Calcutta High Court
Ganesh Grains Limited & Anr vs M/S. Shree Ganesh Besan Mill & Ors on 15 March, 2021
Equivalent citations: AIRONLINE 2021 CAL 168
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IA GA 1 of 2020
In
CS 92 of 2020
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
COMMERCIAL DIVISION
GANESH GRAINS LIMITED & ANR.
V.
M/S. SHREE GANESH BESAN MILL & ORS.
For the Plaintiffs : Mr. Ranjan Bachawat, Senior Advocate
Mr. Debnath Ghosh, Advocate
Mr. Soumya Ray Chowdhury, Advocate
Mr. Gautam Banerjee, Advocate
For the Defendants : Mr. Manish Biala, Advocate
Smt. Jayanati Chowdhury, Advocate
Ms. Ranjana Seal, Advocate
Hearing concluded on : March 10, 2021
Judgment on : March 15, 2021
DEBANGSU BASAK, J. :-
1.In a suit for infringement of a registered design and passing off, the plaintiff has sought interim protection.
2. Upon the present application being moved, an ad interim Order dated January 4, 2021 had been passed granting orders in terms of prayers (a) and (c) of the petition. The petition has come up for final disposal after completion of affidavits.
3. Learned Senior Advocate appearing for the plaintiff has submitted that, the plaintiffs are manufacturers, merchants and 2 exporters of various flour products. The predecessor-in-interest of the plaintiffs had started the business of manufacturing and marketing of flour under the name and style of Ganesh Flour Mills and sold products under the mark "Ganesh" since 1936. The plaintiff No. 2 had joined the business and carried on the same under the name and style of Ganesh Flour Mills. According to him, the plaintiffs have built a strong presence in West Bengal and Eastern India in terms of market share, brand recognition and distribution. He has submitted that, the plaintiffs are now having Pan India presence. He has contended that, the plaintiffs have adopted the trade mark "Ganesh" in the year 1936 in order to distinguish their products and also for trade identity. The plaintiffs had been in continuous and uninterrupted use of the trade mark "Ganesh". He has referred to the trade mark registration of the word "Ganesh". He has submitted that the same has been registered in Class 30.
4. Learned Senior Advocate appearing for the plaintiffs has submitted that, apart from the trade marks that have been registered in favour of the plaintiffs, the plaintiffs are entitled to protection on account of passing off. The plaintiffs have a turnover in excess of Rs. 500 crores per annum. The expenses on 3 account of advertisement for the plaintiffs has been around Rs. 3 to 4 crores per annum. He has referred to the application for the trade mark made in 1956. He has also referred to the invoices for sales that the plaintiffs have made with regard to their products. He has drawn the attention of the Court to the letter issued by the Registrar of trade marks to the plaintiff on August 2, 1976.
5. Learned Senior Advocate appearing for the plaintiffs has submitted that, the plaintiffs became aware of the defendant using the word "Ganesh" to market the same products as that of the plaintiffs in 2015. He has drawn the attention of the Court to the fact that the defendant had applied six times for registration of the word "Ganesh". The Registrar had disallowed three of such applications and the balance three had been rejected on the objections of the plaintiffs.
6. Learned Senior Advocate appearing for the plaintiffs has commented on the conduct of the defendant subsequent to the interim order dated January 4, 2021. He has submitted that, the defendant has adopted a dishonest approach. The defendant has sought to change the label although, in actual effect, the defendant is seeking to ride on the business goodwill of the plaintiffs despite the so called changes. According to him, the 4 defendant is still using the word "Ganesh". The user of the word "Ganesh" even on the new format is misleading and deceptively similar to that used by the plaintiffs. He has submitted that the defendant has not disclosed any document to show that the defendant was using the word "Ganesh" from the time it has claimed in the affidavit in opposition. The defendant has not disclosed any document to establish that, it has any registered mark in respect of any words used either in the old label or the new label. He has drawn the attention of the Court to the contents of the order dated January 4, 2021. He has submitted that, the defendant has not furnished details of the transactions as directed by the Court. He has submitted that, in the facts of the present case, the plaintiffs are entitled to orders in terms of prayer (a), (b) and (c) of the petition.
