Delhi High Court
Om Logistics Ltd vs Sh Mahendra Pandey on 15 March, 2022
Author: Amit Bansal
Bench: Amit Bansal
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on : 24th February, 2022
Judgment Delivered on : 15th March, 2022
+ CS(COMM) 447/2021
OM LOGISTICS LTD ..... Plaintiff
Through: Mr. R.K.Sanghi, Senior Advocate
with Mr. Ishan Sanghi, Advocate.
versus
SH MAHENDRA PANDEY ..... Defendant
Through: Mr. Rahul Ajatshatru with Ms. Gitika
Khanchandani, Ms. Shilpi Mehta
Nanda, Ms. Swati Mehta & Ms.
Malvika Shanker, Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
JUDGMENT
AMIT BANSAL, J.
IA No.11972/2021 (u/O.XXXIX R.1&2 CPC), IA No.15693/2021 (u/O.XXXIX R.4 CPC)
1. By this judgement, I propose to dispose of the interlocutory application filed on behalf of the plaintiff under provisions of Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) and the application filed on behalf of the defendant under Order XXXIX Rule 4 of the CPC for vacation of the interim order dated 16th September, 2021.
2. By order dated 16th September, 2021, this Court was pleased to grant an ex parte ad interim injunction in favour of the plaintiff, restraining the defendant from using the impugned mark „OM EXPRESS LOGISTICS‟ or CS(COMM) 447/2021 Page 1 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 any other mark that is similar to the plaintiff‟s trade mark „OM LOGISTICS LTD.‟.
3. The case set up by the plaintiff is as under:
(i) Plaintiff was registered as a company on 12th October, 1999 in the name of „OM LOGISTICS LTD‟.
(ii) Plaintiff has various trademark registrations in its favour under Class 39, including the word mark „OM LOGISTICS LTD‟.
(iii) Over a period of time, the plaintiff company has achieved impressive sales revenues and has also spent substantial amounts towards advertisement expenses in respect of the aforesaid trademarks. In this regard, the plaintiff has filed invoices in respect of the advertisement expenses, certifying the total turnover/advertisement expenses from the years 2001 to 2021. The plaintiff has acquired tremendous reputation and goodwill in the logistics business on account of the long and extensive usage.
(iv) Even if it is assumed that the mark of the plaintiff contains descriptive words, in view of the long usage by the plaintiff, it has acquired distinctive character and therefore, the same can be protected.
(v) The mark „OM LOGISTICS‟ forms an essential feature of the trademark and corporate name of the plaintiff.
(vi) The defendant has been using the mark „OM EXPRESS LOGISTICS‟ in respect of identical business of providing logistic services.
(vii) The marks of the defendant are phonetically similar to that of the plaintiff and the only difference is the addition of the word „EXPRESS‟, which is of no consequence. The word „EXPRESS‟ in CS(COMM) 447/2021 Page 2 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 its ordinary sense means „fast and expeditious‟. Therefore, it would cause confusion in the mind of the ordinary consumer, who would assume that the plaintiff has started an express delivery service.
Therefore, adoption of the mark „OM EXPRESS LOGISTICS‟ by the defendant is not bona fide inasmuch as the defendant has taken on the distinctive feature of the plaintiff‟s mark.
(viii) Defendant has neither applied for registration of trademark, nor opposed the registration of the plaintiff‟s mark.
(ix) Defendant has failed to place on record any details with regard to its turnover or the advertisement expenses in respect of its marks. Therefore, the case of infringement of trademarks as well as passing of the goods by the defendant as those of the plaintiff has been made out and the plaintiff is entitled for grant of interim injunction.
