Calcutta High Court
Bardhaman Agro Products (I) Private ... vs Kiran Mallik on 29 July, 2024
ODC- 8
IN THE HIGH COURT AT CALCUTTA
COMMERCIAL DIVISION
ORIGINAL SIDE
G.A. (COM) No. 1 of 2024
In
I.P. (COM) No. 20 of 2024
BARDHAMAN AGRO PRODUCTS (I) PRIVATE LIMITED
-VS-
KIRAN MALLIK
BEFORE:
The Hon'ble JUSTICE KRISHNA RAO
Dated: 29.07.2024
Appearance:
Mr. Debnath Ghosh, Adv.
Mr. Tin Kari Jana, Adv.
Mr. Gopal Das, Adv.
Mr. Sourav Jana, Adv.
Biswaroop Mukherjee, Adv.
... for the petitioner.
ORDER
1. The petitioner has filed the present application for grant of temporary injunction. The petitioner is a Private Limited Company carrying the business under the name and style of "Diamond Heritage". The 2 petitioner was earlier known as Bardhaman Agro products, which was dealing in Rice under the mark "ROSE" since 2001.
2. The petitioner in order to distinguish the goods from those of others in the trade, on 30th June, 2001, the petitioner had adopted the trade mark "ROSE" along with a pictorial device of a "Rose" depicted therein in a bona fide manner when no one else was using the same or similar mark in respect of the said goods. The mark "ROSE" and the pictorial device of "Rose" are distinguishing essential features of the said mark of the petitioner. The said mark is printed on the packaging/trade dress used in relation to the petitioner's products as well as on the bills and invoices of the petitioner for which any rice sold under the mark "ROSE" is easily identified and distinguished by the customers as well as the members of the trade to have originated from the petitioner and none else.
3. In order to popularize the goods of the petitioner, the petitioner has extensively advertised the goods sold, marketed and distributed under the mark "ROSE" both in print and electronic media and for the year 2023-2024, the petitioner has made expenditure for the advertisement for a total sum of Rs. 4,80,74,712.84/-. In order to acquire statutory recognition over the mark "ROSE BRAND" in respect of Rice, in the month of November, 2003, the petitioner had filed an application for registration of the mark "ROSE BRAND" under Class 30 of the Trade Marks Act, 1999 which was duly registered in favour of the petitioner which is valid till 17th November, 2033. Apart from the said 3 registration, the petitioner has adopted and obtained several other "ROSE" formative marks containing pictorial device of "ROSE" under the Trade Marks Act, 1999.
4. The petitioner has also obtained Copyright Registration Certificate on 2nd December, 2013.
5. In the month of March, 2024, the petitioner came to know from its Trade Mark Attorney that the respondent had obtained registration of deceptively similar mark "MAMU ROSE" for similar product i.e. rice falling under Class 30 under the Trade Marks Act, 1999. On further inquiry, the petitioner came to know that in his registration application, the respondent has claimed that "MAMU ROSE" is being used by the respondent since 2nd April, 2016 but the respondent has not filed any invoice/bill in support of the claim of the respondent to establish that the respondent is using the mark "MAMU ROSE" since 2016.
6. Mr. Debnath Ghosh, Learned Advocate representing the petitioner submits that when the petitioner came to know about the registration of the respondent, the petitioner immediately filed an application for rectification being No. 281775 dated 7th March, 2024 for cancellation of such registration granted in favour of the respondent and the same is still pending for adjudication.
7. Mr. Ghosh submits that on further inquiry, the petitioner came to know that the respondent started selling rice under the impugned mark "MAMU ROSE" at Hatibagan Market, College Street Market, Jaan Bazar 4 Market and various other places. He submits that the petitioner is a prior adopter and user of the mark "ROSE". He submits that the petitioner has acquired exclusive right to use such mark in respect of rice and no one else has right to use the mark "ROSE" or any other mark which is either identical or deceptively similar in respect of the rice falling under Class 30 of the Trade Marks Act, 1999. He submits that unauthorized use of an identical and similar mark would create confusion and deception amongst customers.
8. Mr. Ghosh submitted that the respondent has adopted the mark "MAMU ROSE" to infringe the petitioner's word mark "ROSE". He submits that the mark "MAMU ROSE" structurally, phonetically and deceptively similar and identical with the "ROSE" mark of the petitioner in relation to identical goods. He submits that the respondent has also infringed the copyright of the petitioner in the artistic work "ROSE".
9. Mr. Ghosh submits that the intention of the respondent to derive illegal benefit from selling the similar goods bearing the similar mark as that of petitioner otherwise such deceptively similar mark would not have been adopted. He submits that goods of the petitioner and the respondent are similar in nature and are distributed through the same channel of distribution to the same class of the customers. He submits that there is every likelihood and possibility of causing confusion and deception amongst members of the trade as well as the innocent customers of ordinary prudence and imperfect recollection as to the origin of the similar goods.
5
10. Heard the Learned Counsel for the petitioner, perused the materials on record. The petitioner has disclosed the documents to show that the petitioner is using the mark "ROSE BRAND" since the year 2001 and subsequently in 2005, the petitioner has got the registration with effect from 17th November, 2003. The petitioner has also obtained Trade Mark Certificate of the said mark. The respondent has obtained registration of trade mark of "MAMU ROSE" on 9th January, 2020 with effect from 8th July, 2019. The respondent has filed and affidavit to obtain registration of mark "MAMU ROSE" and in the said affidavit, the respondent has stated that he has submitted documents that the respondent is engaged in the business of marketing and processing of rice for the past several years but the respondent has not filed any document to show that the respondent is engaged in the said business for the last several years.
11. The petitioner is the prior adopter and user and also the proprietor of trade mark "ROSE" in respect of rice and has acquired common law rights in respect of the said mark by virtue of long continuous user since the year 2001 and the petitioner is the prior adopter of the mark "ROSE" in respect of the goods falling under Class 30. The respondent is the subsequent adopter of the deceptively similar mark "MAMU ROSE" in respect of the rice. The respondent by using the impugned mark in respect of similar goods has infringed the registered trade mark of the petitioner "ROSE".
6
12. The registered trademark of the petitioner "ROSE" is infringed by the respondent by use of a deceptively similar mark "MAMU ROSE" in the course of trade in relation to similar goods in such manner so as to cause confusion and deception in the course of the trade.
13. In view of the above, this Court finds that the petitioner has made out a prima facie case and balance of convenience and inconvenience are in favour of the petitioner. This Court finds that at this stage, an ad interim order is not passed; the petitioner will suffer irreparable loss and injury.
14. The respondent, his dealers, distributors, men, servants, agents, assigns, representatives are restrained from manufacturing, selling, distributing and advertising or otherwise dealing in rice under the impugned trade mark "MAMU ROSE" or any other mark which is identical and deceptively similar to the registered trade mark of the petitioner "ROSE" in any manner whatsoever till 9th September, 2024.
15. The petitioner is directed to serve the copy of application, documents and plaint to the respondent and to file affidavit of service on the returnable date.
16. List the matter on 9th September, 2024 under the heading "New Motion".
(KRISHNA RAO, J) p.d/-