7. Learned Advocate appearing for the defendant has submitted that, the plaintiffs have not produced any document to establish the rights of the plaintiffs to use the word "Ganesh" as it is registered in favour of a different person. He has submitted that, the defendant is entitled to and has been using the word "Ganesh" since, the father of one of the partners of the partnership firm has the name Shree Ganeshlal Daryani. 5 According to him, Late Shree Ganeshlal Daryani had adopted the trade mark "Shree Ganesh" honestly and bona fide. Such adoption being honest and bona fide, it is protected under Section 35 of the Trade Marks Act, 1999.
8. Learned Advocate appearing for the defendant has submitted that, the application of the plaintiffs for registration had been examined and rejected by the Registrar on the ground that the mark is a personal name and that, the mark is identical with or deceptively similar to the registered mark and/or prior pending trade marks applications.
9. Learned Advocate appearing for the defendant has relied upon 1990 (Supp) Supreme Court Cases 727 (Wander Ltd. & Anr. v. Antox India P. Ltd.) and submitted that, the balance of convenience and inconvenience is not in favour of granting any interim order in favour of the plaintiffs. According to him, the defendant has carried on business since 1989. The plaintiffs had been aware of the defendant using the word mark "Shree Ganesh" since long. He has draw the attention of the Court to the averments made in paragraph 14 of the petition. He has submitted that, the plaintiffs became aware in 2015 that the defendant was using the mark "Shree Ganesh". The plaintiffs 6 have not taken any steps thereafter. The plaintiffs are guilty of acquiescence and waiver. He has relied upon 1994 Volume 2 Supreme Court Cases 448 (M/s. Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd.) in support of the contention that, when the plaintiff is guilty of waiver and acquiescence, no interim order need be passed.
10. Learned Advocate appearing for the defendant has submitted that, the plaintiffs have not done any due diligence. The defendant had been using the mark "Shree Ganesh" since 1989. The plaintiffs have not taken any steps to prevent the defendant from using the mark "Shree Ganesh" since 1989. The plaintiffs having allowed the defendant to grow, at this stage, the plaintiffs cannot have an order of injunction restraining the defendant from carrying on business as the same will impact not only the defendant but also its workers. He has relied upon (2017) 239 DLT 99 (Intex Technologies (India) Ltd. & Anr. v. M/s. AZ Tech (India) & Anr.) and submitted that, when a senior company using a mark has allowed a smaller company to use the same and make its presence in the market, the senior user cannot have an order of injunction.
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11. Referring to Section 12 of the Trade Marks Act, 1999, learned Advocate appearing for the defendant has submitted that, the defendant has been an honest and concurrent user of the word "Shree Ganesh". The word "Ganesh" according to him is generic in nature. It is associated that an Hindu God. Therefore, there is nothing distinguishable in the word for the plaintiffs to maintain an action for infringement or passing off.
12. Learned Advocate appearing for the defendant has submitted that the defendant is ready and willing to submit accounts of all sales made for the period as the Court may direct as the plaintiffs are entitled to damages at best. Therefore according to him, no interim order should be granted.
13. Learned Senior Advocate appearing for the plaintiffs has relied upon 2002 Volume 3 Supreme Court Cass 65 (Laxmikant V. Patel v. Chetanbhai & Anr.) in support of the contention that, refusal to grant interlocutory injunction in trade mark and trade name disputes, would occasion a failure of justice and injury to the plaintiff which cannot be undone at a later stage.
