Rajasthan High Court - Jaipur
M/S Ritika Vegetable Oil Private ... vs M/S Deepak Vegpro Private Limited on 19 December, 2019
Bench: Prakash Gupta, Pankaj Bhandari
HIGH COURT OF JUDICATURE FOR RAJASTHAN
BENCH AT JAIPUR
D.B. Civil Miscellaneous Appeal No. 5291/2019
M/s Ritika Vegetable Oil Private Limited., Having Its Registered
Office At D-47 Laxman Marg, Hanuman Nagar, Vaishali Nagar,
Jaipur 302021 (Rajasthan) Through Its Authorized Signatory Mr.
Ajay Data.
----Appellant
Versus
M/s Deepak Vegpro Private Limited., Having Its Registered Office
At Old Industrial Area, Itarana Road, Alwar 301001 (Rajasthan)
Through Its Director.
----Respondent
For Appellant(s) : Mr.Harshid Tholia
MrAnuroop Singhi
Mr.Narendra Bhati and
Mr.Rahul Khandelwal
For Respondent(s) : Ms.Sukriti Kasliwal
Mr.Kapil Sharma
HON'BLE MR. JUSTICE PRAKASH GUPTA
HON'BLE MR. JUSTICE PANKAJ BHANDARI
JUDGEMENT
DATE OF ORDER 19/12/2019
BY THE COURT: (Per Hon'ble Pankaj Bhandari, J)
1. Appellant-defendant has preferred this Civil Misc. Appeal aggrieved by order dated 5.10.2019 passed by Commercial Court No.1, Jaipur whereby application for temporary injunction filed by the plaintiff-respondent was allowed.
2. Briefly stated the facts of the case are that the plaintiff- respondent filed a suit for infringement and passing-off of its registered trademark (LABEL/LOGO) 'NEERAJ' bearing registration No. 1462578. It was pleaded in the plaint that the (Downloaded on 07/06/2021 at 07:53:38 AM) (2 of 14) [CMA-5291/2019] plaintiff-respondent company is engaged in the business of amongst other things extracting of vegetable and edible oils since incorporation in the year 1994. Petitioner is having various known brands including SCOOTER, SHIV SPECIAL, HANUMAN, CHANCELLOR, CKANAKYA AND NEERAJ. It is pleaded that the trade mark 'Neeraj' was adopted in the year 1998 for edible oil products including mustard oil and Blended Edible Vegetable Oils and that the product is being sold throughout the country and is extremely popular in the North-Western & North-Eastern states of India. It was pleaded that after adopting the trademark 'Neeraj', company created its variants by the name of "NEERAJ SPECIAL"
and "NEERAJ PLUS" and subsequently got the said two trademarks also registered under the Trademarks Act, 1999. 'Neeraj' trademark is bearing registration No.1462578. The Registration Nos. of "NEERAJ SPECIAL" is 3008572 and that of "NEERAJ PLUS"
is 3008573. It is contended that initially plaintiff-company has a total turn over of more than Rs.4,000 crores w.e.f. 1998 to 2017- 2018. It was pleaded that the defendant-company in April 2019 has obtained the trademark 'Nirab' and that 'Neeraj' and 'Nirab' are phonetically identical/deceptively similar and defendant has adopted the said trademark 'Nirab' malafidely with the sole objective to make unlawful gain at the cost of reputation/goodwill of the plaintiff- company.
3. It was also pleaded that plaintiff- respondent has been in the business of manufacturing the oil products by the name of 'Neeraj' for last more than 10 years. There is no justification or reason for adopting the name 'Nirab' which is phonetically similar to the word 'Neeraj'. The defendant- company has maliciously applied for registration of a mark which is phonetically so similar (Downloaded on 07/06/2021 at 07:53:38 AM) (3 of 14) [CMA-5291/2019] that it is likely to create confusion in the mind of the customers which also includes illiterate customers primarily belonging to North-Eastern states of India.
4. It was pleaded that both the companies indicate their origin from Data Group of Companies. Plaintiff-company and its Group of Companies belong to Niranjan Lal Data Group of Companies whereas defendant and their sister concerns belongs to Babu Lal Data Group of Companies. When a customer sees that the product picked-up by it is from Data Group, the chances of confusion are much higher. It was pleaded that on 5.6.2019 it came to the knowledge of plaintiff-company that defendant- company has also launched its product under the name and style of 'Nirab'. Plaintiff company's authorized representative informed that one of its agent brought a bottle of 'Nirab' to show the confusion which is likely to arise. Along-with the suit an application on similar lines seeking temporary injunction was also filed. Prayer made in the injunction application is to restrain the defendant- company from using or carrying on the business in the name and style of 'Nirab'.
