „Registrar‟) to seek registration of its trade mark (label) "OIL KING" in class 29 of the Trade Mark Act, 1999 (hereinafter referred to as the „Trade Mark Act‟), The application was numbered by the Registrar as 5056592. A registration certificate was issued by the office of the Registrar of Trade Marks vide certificate dated 13.09.1999. 2.2 It is important to note that the trade mark registration certificate (as indicated therein) shows that the trade mark (label) has been registered in the names of following: Moti Lal, Sadhu Ram, Ranjit Kumar, Raj Kumar and Sudarshan Kumar as J.K. Oil Industries. Furthermore, the registration is with respect to edible oil sold in the state of Delhi, Punjab, Haryana, Himachal Pradesh, Jammu & Kashmir, Rajasthan and Uttar Pradesh. The fact that before registration, the trade mark (label) was advertised in the trade mark journal has been alluded to, as also the fact that trade mark (label) was registered with a "disclaimer" with regard to "descriptive matters" . It may be important to note at this stage, (since great stress was laid by the defendant on this aspect) that the plaintiff did not file the relevant copy of the advertisements which made a reference to the disclaimer. This has been brought on record admittedly by the defendant.
2.3 Continuing with the narrative, the plaintiff has also filed applications for registration of trade mark (label) on an All India basis. There is also an averment to the effect that the CS(OS) 13/2010 Page 2 of 16 plaintiff has filed Form TM- 24 dated 03.12.2009 with the Registrar in order to reflect in the records the name of the existing partners of the plaintiff.
2.4 There is a specific pleading in paragraph 8 of the plaint, that the plaintiff has applied for registration of the trade mark (label) „OIL KING LABEL‟ in class 29, 35 and 39 vide application nos. 1892613, 1892614 and 1892612, respectively. The last application bearing no. 1892612, under class 39, it is stated was filed to seek registration on an All India basis. Admittedly, these applications are pending adjudication before the Registrar. 2.5 There are also the usual pleadings that the plaintiff‟s trade mark (label) has become distinctive and has acquired secondary significance; the consumers as well as the trade industry are able to identify and distinguish the plaintiff‟s goods by reference to the trade mark (label); the trade mark (label) identifies the source of the goods to the plaintiff; the plaintiff has proprietary rights, which includes both statutory and common law rights in its trade mark (label); and lastly, that it has also a copyright, goodwill and reputation in the trade mark (label) „OIL KING‟.
2.6 The plaintiff is aggrieved on account of the fact that the defendant has adopted a trade mark (label) i.e., „KING‟S LABEL‟ in relation to its goods and services which are similar to that of the plaintiff. It is further averred that the defendant‟s trade mark (label) is identical and deceptively similar to the plaintiff‟s trade mark (label) in all respects. It is alleged that the impugned mark of the defendant is phonetically, visually and structurally similar to that of the plaintiff. It is further alleged that it carries the same basis, idea and essential features as that of the plaintiff. The defendant has been accused of using the impugned trade mark (label) dishonestly and fraudulently with a view to trade upon the established goodwill, reputation and proprietary rights of the plaintiff. It is further averred that because of the defendant using the impugned trade mark (label) the unwary consumers, as also the trade, is likely to be deceived as to the origin of the goods put in the market by the defendant. CS(OS) 13/2010 Page 3 of 16 2.7 There is a specific averment to the effect that the plaintiff obtained information with regard to the defendant using the impugned trade mark (label) in September, 2009 at a point in time when the defendant filed its application bearing no. 1605509 for registration of its impugned trade mark (label) in class 29, which was, advertised in the trade mark journal on 01.09.2009. It is averred that the application of the defendant discloses that it was filed on 25.09.2007, with an endorsement that the defendant proposed user of the impugned trade mark (label) in future. In other words there was no current user -- not at least in 2007. Admittedly, the plaintiff has filed an opposition to the said application of the defendant. In paragraph 28 of the plaint it is averred that the cause of action arose in September, 2009 when, the defendant‟s mark was advertised in the trade mark journal, and thereafter, when the plaintiff filed its opposition in Form TM-5 dated 30.11.2009.
