Delhi High Court
Som Brothers & Company vs Bread House & Anr. on 15 April, 2010
Author: V.K. Shali
Bench: V.K. Shali
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) NO.562/2010
Date of Decision : 15.4.2010
SOM BROTHERS & COMPANY ...... Plaintiff
Through: Mr. Amarjit Singh with
Mr.Dhruva Bhagat,
Advocates.
Versus
BREAD HOUSE & ANR. ...... Defendant
Through: Mr.Sudhir Chandra,
Senior Advocate with
Mr.Hemant Singh and
Ms.Mamta Jha,
Advocates.
CORAM :
HON'BLE MR. JUSTICE V.K. SHALI
1. Whether Reporters of local papers may be
allowed to see the judgment? YES
2. To be referred to the Reporter or not ? YES
3. Whether the judgment should be reported
in the Digest ? YES
V.K. SHALI, J. (oral)
IA No.3978/2010 (u/O XXXIX Rules 1 and 2 CPC) & IA
No.4135/2010 (u/O XXXIX Rule 4 CPC)
1. This order shall dispose of IA No.3978/2010 and IA No.
4135/2010.
2. Briefly stated the facts of the case are that the plaintiff is a
partnership firm. It is claimed by the plaintiff that it has
honestly adopted a trademark „GURU‟ in respect of variety
of articles for human consumption such as rice, wheat,
CS(OS) NO.562/2010 Page 1 of 20
besan, gram, suji, flour atta, all kind of pulses, cereal
preparations, suji rusk, soya chunks, soya granuales,
dalia, pulses, cereals, roasted grams, and cattle feed etc.
and all kinds of cereal preparations i.e. biscuits, wafers,
noodles, khichdi, mirch masala, channa masala, garam
masala, chocolates, sevian (cereal preparations), mineral
water, milk, milk products, papad, widian, guru diet, salt,
spices, chips, fruit drinks, pickles, sauces, jams, and
confectionary items. It is stated that the said mark is
being used by them exclusively from the year 1988 when it
was got duly registered as a trademark vide registration
No.499956 in class 30 on 26.10.1988. It has been stated
that the said trademark has been renewed from time to
time and was last renewed on 15.6.2009 for a period of ten
years for which a formal certificate has been issued to
them. Thus on the basis of the aforesaid trademark, the
plaintiff has claimed that the said trademark has over a
period of time obtained certain goodwill and market value
and the ascending sales show that it has attained certain
respectability in the market especially in Northern State.
3. It is alleged that defendant no.1 is the seller of the product
of defendant no.2. The defendant no.2 is a company
incorporated under the provisions of Companies Act having
its registered office at M-5A, Connaught Circus, New Delhi-
01. The defendant company is also engaged in the
business of manufacturing and sale of the edible articles
CS(OS) NO.562/2010 Page 2 of 20
for human consumption including cereals products,
confectionary items, noodles, milk products, sweets, tea,
biscuits, wafers, chocolates and other articles of human
consumption having wheat, flour, rice, besan, sugar, cereal
preparations, soya and flour improvers as an essential
ingredients. The defendant no.2 is also using various
trademarks of generic words including NESTLE, NESCAFE,
MAGGI, MUNCH etc. in respect of varieties of goods which
are sold in the market. In the instant case, it is alleged
that the product which is being manufactured and sold by
the defendant no.2 as wafers, layers covered with choco
layers under the mark NESTLE MUNCH. It is alleged that
recently the defendant no.2 has adopted the registered
trademark of the plaintiff „GURU‟ in respect of this very
wafer layers covered with choco layers under the mark
NESTLE MUNCH bar by adopting a scheme under the
brand name of NEW GURU PACK. It is alleged that the
said package of the MUNCH bar is packed in such a
manner where the word „New‟ and „Pack‟ are written in a
comparatively much smaller font as against the word
„GURU‟ which has been given prominence and by doing so,
they have infringed the trademark of the plaintiff. It is
alleged that the plaintiff has got prima facie good case and
that the balance of convenience is also in favour of the
plaintiff and that the plaintiff will suffer an irreparable loss
in case the defendants are not restrained from infringing
CS(OS) NO.562/2010 Page 3 of 20
the said trademark „GURU by use of the phrase „NEW
GURU PACK‟.