5. Appellant-defendant company submitted their reply stating therein that the plaintiff has got registered the device/label/logo as a whole and has not applied/got registration of the word per-se 'Neeraj' separately. It was also pleaded that hundreds of companies are using the word 'Neeraj' and 'Niraj' as it is common to the trade and non-distinctive in character. Some of the companies are using the word 'Neeraj' much prior to the plaintiff- company. It was also pleaded that mere look at both the marks make it clear that both the labels are completely different to each other. It was also pleaded in the reply that plaintiff does not have (Downloaded on 07/06/2021 at 07:53:38 AM) (4 of 14) [CMA-5291/2019] a prima-facie case, balance of convenience and irreparable loss in his favour.
6. The Court below vide impugned order dated 5.10.2019 has allowed the injunction application and has restrained the appellant- defendant from using the word 'Nirab' till the final decision of the suit. Aggrieved by which the appellant has preferred the present appeal.
7. It is contended that the court below has believed that both the words 'Neeraj' and 'Nirab' are not phonetically similar in Hindi language and labels are also not similar. It is contended that learned Court below has erroneously presumed that in North- Eastern region of India where Hindi language is not much prevalent, there may be confusion. It is contended by the counsel for the appellant that as per sub-section (2) of Section 17 of the Trade Marks Act when a trademark which is not the subject of a separate application by the proprietor for registration as a trademark or which is not separately registered by the proprietor as a trademark, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered. It is also contended that as per sub- section (9) of Section 29 of the Trade Marks Act where a distinctive element of a registered trademark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly. It is argued that word 'Neeraj' is a common Indian masculine name which is non- distinctive in character and is being used by many companies much prior to the registration of the trademark of the plaintiff- company. Plaintiff-company has not got the word per-se (Downloaded on 07/06/2021 at 07:53:38 AM) (5 of 14) [CMA-5291/2019] 'NEERAJ' registered separately, hence, is not entitled to any injunction.
8. It is also contended that there is no pleading in the entire application that the word per-se 'Neeraj' is capable of distinguishing the goods of plaintiff. In absence of such pleading, the plaintiff has no case at all for the word per-se 'Neeraj'.
9. It is also contended that when the appellant applied for the trademark the only similar or deceptively similar word which was pointed out by the Trademark Registering Authority was 'Nirav'. It is also contended that no affidavit has been filed of any person who has been deceived by the use of word 'Nirab' and who have purchased the product considering it to be a product manufactured by the plaintiff-company.
10. It is also contended that the plaintiff has failed to plead the ingredients necessary to establish the case of passing-off i.e. (i) false representation-mere confusion will not suffice, (ii) because of such false representation an 'unwary' consumer is deceived and (iii) false infringement has injured the plaintiff's goodwill and not just its reputation. It is contended that though the subject matter of the plaint pertains to infringement of trademark and passing-off but there is no case of passing-off either pleaded or argued by the plaintiff.
11. Counsel for the appellant has placed reliance on M/s J.K.Oil Industries Vs. M/s Adani Wilmar Ltd. (2010 SCC Online Delhi 567), ZARI & another vs. ZARI Silk India Pvt. Ltd. (2014 SCC Online 1179) and Nirma Chemical Works Pvt. Ltd. & Anr. vs. Nirman High School & Ors. (2010 (68) RCR (Civil) 771). Reliance has also been placed on Skyline (Downloaded on 07/06/2021 at 07:53:38 AM) (6 of 14) [CMA-5291/2019] Education Institute (India) Pvt. Ltd. Vs. S.L. Vaswani & Anr. (2010 (2) SCC 142).
12. Counsel for the plaintiff-respondent has vehemently opposed the appeal. It is contended that the suit was filed for both infringement as well as passing-off for use of applicant's mark 'Neeraj' by use of a deceptively and phonetically similar trademark 'Nirab'. It is contended that plaintiff-company is having a total turnover of around Rs.4891.51 crores and that its brand 'Neeraj' has become extremely popular in whole of India. It is also contended that company has produced 2 lac metric ton of Oil in the last 12 years.
