Delhi High Court
Qarshi Industries Pvt. Ltd. vs Abdul Mueed & Ors. on 29 February, 2016
Author: Pradeep Nandrajog
Bench: Pradeep Nandrajog, Mukta Gupta
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : February 29, 2016
+ FAO (OS) (COMM) 1/2016 & CM Nos.4969-71/2016
QARSHI INDUSTRIES PVT. LTD. .....Appellant
Represented by: Mr.Sudhir Chandra, Sr.Advocate
instructed by Mr.Heman Singh,
Ms.Mamta Jha, Mr.Shashi Ojha,
Ms.Ambika Gautam and
Mr.Pranav Narain, Advocates
versus
ABDUL MUEED & ORS. .....Respondents
Represented by: Mr.Pravin Anand, Advocate with
Ms.Vaishal Mittal, Ms.D.Neha
Reddy and Mr.Siddhant Chamola,
Advocates
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MS. JUSTICE MUKTA GUPTA
PRADEEP NANDRAJOG, J.
1. Having registration of the trademark (word mark) 'JAM-E- SHIRIN' in Pakistan, and pending an application for registration thereof in India, Qarshi Industries Pvt. Ltd. (hereinafter referred to as Qarshi) instituted an action in this Court for passing off against Abdul Mueed, Hamdard Laboratories India and Hamdard National Foundation (hereinafter referred to as Hamdard), pleading that by selling its product under the trademark 'HAMDARD JAM-E-SHIRIN', Hamdard was guilty of passing off its product as that of Qarshi. The product is a herbal beverage decocted from pure herbs and natural ingredients and sweeten with sugar. As per Qarshi, it has been selling the beverage since the year 1980 and has its presence in India through sale of its product in the FAO(OS)(COMM.) No.1/2016 Page 1 of 9 physical market as also on the net, evidenced by invoices filed by Qarshi. Relying upon broadcast of commercial serials sponsored by Qarshi to popularize its trademark and relying upon awesome sales; informing that Qarshi's application for registration of its trademark 'JAM-E-SHIRIN' was pending with further information that Hamdard had a registration in its favour of the trademark 'HAMDARD JAM-E-SHIRIN', the suit was instituted.
2. Along with the suit was filed IA No.1248/2016 invoking Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908. The prayer made therein was to restrain Hamdard from selling the herbal sweeten syrup, using the trademark 'HAMDARD JAM-E-SHIRIN'.
3. Placed before a learned Single Judge of this Court, issuing summons in the suit, upon the condition that being a foreign entity and having no tangible assets in India, Qarshi should furnish security of the value of `10,00,000/- (Rupees Ten Lakhs only), summons were issued to Hamdard but ex-parte ad-interim injunction was declined; reasoning that the mark 'JAM-E-SHIRIN' is highly descriptive of the product because in Urdu language JAM means a drink and SHIRIN means cool or something having a cooling effect. As per the learned Single Judge the word 'JAM-E-SHIRIN' directly suggests that the product is a drink having cooling effect. Learned Single Judge has opined that prima facie the mark is not capable of registration under Section 9(1)(d) of the Trademarks Act, 1999 as it conveys the characteristic of the goods. There is an apparent typographic error because there is no clause (d) in sub-Section (1) of Section 9 of the Trademarks Act, 1999. The learned Single Judge has obviously referred to clause (b).
4. Qarshi is in appeal with a grievance, which is concededly correct, concerning the meaning assigned by the learned Single Judge to the word FAO(OS)(COMM.) No.1/2016 Page 2 of 9 JAM and SHIRIN in Urdu language. The learned Single Judge has ascribed the meaning drink and something having cooling effect to the two words respectively. It admits of no doubt that in Urdu the word JAM means a goblet and SHIRIN means sweet. Mr.Pravin Anand, learned counsel for Hamdard conceded so, but with a caveat that tipplers understand JAM to be an alcoholic drink : 'Jam laga le yaar'.
5. The meaning ascribed to the word JAM and SHIRIN, by the learned Single Judge, conceded by Sh.Sudhir Chandra, Senior Advocate to be a Judge of great learning, has given ammunition to Qarshi that Urdu not being a common language in India, at least not all over India, the common man would not understand JAM-E-SHIRIN to mean any particular thing because the words JAM and SHIRIN, though generic in Urdu language, and therefore not descriptive of anything to the common man. The argument was that if a learned Judge misunderstood the meaning of JAM and SHIRIN, it would be intrinsic evidence of the common man not understanding the Urdu connotation of the words JAM and SHIRIN, admittedly having etymological root in Persian.
6. The appeal against the order dated January 27, 2016 declining ex- parte ad-interim injunction and with reasons in support of the denial, was listed before this Bench on February 10, 2016. Notice was issued to Hamdard returnable for February 15, 2016 and we heard arguments on February 25, 2016.