4. The matter had come up for hearing for the first time on
26.3.2010 and notice was issued in respect of the suit as
well as the interim application to the defendants,
returnable for 27.7.2010. But in the meantime by a
speaking order, an ex parte ad interim injunction was
granted against the defendants from using the word „Guru‟
on its products including choco layered wafers till the next
date of hearing.
5. The plaintiff was directed to comply with the provisions of
Order 39 Rule 3 CPC within a week. The defendants on
service, filed an application bearing IA No.4135/2010,
under Order 39 Rule 4 CPC for vacation of ex parte ad
interim stay, which was listed for the first time on
05.4.2010.
6. In response to the advance copy having been served on the
plaintiff, the learned counsel for the plaintiff appeared on
05.4.2010 and accepted notice and sought two days‟ time
to file the reply. Reply was filed and arguments were heard
on 7.4.2010, 12.4.2010 and 13.4.2010 in the matter.
7. The main contention of the learned senior counsel for the
defendant Mr.Sudhir Chandra for vacation of stay were
threefold, which were as under:-
(a) The first contention was that the plaintiff is guilty of a
very sharp practice which has not been approved of by
CS(OS) NO.562/2010 Page 4 of 20
the Court and therefore, the stay deserves to be vacated
on this ground itself. The practice which was objected to
by the learned senior counsel was that although the
plaintiff was having a grievance against the product
being manufactured and sold essentially by Nestle India
Ltd. under the brand name of MUNCH with the user of
the word „NEW GURU PACK‟ but the manufacturer of the
said product namely Nestle India Ltd. was not made as
defendant no.1. On the contrary, it was alleged, that an
innocuous party M/s Bread House was made as
defendant no.1. It was contended that this was done
deliberately so that the learned counsel for defendant
no.2 who is present in Court is not available to spot that
the suit is filed against their company and consequently,
resist at the threshold itself the grant of any an ex parte
ad interim stay.
8. The learned senior counsel has also referred to the
judgment of this Court in case titled Micolube India Ltd.
Vs. Maggon Auto Centere & Anr. 2008 (36) PTC 321 (Del.)
wherein this unhealthy practice particularly on the part of
the plaintiff to array the main defendant as defendant no.2
or otherwise while naming some of the innocuous dealers
or retailers as defendant no.1 was being indulged to by all
the parties, so as to avoid the matter being noticed and
then contested by the main contesting party and the stay
CS(OS) NO.562/2010 Page 5 of 20
being resisted. The observation of the learned Judge in the
said judgment needs to be reproduced here:-
"25. Another factor which goes against the plaintiff
is the manner in which the parties have been
arrayed. The defendant no.2 is the main
defendant who has the registration of the well
known mark „MICO‟ in respect of automotive
parts. However, the plaintiff has chosen to array
Maggon Auto Centre as the main defendant when,
according to the averments made in paragraph 17
of the plaint, it is averred that the defendant no.1
is only a dealer of the impugned goods of the
defendant no.2 and that the exact relationship
between them is not known to the plaintiff and
that the defendant no.2 is called upon to disclose
the exact relationship between them. It is
unfortunate that the main defendant (Motor
Industries Co. Ltd.) has been arrayed as defendant
No.2 and Maggon Auto Centre, who is alleged to
be a dealer of the main defendant and whose exact
relationship is unknown to the plaintiff is arrayed
as defendant No.1. It is not only in this case, but
in several other cases that this court has noticed
this unhealthy trend on the part of the plaintiffs to
array the main defendant as defendant No.2 or
defendant no.3 while naming some innocuous
dealer or retail outlet as defendant no.1. The
object is easily discernible. When the counsel for
the main defendants scan the list of cases, they
would not be able to know as to whether any case
has been filed against them so as to enable them
to appear on the very first date on which the case
is listed before court. The very fact that the
plaintiff has also indulged in this practice is also
an indicator that it did not want the counsel for
the defendant no.2 to appear on the first date on
which the matter was taken up for consideration
of the grant or non-grant of ad interim injunction.