13. It is also contended that plaintiff-respondent is doing business by the name of 'Neeraj' for the last 10 years. Choosing a phonetically similar word 'Nirab' points out to the dishonest intention of the appellant who want to pass-off their products, as that of plaintiff who has earned goodwill and his products are popular throughout the country and extremely popular in North- Western and North-Eastern States of India.
14. It is also contended that the Court below has weighed all aspects of the matter and has rightly restrained the appellant from marketing the products by the name of 'Nirab' and the order does not call for any interference by the Court.
15. Counsel for the Plaintiff- respondent has placed reliance on M/s Encore Electricals vs. Anchor Electricals 2007 (35) PTC 714 (Bom.); Marina Food Products Pvt. Ltd. vs. Britania Industries Ltd. 2018 (74) PTC 499 (Del.); Indian Hotels company Ltd. vs. Ashwajeet Garg & Ors. 2014 (59) PTC 256 (Del.); Shoppers Stop Ltd. vs. Softobell Inc. & Ors. 2018 (76) PTC 498 (Del.); Lupin Limited vs. Eris Lifescience (Downloaded on 07/06/2021 at 07:53:38 AM) (7 of 14) [CMA-5291/2019] Pvt. Ltd. & Ors. 2016 (67) PTC 144 (Bom.), Shambhu Nath & Ors. Vs.Imran Khan 2018 (76) PTC 365 (Cal.), Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73.
16. We have heard the learned counsel for the parties and considered the rival submissions made by them.
17. It will be appropriate to first deal with the judgments cited by the counsel for the parties before going into the factual aspects of the case.
18. Counsel for the appellant-defendant has placed reliance on M/s J.K. Oil Industries Vs. M/s Adani Wilmar Ltd.(supra), wherein Delhi High Court has held that the word 'KING'S label' is not identical to the word 'OIL KING' and that word 'KING' is common to English language and it has not shown that it has attained secondary meaning or is distinctive of plaintiff's goods. The Court also held that there is no visual similarity or any other similarity between the two labels. In ZARI & another vs. ZARI Silk India Pvt. Ltd. (supra) Rajasthan High Court has held that the word 'ZARI' was not registered independently as a Trademark for the applicant company. The registration of the mark was a 'label mark' and not 'word mark' under section 17/29 of Trademarks Act, 1999, only the registered Trademark as a whole not parts thereof was enforceable by way of suit for injunction. There is no prima facie evidence of distinctiveness and secondary meaning acquired by the word 'ZARI' in the applicant's Trademark. The court below has overlooked that no possibility of confusion/ or deception obtained prima facie nor any evidence of probative worth with regard thereto obtained at the interlocutory stage for making out a case of infringement/ passing-off as the get-up, (Downloaded on 07/06/2021 at 07:53:38 AM) (8 of 14) [CMA-5291/2019] label design, colour scheme are different of the applicant's registered Trademark. The injunction order of the Court below was set aside. In Nirma Chemical Works Pvt. Ltd. & Anr. vs. Nirman High School & Ors. (supra) Gujarat High Court has held that as such there is no similarities between the two words 'Nirma' and 'Nirman' which is likely to create/ cause confusion amongst customers and therefore, by using 'Nirman' by the defendants there is neither any infringements of Trademark of Plaintiff's mark 'Nirma'. Also the word 'Nirma' is a coined word without any specific meaning. On the other hand, mark/word 'Nirman' used by the defendants is commonly used in Hindi/Gujarati/ Sanskrit language having specific meaning i.e. development of various kinds. The court upheld the order of the Trial Court and refused to grant injunction in favour of the Plaintiff. In Skyline Education Institute (India) Pvt. Ltd. Vs. S.L. Vaswani & Anr. (supra) Apex Court has held that the Court below has not erred in their decision and coming to conclusion that it is not a fit case for restraining the Respondents from using the word 'Skyline' in the name of the Institute. It was held that word 'Skyline' is being used as trade name by various companies/ organizations/ business concerns and also for describing different types of institutes/ institutions. In view of this, it is concluded that 'Skyline' is a generic word. Hence, no case of infringement is made out.
