Delhi High Court
Sant Kumar Mehra vs Ram Lakhan on 19 March, 1999
Equivalent citations: 1999IIAD(DELHI)804, 79(1999)DLT221, (1999)122PLR23
ORDER DR. M.K. Sharma, J.
1.By this order I propose to dispose of the application registered as I.A. No.9321/1998 filed by the plaintiff praying for a temporary injunction against the defendant restraining them from processing, selling and offer-ing for sale items for human consumption like roasted gram, roasted ground-nut, Gajak, Rewari, Patti and other allied and cognate goods bearing the trade mark MATKEWALA with or without the device of an earthen pot.
2. The plaintiff instituted a suit in this court praying for permanent injunction restraining the defendants from passing off the various items meant for human consumption like roasted gram, roasted groundnut, gajak, rewari & patti of the plaintiff under the trade mark MATKEWALA, as that of the defendant. Alongwith the aforesaid suit the plaintiff also filed the injunction application on which notice was issued and on service of the same the defendant appeared in the suit and has filed a reply to the afore-said application refuting the allegations made in the application. The plaintiff has stated in the application that the plaintiff is engaged in the business of processing and selling various items meant for human consumption like roasted gram, roasted groundnut, gajak, rewari, patti and other allied and cognate goods for human consumption. According to the plaintiff the said items are packed, wrapped and offered for sale to the public in paper bags, carry bags and other packings upon which the trade mark MATKEWALA appears with the device of an earthen pot i.e. MATKA. The plaintiff has stated that the said trade mark MATKEWALA by virtue of its long and extensive use has become distinctive and associated with the name of the plaintiff and that the plaintiff has acquired unique goodwill and reputation on the said trade mark. It is also stated that the plaintiff has also applied for registration of the trade mark MATKEWALA with the device of an earthen pot, by their application dated 13.3.1995 which is accepted and thus awaiting the registration certificate. The plaintiff has also stated that the said trade mark was being used by the plaintiff from the year 1958 and a year wise statement of sales from the year 1990-91 has also been furnished in the application.
3. The defendant has contested the application contending inter alia that the expression MATKEWALA is descriptive in respect of goods like roasted grams and roasted groundnuts, since the said items are prepared and processed by using a MATKA alongwith a hot bed of sand. It is also stated that the aforesaid descriptive expression and descriptive sign MATKEWALA with the device of MATKA is being used by the traders in the trade to convey to the intending purchasers that the groundnut and gram being sold and/or offered for sale by the said parties have been processed in a particular manner. It is also the case of the defendant that the plaintiff is actually using the trade mark MATKA and not MATKEWALA which is supported by the vouchers placed on record as also by the records of Suit No. 30 of 1996.
4. It is an admitted position that the defendant commenced his trading activities on roasted gram and groundnut in the second week of October, 1998. The defense that is raised by the defendant in its reply is that the word MATKEWALA is a descriptive word and therefore, none can claim any exclusive right to use such an expression and the same cannot be an exclusive trade mark of one party. In support of his contention the learned counsel for the defendant relies upon the provisions of Section 34 of the Trade and Merchandise Marks Act, 1958. It is thus apparent that the ambit of the injunction application lies in a narrow compass. It is an admitted position by the parties that an application has been filed by the plaintiff for registration of the trade mark MATKEWALA which is accepted but registration certificate is yet to be granted and therefore, the same as of today is not a registered trade mark. Thus the present is not a case of infringement of any trade mark. The only case that is sought to be made out in the application seeking for injunction is that the defendants are passing off their goods as that of the plaintiff under the trade mark MATKEWALA which is exclusively being allegedly used by the plaintiff.
5. In a case like this the issue of prior user is a relevant consideration. In the present case, the evidence on record prima facie discloses that the plaintiff is a prior user of the mark MATKEWALA for roasted gram and groundnut etc. Section 34 of the Trade and Merchandise Marks Act provides that a proprietor or a registered user of a registered trade mark cannot interfere with any bonafide use by a person of his own name or of his place of business or of the name of the place of business of any of his predecessors in business or the use by any person of any bonafide description of the character or quality of his goods.