3. The defendant, on the other hand, in its application under Order 39 Rule 4 of the CPC has sought vacation of the order dated 08.01.2010. It has been stated before me by Mr Rajiv Nayar, Sr. Advocate instructed by Mr Amar Dave, appearing for the defendant that the same be treated as a reply to the plaintiff‟s application under Order 39 Rule 1 & 2 of the CPC. Briefly, the defendant‟s stand is as follows:
3.1 Defendant is a company worth Rs 5600 crores, which has been formed by virtue of a joint venture between two global corporations, i.e., Adani Group of India and the Wilmar Group.
3.2 The Adani Group is a lead player in international trading and private infrastructure, while the Wilmar Group is a primarily Singapore based Group, engaged inter alia in agri-
business, merchandising and edible oils.
3.3 The aforementioned entities have together set up India‟s first port based refinery at Mundra, Gujarat. The said refinery is India‟s largest and most sophisticated oil refinery. The defendant sells a wide range of edible oils, vanaspati and bakery shortening products under the brand name Fortune, King's, Raag, Bullet and Jubilee. The defendant has a CS(OS) 13/2010 Page 4 of 16 manufacturing facility at Mundra, Kadi, Manglore, Haldia, Shujalpur, and packing operations at Kadi (Gujarat), Latur (Maharashtra), Jaipur (Rajasthan), Dharwad (Karnataka), Dewas (Madhya Pradesh), Nagpur (Maharashtra) and Cochin (Kerala).
3.4 The defendant claims that it has production infrastructure across the country with a crushing capacity of approximately 6000 tons per day (TPD), and a refining capacity of approximately 5000 TPD. The defendant also claims that it has over 80 branches, 5000 distributors which caters to one million outlets; and has a household reach of about 20 million.
3.5 Crucially the defendant states that an application was made for registration of its mark "KING‟S" in class 29 on 25.09.2007 vide application no. 1605509. It is stated that separate applications have been filed as well for registration of labels containing the mark "KING‟S". The fact that a notice of opposition dated 30.11.2009 has been served by the plaintiff, has been disclosed.
3.6 It is also stated that in 1999 an application for registration of the mark, i.e., "KING‟S"
was preferred by one Kuok Oils and Grains Pte. Ltd., a company incorporated under the laws of Singapore. The company has since merged with a group company of the Wilmar Group, which, as indicated above, is one of the joint venture partners of the defendant. It is averred, to their best knowledge that no opposition to the said mark was preferred. It is the stand of the defendant that the rights of Kuok Oils Grains Pte. Ltd. got vested in the Wilmar Group.
3.7 It is further averred that the trade mark "KING‟S" has been used worldwide by the Wilmar Group; which as indicated above is a major share holder in the joint venture responsible for the formation of the defendant.
3.8 It is stated that the trade mark (label) "KING‟S" has been registered in various countries including Singapore, Australia, Malaysia, Myanmar, 16 African Countries, CS(OS) 13/2010 Page 5 of 16 Afganistan, Bangladesh, Laos, Zamibia, Tanzania, Ukraine, Brunei, China and Pakistan. In nut shell the trade mark (label) "KING‟S" has attained a worldwide reputation. 3.9 It is claimed that in the current financial year alone, the defendant has attained a turnover of more than Rs 150 cores. It is, therefore, claimed that the defendant has achieved a deep penetration in the Indian market for edible oil, a product which is sold under defendant‟s trade mark (label) "KING‟S". Reliance in this regard is placed on AC Neilsen Retail Report, 2009 which discloses the defendant‟s market share on an All India basis under various parameters. The relevant extract is as follows:
Volume market Retail Store Number of Retail
Share in % Penetration in % Stores in Actual
All India 4.4% 10.5% 107,738
3.10 There is also a reference to the fact that a substantial amount of money has been spent
in familiarizing the customers with the defendant‟s trade mark (label) through electronic and print media. In the details filed, the amount spent on advertising through electronic media is shown as a sum of Rs. 5.45,51,552/- .