19. Counsel for the plaintiff-respondent has placed reliance on M/s Encore Electricals vs. Anchor Electricals (supra) wherein Bombay High Court has held that 'Anchor' and 'Encore' are phonetically, visually and structurally similar and that defendant has no bona-fide or logical explanation for the adoption (Downloaded on 07/06/2021 at 07:53:38 AM) (9 of 14) [CMA-5291/2019] of the mark. Hence, injunction order was granted. In Marina Food Products Pvt. Ltd. vs. Britania Industries Ltd. (supra) Delhi High Court has held that the two marks 'MARIE' and 'Marie' for selling biscuits prima facie appears to be structurally, visually and phonetically similar, which may cause confusion in the minds of general public and consumers. Further, there was continuous use of Trademark 'Marie' by the defendant. Ex-parte injunction was granted by the Court and 'Marie' products was restrained from using his marks as 'MARIE'. In Indian Hotels company Ltd. vs. Ashwajeet Garg & Ors. (supra) Delhi High Court has held that the two competing marks are 'JIVA' and 'ZIVA'. Both use the marks for identical SPA services. The two rival marks prima facie appears to be structurally, visually and phonetically similar, which may cause confusion in the minds of general public and consumers. Court held that Defendants are restrained from using the trademark 'ZIVA' or any other trademark deceptively similar to the trademark of the Plaintiff 'JIVA' and ex- parte injunction continued. In Shoppers Stop Ltd. vs. Softobell Inc. & Ors. (supra) Delhi High Court has held that plaintiff's trademark 'VETTORIO FRATINI' and defendant's mark 'VETTERN FRATTINI' was phonetically and visually similar. In Lupin Limited vs. Eris Lifescience Pvt. Ltd. & Ors. (supra) Bombay High Court held that the marks 'NEBISTOL' of Defendants and 'NEBISTAR' of the Plaintiff's both used in respect of pharmaceutical goods are phonetically, visually and structurally similar and there is also a likelihood of causing confusion in the minds of the consumers. Court held that the two marks are deceptively similar and restrained Defendants from using their mark. Plaintiff is entitled of injunction on the basis of Infringement of their mark. In (Downloaded on 07/06/2021 at 07:53:38 AM) (10 of 14) [CMA-5291/2019] Shambhu Nath & Ors. Vs. Imran Khan (supra) Calcutta High Court has held that Petitioner is the owner of the registered 'device' trademark 'TOOFAN' and is in business of manufacturing of electrical fans and prior users in this field. Defendants started using the mark 'SNJ TOOFAN' in the same type of business. Court held that mark of Defendant is deceptively similar to that of Petitioners. Marks of Petitioners are infringed. It shows the dishonest intention of the respondent to ride on the reputation of the Petitioners. Prima facie case established in favour of the petitioners. In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (supra) Apex Court has held that appellant the owner of the trademark 'Falcigo' has filed a civil suit for injunction against the respondents from using the trademark 'Falcitab'. Both the medicines are used for the treatment of the same disease. The test to determine, held is the similarity and not the dissimilarity between the competing marks. Phonetic similarity is not to be ignored when competing marks are written differently. The question has to be approached from the point of view of an Indian of average intelligence and imperfect recollection and not from the view of an Englishman.
20. Admittedly, the trademark registration No. 1462578 is for a device (label/logo) 'Neeraj'. Word 'Neeraj' is not per-se registered separately as a trademark. As per sub-section (2) of Section 17 of the Trade Marks Act when a trademark which is not the subject of a separate application by the proprietor for registration as a trademark or which is not separately registered by the proprietor as a trademark, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered. Sub-section (9) of (Downloaded on 07/06/2021 at 07:53:38 AM) (11 of 14) [CMA-5291/2019] Section 29 of the Trade Marks Act provides that where a distinctive element of a registered trademark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation. Word per-se 'Neeraj' is not a separately registered trademark of the plaintiff- company.
21. It is pertinent to note that the appellant-company applied for registration of their trademark as a 'device' mark by the name 'Nirab' and the only objection made by the registering authority was that 'Nirab' is phonetically similar to word 'Nirav'. Registering authority did not raise any objection with regard to similarity with 'Neeraj'. The label/logo of both the products are available on record. There is no similarity whatsover in the label/logo between the two marks i.e. 'Neeraj' and 'Nirab'. Hence, there is no infringement of trademark 'Neeraj'.