6. The defendant in the present case seeks to contend inter alia that since the word MATKEWALA is a descriptive word of describing the character and/or quality of the goods in question, therefore, protection of section 34 of the Act is applicable to the defendant and in such a case no injunction could be granted in favour of the plaintiff and against the defendants as sought for in the present suit. It is settled law that whether the alleged passing off is based on the use by defendant of word which is prima facie descriptive of the goods, a proprietor or a registered user cannot interfere with such bonafide use of a person who is using description of goods. In Kala Niketan Vs. Kala Niketan, , this court relied upon the test of descriptiveness when it cited Corpus Juris Secundum, Vol. 87 in paragraph 34 page 271 which provides that the true test in determining whether a particular name or phrase is descriptive is whether it is commonly used or it is reasonably indicative and descriptive of the thing intended. In order to be descriptive, within the condemnation of the rule, it is sufficient if information is afforded as to the general nature or character of the articles, and it is not necessary that the words or marks used shall comprise a clear, complete, and accurate description. This court further went on to say that the meaning which should be given is the impression and signification which are conveyed to the public, whether words or marks claimed as trade marks are descriptive or whether they are suggestive or arbitrary or fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole. The aforesaid test was accepted as the determining scale and was applied in the aforesaid decision by this court.
7. In the light of the aforesaid position, it is necessary to find out whether the word MATKEWALA could be said to be a descriptive work for the goods for which the trade mark is adopted.
8. The plaintiff has placed on record several documents and receipts showing sale of roasted grams and groundnuts under the name MATKEWALA. My attention was particularly drawn to the documents placed on record at pages 9 to 15. On perusal of the said documents I find that groundnuts were sold describing sometimes as matkewala or matka or matkewali. The said receipts also indicate that yellow grams were also sold. Therefore, the plaintiff sought to sell variety of grams and groundnuts like yellow grams, matkewala grams and matka groundnuts. The said action and such sale in my considered opinion do indicate that matkewala groundnut is a kind of groundnut gram which is processed in a particular manner and being sold in such a manner describing the quality and character of preparation. The defendant has stated in his reply that the descriptive expression MATKEWALA and the device of earthen pot and the use of traders in this particular trade would convey to the intending purchasers that the groundnut or gram was sold and was being offered for sale by the parties which was processed in a particular way and thus the word is descriptive. I find sufficient force in the submission of the learned counsel for the defendant. Even the documentary evidence as discussed above and filed by the plaintiff including the bills and invoices indicate that the plaintiff is himself using the said expression MATKEWALA in a purely descriptive manner when he differentiates matke-wala groundnuts and grams from that of yellow gram. Reliance is sought to be placed by the counsel appearing for the parties on various decisions of this court as also of the Supreme Court. However, since no dispute is raised with regard to the position of law, which is settled, I do not think it necessary to burden the order by referring to them.
9. The word 'MATKEWALA' used by the plaintiff for the items like roasted gram and roasted groundnut appears to be used as a descriptive word and is distinguished from other varieties of grams and groundnut. The word 'MATKE-WALA' is being used to indicate and describe the thing intended to be sold and by using the said word information is sought to be afforded as to the nature and/or character of the article. Accordingly, the word 'MATKEWALA' as is used in the present case is a descriptive word and thus merely because the same word is being used by the defendant it cannot be held that a case of passing off has been made out by the plaintiff.
10. Another important feature of this case also calls for discussion. My attention was drawn to the records of Suit No.30 of 1996 titled Sant Kumar Mehra Vs. M/s.Mehra Sons, disposed of by Shri Ravi Kumar, Additional District Judge, Delhi. The plaintiff herein filed the aforesaid suit alleging that the defendant therein is using the trade mark 'MATKA' which is deceptively similar to that of the trade mark of the plaintiff. The court held that the two trade marks 'MATKA' and 'MATKEWALA' are different and distinct from each other. Receipts and vouchers to which reference has been made in the preceding paragraphs indicate that the plaintiff has been selling groundnuts under the name 'MATKA' also. The two words are used by the plaintiff even to describe the same goods.
It is thus established that by using the words 'MATKA' and 'MATKEWALA' interchangeably by the plaintiff there was no intention of any exclusive user of the word 'MATKEWALA' by the plaintiff.
11. Taking into consideration all the aforesaid factors I am of the considered opinion that the plaintiff has failed to make out a prima facie case for grant of a temporary injunction and thus the application stands dismissed. It is made clear that all views and expressions recorded herein are prima facie views and opinions and therefore, shall not be treated as final opinion on the dispute raised.