7. Since Hamdard had no time to file a written statement but had filed documents evidencing that while granting registration, the trademark authority in Pakistan had clearly indicated that the registration was granted for the word mark 'QARSHI KA JAM-E-SHIRIN' with no right to the exclusive use of the words 'JAM-E-SHIRIN' as also with no exclusive right to the word SHIRIN and with further condition that the FAO(OS)(COMM.) No.1/2016 Page 3 of 9 word mark 'QARSHI KA JAM-E-SHIRIN', for which registration was granted, would be used along with word QARSHI KA and also with the letter E written between JAM and SHIRIN, which fact was not disclosed in the plaint, we had put it to learned senior counsel for Qarshi whether the appeal could be disposed of with a simple observation that the meaning ascribed to the words JAM and SHIRIN by the learned Single Judge were ex-facie incorrect and hence the inference drawn qua the suggestive character of the words (with reference to the meaning ascribed by the learned Single Judge but leaving it open to debate whether the words would still be suggestive of the quality of the product sold with reference to the Urdu meaning JAM = goblet and SHIRIN = sweet). The reason being an argument arising on an alleged suppression of a relevant fact i.e. simple disclosure that the trademark 'JAM-E-SHIRIN' was registered in Pakistan, without disclosing the disclaimers put as a condition by the authorities there. The Bench was of the opinion that proper pleadings were warranted and the prima-facie strength in the case of Qarshi was perhaps not of a kind where injunction must ensue as a matter of right. But Qarshi insisted for arguments to be heard and decision pronounced on merits. We therefore make it clear that the facts which we would hereinafter note would be neither determinative nor conclusive of an opinion to be formed and the facts as captured would be the ones necessary to give reason for our opinion as to why at this stage (when pleadings are yet to be completed) case is or is not made out for grant of a pro tem ad-interim injunction, pending consideration of the matter for grant of an interim injunction.
8. Arguments of learned senior counsel Mr.Sudhir Chandra for Qarshi was that in an action for passing off, merely because Hamdard was the registered proprietor of the trademark 'HAMDARD JAM-E-SHIRIN' FAO(OS)(COMM.) No.1/2016 Page 4 of 9 was irrelevant, because Qarshi was in the market since the year 1980 and as regards Hamdard it had obtained registration of its trademark claiming user since the year 2008. Learned senior counsel urged that the words JAM and SHIRIN were words of Urdu and the Court should take judicial notice of the fact that a large segment of the population in India is not well-versed in Urdu and thus would not understand the words 'JAM-E- SHIRIN' to mean a sweetened drink and thus the words would not be suggestive of the quality of the goods or an attribute of the goods sold. Learned senior counsel urged that the word mark was fanciful, and perhaps suggestive but hastened to add that this was to an extent which would be de minimis. Learned senior counsel urged that there is a distinct development in the law of trademark whereby a mark which merely suggests some quality or ingredient of goods though labeled as suggestive but is still capable of being distinguished as a distinctive mark i.e. a suggestive mark may be distinctive. Said mark would be entitled to the same protection which is accorded to an arbitrary and a fanciful mark. Learned senior counsel took the argument forward by importing us back to the year 1930 when the Lahore High Court pronounced an opinion reported as AIR 1930 Lahore 999 Unani Dawakhana Vs. Hamdard Dawakhana in which the word mark 'SHARBAT ROOH AFZA' was opined to be (though public juris) not suggestive, because the common man was not well versed in Urdu. Learned senior counsel relied upon the decision of a Division Bench reported as 2008 (37) PTC 468 Indian Hotels Co. Ltd. & Anr. Vs. Jiva Institute of Vedic Science & Culture to urge that as in the said case, where the defendant had itself written to the Registrar of Trademark while seeking registration of its trademark having the word 'JIVA' as a part of the mark that the word 'JIVA' was not descriptive, the defendant could not turn back and say to the plaintiff that FAO(OS)(COMM.) No.1/2016 Page 5 of 9 it cannot sue on a protection available to its trademark using the word 'JIVA' because the word was suggestive. We note that the word 'JIVA' would in Hindi mean a living being or life. Learned senior counsel referred to communication between Hamdard and the Registrar of Trademarks concerning 'JAM-E-SHIRIN' being descriptive and the possible stand of Hamdard that it was not descriptive. Learned senior counsel referred to the decision reported as 1955 SC 558 Registrar of Trademarks Vs. Ashok Chandra Rakhit to urge that disclaimer by a party is only for the purposes of the Trademark Act and it does not affect the rights of the proprietor except such as arise out of registration. In short, the disclaimed parts or matters which are not within the protection of the statute, is without prejudice to the proprietor having acquired right by long use of those parts on matters in connection with goods manufactured or sold or otherwise in relation to the trade. Summing up the submissions learned counsel urged that Qarshi was the prior user; it was the first in the world to market the product under the trademark 'JAM-E-SHIRIN'; it has advertised extensively in India and had spent money on the advertisements and had actually entered the Indian market in the year 2006. Relying upon the decision reported as AIR 1978 Delhi 250 Sanctuary Traders Vs. Roshan Lal Duggar, AIR 1995 Delhi 300 N.R.Dongre Vs. Whirlpool Corporation, 2004 (28) PTC 566 Satyam Infoway Pvt. Ltd. Vs. Sifynet Solutions Pvt. Ltd. and 2004 (28) PTC 585 Milment Oftho Industries Vs. Allergan Inc. it was urged that benefit of prior user must be given to the appellant. With reference to Rakhit's case (supra) it was urged that disclaimers are irrelevant in an action for passing off. With reference to the decisions reported as AIR 1993 SC 352 R.N.Gosain Vs. Yashpal Dhir, Jiva (supra) and 1999 PTC (19) 81 Dimmer dot - Automatic Electric Vs. R.K.Dhawan, learned senior FAO(OS)(COMM.) No.1/2016 Page 6 of 9 counsel urged that Hamdard having taken a stand before the Registrar of Trademarks that 'JAM-E-SHIRIN' was not descriptive could not turn back and say to Qarshi that it is descriptive. With reference to the decision of the Lahore High Court and an extract from McCarthy on Trademarks and Unfair Competition learned senior counsel urged that 'JAM-E-SHIRIN', though using Urdu words would not be descriptive in India.