4. The first and foremost submission made on behalf of the defendant is that the plaintiff has made misleading and false claims and has also suppressed and concealed relevant facts/documents to obtain an ex parte ad interim injunction order dated 16th September, 2021 against the defendant. The relevant portions of the said order are as under:
"2. It is the case of the plaintiff that the plaintiff is the proprietor of the following trademarks since various dates as noted below:-
3. It is stated that due to such long and extensive use and advertisement by the plaintiff, the plaintiff‟s trade mark „OM CS(COMM) 447/2021 Page 3 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 LOGISTICS LTD.‟ has become a reputed and well-known trade mark and highly distinctive of the plaintiff. It is stated that the plaintiff is providing services under the said mark which was adopted in 1990.
4. In April 2021, it is stated, the plaintiff came to know that the defendant is using a deceptively similar mark and is hence infringing/passing off the trade mark of the plaintiff. On 05.04.2021, a legal notice was sent to the defendant by the plaintiff. A reply was received on 24.07.2021 claiming that the trade mark of the plaintiff has been wrongly registered.
5. A perusal of the impugned trade mark shows that the trade mark which is being used by the defendant, namely, „OM EXPRESS LOGISTICS‟ is deceptively similar to the plaintiff‟s registered trade mark „OM LOGISTICS LTD.‟.
6. The plaintiff has made out a prima facie case. The defendant, his partners, etc. are restrained from using the impugned mark „OM EXPRESS LOGISTICS‟ or any other mark that is deceptively similar to the plaintiff‟s trade mark „OM LOGISTICS LTD.‟ till further orders."
5. Submissions in respect of misrepresentation/concealment are as follows:
(i) The plaintiff has falsely claimed the mark „OM LOGISTICS LTD‟ to be a „well-known trade mark‟ in terms of Section 2(zg) of the Trade Marks Act, 1999 (Trade Marks Act).
(ii) The plaintiff did not disclose to the Court that the registration obtained in respect of Trademark Application No.1289376 is a device mark and the registration in respect of Trademark Application No.3504399 is a composite label mark and not a word mark. In this regard, reference is made to paragraphs 2 and 3 of the order dated 16 th September, 2021 passed by this Court, as set out above.
(iii) In respect of Trademark Application Nos.3409267 and 3503499, the plaintiff did not disclose its replies filed in response to the CS(COMM) 447/2021 Page 4 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 examination reports of the Registry.
(iv) The plaintiff deliberately did not file the annexures that were a part of the reply dated 27th April, 2021 of the defendant to the cease and desist notice sent on behalf of the plaintiff to the defendant.
(v) The plaintiff also did not file the Legal Proceedings Certificate along with the plaint, though reliance is placed on the same in paragraph 4 of the plaint.
6. On merits, the counsel for the defendant has made the following submissions:
(i) The defendant is using the trade name/trading style „ EXPRESS LOGISTICS‟ or „OM EXPRESS LOGISTICS‟.
(ii) The word „OM‟ is publici juris, a religious symbol/word, incapable of being monopolized.
(iii) The word „EXPRESS‟ is a common dictionary word used in a laudatory sense in transport/courier service.
(iv) The word „LOGISTICS‟ is a descriptive word used in the context of business of transporting goods.
(v) The mark being used by the defendant, being „OM EXPRESS LOGISTICS‟ connotes an auspicious, efficient transport service and therefore, is a descriptive expression.
(vi) The defendant has adopted mark „OM EXPRESS LOGISTICS‟ in an honest manner and in terms of the common trade practice and therefore, the defendant is entitled to invoke the defences in terms of Section 30 of the Trade Marks Act.CS(COMM) 447/2021 Page 5 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14
(vii) Defendant is a small business confined to Bhiwandi in Maharashtra and the plaintiff cannot claim any goodwill or reputation in the said market.
(viii) The mark of the plaintiff is inherently descriptive and not capable of being distinctive, particularly in the business of transportation. It is common to trade and therefore, the plaintiff cannot claim any monopoly for the same.
(ix) Even if the plaintiff has obtained registrations in respect of the word mark „OM LOGISTICS LTD‟, in view of Section 28 of the Trade Marks Act, the registration does not give an absolute right in favour of the plaintiff as the same is subject to other provisions of the Act.