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14. The plaintiffs have a claim on account of infringement of a registered design as against the defendant. The plaintiffs have also claimed reliefs with regard to passing off as against the defendant. In support of the claim of infringement of registered design, the plaintiffs have relied upon a registration of the trademark "Ganesh" dated October 20, 2005. The plaintiffs have also relied upon trademark registered as "Ganesh Gold", "Ganesh Premium", "Ganesh Healthy" and "Ganapati". The plaintiffs have claimed that, one Ramgopal and Ramratan started carrying on business of manufacturing and marketing of flour under the name and style of Ganesh Flour Mills and sold products under the mark "Ganesh" since 1936. The plaintiffs have claimed that, the plaintiff No. 2 is the grandson of Ramratan. Ramgopal and Ramratan had split with Ramratan carrying on the business. The plaintiffs have claimed that, the father of the plaintiff No. 2 namely Brijratan Mimami had carried on such business. The plaintiff No. 2 had joined such business at the age of 17. The defendant has not produced any materials to disprove such claims of the plaintiffs. As the materials produced on record stands, at the prima facie level, it has to be held that, the plaintiffs hold registration in respect of the trademark "Ganesh". 9
15. The plaintiffs have produced documents to establish that, the plaintiffs had been carrying on business since 1936 and have been marketing their products using the trademark Ganesh since then. The plaintiffs have relied upon invoices of 1936 to establish such claim. The defendant has claimed user since 1989. However, in support of such claim, the defendant has relied upon a trade license of 1989. The trade license per se does not establish that, the defendant had been marketing products under the name and style of "Ganesh". Even taking such claim of the defendant at the highest, that is, the defendant had been marketing its products since 1989 under the mark "Ganesh", then also the defendant cannot be said to be the prior user.
16. By reason of the existence of registration of the trademark "Ganesh" in favour of the plaintiffs, they have become entitled to protection under Section 29 of the Trade Marks Act, 1999. The defendant nonetheless has a defence of Section 35 of the Act of 1999 on establishing that, it is a bona fide concurrent user or a prior user of the registered trademark.
17. Section 35 of the Act of 1999 is as follows: -
"35. Saving for use of name, address or description of goods or services.-- Nothing in this Act shall entitle 10 the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services."
18. The defendant has claimed that Shree Ganeshlal Daryani adopted the trade mark "SHREE GANESH" honestly and bona fide from his name Ganesh. Section 35 of the Act of 1999 has protected the bona fide use of a trade mark by a person of his own name or that of his place of his business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services. In the facts of the present case, "Shree Ganesh" has never been the name of a person or the predecessor in business of the defendant. "Shree Ganesh" cannot be said to be the bona fide use of his own name of Shree Ganeshlal Daryani. The defendant is a partnership firm under the name and style of M/s. Shree Ganesh Besan Mill. The name of the partnership firm is a pseudo name and is not that of Shree Ganeshlal Daryani. Neither the words "Shree Ganesh" nor 11 Shree Ganesh Besan Mill can be said to be protected under Section 35 of the Act of 1999.
19. The plaintiffs have made out a prima facie case on account of infringement of registered trade mark as also on the ground of passing off. The defendant has used the registered design of the plaintiffs. The plaintiffs and the defendant are in the same class of business. The defendant has been using the word "Shree Ganesh". The description of "Shree Ganesh" as appearing in the packets and labels of the products of the defendant has shown that, the word "Shree" has been used in a manner so as to camouflage itself in the design of the label. The word "Ganesh" has been used prominently. Visual by a person with an imperfect recollection is likely to mistake the product of the defendant as that of the plaintiff. The design get up of the labels and packets of the defendant used to market the same products as that of the plaintiffs are deceptively similar to that of the plaintiffs. The defendant appears to be trying to ride on the business reputation of the plaintiffs through such means.
20. It has been judicially recognised that, user of a suffix or a prefix to the registered mark is of no consequence so far as an action on account of infringement or passing off is concerned. 12 The suffix or the prefix have to be of a sufficient distinguishing feature and quality so as to distinguish the words used from the registered mark. In the facts of the present case, prima facie it cannot be said that, the user of the word "Shree" as a prefix to the registered word "Ganesh" distinguishes the product of the defendant's mark particularly when the parties are into the same class of business.
21. In Wander Ltd. & Anr. (supra), the Supreme Court in the facts of that case had vacated an order of injunction in an action for passing. It has observed that, the interlocutory remedy is intended to preserve the status quo and the rights of the parties which may appear on a prima facie case. The court has to consider the balance of a convenience and inconvenience.
