Delhi District Court
Suresh Kumar Garg vs . Pramod Kumar on 1 May, 2015
01.05.2015 TM2/15 Suresh Kumar Garg Vs. Pramod Kumar Present: Counsel for parties. ORDER
1. Vide this order, I shall dispose off the application as filed by plaintiff U/o 39 Rule 1 and 2 CPC.
2. The brief facts of the case are that plaintiff filed the suit for perpetual injunction restraining defendant from infringement of Trade Mark, Copyrights, passing off, rendition of accounts, delivery up of labels etc. In the plaint it was stated that plaintiff is sole proprietor of firm carrying on business under the trading style M/s Aggarwal Oil Mills and is manufacturing and marketing the edible oil since the year 1981. It was pleaded in plaint that since the inception of business in the year 1981, the plaintiff has adopted the trade mark numeral 1 and label having numeral 1 being its predominant and essential part in respect of edible oil. It was also stated that plaintiff has also applied for registration of trade mark label No. 1 vide application No. 2374194 dated 03.08.2012 in respect of edible oil claiming user since 01.01.1981 and said application is pending registration and distinctive features of plaintiff label are combination of Red, Yellow, Green colours and No. 1. It was stated that sometime in July 2012 the plaintiffs came to know that defendant has TM2/15 Page No. 1/11 proposed to use the trade mark G1 and defendant in fact has applied for registration of trademark G1 under application No. 2328821 but goods were not available in the open market. It was also stated that after getting information about the defendant illegally move to adopt the trade mark number No. 1, the plaintiff got issued a legal notice dated 30.07.2012 to defendant and vide reply dated 17.08.2012 the defendant has claimed that use of trade mark Shri G1 is absolutely different and distinct from plaintiff's trade mark number 1. It was also stated that label as used by defendant having trade mark G1 are not as per trade mark applied for registration and even the user claimed by defendant in application dated 09.05.2012 is prosed to be used. It was also stated that adoption and use of trade mark G1 by defendant is subsequent to plaintiff adoption and plaintiff is prior in adoption and use of trade mark number1 in respect of edible oil. It was also stated that adoption of trade mark label having number 1 by the defendant is neither honest nor bonafide but tainted with dishonesty. Hence present suit was filed by plaintiff against the defendant seeking reliefs as prayed in prayer clause of present suit.
3. Written statement was filed by defendant wherein preliminary objections were raised stating that suit of the plaintiff is not maintainable and without any merit. It was also stated that present suit is filed only to harass the genuine and honest defendant by making false claims and statements in plaint. It was also stated that suit is without any cause of action and TM2/15 Page No. 2/11 plaint is neither signed nor verified properly by a competent and duly authorized person and suit is not valued properly and requisite amount of court fee has not been paid. On merits, it was stated that plaintiff is not manufacturer and is guilty of false representation. It was also stated that trademark '1' is not an invented expression or coined expression created, invented or coined by plaintiff and the expression 1 has been in existence for ages. It was also stated that mark 1 has been adopted by others and applied for by others as a trademark for same and and different goods by many others prior to the plaintiff. It was also stated that merely by filing the application, the plaintiff is not entitled to exclusive use of said trademark label No. 1. It was also stated that plaintiff has furnished even the sales figures during the period of 2005 to 2013 while he has claimed the user since 1981. It was also stated that label used by the plaintiff qua color scheme and combination etc. is commonly used by all. It was further pleaded that defendant has coined the said trademark "SHRI G1" by taking SHRI from its trading style SHRI Shyam Traders; alphabet G from its surname Gupta and number 1 to denote to the quality of the product. It was also averred that there is no similarity, much less, any deceptively similarity between plaintiff's trademark/ label and defendant's impugned trade mark and there is no scope for any deception by use of the defendant's trademark. The other contents of suit were denied and it was prayed that suit of the plaintiff be dismissed. TM2/15 Page No. 3/11
4. Replication was also filed by plaintiff to the written statement of defendant wherein contents of plaint were reiterated and reaffirmed by plaintiff and those of written statement were denied.