(x) A comparison of the marks of the plaintiff and the defendant would show that there is no similarity between them.
(xi) In respect of composite marks, when the elements are common to trade or descriptive or of no distinctive character, no exclusivity can be claimed. The courts have to strike a balance between unlawful competition and illegal monopoly and when viewed in this light, the plaintiff is not entitled to interim injunction.
7. I have perused the record and heard the submissions advanced on behalf of the parties. I now proceed to give my findings.
MISREPRESENTATION AND CONCEALMENT OF FACTS
8. There is merit in the submission of the defendant that at various places, the plaintiff has made the false and misleading claim of „OM LOGISTICS LTD‟ being a „well-known trade mark‟. In this regard, CS(COMM) 447/2021 Page 6 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 attention of the Court was drawn to paragraph 6 of the notice dated 5 th April, 2021 sent by the plaintiff to the defendant and paragraph 3 of the plaint.
9. The concept of „well-known trade mark‟ is recognized under the Trade Marks Act. Section 2(1)(zg)1 defines a „well-known trade mark‟.
10. The determination as to whether or not a trade mark is a „well-known trade mark‟ can only be either in terms of a court order recognizing a particular mark to be a „well-known trade mark‟ or by the Trade Mark Registry as provided under Section 11(8)2 of the Trade Marks Act.
11. The plaintiff has failed to point out any court order or any report of the Trade Mark Registry in terms of which the mark of the plaintiff has been recognized as a „well-known trade mark‟. Therefore, this claim of „OM LOGISTICS LTD‟ being a „well-known trade mark‟ is a misleading claim. This fact of the plaintiff‟s mark „OM LOGISTICS LTD‟ being a „well- known trade mark‟ was specifically noted by the Court while granting the ex parte ad interim injunction on 16th September, 2021.
12. There is merit in the contention of the defendant that at the time when the ex parte ad interim injunction order was passed by this Court, the plaintiff did not disclose to the Court that the Trademark Application No.1289376 was in respect of only a device mark and the Trademark 1
2. Definitions and interpretation.--
...
(zg) "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
211. Relative grounds for refusal of registration.-- ...
(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.
CS(COMM) 447/2021 Page 7 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14Application No.3504399 was in respect of a composite label mark and not a word mark per se. To provide a perspective on the registrations granted in favour of the plaintiff, reference may be made to the table as under:
S. NO. APPLICATION NO. ACTUAL MARK CLASS
AS REGISTERED
1. 1289376 39
2. 3503499 39
3. 3409267 OM LOGISTIC LIMITED 39
4. 4519064 OM LOGISTIC SOLUTION 39
13. The table above is what should have been placed before the Court and not the table extracted in the order dated 16th September, 2021. Therefore, there is substance in the contention of the defendant that misleading submissions were made on behalf of the plaintiff to obtain the ex parte ad interim injunction order dated 16th September, 2021.
14. In paragraph 4 of the plaint, the plaintiff has stated that it has filed the online status of Trademark Applications No. 1289376, 3409267, and 4519064 along with the Legal Proceeding Certificate as annexures to the plaint. However, no such documents have been filed by the plaintiff. Had the plaintiff filed the Legal Proceeding Certificate, it would have disclosed the fact that the defendant had already filed a rectification application in respect of the plaintiff‟s registration.
CS(COMM) 447/2021 Page 8 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:1415. The defendant has further contended that even though the plaintiff disclosed the fact of the defendant filing a reply dated 27th April, 2021 to the cease and desist notice sent by the plaintiff and placed the same on record, the entire reply was not placed on record by the plaintiff. Along with the said reply, the defendant had filed details of a number of entities operating in the field of logistics and courier services, which have been using the word „OM‟ / „ ‟ as a part of their trading style and such details were given in Exhibit-1 attached to the said reply. The defendant had also filed along with its reply, objections raised by the Trade Mark Registry in respect of the Trademark Registration Applications No.3409267, 4519064 and 3503499 and the response of the plaintiff to the aforesaid objections. In my view, the aforesaid exhibits were vital defences taken by the defendant in response to the cease and desist notice of the plaintiff and the plaintiff ought to have filed the reply of the defendant along with the aforesaid exhibits. The aforesaid exhibits form the bulwark of the defence of the defendant, inasmuch as details of various other players in the field of transport/courier business using the word „OM‟ / „ ‟ have been shown here.