3.11 In addition, the defendant has supported its plea for vacating the order on the following grounds:
(i) the validity of the plaintiff‟s trade mark (label) „OIL KING‟ is under challenge as a rectification application is pending adjudication. In this regard reliance is placed on the status shown on the website of the Controller General of Patents Designs and Trade Mark Registry as on 31.01.2010;
(ii) the registration of the trade mark (label) of the plaintiff "OIL KING" is subject to the disclaimer as regards the "descriptive matters";
(iii) there are various registered trade marks of different entities, which include the word "KING"; apart from that of the defendant;
CS(OS) 13/2010 Page 6 of 16
(iv) the plaintiff has no monopoly over the word "KING" which is a "common descriptive word" used in the industry. The reliance in this regard is placed on a computer generated public search report;
(v) the plaintiff has been deliberately vague about the sales figures achieved by it;
(vi) The locus of the plaintiff to file the present suit has been questioned on the ground that the registration certificate has been issued in the name of a set of persons (the names have been referred by me above), while the plaintiff in paragraph 7 has on its own showing disclosed the fact that Form TM-24 has been filed, to bring on record the change in the constitution of the plaintiff. The aforesaid Form has been filed, as indicated in paragraph 7 of the plaint, only on 03.12.2009; which as is apparent from the date was filed after the plaintiff had filed a notice of opposition to the defendant‟s application for registration of its mark „KING‟S‟. A specific reference has been made to the fact that the plaintiff has referred to partnership deeds to show the change in the constitution of the firm. The last one being, a partnership deed dated 25.03.2003. The defendant has questioned the motive of the plaintiff in filing Form TM- 24 as late as on 03.12.2009. The right of the plaintiff to seek continued protection of this court has been challenged on the ground of delay in filing Form TM-24 with the Trade Mark Registry;
(vii) the plaintiff has misled the court into believing at the time of issuance of an ex-parte injunction that the trade mark (label), appended at pages 1, 2 and 3 of the documents filed by the plaintiff, were registered vide registration certificate dated 13.09.1999 (appended at page 7 and 8 of the documents filed by the plaintiff), whereas the documents filed at pages 57 and 58 (of the plaintiff‟s documents) would show that in respect of the said labels, applications have been filed seeking registration only on 01.12.2009. As is apparent even these applications were filed after filing of the notice of opposition dated 30.11.2009 by the plaintiff; and, CS(OS) 13/2010 Page 7 of 16
(viii) lastly, the trade mark (label) of the plaintiff has been registered subject to limitations as to the territory. In this regard provisions of Section 30(2)(b) of the Trade Mark Act have been alluded to.
SUBMISSION OF COUNSELS
4. Mr Rajiv Nayar, learned senior counsel appearing for the defendant, in support of his application for vacation of stay articulated in brief the stand reflected in the averments made in the defendant‟s application. A great stress was laid on the fact that there was material suppression by the plaintiff in not appending a copy of the trade mark journal, which referred to the disclaimer as regards the "descriptive matters". It was the contention of the learned counsel for the defendant that the mark has worldwide reputation and consequently, it has sales of over Rs 150 crores in the current financial year in India itself. In contrast, it was submitted, the plaintiff has deliberately chosen not to disclose its overall turnover figures. The reason, according to the learned counsel, was not far to see since the plaintiff has no sales of his own; the sales invoices filed refer to sales made by its sister concern. It was contended that the plaintiff can have no monopoly over the word „KING‟; it is "common descriptive word" which is used in the industry extensively; there are several other business entities who have registered the word „KING‟ as part of their trade name or otherwise, and are selling goods including edible oils under the trade mark „KING‟; in view of the rectification application pending in respect of the plaintiff‟s trade mark (label) the suit is liable to be stayed under the provisions of Section 124 of the Trade Marks Act; the delay in approaching the court should by itself be a ground for vacating the injunction; and lastly, the plaintiff‟s statutory right under the registered trade mark (label) is restricted to the seven States, and therefore decidedly it does not have an All India presence.
5. As against this, Mr Sudhir Chandra, learned senior counsel for the plaintiff, while, reiterating the stand taken both in the suit as well as in the IA filed under Order 39 Rule 1 & 2 of the CPC, elaborated upon the same as follows:
CS(OS) 13/2010 Page 8 of 16
(i) that the plaintiff has been using the trade mark (label) since 1985;
(ii) that the plaintiff has obtained renewal of its registration till 2020;
(iii) the defendant‟s mark "KING‟S" is not registered in India as yet. A notice for opposition to an application filed in that regard, has been filed by the plaintiff which is pending adjudication.