5. Plaintiff also filed application U/o 39 Rule 1 and 2 CPC wherein contents of plaint were reiterated and it was prayed that an ad interim injunction orders be passed restraining the defendant, its directors, servants, agents, representatives and all other persons on his behalf from infringing and passing off under the trade mark label numeral 1 in respect of edible oil as per Annexure D1, D2, D3 and D4 annexed with plaint or any other trade mark label identical or deceptively similar to applicant trade mark numeral 1 as per Annexure P1, P2, P3 and P4.
6. Reply to above said application was also filed by defendant wherein it was stated that plaintiff has not suffered any loss, damage or injury nor is likely to suffer as is indicated by the plaintiff's own conduct till date and there is no scope of any loss, much less, irreparable or great loss to the plaintiff by lawful business of defendant. It was also stated defendant is the true owner and lawful proprietor of mark and has not used it for past several years and defendant establishes a strong prima facie case for refusal of the injunction application. The other contents of application were denied and it was prayed that application U/o 39 Rule 1 and 2 CPC be dismissed with heavy costs.
7. I have gone through the record and material available on the file and TM2/15 Page No. 4/11 have heard the arguments of parties.
8. It is to be seen whether plaintiff is entitled for injunction orders or not. While deciding the injunction application U/o 39 Rule 1 and 2 CPC, the court has to see the ingredients and parameters for grant of injunction i.e. balance of convenience, prima facie case and irreparable loss and injury to plaintiff. I have gone through and seen the trade marks/labels etc. of both plaintiff and defendant. Test of deception in the mind of general public is to be applied. The counsel for plaintiff has relied upon judgment decided by Hon'ble Supreme Court of India titled Parle Products (P) Ltd. Vs. J. P. and Co., Mysore AIR 1972 S. C. 1359 wherein it was held that "while determining that whether one mark is similar to another broad and essential feature of two must be considered - marks were similar if their appearance mislead person who usually deals with one to accept other if offered to him". I place reliance upon judgment of Hon'ble High Court titled as Mr. Sami Khatib & Anr. Vs. Seagull Labs(I) Pvt. Ltd. decided by Hon'ble Justice Sh. V.S. Aggarwal on 10.8.01 wherein XENEX was found phonetically distinctive from XYMEX. It is clear that where two marks are identical then question of infringement arise and infringement can be made out but where two marks are not identical and there is no question of near resemblance then the court has to compare the two TM2/15 Page No. 5/11 trademarks and it depends on the degree of resemblance to arrive at the conclusion as to whether deception on the mind of public at large will be caused or not and ultimate test is whether the two trademarks are deceptively similar. The resemblance may be phonetic or visual. The same test applies to colour, combination, artistic features etc. Plaintiff has also placed reliance upon Kishore Zarda Factory(P) Ltd. Vs. J.P Tobacco House & ors. 1998 PTC(18) wherein it was held that "What is to be seen is whether prima facie there is scope for confusion in the minds of the customers with regard to the two marks." On the other hand, the counsel for defendant has also relied upon "AIR 1960 Supreme Court 142 (V 47 C 25) titled Corn Products Refining Co. Vs. Shangrila Food Products Ltd. wherein it has been held that "Mark must be compared as a whole". The above preposition is not disputed. Division Bench of Hon'ble High Court in case titled as SBL Limited Vs. Himalaya Drug Co. 1997 The Patents and Trademarks Cases (Vol. 17) 540 had drawn certain guidelines which are as follows: "(1) Whether the two marks are identical, no further questions arise for, then the infringement is made out;
(2) When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to TM2/15 Page No. 6/11 deceive or cause confusion and in relation to goods in respect of which it is registered;
(4)The Court has to compare the two marksthe degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standard. The persons who would be deceived are of course the purchasers of the goods and it is the likelihood of their being deceived that is the subject for consideration. The purpose of the comparison is for determining whether the essential feature of the plaintiff's trade mark are to be found used by the defendant. The ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff; (3)The onus would be on the plaintiff;
(5)The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark;
(6)The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the court based on evidence led before it as regards the usage of the trade. "