16. The Trade Mark Registry raised objections under Section 11(1) of the Trade Marks Act in respect of Trademark Application No.3409267 on account of various similar trademarks such as „OM PACKERS AND MOVERS‟ (label), „OMJI‟, and „OM (ONCE MORE)‟, being already registered under Class 39 in respect of similar services. The plaintiff submitted a reply to the Registry on 8th March, 2017 in respect of the aforesaid objection, in which it took the following stand:
"1. With respect to the objection under section 11 of the Trade Mark Act, we would like to inform you that our word-mark CS(COMM) 447/2021 Page 9 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 "OM LOGISTICS LTD" does not resemble the other marks enclosed in the search report. The mark is not likely to deceive or cause any confusion. As such our mark cannot be deemed to be „deceptively similar‟ to the other marks enclosed in the search report....
In the light of facts, it needs to be noted that our mark "OM LOGISTICS LTD" is filed with a Device which is quite different from all the marks/ applications and it is neither same nor similar to any of the mark of your examination report. Therefore, our mark is liable to get registered."
17. The Trade Mark Registry also raised objections in respect of Trademark Application No.3504399 on account of the similar trademark „OM LOGISTICS & TRANSPORT SYSTEM with label‟, being already registered under Class 39 in respect of similar services. In response, the plaintiff stated that the device mark of the plaintiff does not resemble the other marks disclosed in the examination report of the Registry and therefore, it is not likely to cause deception or confusion. Reference in this regard may be made to the reply of the plaintiff to the trademark examination report:
"...our mark „OM LOGISTICS LTD‟ is filed with a Device which is quite different from all the marks/applications and it is neither same nor similar to any of the mark of your examination report. Therefore, our mark is liable to get registered.
xxx xxx xxx
2. No likelihood of confusion in the marks; would not make the mark in question same/similar to the earlier marks. Hence in our opinion objection made under Clause 1 of section 11 is not maintainable at all."
18. Objections were also raised by the Trade Mark registry in respect of Trademark Application No.4519064 on account of similar trademarks offering similar services, including „OM LOGISTICALLY GLOBAL‟. The CS(COMM) 447/2021 Page 10 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 plaintiff submitted a reply to the Registry on 12th August, 2020 in respect of the aforesaid objection, in which it took the following stand:
"The Trademark No. 4236818 (Which is lying objected) in class 39 "OM LOGISTICALLY GLOBAL" is also different from the applicant trademark "OM LOGISTICS SOLUTIONS". Kindly waive the objection under Section 11 of the Trademark Act."
19. In respect of the already registered trademarks, the plaintiff took a stand that the plaintiff‟s trade mark „OM LOGISTICS LTD‟ does not resemble/is different from the other marks. Having taken the aforesaid stand, can the plaintiff be allowed take a stand that the defendant‟s trade mark „OM EXPRESS LOGISTICS‟ is similar to that of the plaintiff? In my view, the plaintiff is estopped from taking such a diametrically opposite stand. In respect of the response of the plaintiff to the objections raised by the Trade Marks Registry, the plaintiff has placed reliance on the device, which is to be used along with the word mark of the plaintiff to claim distinctiveness. Admittedly, the defendant has not copied the device mark of the plaintiff. Therefore, the plaintiff cannot take a totally different stand and claim exclusivity in respect of the mark „OM LOGISTICS LTD‟ as a word mark. Clearly, the plaintiff cannot be permitted to approbate and reprobate.
