Calcutta High Court
Parakh Vanijya Pvt. Ltd vs Baroma Agro Products & Ors on 8 August, 2016
Author: Sanjib Banerjee
Bench: Sanjib Banerjee
O-5
GA 555 of 2012
GA 1512 of 2013
IN
CS 27 of 2012
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
PARAKH VANIJYA PVT. LTD.
Versus
BAROMA AGRO PRODUCTS & ORS.
BEFORE:
The Hon'ble JUSTICE SANJIB BANERJEE
Date : 8th August, 2016.
For the plaintiff :
Mr. Jishnu Saha,Sr. Advocate Mr. Debnath Ghosh,Advocate Mr. Sanjib Dawn,Advocate Mr. Debashish Mukhopadhya,Advocate For the defendants :
Mr. Siddhartha Mitra,Sr. Advocate Mr. Sayantan Basu,Advocate Mr. Tinkori Jana,Advocate Mr. Prithwiraj Sinha,Advocate Mr. Goutam Kumar Ray,Advocate Mr. Sourav Jana,Advocate 2 The Court : - This is a rolled-up action for both infringement and passing-off. The plaintiff is the registered owner of a label mark in class-
30. The plaintiff sells rice and the most prominent feature of its label mark is the word 'Malabar'. The plaintiff has no registration in respect of word 'Malabar'.
The plaintiff enjoys an injunction for a considerable period on the ground of the substantially similar packaging used by the defendants in marketing their rice. Upon the defendants seeking an order that they may pursue their application for registration in respect of a device mark indicated at page 42 of the vacating application, GA 1512 of 2013, the defendants were required, by an order dated July 5, 2016, to file a supplementary affidavit to clearly indicate the device mark that they proposed to use. The supplementary affidavit was to include the plaintiff's device mark and the defendants' mark that remained injuncted by the subsisting order. All three device marks were required to be to the same scale and, if possible, in actual size. Pursuant to such direction, a supplementary affidavit has recently been filed by the defendants. Page 10 of the affidavit is a coloured copy of the plaintiff's package; page 13 is a coloured copy of the defendants' package that has been injuncted. At page 12 of such affidavit, the defendants have disclosed the new get-up or 3 package that the defendants propose to use. Since rice is sold primarily in gunny bags and the photographs at pages 10 and 13 appear to be of gunny bags, the defendants have also carried a gunny bag containing the proposed get-up. There is no doubt that the defendants' proposed get-up looks substantially different from the plaintiff's get-up containing the label mark and the proposed get-up of the defendants is quite a departure from their previous get-up that they have been restrained from using.
The plaintiff says that quite apart from the fact that the plaintiff has been using its device mark openly and extensively from or about 2001, the plaintiff's rice is referred to as 'Malabar' in the market. The plaintiff submits that the word 'Malabar' has come to be associated exclusively with the plaintiff's product in the field of rice and no other person packaging or selling rice may use it.
One of the curious features of this case is that the plaintiff's registration confines the plaintiff's device mark for products to be sold by using the same in the States of Bengal, Bihar and Jharkhand. It is, however, not clear that whether such disclaimer implies that if the plaintiff's product is sold in the State of Andhra Pradesh, the plaintiff would have no exclusive rights in respect of its label or whether another may copy the plaintiff's label with impunity in the State of, say, Rajasthan. 4
The plaintiff claims that upon the plaintiff noticing the defendants selling their rice by the name of 'Malabar' and in a similar get-up, the plaintiff issued a cease and desist notice in July of 2010. The plaintiff submits that the defendants did not take any immediate action and the plaintiff may have perceived that the defendants would mend their ways, but the defendants applied in August, 2011 for the registration of a device which had 'Malabar' prominently written within it along with coconut trees in the background of the circular device. The plaintiff asserts that the suit was instituted shortly after the plaintiff came to be aware of the defendants' designs.
As to the deception on the part of the defendants, the plaintiff refers to its get-up and packaging and that of the defendants which they have now been restrained from using. The plaintiff says that there are at least seven copycat features which would demonstrate that the defendants were seeking to cash in on the goodwill and reputation of the plaintiff and deceive prospective customers of the plaintiff into believing that in buying the defendants' product they were buying the plaintiff's. The salient common features in the gunny bags used by the defendants as those in the gunny bags used by the plaintiff were in the blurb with the words 'Old Rice'; the use of palm trees in conjunction with the word 'Malabar'; the 5 words 'Special Biryani Rice'; the number '786'; and the words 'Bengal Soil Super Crop'.
