Gujarat High Court
Samrat Namkeen Private Limited vs Parakh Agro Industries Ltd on 30 June, 2015
Author: Akil Kureshi
Bench: Akil Kureshi
C/AO/30/2012 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 30 of 2012
With
CIVIL APPLICATION NO. 1045 of 2012
In
APPEAL FROM ORDER NO. 30 of 2012
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SAMRAT NAMKEEN PRIVATE LIMITED....Appellant(s)
Versus
PARAKH AGRO INDUSTRIES LTD....Respondent(s)
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Appearance:
DR RAJESH H ACHARYA, ADVOCATE for the Appellant(s) No. 1
MR YJ TRIVEDI, ADVOCATE for the Respondent(s) No. 1
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CORAM: HONOURABLE MR.JUSTICE AKIL KURESHI
Date : 30/06/2015
ORAL ORDER
1. This Appeal from Order is filed by the original plaintiff challenging the order dated 30.12.2011 passed by the learned Chamber Judge, City Civil Court, Ahmedabad, below application exhibits 6 and 7 filed by the present appellant original plaintiff.
2. The plaintiff has filed the said suit seeking interim injunction against the present respondent defendant from using the Trademark 'SAMRAT' and/or any other identical and/or deceptively similar mark of their products. Case of the plaintiff company 'SAMRAT NAMKEEN PRIVATE LIMITED' is that it is engaged in the business of Page 1 of 9 C/AO/30/2012 ORDER manufacturing, marketing and selling food preparation and Farsan. The defendant is also manufacturing, marketing and selling preparation of food products such as, wheat flour, referred to as 'Chaki' or 'Fresh Atta' under the Trademark 'SAMRAT'. According to the plaintiff, the company had used the said Trade name 'SAMRAT' continuously and uninterruptedly since 1980. The plaintiff is well known manufacturer and merchant of preparation and selling the food products in the nature of Farsan under the said Trade name. In order to distinguish its products from the products of other manufacturers, the plaintiff had adopted the said Trademark/Name which is visibly affixed on each packaging material. The plaintiff has also filed application for registration of its Trademark in various classes before the Trademark authorities. Such registration has been granted in the year 2002 and which is also renewed from time to time. Case of the plaintiff further is that the defendant has deliberately and with mala fide intention to encash the goodwill of the plaintiff, has been using the Trademark of the plaintiff on its labels without the permission of the plaintiff. The plaintiff recently came to know from the market that the defendant is unauthorisedly using the Trademark 'SAMRAT'. Both sides are using the same Mark for food products which would demonstrate dishonest intention of the defendant of infringement and passing of their goods as those of the plaintiff. The plaintiff therefore, sought permanent restraint against the defendant from use of the same Mark or Name. Along with the suit, the plaintiff also prayed for interim injunction.
Page 2 of 9 C/AO/30/2012 ORDER3. The defendant filed a detailed reply opposing such prayer. In such reply, the defendant contended interalia that suit of the plaintiff suffers from vice of suppression of correct facts. The defendant is using the Mark in respect of Aata, Besan, pulses, etc. since 1982. The defendant is also a registered proprietor of the Trademark 'SAMRAT' label bearing essential features of the word 'SAMRAT'. The defendant is not using Trademark 'SAMRAT NAMKEEN' for any readymade food product but is using the Mark in respect of its Atta, Besan, Pulses, etc. which products are not manufactured or marketed by the plaintiff. According to the defendant, the plaintiff suppressed the fact that both sides have applied for registration of the Mark with counter opposition from other side. Thus totally belying the plaintiff's declaration that only recently the plaintiff came to know about the use of the Mark by the defendant. The defendant also questioned the very locus standi of the plaintiff to file a suit since Trademark was previously Jaishankar Vaidya.
4. The trial Court at one stage granted exparte injunction upon which the defendant approached the High Court. The High Court disposed of Appeal From Order No.470/2011 by order dated 19.12.2011, vacated such exparte injunction but requested the trial Court to dispose of the interim injunction application by 6.1.2012. Thereupon, the trial Court by impugned order rejected the plaintiff's request for interim injunction. Hence this Appeal from order.
5. In the impugned order, the learned Judge came to the Page 3 of 9 C/AO/30/2012 ORDER conclusion that there was no similarity between the font, colour, appearance of the Trademark of the plaintiff' and the defendant. Both of them were involved in different products and it can be differentiated visually. Both the Trademarks were also used for different products and the prospective purchaser of both the products would also be different. The Court also came to the conclusion that the defendant was prior user of Trademark 'SAMRAT' and has been using the said Mark since long. The defendant had also registered its Mark in the year 1983. The plaintiff failed to establish that they are using the said Trademark since 1980. The Court held that there was no iota of evidence in support of this assertion. The Court also noted that the plaintiff had opposed the registration of defendant's Mark in the year 2009 and the present suit was filed after considerable delay. On the principle of delay and acquiescence also interim injunction could not be granted.