20. In my view, the plaintiff is guilty of suppression and concealment of material facts, which ought to have been disclosed in the plaint. The aforesaid communications between the plaintiff and the Trade Mark Registry should have been filed with the plaint. A party that approaches the Court for a grant of discretionary relief has to come with clean hands and disclose all material facts which would have a bearing on the merits of the case. Therefore, in my prima facie view, the ex parte ad interim injunction CS(COMM) 447/2021 Page 11 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 granted to the plaintiff by this Court vide order dated 16th September, 2021 is liable to be vacated on the grounds of misrepresentation and concealment of material facts.
21. Reference may be made to the judgment of the Division Bench of this Court in S. K. Sachdeva v. Sh. Educare Ltd., 2016 SCC Online Del 473 (Special Leave Petition No.4667/2017 against which was dismissed vide order dated 04th March, 2016). In the said case, the plaintiff was running schools in the name of „SHRI RAM SCHOOL‟ and was aggrieved by the defendant opening a school by the name of „SHREE RAM WORLD SCHOOL‟. The case of the defendant was that since the word „SHRI RAM‟ is the name of a Hindu deity, no person could monopolise the same and that several other educational institutions have been using the name „SHRI RAM‟ as the part of their name. It was further contended on behalf of the defendant that the plaintiff had concealed the fact that when the plaintiff had applied for registration of the mark „Shri Ram Educare‟, the Trade Mark Registry had raised objections thereto. In response to the said objections, the plaintiff had taken a categorical stand that the word „SHRI RAM‟ was a name of a Hindu deity and no one could claim proprietorship to this name and further, that the word „SHRI RAM‟ was common to trade. The interim injunction was granted in favour of the plaintiff by the Single Judge. Aggrieved therefrom, the defendant filed the appeal before the Division Bench. The Division Bench allowed the appeal filed on behalf of the defendant and vacated the interim injunction granted in favour of the plaintiff by observing that the admission made by the plaintiff in his letter to the Trade Mark Registry had a material bearing on the suit and concealment of the aforesaid letter amounted to a clear case of misrepresentation and CS(COMM) 447/2021 Page 12 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 concealment of material facts. The relevant observations of the Division Bench are set out below:
"17. The learned Single Judge while considering the withdrawal letter dated 15.04.2014 has erred in not appreciating that the same was concealment of a material fact having bearing on the case of the respondent/plaintiff. The mere fact that the appellants themselves have applied for registration of its trademark does not, in any manner, help the case of the respondents. What is material is the stand taken by the respondents in the plaint and in other proceedings and not the conduct of the appellants/defendants. A party who approaches the Court for grant of a discretionary relief has to approach the Court with clean hands. The respondents clearly did not do so.
18. We are of the view that the interim injunction is liable to be vacated in view of various factors. First of all, the respondents themselves have taken a categorical stand that the word „SHRI RAM‟ is the name of a popular figure and deity in Hinduism and no one proprietor can claim exclusive rights on the mark „SHRI RAM‟. Secondly, their stand that the mark „SHRI RAM‟ is common to trade and several „SHRI RAM‟ formulative marks are peacefully co-existing on the register of trademark. Thirdly, the appellants have prima facie shown that there were several schools in existence using the name „SHRI RAM‟ in existence even prior to the adoption of the mark by the respondents. Fourthly, the respondents are guilty of concealment and misrepresentation and, lastly, discretion should not be exercised in favour of a person who approaches the court with unclean hands.
19. Prima facie, we are of the view that the respondents are not entitled to the grant of an injunction at this stage. The respondents would have to establish that the word „SHRI RAM‟ by extensive use in respect of schools is only associated with the respondents and none else. This can only be done at trial.
20. The injunction granted in respect of domain name www.shreeram.in, also cannot be sustained on the above grounds. Further, the domain name „www.shreeram.in‟ does not CS(COMM) 447/2021 Page 13 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 indicate that the same is being used in respect of same or similar class of services. The name „SHRI RAM‟ is the name of a Hindu deity and even as per the admission of the respondents it is the name of a popular deity in Hinduism. Use of the said domain name by the appellants cannot prima facie amount to infringement of the rights of the respondents."