This fact also dis-entitles the plaintiff to any
equitable relief. I am of the view that the plaintiff
has concealed and suppressed material facts from
this Court."
9. The learned counsel for the plaintiff tried to justify the
naming of Nestle as defendant no.2 by urging that since the
offending product was purchased from M/s Bread House,
CS(OS) NO.562/2010 Page 6 of 20
therefore, it was made as defendant no.1. It was contended
by the learned counsel for the plaintiff that there was no
specific reason to try to attach too much importance to the
contention of the counsel for defendant no.2 by making it
defendant no.2. Even otherwise, it was also contended by
the learned counsel for the defendant that this kind of
practice where the innocuous party was being made as
defendant no.1 was started by the learned counsel for
defendant no.2 himself and the same has been adopted by
the other counsel practicing in the field of trademark in
equal measure and therefore, the learned counsel for the
defendant could not raise any objection with regard to a
practice which was started by them only.
10. I have considered the submissions of the respective sides.
At the outset, the contention of the learned counsel for the
plaintiff that this unhealthy practice, even though may
have been started by a particular counsel, who may or may
not be the defendant‟s counsel in the instant case but that
can hardly be a ground for justifying the practice being
adopted by the plaintiff in a given case. The grant of
injunction is an equitable relief by the Court and therefore,
one of the principles which the Court has consistently been
observing while granting such a relief is that the party
must come to Court with clean hands. It is this feeling
which was reflected in ample measure in the judgment of
the learned Single Judge in the above-noted case where it
CS(OS) NO.562/2010 Page 7 of 20
was observed that of late unhealthy practice on the part of
the plaintiffs has been started by making the main
contesting defendant as defendant nos.2 and 3 rather than
defendant no.1 so that the name of the main contesting
defendant does not get detected and the party does not
come on the first date itself so as to contest the grant of
any ex parte stay.
11. In the case which has been cited by the learned Senior
counsel for the defendant, this was one of the grounds on
which it was held that the plaintiff is disentitled to the
equitable relief because it was taken that the plaintiff had
concealed the material fact from the Court.
12. There is no denying the fact that as on date, the Courts
have to deal with cases where the question of grant of ex
parte stay are involved day in and day out. This is more
true in cases of trademarks where the matter is admittedly
contested after the defendant puts in appearance.
Therefore, this unhealthy practice of making the main
contesting party as the defendant no.2 or otherwise with a
view to avoid the detection by the main contesting party
has to be not only deprecated but visited with some
sanction which obviously can be in a manner, no other
than by refusing the grant of interim relief to the party
coming to the Court. It is also the common knowledge that
the ex parte injunction as per Order 39 Rules 1 and 2 CPC
CS(OS) NO.562/2010 Page 8 of 20
must be decided within 30 days from the date of grant as
per terms of Order 39 Rule 1 CPC but on account of huge
pendency of cases, the Courts are not able to decide the
injunction application within the time frame which is
stipulated by the legislature and consequently by default,
the ex parte ad interim injunction order which is obtained
by the plaintiff in such cases is prolonged to the detriment
of the main contesting party even though it has learnt
about the same. As the plaintiff has admittedly made
defendant no.1, an innocuous party, knowing fully well that
defendant no.1 has no role except the fact that he is the
retailer but it is actually the product which is purportedly
manufactured by the defendant no.2 who is the main
contesting party has indulged in sharp practice and
therefore, this conduct disentitles it to any equitable relief
of an injunction. Since this has not been done, therefore,
on this short ground itself, the ex parte ad interim
injunction against the plaintiff deserves to be vacated
because the plaintiff has not come to the Court with clean
hands.