6. Learned counsel Shri Bhatt for the appellant submitted that the Court below committed a serious error in rejecting the application of the plaintiff for interim injunction though the plaintiff had established that it was a prior user of the Trademark. He drew my attention to certain documents to which I would refer to at a later stage. Counsel also submitted that merely because the two sides were engaged in different products would not be sufficient to dismiss the prayer for interim injunction. Counsel submitted that merely because the defendant had a larger turnover than the plaintiff also would not be a relevant consideration. He submitted that there was no suppression on part of the Page 4 of 9 C/AO/30/2012 ORDER plaintiff or delay or acquiescence in bringing suit. He relied on the decisions in case of Sohan Lal Nem Chand Jain v. Trident Group & ors. reported in 2012(49) PTC 105(Del) and in case of Choice Hotels International Inc. v. M Sanjay Kumar & anr. reported in 2015(62) PTC 269 (Del).
7. On the other hand, learned counsel Shri Tejas Trivedi with Shri Y.J. Trivedi for the opponent opposed the appeal contending that the Court below has given cogent reasons. He submitted that the defendant was prior user of the Mark and also enjoyed registration of the Trademark. In view of sections 17 and 28 of the Trade Marks Act, 1999, the plaintiff could not prevent the defendant from use of such Mark. He further submitted that the plaintiff was well aware about the defendant using such Mark as can be seen from the objections raised by both the sides to the applications of the respective parties for registration of their Mark. Though they were aware since 2009 and 2009, despite which, the plaintiff has averred in the suit that only recently it came to know about the infringement by the defendant. Counsel submitted that in view of prior user and in view of registration of the Trademark, defendant had the right to its continued use and the plaintiff could not object to the same.
8. Having heard the learned counsel for the parties and having perused the documents on record, I am perfectly in agreement with the view of the trial Court. In order to establish that the plaintiff was prior user of the Trademark, there was hardly any evidence at all to suggest that the plaintiff was dealing with such product in the year 1980.
Page 5 of 9 C/AO/30/2012 ORDERCounsel for the plaintiff had drawn my attention to several documents placed at page124 onwards in the paper book. However, none of these documents would clearly establish the use of the plaintiff or its predecessor of the Trademark. As against this, the defendant had produced his certificate of the authorities under the Trade Mark Act indicating that the date of application of registration was 22.8.1983 and the Trademark was stated to be in use since 10.4.1982. In contrast the plaintiff's application for registration was dated 21.5.1986 and the date of user was kept blank. In addition to such material, one may also refer to the order dated 29.8.2000 in which the authorities held as under :
"The documents filed by the applicants conclusively prove that the use of trade mark SAMRAT since the year 1986. It is well settled that any application for registration of trade mark the onus is on the applicants to satisfy the Registrar that there is no reasonable probability of deception and confusion of the rival marks. In the present case I am satisfied with the evidence filed by the applicants that they are using the trade mark since 1986, hence, the use of the impugned mark by them is not likely to cause any confusion and deception. Accordingly the objection under section 11 stands rejected."
9. It can thus be seen that there was considerable material before the Court below to come to prima facie conclusion that the defendant was in use of the said Trademark since 1982 whereas at very best, the plaintiff's first use came in the year 1986, so much for prior user.
10. It has also come on record that the defendant's Mark was registered, as noted above, by the Trade Mark Page 6 of 9 C/AO/30/2012 ORDER authorities granting certificate of registration. It is true that likewise the plaintiff also had a similar certificate in its favour. Nevertheless, it would prima facie appear that combined effect of section 17 read with section 28 of the Trade Marks Act, 1999, would allow the defendant to continue to use the said Mark. Section 17 pertains to effect of registration of parts of a mark. Subsection(1) thereof provides that when a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. As per subsection (2) notwithstanding anything contained in subsection (1), when a trademark contains any part which is not separately registered by the proprietor as a trade mark or contains any matter which is common to the trade or is otherwise of a nondistinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. Section 28 pertains to rights conferred by registration. Subsection(3) provides that where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not except so far as their respective rights are subject to any conditions or limitations entered on the register be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks.
11. Equally on the score of delay and laches in bringing the injunction suit, I must hold in favour of the plaintiff. Though in the plaint, as noted above, the plaintiff averred Page 7 of 9 C/AO/30/2012 ORDER that only recently it was found that the defendant was indulging in such activity of passing of infringement of Trademark, it has come on record that it was well within the knowledge of the plaintiff that the defendant was using such Trademark since quite sometime. On the plaintiff's application for registration of the Trademark, opponent had objected on 9.4.2008 as can be seen from document at page389 of the paper book from the Trade Mark Registry. Likewise, the defendant had filed similar application before the Trademark Registry (278 of the paper book) which was opposed by the plaintiff on 15.12.2009. The plaintiff's assertion that only recently before filing the suit, such fact came to the light of the plaintiff is thus belied. On all counts, therefore, the Appeal from Order must fail.
12. The decision of Delhi High Court cited above are on general principles and I do not see any ratio laid down therein which can be applied in facts of the present case. In case of Sohan Lal Nem Chand Jain v. Trident Group & ors.(supra), the learned Judge had ignored delay of nearly four years in filing the suit on the ground that a registered Trademark cannot be rendered ineffective on account of delay. I was also observed that mere turnover of the defendant would not be the ground to refuse injunction to the plaintiff. However, I have discussed the issue in entirely different factual background and these observations would not change my mind.
13. Under the circumstances, Appeal from Order along with Civil Application is dismissed.
(AKIL KURESHI, J.) Page 8 of 9 C/AO/30/2012 ORDER raghu Page 9 of 9