22. In Laxmikant V. Patel (supra) the Supreme Court has held that in an action for passing off it is usual rather essential, to seek an injunction, temporary or ad-interim. The principles of grant of such injunction are the same as in the case any other action causing injury complained off. It has observed that, once a case of passing off has been made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of a local commission if necessary.
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23. In M/s. Power Control Appliances & Ors. (supra) the Supreme Court has noted that, a claim on account of infringement and passing off can be defeated if the plaintiff is guilty of acquiescence or waiver or delay. In Intex Technologies (India) Ltd. & Anr. (supra), the Delhi High court has observed that, where the senior user had permitted the junior user to grow rapidly and establish a huge market presence without any action on the part of the senior user, and if an injunction were to be granted at a belated stage, it would amount to causing irreparable injury to the junior user. The balance of convenience when considered in the light of delay, would be in favour of the junior user.
24. In the facts of the present case, the defendant has claimed that, the plaintiff was aware of the defendant using "Shree Ganesh" as the mark since 2015 at least. Learned Advocate for the defendant has relied upon various averments in the plaint in this regard.
25. The plaintiffs had opposed the applications of the defendant for grant of registration of the trade mark "Shree Ganesh". Out of the 6 applications made by the defendant for registration, 3 had been rejected by the Registrar and 3 had been rejected in view of 14 the opposition of the plaintiffs. The defendant has not brought on record any materials to establish that, subsequent thereto the plaintiffs were aware of the conduct of the defendant. In fact the plaintiffs had opposed the registration of the trade marks in favour of the defendant. The plaintiffs had taken steps with regard to the user of the words "Shree Ganesh" by the defendant as and when it became aware of the same. In the facts of the present case, it cannot be said that, the plaintiffs have been guilty of acquiescence or waiver or delay disentitling the plaintiffs from receiving orders of interim protection.
26. The contention of the defendant that, the balance of convenience does not lie in favour of the plaintiffs in view of the fact that, the defendant is carrying on business since, 1989 and that its grant may affect many parties is without substance. In a suit for infringement of registered design and for passing off, the consideration has to be whether, the defendant has a defence recognised in law or not. The carriage of business of the defendant in such a suit has to be in accordance with law. The claim of a defendant in such a suit that, although the plaintiff has satisfied all the parameters for grant of temporary injunction pending the disposal of the suit, the same should not be granted 15 in view of the fact that, the business of the defendant would be seriously prejudiced if an order of injunction is granted, is of no consequence. A defendant in a suit for infringement and passing off is obliged to carry on business in accordance with law as much as the plaintiff therein. When the defendant has been found to be carrying on business in infringement of a registered design or a mark or is guilty of passing off, such a business cannot be said to be carried on in accordance with law and no right accrues to such a defendant to claim that it would be inconvenient to such defendant if the defendant is restrained from carrying on such business. When a defendant is found of be acting in breach or violation of law, it cannot be said that on the scale of balance of convenience, under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 that it is in favour of the defendant.
27. In the facts of the present case, the defendant cannot take shelter under Section 12 of the Act of 1999. Section 12 of the Act of 1999 empowers the Registrar, in the case of honest concurrent use or on others special circumstances to permit the registration by more than one proprietor of the trade marks which are identical or similar. The defendant has not established any 16 special circumstances existing in its favour for allowing it to use "Shree Ganesh". The defendant in the facts of the present case cannot be said to be a concurrent user of the mark "Shree Ganesh". Since, the issue as to violation of the subsisting interim order is pending in a separate contempt petition filed by the plaintiffs, the issue as to whether the defendant had acted in violation of an order of a Court is not decided in this application.
28. In the facts of the present case, the defendant cannot be said to be entitled to use the word "Shree Ganesh" in carrying on its business. The defendant is however, at liberty to carry on the business of flour but without using the registered design "Ganesh" with a suffix or a prefix to market its products.
29. In such circumstances, there will be orders in terms of prayers (a), (b) and (c) of the petition. IA GA No 1 of 2020 in CS No 92 of 2020 is disposed of accordingly.
[DEBANGSU BASAK, J.] 17 Later :-
Learned Advocate appearing for the defendants seek stay of operation of the judgment and order which is considered and refused.
[DEBANGSU BASAK, J.]