(iv) The submission of the plaintiff that there are other business entities which have registered trade mark „KING‟ either as part of their trade mark or otherwise, is untenable unless the defendant is able to show a user of such trademark by such entities. There is in law a difference between what is "common to the register" as against what is "common to the trade" (see Century Traders vs Roshan Lal Duggar & Co. & Ors. AIR 1978 Del 250 and Corn Products Refining Co vs Shangrila Food Products Ltd AIR 1960 SC 142).
(v) the word „KING‟ is not a descriptive mark; (vi) no adverse conclusion could be drawn merely because the plaintiff has arranged its
affairs, in a manner, whereby sales are conducted through a sister concern; the invoices of the ultimate consumers have also been filed;
(vii) the fact that plaintiff has a smaller business presence when compared to that of the defendant by itself cannot be a ground for taking away the shield of statutory protection to which it otherwise has a legitimate right, in law.
(viii) delay by itself in approaching the court cannot be a ground for denial of injunction;
that too a delay of only 3 months. [See Midas Hygiene Industries (P) Ltd vs Sudhir Bhatia (2004) 3 SCC 90]
(ix) As to whether the word „KING‟ has become publici juris is an issue which can be determined only after the conclusion of the trial; and, CS(OS) 13/2010 Page 9 of 16
(x) lastly, that the plaintiff has both statutory rights as well as common law rights in its trade mark (label). The suit against the defendant is instituted both with regard to infringement of its statutory right and a tort of passing off committed by the defendant. REASONS
6. I have heard the learned counsel for the parties. What is at issue is the rights of the plaintiff both under the Trade Marks Act as well as its common law rights with respect to the trade mark (label) (which is appended at page 7 & 8 of the documents filed by the plaintiff). It is not in dispute that the plaintiff‟s trade mark (label) was registered on 13.09.2009, and relates back to the date of application, i.e., 20.02.1989. It is also not in dispute that the plaintiff has claimed user since 01.04.1985; a date which finds a mention in the advertisement carried in the trade mark journal, which has been filed by the defendant. Importantly, the plaintiff cannot dispute the fact that registration is subject to disclaimers with regard to "descriptive matters" appearing on the label, and is limited to seven states which find mention in the registration certificate. It is also not in dispute that the persons, whose names are shown as proprietors of the plaintiff‟s trade mark (label), may not be reflective of the existing constitution of the plaintiff, which is undoubtedly, a partnership firm. The plaintiff has made this aspect completely clear by alluding to the fact that Form TM-24 was filed by it with the Registrar on 03.12.2009.
7. In view of the admitted facts let me first examine some of the provisions of the Trade Mark Act, to the extent, in my view they are relevant.
7.1 Section 2(1)(m) defines a "mark" to include, amongst others, a device, brand, heading and label. The expression "trade mark" has been defined in Section 2(1)(zb) to mean: a mark capable of being represented graphically and, which is capable of distinguishing the goods or services of one person from those of the others and may include shape of goods, their packaging and combination of colours. Section 17 confers on the proprietor of a registered trade mark which consists of several matters, exclusive right to use of the trade CS(OS) 13/2010 Page 10 of 16 mark taken as a "whole". Sub-section (2) of Section 17 makes it clear that notwithstanding anything contained in sub-section (1) of Section 17: where a trade mark contains (a) any part which is not the subject matter of a separate application by the proprietor for the registration of a trade mark; or (b) which is not separately registered by the proprietor as a trade mark; or
(c) which contains any matter which is common to the trade or is otherwise of a non- distinctive character -- the registration of the mark shall not confer any exclusive right in respect of the matter which forms only a "part" of the "whole" of the trade mark, which is registered. Section 28 articulates the rights which are conferred on the proprietor of a registered mark; which of course, is subject to the other provisions of the Trade Marks Act. Section 29 sets out what would constitute infringement of a registered trade mark. Section 30 refers to the "limits on the effect of a registered trade mark". Sub-section 2(b) of Section 30 specifically alludes to the fact that a mark is not infringed if, the trade mark is used in relation to goods and services bearing in mind the conditions and limitations subject to which it is registered. The statutory effect of acquiescence for a continuous period of five years by the proprietor of the registered trade mark is set out in Section 33 of the Trade Mark Act.