22. It has also been held in Wheels India v. S. Nirmal Singh & Ors., 2009 SCC OnLine Del 3251 and Seemax Construction (P) Ltd. v. State Bank of India & Ors., AIR 1992 Del 197 that misrepresentation and suppression on account of which ex parte orders are granted in favour of the plaintiff are liable to be vacated on the ground of misrepresentation and concealment alone. The observations of this Court in Wheels India (supra) are set out below:
"18. The plaintiff, therefore, has disentitled itself to the equitable relief of injunction on account of deliberate suppression of material facts in the plaint as well as suppression of documentary evidence from the scrutiny of this Court. Concealment of material facts or documents deserves to be seriously viewed, for one who comes to the Court owes a duty to the Court to disclose all facts and documents to the Court. The contention of the plaintiff in the instant case that it had disclosed in the plaint that it was purchasing goods from the defendants is neither here nor there. The plaintiff deliberately and intentionally, in my view, hid from the Court the fact that the defendant No. 2, M/s. PRINCE Auto Industries had been dealing with the same goods, viz. wheel covers and auto accessories and had made a mark in its field of activity well before the plaintiff got registered the trademark 'PRINCE'. The plaintiff also hid from the Court the exact relationship between the plaintiff and the defendants and that there were written agreements to ensure the smooth working of the said relationship duly executed by the parties and registered with the statutory authorities. The reason for suppression of such material facts is clearly discernible. Had the plaintiff stated in the plaint that the defendant No. 2 had been CS(COMM) 447/2021 Page 14 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 in the same field of activity from the year 1998 under the trade name 'PRINCE Automobile Industries' and had the plaintiff further stated in the plaint that it had been working as the authorised stockiest of the plaintiff from the year 2001 to the 15 th of September, 2004, the plaintiff, in my view, may not have succeeded in obtaining an ex parte ad interim injunction from this Court, which is enuring to the benefit of the plaintiff till date, though with some modification."
23. In the present case also, the aforesaid documents were deliberately not disclosed by the plaintiff to the Court as the same were detrimental to the case of the plaintiff. If the aforesaid documents were disclosed, it is possible that the Court would not have granted the ex parte ad interim injunction in favour of the plaintiff. Concealment of material facts and documents are serious matters and sufficient for disqualifying a litigant from obtaining relief. Reference in this regard may be made to S.J.S. Business Enterprises (P) Ltd. v. State of Bihar, (2004) 7 SCC 166 and Harkirat Singh v. Amrinder Singh, (2005) 13 SCC 511.
24. Even though the ground of concealment and suppression of facts/proved documents is itself sufficient for the injunction to be vacated, I also propose to deal with the case on merits.
RELIGIOUS SYMBOLS/NAMES OF DEITIES CANNOT BE MONOPOLIZED
25. The word „OM‟ is a religious symbol and cannot be monopolised by anyone. Everyone is free to use the names of deities as well as religious symbols. In fact, in India, it is a common practice that names of gods and goddesses and religious symbols are used as parts of names of individuals as well as business entities. No person can claim exclusivity with regard to names of deities as well as religious symbols. Therefore, the plaintiff cannot CS(COMM) 447/2021 Page 15 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 be allowed to monopolize the use of the religious symbol „OM‟. In this regard, reference may be made to the judgment of the Division Bench in Bhole Baba Milk Food Industries v. Parul Food Specialities Pvt. Ltd., (2012) 186 DLT 234 (DB), wherein it was held that monopoly cannot be claimed in respect of the word „KRISHNA‟ for dairy products. Similar view was taken by the Calcutta High Court in Shree Ganesh Besan Mills v. Ganesh Grains Ltd., 2021 SCC OnLine Cal 3068, wherein it was held that nobody can monopolise the word mark „GANESH‟, who is among the most popularly worshipped Hindu gods.
