Calcutta High Court
Ganesh Grains Limited And Anr vs M/S. Shree Ganesh Besan Mill And Ors on 4 January, 2021
Author: Debangsu Basak
Bench: Debangsu Basak
OC 1
ORDER SHEET
IA GA 1 of 2020
IA GA 2 of 2020
CS 92 of 2020
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL DIVISION
GANESH GRAINS LIMITED AND ANR.
VERSUS
M/S. SHREE GANESH BESAN MILL AND ORS.
BEFORE:
The Hon'ble JUSTICE DEBANGSU BASAK
Date: 4th January, 2021 (Via Video Conference) Mr. Ranjan Bachawat, Sr. Adv.
Mr. Debnath Ghosh, Adv.
Mr. Soumya Roy Chowdhury, Adv.
Mr. Gautam Banerjee, Adv.
...for the plaintiff Mr. Sayantan Bose, Adv.
...for the defendants The Court: GA 2 of 2020 is considered and allowed by taking up the interim application being GA 1 of 2020 for consideration.
In a suit for infringement and passing off, the plaintiff seeks interim relief. Learned senior advocate appearing for the plaintiff submits that, the plaintiff is a prior user of the label "Ganesh". The plaintiff is engaged in the business of manufacturing and sale of atta, maida and allied products. He submits that, the trade mark of the plaintiff stands registered. He draws the attention of the Court to the fact that, the plaintiff was using in such trade mark since 1956. He submits that, the defendants applied for registration of the word marked "Ganesh" and due to the objections raised by the plaintiff three of such applications were disallowed and the defendants abandoned the other three. He draws the attention of the Court to the labels used by the different parties. He submits that, since the parties are engaged in the 2 business of similar products and since, the names are similar, the plaintiff made out a case of infringement as well as passing off. He submits that, the plaintiff is entitled to an order of injunction restraining the defendants from using the mark "Ganesh" with any prefix or suffix.
Learned advocate appearing for the defendants submits that, the plaintiff is not the prior user of the mark "Ganesh". He draws the attention of the Court to the pleadings of the petition, particularly paragraph 4 of the petition. He draws the attention of the Court to the parties to the suit. He submits that, the first plaintiff was incorporated in 2000 and therefore since, the defendants were using the names "Shree Ganesh" since 1989, the defendants cannot claim themselves to be prior user. He contends that, the defendants are protected under Section 35 of the Trade Marks Act, 1999. He relies upon a bunch of documents and draws the attention of the Court to the first page of such bunch of documents and submits that, the proprietor of the defendants is Ganesh Lal Daryani. In view of the provisions of Section 35 of the Act of 1999, the defendants are entitled to use the words "Shree Ganesh". Since such words are bona fide use of the name of the proprietor, there can be no injunction against the defendants for user of the words "Shree Ganesh". He relies upon pages 13 and 17 of the bunch of documents and submits that, the registration of the plaintiff is restricted to a particular area. The plaintiff cannot obtain an order of injunction on the user of the words "Shree Ganesh" by the defendants in the area at which the defendants are operating. The defendants are located at Chhattisgarh. The registration of the plaintiffs is for State of West Bengal and at best Eastern Region. Therefore, according to him, the plaintiffs are not entitled to any ad interim injunction. He seeks direction for affidavits.
As noted above, the suit is for protection for infringement and passing off. The plaintiffs claim themselves to be a prior user of the word "Ganesh". In the interim petition, there are documents disclosed by the plaintiffs which prima facie establish that the word "Ganesh" stands registered in favour of the plaintiffs in respect of atta, maida 3 and other products. There are documents to state that the plaintiffs were using the word "Ganesh" for such products since 1956.
The contention of the defendants that the plaintiffs cannot be treated as prior user of the word "Ganesh" for marketing its products prima facie, does not appear to sound good. The plaintiff was incorporated in 2000. It is claim of the plaintiffs that prior to the incorporation of the first plaintiff, the second plaintiff along with his family members were carrying on such business and was using the word "Ganesh" to market the products.
So far as Section 35 of the Act of 1999 is concerned, it saves bona fide use of the names of businessman or the place of his business or the name of the place of the business or any predecessor in business in describing the character of the quality of goods or service. Whether the use of the word "Shree Ganesh" is bona fide use of the name of the proprietor namely, Ganesh Lal Daryani best adjudicated after affording the parties an opportunity to file affidavits. The words used by the defendants are "Shree Ganesh". It is not the full name of the sole proprietor. Prima facie, at this stage, it does not seem that the defendants are entitled to the protection under Section 35 of the Act of 1999. The defendants however are at liberty to disclose documents to establish that they come within the parameters of Section 35 of the Act of 1999.
In such circumstances, it would be appropriate to protect the plaintiffs at the ad interim stage. There will be orders in terms of prayers (a) and (c) of the petition. Such interim order will continue till March 31, 2021 or until further orders whichever is earlier.
Let affidavit-in-opposition be filed within two weeks from date; reply thereto, if any, within a week thereafter. List the application being GA 1 of 2020 in CS 92 of 2020 as "Adjourned Motion" three weeks hence.
(DEBANGSU BASAK, J.) TR/ 4