Gujarat High Court
Shrinath Travel Agency Private Limited vs Ajay Kumar Sharma on 17 February, 2025
NEUTRAL CITATION
C/RA/25/2023 JUDGMENT DATED: 17/02/2025
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/RECTIFICATION APPLICATION NO. 25 of 2023
FOR APPROVAL AND SIGNATURE:
HONOURABLE MRS. JUSTICE MAUNA M. BHATT sd/-
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Approved for Reporting Yes No
YES
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SHRINATH TRAVEL AGENCY PRIVATE LIMITED
Versus
AJAY KUMAR SHARMA & ANR.
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Appearance:
MR.BHASH H MANKAD(6258) for the Applicant(s) No. 1
MR. RAAJEN D JADHAV(10026) for the Respondent(s) No. 1
MS VYOMA K JHAVERI(6386) for the Respondent(s) No. 2
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CORAM:HONOURABLE MRS. JUSTICE MAUNA M. BHATT
Date : 17/02/2025
ORAL JUDGMENT
1. Rule. Learned advocate Mr. Raajen Jadhav waives service of notice of rule on behalf of respondent No. 1 and learned advocate Ms. Vyoma Jhaveri waives service of notice on behalf of respondent No. 2.
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NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined
2. This rectification application is filed seeking following prayers.
"(A) Declare the registration of the Impugned Mark as contrary to the provisions of the Act;
(B) Direct the Respondent No. 2 to strike down and delete the registration of the Impugned Mark belonging to Respondent No. 1 as being deceptively similar to the prior and registered trademark of he Applicant;
(C) Grant any other and further reliefs as may be deemed fit and proper in the interest of justice."
3. Heard Learned advocate Mr. Bhash Mankad for the applicant, learned advocate Mr. Raajen Jadhav for respondent No. 1 and learned advocate Ms. Vyoma Jhaveri appeared for respondent No. 2.
4. Learned advocate Mr. Bhash Mankad for the applicant submitted that this case involves Trade Mark dispute between Shrinath Travel Agency Private Limited - applicant and Ajay Kumar Sharma - respondent No. 1 regarding the use of mark in the travel and transport industry. The Page 2 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined applicant has been using the registered Trade Mark since 1978, as it was initially a partnership firm and later on a private limited company. The applicant had registered several Trade Marks incorporating the word 'Shrinath' and has spent significant resources promoting its services under this mark. There is no dispute to the factual narration made in this application of the user of the Trade Mark . In support, learned advocate for the applicant for the user of Trade Mark , relied upon the turnover made by the applicant in 5 financial years which is as under: -
Financial Year Turnover (in INR)
2016-2017 43,54,71,703
2017-2018 65,72,07,943
2018-2019 70,31,40,624
2019-2020 65,24,62,684
2020-2021 50,34,89,240
2021-2022 51,81,18,002
4.1 Further, reliance is also placed on the achievement and
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NEUTRAL CITATION
C/RA/25/2023 JUDGMENT DATED: 17/02/2025
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prestigious awards conferred upon the applicant.
Year Award
2018 India Bus Awards - Leadership in Bus Transport
2019 Prawaas Excellence Awards - Bus Operator of
the Year (Southwestern Zone) (Western Zone) 2019 Intercity Driver of the Year 2020 Gujarat Travel and Tourism Excellence Awards -
Best Travel Fleet Operator 4.2 Learned advocate also submitted that the applicant and its predecessors besides enjoying common rights and trade name are also registered proprietors of Mark. The details of such registration are as under: -
Registration Name of / Description of the User Trademark Trademark Class goods/service Status Propriet Details No. and s or Date Printed matters, visiting cards, Shrinath 569684 boards, Register Travel 01.01.1978 16 stationery ed Agency 18.03.1992 and other printed literature.
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turnover, Chartered Accountant Certificate, invoices, awards, expenditure incurred on advertisement and promotion of the said Trade Mark supports the case of applicant for user of this mark since 1978. By placing reliance on Annexure-J (Colly) at Page No. 143 to 162, learned advocate for the applicant Page 5 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined submitted that these are all documents of the user of registered Trade Mark and the Legal Use Certificate of the applicant evidencing use of Trade Mark right from 01.01.1978 till date and continuing using the same. Further, the word/mark is registered in the name of applicant which is evident from the Certificate of Registration of Trade Mark under Section 23(2) r/w/ Rule 56(1) of the Trade Marks Act, 1999 (for short 'the Act') dated 20.04.2021.