9. Response of Sh.Pravin Anand, counsel for Hamdard was by conceding that a disclaimer while obtaining registration of a trademark may not affect a common law right in passing off, but added that 'in fact' there was an implication in the instant case of the disclaimers and the same would be that 'in fact' Qarshi acquired a reputation in the trademark (word mark) 'QARSHI KA JAM-E-SHIRIN' taken as a whole and not in a part thereof. For the argument attention was drawn to : (i) Communication by the Trademark Registry in Pakistan to Qarshi that its trademark 'QARSHI KA JAM-E-SHIRIN' was registered with no right to the exclusive use of the words 'JAM-E-SHIRIN'; (ii) No exclusive right to the use of the words 'E' and 'SHIRIN'; (iii) No exclusive right in the word 'SHIRIN' separately and apart from the mark as a whole; and
(iv) The condition that the mark shall be used along with 'QARSHI KA'. The argument would therefore be that the implication of the combined effect of the four facets would be that Qarshi would have a reputation for its product intrinsically linked to the trademark 'QARSHI KA JAM-E- SHIRIN'; meaning thereby the four words and the letter E would be the name of the word mark akin to a phrasal noun. Learned counsel urged that merely because the learned Single Judge misunderstood the meaning of the word JAM and SHIRIN to mean drink and cooling effect, and as a matter of fact JAM meant goblet and not drink and SHIRIN meant sweet FAO(OS)(COMM.) No.1/2016 Page 7 of 9 and not cooling effect, it would not mean that there is intrinsic evidence (on the reasoning that if a learned Judge misunderstood the meaning) that the words JAM and SHIRIN, though common words in Urdu language, would not be understood by the common man as descriptive of the goods i.e. describing a herbal syrup which is sweet. Learned counsel concluded by urging that Hamdard has the registration for the trademark 'HAMDARD JAM-E-SHIRIN' and has marketed the goods under said word mark.
10. We have noted the rival arguments, but would not be dealing with the same, for the reason suffice it to capture the rival arguments and bring home the point that the arena of debate is rich with arguments on either side and therefore without pleadings by Hamdard it is not a case where Qarshi has such a strong prima facie case that injunction must ensue as a sequitur thereto. We do not comment upon whether Qarshi is guilty of suppressing relevant facts which a party claiming injunction must disclose i.e. disclaimers made by it in Pakistan for the reason this issue itself needs a full debate after pleadings are completed. We do not comment upon whether the documents filed by Qarshi would entitle it to an injunction against Hamdard in an action for passing off taking into account that Hamdard is a registered proprietor of the trademark which is under challenge for the reason the law is that in an action for passing off, where the defendant is the registered proprietor of a trademark, the slope to be climbed by the plaintiff has a high degree of incline, and for which documents have to be scrutinized and prima-facie opinion formed.
11. The richness of the debate which we have captured hereinabove itself is a good reason to conclude that it is not a case where an ad-interim injunction must ensue forthwith. The full debate needs to be postponed FAO(OS)(COMM.) No.1/2016 Page 8 of 9 till Hamdard files the written statement and reply to the injunction application along with documents Hamdard relies upon.
12. Noting that summons in the suit have yet to be served upon Hamdard, but because of notice served in the appeal, Hamdard is aware of the suit and the date of its listing i.e. May 17, 2016 (wrongly typed as May 17, 2015 in the impugned order), we direct that Hamdard shall file a written statement as also a reply to the injunction application within 30 days from today and for which we take on record that the appellant has supplied to learned counsel for Hamdard the suit plaint, application for interim injunction and all documents relied upon and as filed along with the plaint.
13. The appeal is dismissed and so are the three accompanying applications in which prayer made is to stay the impugned order; an injunction be granted pending disposal of the suit against Hamdard as claimed by Qarshi and a local commissioner to be appointed to inventorize the alleged offending goods.
14. After pleadings are completed Qarshi is permitted to file an application before the learned Single Judge for preponement of the date of hearing.
15. No costs.
(PRADEEP NANDRAJOG) JUDGE (MUKTA GUPTA) JUDGE FEBRUARY 29, 2016 mamta FAO(OS)(COMM.) No.1/2016 Page 9 of 9