DESCRIPTIVE/LAUDATORY USE OF „EXPRESS‟ AND „LOGISTICS‟
26. The words „EXPRESS‟ as well as „LOGISTICS‟ are common words of the English dictionary and are used in a laudatory/descriptive manner in the present case. As per the Concise Oxford Dictionary3, the word „LOGISTICS‟ has been defined to include „the commercial activity of transporting goods to customers‟ and the word „EXPRESS‟ has been defined as „operating at a high speed; denoting a service in which deliveries are made by a special messenger‟.
27. Both the parties are engaged in the business of transportation and logistics. Therefore, the words „EXPRESS‟ and „LOGISTICS‟ are inherently descriptive and not capable of distinguishing the services of the plaintiff.
THE WORDS „OM‟ AND „LOGISTICS‟ ARE COMMON TO TRADE
28. The word „LOGISTICS‟ is commonly used in the business of transportation and courier services. The defendant has filed various 3 Concise Oxford Dictionary (11th ed., revised).
CS(COMM) 447/2021 Page 16 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14documents in respect of the words „OM‟, „ ‟ and „LOGISTICS‟, including search reports from the Trade Mark Registry records, to show that there are several registrations under Class 39 of names using the words/marks „OM‟, „ ‟ and „LOGISTICS‟. The defendant has also filed records from the website of the Ministry of Corporate Affairs to show that various other entities are using the words/marks „OM‟, „ ‟ and „LOGISTICS‟. Therefore, there is merit in the submission of the defendant that the marks „OM‟, „ ‟ and „LOGISTICS‟ are common to trade and cannot be monopolized.
PASSING OFF
29. At this stage, it would be relevant to compare the actual usage of the trade names/trademarks of the plaintiff and the defendant:
30. A perusal of the above would show that other than the words „OM‟, „ ‟ and „LOGISTICS‟, being common to the trade names/marks of the plaintiff and the defendant, there is no other visual similarity between the competing marks. The defendant is not using the logo of the plaintiff. Nor is CS(COMM) 447/2021 Page 17 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 there any similarity in the colour scheme or the font in the script. In my prima facie view, there cannot be any likelihood of confusion or deception. Hence, no case of passing off is made out.
31. The plaintiff is not the first user of the word marks „OM‟, „ ‟ and „LOGISTICS‟. There are several other prior registered owners using the words „OM‟ and „LOGISTICS‟ in their names prior to the plaintiff. In this regard, attention of this Court was drawn to search reports from the Trade Mark Registry which contained a list of trademarks registered under Class 39, which use the words/marks „OM‟ and „LOGISTICS‟ as part of the said trademarks. Having chosen to adopt marks which are in the nature of religious symbols and otherwise descriptive/laudatory terms, the plaintiff cannot seek a monopoly in respect thereof and restrain other parties from using the same. The goodwill and reputation claimed by the plaintiff in respect of its trade marks can only be established at the stage of trial.
INFRINGEMENT
32. The plaintiff seeks grant of interim injunction on the basis of being a registered proprietor of the word mark „OM LOGISTICS LTD‟. However, registration alone would not give the plaintiff the exclusive right to use the trademark. Section 284 of the Trade Marks Act itself provides that „subject to other provisions of the 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 the present case, the registrations granted in favour 4
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.
CS(COMM) 447/2021 Page 18 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14of the plaintiff are yet to attain finality as the defendant has filed rectification petitions against the same, which are pending.
33. Even if the registration in favour of the plaintiff is taken to be valid, the defendant would be entitled to invoke Section 17 and Section 30(1)(a) of the Trade Marks Act. As discussed above, the defendant has placed on record sufficient material before the Court to show at a prima facie stage that the word marks „OM‟ and „LOGISTICS‟ are common to trade and of non-distinctive character. Therefore, in terms of Section 17(2)(b)5 of the Trade Marks Act, the registration of the mark „OM LOGISTICS LTD‟ shall not confer any exclusive rights in favour of the plaintiff. Furthermore, on a prima facie view, since the mark of the plaintiff is not distinctive, the defendant would also be entitled to the benefit of Section 30(1)(a)6 of the Trade Marks Act.