The plaintiff refers to the judgments reported at (2008)4 CHN 611; (1999)19 PTC 81; (2010)44 PTC 293; (2014)57 PTC 617 and (2004) 6 SCC 145 to demonstrate that there could be some exclusivity claimed in the word 'Malabar' by the plaintiff though the plaintiff does not possess any registration in respect thereof. The plaintiff also points out that the word 'Malabar' has no connection with rice and is not descriptive of the place of its origin. The plaintiff contends that the word 'Malabar' has nothing to do with the product for a rice-seller not to be entitled to claim any exclusivity in the goodwill associated with the mark. The plaintiff insists that the defendants' application for registration was an afterthought and the claim by the defendants made before the Trade Mark Registry of having used the device mark since 2002 is belied by the categorical stand taken by the defendants in this Court that they have used the mark since 2004.
The defendants refer to the anomalies in the plaintiff's case, particularly the discrepancies in the figures quoted by the plaintiff before the Registry and those disclosed in the pleadings herein. The defendants also refer to the plaintiff's belated attempt to seek an amendment of the date of user of the plaintiff's label from 2003 to 2001. The defendants 6 claim that the application for amendment of the date of user by the plaintiff is a counter-blast to the defendants' application for registration of the device mark claiming user since 2002. The defendants refer to varying copies of the same documents as relied upon by the plaintiff before the Registry and in this Court. In some of the documents claimed to be of 2001 vintage, there are references to the West Bengal Value Added Tax Act. However, the references are to VAT, 2005 though the State Act was enacted in 2003.
The defendants refer to the registration of several device marks incorporating the name 'Malabar' whether singly or as part of 'Malabar Coast' or 'Malabar Monsoon' and the disclaimer therein as to the word 'Malabar' issued by the Registry. At least one of the device registrations in class-30 claims user since September, 2001. Class-30 of the classification of goods and services under the statute covers divers spices and other edible material as wheat, rice, coffee, tea and the like. The disclaimer is worded thus: "Registration of this Trade Mark shall give no right to the exclusive use of the word 'Malabar' and all other descriptive matters".
Ordinarily, when a word is coined for use as part of a mark or when a word which has no nexus at all with the product covered by a mark is used, there is an element of exclusivity that the user thereof can claim, subject to the goodwill that attaches to the mark in course of its use, its 7 exposure and acceptance in the market. Though the word 'Malabar' may not have any direct nexus with rice, particularly considering that the rice sold by the plaintiff is primarily of Burdwan, it cannot altogether be said that Malabar has no nexus with rice or the other goods that keep company with rice in class-30. Indeed, it was the Malabar Coast of the peninsula that was first exposed to the West in modern times and India came to be known for its spices. Spices occupy a prominent part of class-30.
Notwithstanding the plaintiff's rights qua word mark 'Malabar' not being seen as absolute, it must also be recognised that products are known by their names and even if a product carries a device mark, the unregistered name within the device may be the name by which the product is called or sought. Neither set of parties here is insubstantial, both claiming impressive sales of the relevant product. These figures will, doubtless, be assessed at the trial; but it cannot be conclusively said today that the word 'Malabar' has come to be exclusively associated with the plaintiff or that the plaintiff cannot claim any goodwill therein.
There can be no doubt that these defendants attempted to project their product as the plaintiff's and ride piggyback on the plaintiff's goodwill and reputation. Notwithstanding the fact that the plaintiff may not be exclusively entitled to the mark 'Malabar', once a prima facie view has been taken by this Court and the defendants' get-up, which was a 8 varitable copy of the plaintiff's, has been injuncted, the defendants may be permitted to use the 'Malabar' feature which prominently figures as part of the plaintiff's registered device mark, but only if the word 'Malabar' is sufficiently distinguished by using any other word or words in conjunction therewith. The plaintiff will be entitled to this protection that the defendants' device may contain the word 'Malabar' but such word must be in conjunction with one or more others so that all the words together sufficiently distinguish the defendants' product from the plaintiff's.
Since the word 'Baroma' is used by the defendants in their get-up and also in the device mark for which registration has been sought, the defendants are permitted to pursue any application for registration of a device in accordance with law where the word 'Malabar' is used as a part of the words 'Baroma's Malabar' or 'Malabar of Baroma' where all the words and letters must be in the same font but the word 'Malabar' may be in increased point-size of not more than 25 per cent than the rest of the words or letters. Further, 'Baroma' and 'Malabar' have to be used by the plaintiff together and in the same manner so that the two together appear to be the name and 'Malabar' alone is not projected as the name of the defendants' product.
9
GA No.1512 of 2013, which is the vacating application, and GA No. 555 of 2012, which is the plaintiff's main injunction application, are disposed of by confirming the subsisting order insofar as it relates to the defendants' get-up and packaging as evident from page 13 of Madhusudan Dutta's affidavit affirmed on July 18, 2016. However, subject to the outcome in this suit, the defendants will be entitled to use the word 'Malabar' in conjunction with 'Baroma' in the manner indicated above whether as part of any device or word mark where the get-up and packaging is not deceptively similar to the plaintiff's.
There will be no immediate order as to costs.
(SANJIB BANERJEE, J.) s.chandra/dg2