22. Court below has observed that 'Nirab' and 'Neeraj' are not phonetically similar but has granted relief in favour of the plaintiff only on the ground that residents of North-Eastern States may be deceived as pronunciation of both the words are similar in Hindi language. It is further pertinent to note that no affidavit of any consumer was filed before the Court below to establish that the consumer was deceived by the use of word 'Nirab' and that he mistook the same to be 'Neeraj'.
23. Court below has also observed that admittedly 'Neeraj' is not an innovated or coined mark and that the word may not be phonetically similar in rest of India except North-Eastern and North-Western states of India. If the buyers are well acquainted with the Hindi language and educated enough to distinguish the word by reading, but phonetically it implied confusion in the areas (Downloaded on 07/06/2021 at 07:53:38 AM) (12 of 14) [CMA-5291/2019] where the Hindi language is not much in use and not so prevalent like North-Eastern and North-Western states. There is no pleading that there is any phonetical similarity between the two words in the language of North-Eastern and North-Western states of India. There is also no pleading as to how 'Neeraj' and 'Nirab' are pronounced in North-Eastern and North-Western states. Hence, after having come to the conclusion that the word is not phonetically similar in rest of India, there was no material to have come to the conclusion that there is phonetical similarity between 'Neeraj' and 'Nirab' in North-Eastern and North-Western states of India. Court has passed its order considering the two words to be phonetically similar in North-Eastern and North-Western states, which conclusion was arrived at without there being any material on record.
24. It has also come on record that word 'Neeraj' is a common Indian masculine name which is being used by hundreds of companies throughout the country and probably this is a reason why plaintiff-company did not got the word 'Neeraj' registered separately as a trademark.
25. Plaintiff and defendant company both belong to the Data Group of companies and both are in the business of oil for the last few decades. Our views find support from the case law cited by the counsel for the appellant-defendant i.e. M/s J.K.Oil Industries Vs. M/s Adani Wilmar Ltd.(supra) wherein Delhi High Court has held that the word 'KING'S label' is not identical to the word 'OIL KING' and that word 'KING' is common to English language and it has not shown that it has attained secondary meaning or is distinctive of plaintiff's goods and similarly in the present case the word 'NEERAJ' is common Indian masculine (Downloaded on 07/06/2021 at 07:53:38 AM) (13 of 14) [CMA-5291/2019] name and there is no visual or any other similarity between the words 'NEERAJ' and 'NIRAB'. Judgment cited by the counsel for the plaintiff-respondent i.e. M/s Encore Electricals vs. Anchor Electricals (supra) wherein Bombay High Court has held that 'Anchor' and 'Encore' are phonetically, visually and structurally similar and that defendant has no bona-fide or logical explanation for the adoption of the mark, cannot be relied upon as Court below has also observed that the two words 'NEERAJ' and 'NIRAJ' are not phonetically similar in rest of India except North- Eastern and North-Western states of India. Restraining appellant from marketing his products would cause irreparable loss to the appellant-company and since there is no evidence namesake that anyone has been deceived by the word 'Nirab', no irreparable loss would be caused to the plaintiff-respondent. Prima facie case, balance of convenience and irreparable loss are not in favour of the plaintiff-respondent and, hence is not entitled for relief of temporary injunction. However, since the suit is pending adjudication, it would be justifiable to direct that the appellant- defendant shall be entitled to sell its product, but it shall maintain its accurate sale records/accounts and after duly signing the same by its responsible officer, furnish the same fortnightly to the Commercial Court No.1, Jaipur, where the suit is pending. A copy of the same shall also be given to the respondent. This direction will continue till the pendency of the suit.
26. The Commercial Court No.1, Jaipur shall verify the said sale records/accounts of the appellant-defendant so that if at the time of final decision of the suit, the Commercial Court No.1, Jaipur comes to the conclusion that there is any infringement and (Downloaded on 07/06/2021 at 07:53:38 AM) (14 of 14) [CMA-5291/2019] passing-off respondent-plaintiff's registered trade mark, the respondent-plaintiff could be compensated adequately.
27. It is made clear that the Commercial Court shall decide the suit without being influenced by the order of this Court.
28. In view of the above discussion, the order dated 5.10.2019 passed by the Court below is set aside and the appeal is accordingly allowed.
(PANKAJ BHANDARI),J (PRAKASH GUPTA),J
Reserved judgment/teekam
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