9. So the above ratio is to be kept in mind while deciding the present application. The plaintiff is using trade mark and label with word Sanjay's TM2/15 Page No. 7/11 and having numeral '1' with word "EK" (in Hindi) and defendant is using trademark Shri G1. During the course of arguments, the defendant has averred that the sale of plaintiff is very low and the defendant is the true owner and lawful proprietor of mark and plaintiff has not used the said trade mark for past several years. During the course of arguments, the defendant himself has shown the products of plaintiff and has submitted that one particular batch No. is being used on number of goods and thus plaintiff is committing theft of sales tax. As far as the above plea of theft is concerned, the same can be taken care of by concerned authorities and matter can be brought to the notice of authorities concerned. Though plaintiff has countered the arguments by saying that there can be some error in printing but that is not domain of this court and can be looked by concerned authorities but the production of products by defendant before courts itself shows that goods of the plaintiff are available in the market under trademark for which he is seeking protection. Secondly, as far as volume of sale is concerned, both the parties are not such trader who are having such voluminous sale otherwise also sale is not only the sole criteria for certain parameters and it can be only additional factor if otherwise the case is made out by defendant. As far as trademark of plaintiff is concerned, same is duly registered with Registry of trade mark dated 09.07.1999 having registration No. 864841 in class 29, however trade mark of defendant is TM2/15 Page No. 8/11 not registered. So prima facie case is duly made out by plaintiff on this account. Even apart from registration, the plaintiff has claimed to be prior user since 01.01.1981 as mentioned in plaint and defendant is stated to be using the same since the year 2012. So in these circumstances, balance of convenience also lies in favour of plaintiff. The only question is whether numerical 1 can be of so uniqueness which can be used by plaintiff to the exclusion of defendant. Number of judgments have been placed on record by plaintiff and defendant to throw light on the controversy as to whether alphabet and numerical have uniqueness or these are general in nature or they can be used by anybody or nobody can have priority right on them. One judgment is titled Teju Singh Vs. Shanti Devi (AIR 1974 AP 274) relied upon by defendant wherein it was held that "descriptive, common, laudatory and generic marks are not entitled to protection and any addition to the same would suffice to distinguish". The defendant has further relied upon judgment titled "Radico Khaitan Ltd. Vs. Carlsberg India Pvt. Ltd. 2011 (48) PTC 1 Del wherein the Hon'ble Court has discussed regarding monopoly in single letter or numberal. But these are not applicable to the facts of the case and are not helpful for defendant. Rather in these judgments, it is made out that in special circumstances, numerical /generic word can also achieve uniqueness, if it is proved. The counsel TM2/15 Page No. 9/11 for plaintiff, in order to establish and prove his case has relied upon judgment 2015 (61) PTC 1 [Bom] [FB] titled Lupin Ltd. & Anr. Vs. Johnson and Johnson & Anr. wherein it was held that "There is nothing in the Act to suggest that any different parameters for grant of injunction are required to be applied when a plaintiff seeks injunction on the basis of registered trade mark - Relief of injunction being a relief in equity, when the Court is convinced that the grant of interim injunction would lead to highly inequitable results, Court is not powerless to refuse such relief".
10. So the plaintiff has been successful to prove its case and he will suffer irreparable loss and injury, if injunction is not granted. Thus in these circumstances, ingredients and parameters for grant of injunction i.e. balance of convenience, prima facie case and irreparable loss and injury to plaintiff are available in present case. The plaintiff is registered and prior user of trade mark and is entitled for protection.
11. Accordingly, the application U/o 39 Rule 1 and 2 CPC stands allowed. The defendant, its directors, servants, agents, representatives and all other persons on his behalf are restrained from infringing and passing off under the trade mark label numeral 1 in respect of edible oil as per Annexure D1, D2, D3 and D4 annexed with plaint or any other trade mark label identical or deceptively similar to plaintiff's trade mark numeral TM2/15 Page No. 10/11 1 as per Annexure P1, P2, P3 and P4.
12. Nothing stated herein above shall tantamount to have expression or opinion on the merits of the case.
13. Be put up for framing of issues on 28.05.2015.
(Ajay Goel) ADJ1(North)/Delhi/01.05.2015 TM2/15 Page No. 11/11