34. Reference may also be made to Lal Babu Priyadarshi v. Amritpal Singh, (2015) 16 SCC 795, wherein the Supreme Court held that one cannot monopolize the name of a holy or religious book. The relevant paragraphs are set out below:
"22. There are many holy and religious books like Quran, Bible, Guru Granth Sahib, Ramayan, etc. to name a few. The answer to the question as to whether any person can 5
17. Effect of registration of parts of a mark.-- (2) Notwithstanding anything contained in sub-section (1), when a trade mark-- ...
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.6
30. Limits on effect of registered trade mark.--(1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use--
(a) is in accordance with honest practices in industrial or commercial matters...
CS(COMM) 447/2021 Page 19 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14claim the name of a holy or religious book as a trade mark for his goods or services marketed by him is clearly "No".
23. Moreover, the appellant has not been able to establish that the word "RAMAYAN" for which he has applied the trade mark had acquired a reputation of user in the market inasmuch as, we find that there are more than 20 traders in the city using the word "RAMAYAN" as a mark for the similar products and also in different parts of the country."
35. Though, the plaintiff has claimed that the word mark „OM LOGISTICS LTD‟ has acquired distinctiveness through long usage, acquired distinctiveness cannot be decided at this prima facie stage. This can only be established at the stage of trial. In any event, the plaintiff itself has claimed that the distinctiveness in its trademark „OM LOGISTICS LTD‟ is linked to its device and has also sought to distinguish its registered word marks on the ground that the word marks of the plaintiff are not deceptively similar to other marks. Therefore, at the prima facie stage, the plaintiff is estopped from claiming distinctiveness in the word marks per se.
CONCLUSION
36. In my view, the present case is squarely covered by the ratio of the judgment of the Division Bench in S.K. Sachdeva (supra). In the present case, the plaintiff has misrepresented facts to obtain the ex parte ad interim injunction order. Further, the plaintiff is guilty of concealment of material facts from the Court. Even on merits, the plaintiff cannot monopolize the use of the popular religious symbol, „OM‟. The defendant has successfully demonstrated at this stage that the marks „OM‟ and „LOGISTICS‟ are common to the trade and that there are several business entities, including those in the same field of business as the plaintiff and the defendant, which CS(COMM) 447/2021 Page 20 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14 are using the marks „OM‟ and „LOGISTICS‟, as well as a combination of these marks. Many of the users of the aforesaid marks have been using them even prior to the usage by the plaintiff. The plaintiff itself has taken a stand that the mark of the plaintiff is distinguishable on the basis of its device and is otherwise not similar to other registered trademarks using the words „OM‟ and „LOGISTICS‟. Further, the distinctiveness claimed by the plaintiff on account of usage of the aforesaid marks can only be established at trial and not at this prima facie stage.
37. No judgments were cited at the bar on behalf of the plaintiff. However, reference to various judgments have been made in the synopsis filed on behalf of the plaintiff after the judgment was reserved. In the view I have taken, need is not felt to refer to the said judgments.
38. Keeping in view the aforesaid, I am of the opinion that the plaintiff has failed to make out a prima facie case for grant of an interim injunction. Accordingly, IA No.11972/2021 filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the CPC stands dismissed and IA No.15693/2021 filed on behalf of the defendant under Order XXXIX Rule 4 of the CPC stands allowed. The injunction granted vide order dated 16 th September, 2021 stands vacated.
39. Any observations or expression of opinion in this judgment will have no bearing on the merits of the case.
CS(COMM) 447/2021 & IA NO.2231/2022 (U/O.XXXIX R.2A CPC)
40. List on 10th May, 2022.
AMIT BANSAL, J.
March 15, 2022/ak/dk CS(COMM) 447/2021 Page 21 of 21 Signature Not Verified Digitally Signed By:MAMTA ARYA Signing Date:15.03.2022 12:55:14