13. The second contention, which has been raised by the
learned senior counsel for the defendant is that the plaintiff
has been responsible for concealment of material facts and
making wrong averments in para 17 of the plaint. The
plaintiff in para 17 of the plaint has observed as under:-
CS(OS) NO.562/2010 Page 9 of 20
"17. The plaintiffs respectfully submit that
the use of the mark GURU on the part of the
defendant, in any manner whatsoever
constitutes acts of infringement of plaintiff‟s
registered trademark No.499956 in Class 30
as well as passing off. The defendant has no
right, interest, title or justification to adopt
and/or use the plaintiff‟s trademark GURU
either as a trademark or aver to describe
the character of the packaging thereof.
The use of the plaintiffs trade mark GURU
on the part of defendant is not bonafide."
14. The contention which was raised by the learned senior
counsel for the defendant was that the pleadings which
have been made by the plaintiff are that a person who has
got the trademark registered has no absolute right to use
the said trademark absolutely because the said right which
is conferred by Section 28 of the Act is subject to other
provisions of the Trade Marks Act, 1999.
15. The learned counsel has referred to Section 28 of the Trade
Mark Act, 1999, which reads as under:-
"28. Rights conferred by registration.--(1)
Subject to the other provisions of this Act,
the registration of a trade mark shall, if
valid, give to the registered proprietor of the
trade mark the exclusive right to the use of
the trade mark in relation to the goods or
services in respect of which the trade mark
is registered and to obtain relief in respect of
infringement of the trade mark in the
manner provided by this Act.
(2) The exclusive right to the use of a trade
mark given under sub-section (1) shall be
subject to any conditions and limitations to
which the registration is subject.
(3) Where two or more persons are registered
proprietors of trade marks, which are
identical with or nearly resemble each other,
CS(OS) NO.562/2010 Page 10 of 20
the exclusive right to the use of any of those
trade marks shall not (except so far as their
respective rights are subject to any
conditions or limitations entered on the
register) be deemed to have been acquired by
any one of those persons as against any
other of those persons merely by registration
of the trade marks but each of those persons
has otherwise the same rights as against
other persons (not being registered users
using by way of permitted use) as he would
have if he were the sole registered
proprietor."
16. The learned senior counsel for the defendant has next
referred to Section 30 of the Trade Marks Act and
contended that the case of the defendant is covered by
Section 30(2) (a) of the Act, which reads as under:-
"30. Limits on effect of registered
trademark.--
(1) ...............
(2) A registered trade mark is not infringed
where--
(a) The use in relation to goods or services
indicates the kind, quality, quantity,
intended purpose, value, geographical origin,
the time of production of goods or of
rendering of services or other characteristics
of goods or services;
(b) .............
(c) ...............
(d) ...............
(e) ..............
(3) ................
(4) ............... "
17. It was urged by the learned senior counsel for the
defendant that a perusal of the aforesaid two provisions
would clearly show that although a party may be a
CS(OS) NO.562/2010 Page 11 of 20
registered owner of the trade mark but the said mark will
not be said to be infringed where use of such a trademark
is in respect of defining or indicating the kind, quality or
quantity of the goods or services.
18. It was contended that the use of the word GURU by the
defendant no.2 was primarily to define the quantity of the
MUNCH wafers which was being sold by the defendant.
The learned counsel has contended that this can be seen
with reference to the background in which the said package
has been adopted by the defendant inasmuch as they are
selling the MUNCH in three packs i.e. CHOTU measuring
6.1 gms, MAHA measuring 16 gms and NEW GURU PACK
measuring 30 gms which are priced at Rs.2/-, Rs.5/- and
Rs.10/- respectively. Since the user of the word GURU
which has been defined in Bhargava‟s dictionary as is
'Heavy, Large, eminent, respectable, esteemed, etc.,
therefore, it is being used as an adjective to disclose or
convey the quantity equal to or more than MAHA which is
being sold by the defendant.
19. As against this, the plaintiff in para 17 of the plaint has
given an impression as if a registered trademark owner has
the absolute right to use the said trademark and the
defendant has no right or interest or justification in using
the said trademark which is totally misstatement of fact or
rather concealment of material fact from this Court and if
CS(OS) NO.562/2010 Page 12 of 20
disclosed, the ex parte ad interim stay would not have been
granted to the plaintiff.