8. A conjoint reading of the aforesaid provisions would clearly bring to fore the following:
(i) A mark in the form of a label can be registered; which is the situation obtaining in the instant case.
(ii) A trade mark registration confers on the proprietor exclusive right to use the trade mark as a "whole"; which is in the instant case is in form of a label.
(iii) There is no exclusivity conferred on the registered proprietor if he chooses to use only part of the whole of such registered mark and such "part" is neither a subject matter of the separate application for registration filed with the Registrar nor is it registered separately;
and, CS(OS) 13/2010 Page 11 of 16
(iv) Lastly, the registered proprietor may be able to protect a "part" of a registered trade mark if he is able to show it is not common to trade nor that it has obtained a distinctive character.
9. Therefore, in order to constitute infringement under the provisions of Section 29 of the Trade Marks Act, in my view, it would be necessary to show that impugned trade mark (label) is identical or deceptively similar to the registered trade mark. And once the plaintiff is able to establish that the impugned trade mark (label) is identical or deceptively similar to the registered trade mark (label) then, it matters little whether the defendant is using the impugned mark/label in respect of the goods and services which are not similar to those in respect of which the trade mark is registered. Undoubtedly, in the present case it cannot be disputed by the defendant that it is using the impugned trade mark with respect to the same line of business as that of the plaintiff and perhaps selling its good to consumers having the same profile, at least in the territories in which the registered trade mark is effective. The question, however, remains as to whether the plaintiff‟s trade mark (label) is identical or deceptively similar to that of the defendant. Therefore, it may be necessary to refer broadly to the essential features of the plaintiff‟s trade mark (label). These being:
AGMARK MUSTARD OIL OIL KING NET WEIGHT [PICTURE OF A MAN 15 KG.
DRESSED AS A KING] MFG. - J K Oil Industries Industrial Area Gangyak, Jammu
10. As against this, the impugned mark has the following essential features: it has a picture of certain food articles with the word "KING'STM" prominently displayed. It is important to note that there is a small sign of „TM‟ next to the word „KING‟ which obviously indicates that the defendant intends to use the same as a trade mark. In contradistinction CS(OS) 13/2010 Page 12 of 16 there is no such reference in the plaintiff‟s trade mark (label), and perhaps rightly so because the entire trade mark (label) -- as a "whole" has been registered. Admittedly, apart from the word „KING‟ which appears both on the plaintiff‟s trade mark (label), as well as on the impugned trade mark (label), there is no other commonality in the two trade marks (labels). In fact in the plaintiff‟s trade mark (label) the word „KING‟ is accompanied by the word „OIL‟. The font of the word „OIL KING‟ on the plaintiff‟s trade mark (label) is different to that of the defendant. The trade dress is different. The plaintiff has as a matter of fact neither stated nor claimed before me that they have applied separately for registration of the word mark „KING‟ with the Registrar. In these circumstances, I am not persuaded to hold at this stage that there is any infringement of the plaintiff‟s trade mark (label) when taken as a „whole‟ i.e., in its entirety.
11. That brings me to the submission of the plaintiff that it has a common law right in the trade mark (label) and that defendant has committed a tort of passing off. In order to bring home a tort of passing off, the plaintiff will have to establish and prove the following: (i) the defendant has made a false representation or employed deception. Mere confusion will not suffice; (ii) because of such false representation an unwary consumer is deceived, though there is no necessity to prove intent; and (iii) lastly, the false representation has injured the plaintiff‟s goodwill and not just its reputation.
11.1 In sum and substance passing off is really a tort of false representation whether intentional or unintentional whereby, one person attempts to sell his goods or service as those manufactured or rendered by another, which is, "calculated" to damage the goodwill of the other person. (See Erven Warnink BV vs Townend & Sons (Hull) Ltd 1980 RPC 31 at page
93). Therefore, for the plaintiff to succeed, it will have to prove all three ingredients referred to hereinabove. (See Island Trading vs Anchor Brewery 1989 RPC 287 at page 295).