20. The learned counsel for the plaintiff has contested this
claim of the learned senior counsel for the defendant that
there has been any concealment of material fact in para 17
of the plaint. It was contended that the use of the word
GURU according to the documents relied upon by the
defendant themselves along with their application seeking
vacation of stay indicates that the word „Nestle‟ has been
omitted in their advertisement which was being depicted on
the television.
21. The learned counsel has drawn the attention of this Court
to various documents where the word „Nestle‟ has not been
written to this visual of those print outs shown in Court
during the course of hearing which depicted that the word
„Nestle‟ was used in the beginning or at the end of the
entire advertisement and therefore, the print out which has
been referred to by the learned counsel for the plaintiff is
being torn out of context and tried to be taken advantage
of.
22. I do not agree with the contention of the learned counsel for
the plaintiff that there is no misrepresentation of facts. The
learned counsel for the plaintiff has contended that word
GURU, in common parlance means „Teacher‟ or a „preacher‟
or a respectable person and therefore, by using the word
CS(OS) NO.562/2010 Page 13 of 20
GURU it cannot be said that the said word depicted the
quantity of the product. It was contended that the
defendant had other better options to disclose or describe
the quantity of the product by using the word „Big, excel
etc.‟ rather than using the word „Guru‟.
23. I have carefully considered this submission of the learned
counsel. The relevant Sections have already been
reproduced hereinabove.
24. There is no denying of the fact that the owner of a
registered trademark has no absolute right to use the
trademark because the said right under Section 28 itself
has been made subject to various provisions of the Act
itself. So far as Section 30 (2) (a) of the Act is concerned,
that is by way of one of the exceptions where the user of a
mark which may be the registered trademark will not be
deemed to have been infringed if it is being used in a
manner to describe the quantity, quality, characteristic of
the services of the goods by a person who is using the said
alleged offending mark. Therefore, the question which
arises for consideration is whether it can be said that the
use of the word GURU by the defendant is being used for
the purpose of defining the quantity of the wafers, layered
with choco layer Munch bar which is being sold and
manufactured by them. For this purpose, one will have to
see the definition of the word „Guru‟ in Hindi language.
CS(OS) NO.562/2010 Page 14 of 20
Bhargava‟s dictionary in Hindi is a reputed one and can be
referred with great deal of authenticity.
25. A perusal of the definition of the word GURU shows that it
is used as both adjective as well as noun. It can certainly
be termed to be as large or big definition if it is used as an
adjective and if it is used as a noun then certainly it refers
to as a „teacher‟ or someone who preaches.
26. In the light of the present facts, the contention of the
learned senior counsel for the defendant to this that the
use of the word „GURU‟ is in the form of an adjective
defining the quantity of their Munch pack while as the
same is sought to be refuted by the learned counsel for the
plaintiff by referring it to be as noun. Therefore, meaning
that in an ordinary parlance, it will be referred to as a
„teacher‟.
27. I feel that there is a merit in the contention of the learned
senior counsel for the defendant that the word „Guru‟ is
used in the instant case more as an adjective to define the
quantity of the Munch bar rather than being used as a
noun. Any product which is manufactured by a party is
not to be seen in isolation especially when a question of
prima facie view is to be taken. The defendant has placed
on record the documentary evidence which shows that they
are manufacturing the aforesaid wafers, layered with choco
layer Munch bar in three different forms, smaller one is
CS(OS) NO.562/2010 Page 15 of 20
having 6.1 gms, which is called Chotu, the second one is of
15 gms which is called Maha and the third one is 20 gms.
which is called GURU and it is this last pack, which has
been stated to have been started only sometime in the
middle of 2009 that it has been termed as NEW GURU
PACK. In this background, using the word „Guru‟ by the
defendant is referring to the quantity of the product. It
could be said that the only conclusion which one can draw
is that the word „Guru‟ is used to denominate or give the
indication of the quantity of this New Guru Pack bar
started by the defendant.
28. In this regard, not only the case of the defendant is covered
by the exception under Section 30 (2) (a) of the Act but also
the fact that the pleadings of the plaintiff in para 17 leave
no manner of doubt that the same are not happily drawn
giving impression as if a person who has the registration of
a trademark has the absolute right to detriment or to
prevent the use of the said mark by any other person. On
this score also, the ex parte ad interim injunction granted
against the defendant deserves to be vacated.
29. The next contention of the learned counsel for the plaintiff
is that the word „Guru‟ has been used not as a descriptive
but is being used as a trademark. The learned counsel in
this regard has referred to the judgment of the Apex Court
CS(OS) NO.562/2010 Page 16 of 20
in case titled Amritdhara Pharmacy Vs. Satya Deo Gupta
AIR 1963SC 449 (V 50 C 63).
30. As against this, the learned senior counsel for the
defendant has referred to the judgment of this Court in
case titled Nestle India Limited Vs. Mood Hospitality
Pvt. Ltd. in FAO(OS) No.255/2009 wherein the word „YO‟
by the defendant who was the appellant in the said case in
respect of packing of their noodles „Maggi‟ was held to be
not violative of the trademark „YO China‟ who had brought
a suit for injunction.
31. The ex parte ad interim stay which was granted by the
learned Single Judge in favour of „Yo China‟ by using the
word „YO‟ against the „Maggi‟ was vacated by the Appellate
Court holding that the word „YO‟ is a generic word and it is
only describing a sign of exclamation by the defendant who
was the appellants in the said case.
32. The learned counsel for the plaintiff has also referred to
various English judgments in order to substantiate his
point.
33. I have considered these judgments. I must say that
although in the said judgment which have been relied upon
by the learned counsel for the plaintiff where there are
some legal prepositions which are laid down but they are of
no help to the plaintiff in the instant case because the
CS(OS) NO.562/2010 Page 17 of 20
facts of the cases cited are different from the present case.
The simple proposition while deciding the interim
application in the instant case are whether the user of the
word „Guru Pack‟ is infringing the trademark „GURU‟ of the
plaintiff in respect of edible articles of a particular class.
Needless to say that this is to be decided by keeping three
principles in mind that are prima facie case, balance of
convenience and irreparable loss to the plaintiff.
34. There is a tendency on the part of the counsels to quote as
many authorities as possible where the party has obtained
ex parte stay so that the disposal of the matter takes time
and consequently the ex parte ad interim order is
perpetuated at least for some time so that the opposite
party against whom the stay is granted, feels the heat and
tries to resolve the matter by negotiations. This cannot be
permitted to be done. It is in this background that this
Court feels that there is no necessity of referring to the
English case law when two cases decided by our Courts are
good enough to take care.
35. In the instant case, for the two paramount reasons which
dissuade the Court from continuation of an ex parte ad
interim stay order have been dealt with in the beginning
itself are the facts that the plaintiff must approach the
Court with clean hands and secondly that the plaintiff
should not make this tantamount of the facts by making
CS(OS) NO.562/2010 Page 18 of 20
a misstatement of law in the averments by observing that
once a trademark is registered in favour of a parte, the
defendant has no right, title or interest to use the said
trade mark when admittedly there is a provision of Section
30 (2) (a) CPC that the said trade mark can be used and it
will not be deemed to be infringed if it is describing the
kind, quality or quantity of the goods or services quality,
quantity.
36. For the reasons mentioned above, I feel that without going
into the matter further with regard to the prima facie case
or the balance of convenience or irreparable loss on the
aforesaid two grounds itself, I am not inclined to continue
with the ex parte ad interim stay in favour of the plaintiff
and accordingly, the same is vacated.
37. Expression of any opinion hereinbefore shall not be deemed
to be an expression on the merits of the case so as to
restrain the plaintiff from proving its case during the course
of trial.
CS(OS) No.562/2010
1. Post the matter before the Joint Registrar on 27.7.2010
for completion of pleadings and admission/denial.
2. List before Court on 13.9.2010 for framing of issues.
CS(OS) NO.562/2010 Page 19 of 20
3. Parties to complete their pleadings with regard to the main
suit before the next date of hearing.
V.K. SHALI, J.
APRIL 15, 2010 RN CS(OS) NO.562/2010 Page 20 of 20