12. A bare comparison of the registered trade mark (label) of the plaintiff with that of the impugned mark of the defendant would show that there is, prima facie no attempt to deceive CS(OS) 13/2010 Page 13 of 16 the „unwary‟ consumer by the defendant that the goods sold by it originate from the plaintiff. In any event, the ingredients of passing off as referred to above will have to be proved by the plaintiff by leading evidence during the course of trial. There is, however, nothing on record whether by way of affidavits of consumer(s) or any other documentary evidence [except the trade mark (label)] which would show that „unwary‟ consumers were deceived into believing that the goods sold by the defendant under the impugned trade mark (label) were those which originated from the plaintiff. Prima facie no case for passing off is made out at this stage.
13. Apart from the above, I would even otherwise vacate the injunction for the following reasons when seen in conjunction with what has been observed by me above:
(i) the plaintiff cannot but be attributed with the knowledge, at least prima facie, that the defendant has been selling its goods in the market under the impugned mark. The volume of sales referred to in the A.C. Nielsen Report filed by the defendant for the period July, 2009 and December, 2009 could not have been missed. As a matter of fact some of the invoices of the defendant relate back to April, 2009. Therefore, coming to court in December, 2009 is demonstrable of conduct which in the very least shows lethargy and procrastination on the part of the plaintiff. While I accept the submission of the learned counsel for the plaintiff that delay, by itself, cannot be a ground for denying the plaintiff of an injunction order, if otherwise it is entitled in law in an action for infringement -- in the instant case since there is no similarity between the registered mark and the impugned mark, the delay in approaching the court will certainly tip the balance in favour of the defendant;
(ii) it is quite evident that there are other business entities which have used the word „KING‟ as part of their trade name and obtained registration. While, I agree with Mr Sudhir Chandra‟s submission that unless the trade marks are actually used merely because they find a mention on the trade mark register, no rights would accrue to such entities and hence, much less to the defendant; is a proposition which would have examined in the context of the stand taken in the present proceedings. It is the plaintiff‟s assertion that the word „KING‟ which is CS(OS) 13/2010 Page 14 of 16 the only common aspect as between the plaintiff‟s trade mark (label) and the impugned mark, on registration, has conferred a monopoly in favour of the plaintiff. Logically, if that was so, one would have expected the plaintiff to at least to seek enforcement of its rights by taking a recourse to legal remedies to demonstrate at least its seriousness with respect to what is now claimed as a right. As in the case of defendant, the plaintiff would ordinarily be expected to, in the very least, file oppositions to registration of the word „KING‟ by other entities. The plaintiff has not claimed before me that it has taken any such steps. The document on public search filed by the defendant shows one such entity has obtained registration of its mark in respect of edible oils, and claims user since 1979;
(iii) the defendant, on the other hand, has filed an application for registration of its mark "KING‟S", which is pending adjudication;
(iv) the defendant has mustered a huge presence in a short span of time and spent substantial money on building its brand "KING‟S" in India on an All India basis;
(v) the word king is common to English language. It is not shown, at least at this stage, that it has attained secondary meaning or is distinctive of plaintiff‟s goods. What surprises me is that even though the plaintiff claims that it has been using its trade mark (label) since 1985 it has been reticent about disclosing its sales turnover figures; and,
(vi) lastly, the plaintiff‟s statutory right is subject to limitations in terms of territory.
14. In conclusion, on a balance I am persuaded to vacate the injunction order dated 08.01.2010. This is, however, subject to the defendant maintaining accounts of sales of goods sold by it under the impugned trade mark. A quarterly statement of such accounts, accompanied by an affidavit of an authorized representative of the defendant, shall be filed in court at the end of each quarter; beginning with the quarter ending 31.03.2010. The defendant shall continue to file its statements during the pendency of the suit. Needless to say any observations made hereinabove will not have any impact on the merits of the case. CS(OS) 13/2010 Page 15 of 16
15. Resultantly, IA No. 107/2010 is dismissed, while IA No. 1405/2010 is allowed. With the aforesaid observations the applications are disposed of.
RAJIV SHAKDHER, J FEBRUARY 10, 2010 kk CS(OS) 13/2010 Page 16 of 16