4.4 Learned advocate for the applicant further submitted that despite being user of mark from the year 1978, the applicant discovered that respondent No. 1 had registered the mark since 2021. The use of mark is claimed to be used by respondent No. 1 since 2014 in the field of transportation of travelers, travel and passenger transportation. This is evident from Annexure-A (Colly) at Page Nos. 17 and 18 of the present application.Page 6 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025
NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined Since, the mark is phonetically, graphically and visually similar to its own mark and it is likely to cause confusion among consumers, an application under Section 57 of the Act seeking rectification was immediately preferred upon having knowledge by the applicant. Therefore, this application may be considered on the following grounds: -
4.4.1 Prior Use and Reputation: The Applicant is prior adopter and user of the mark in relation to travel and transport services. The Applicant's extensive and continuous use of the mark has resulted in the acquisition of significant goodwill and reputation in the tours and travels industry and cargo related services.
4.4.2 Identical or Deceptively Similar Marks: The Mark used by respondent no.1 is phonetically, visually and aurally identical to the Applicant's mark 'SHRINATH'. The prominent use of the word "SHREENATH" in Mark is likely to deceive Page 7 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined consumers into believing that there is a connection or association between the Respondent's services and those of the Applicant. The Hon'ble Delhi High Court in the case of Shrinath Travel Agency VS. INFINITY INFOWAY PVT LTD. held that the marks "SHREENATH" or "SHRINATH" used by the defendants therein Infringed the plaintiff's registered Trade Mark "SHRINATH". In fact, in the order dated 6/11/2023, the Delhi High Court in para 15 of the Order has narrated thus "The predominant feature of the impugned marks of Defendant 3 and 4 writes as 'SHREENATH' and Defendant 4 writes as 'SHRINATH', the slight difference in spelling makes no difference in the aspect of infringement as plaintiffs, holds a registration for the word mark Shrinath, per se. Besides infringement, it is trite, has to be examined from the point of view of a consumer of average intelligence and imperfect recollection, and such a consumer is certainly unlikely to distinguish between the marks of the plaintiffs and Defendants 3 and 4, which are otherwise Page 8 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined structurally similar merely because of the slight difference in spelling between 'SHRINATH'and 'SHREENATH'.
Therefore, an injunction was passed in favour of the Applicant herein and against the Respondent No. 1 as per Para 23 of the order, which also has been flouted by the Respondent No. 1. Furthermore, the Respondent No. 1 has deliberately chosen not to appear and his rights to file a reply have been closed by the Delhi High Court and the order has attained finality.
4.4.3 Mala Fide Intent: Respondent No. 1, being part of the same industry, had prior knowledge about the existence of the Applicant 's mark Shrinath. Despite this knowledge, Respondent No. 1 proceeded to register a similar mark, demonstrate its mala fide intent to deceive the public and trade off the Applicant's reputation. Bombay High Court in the case of Bajaj Electricals Ltd. vs Gourav Bajaj and Anr. ; having similar facts of matter held that, "The Plaintiff was Page 9 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined using the name and mark BAJAJ since 1961; BAJAJ has been recognized as a well-known mark, both by Courts as well as by Registry; Plaintiff has hundreds of registration for their mark BAJAJ and marks derived from BAJAJ issued in their favour; Plaintiffs turnover runs into crores; while examining the Defendants' mark, the Registrar has cited Plaintiff's marks. All these factors support the contention of the Plaintiff that the adoption and use by Defendants of their impugned name and mark is dishonest."
4.4.4 Public Interest: Further, continuous existence of the Impugned Mark on the Trade Mark register is detrimental to public interest. Consumers may be misled into availing the services of Respondent No. 1 under the false impression that they are associated with the Applicant. 4.5 Further, there was an injunction passed in favour of the Applicant and against the Respondent No. 1 as per Para 23 of the order which also has been flouted by the Respondent No. Page 10 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined
1. Furthermore, the Respondent No. 1 has deliberately chosen not to appear and his rights to file a reply have been closed by the Delhi High Court and the order has attained finality. 4.6 Learned advocate for the applicant therefore submitted that in view of above referred grounds that since the applicant is using the mark continuously and they are predecessor-in-interest and registered proprietor of the mark under the Act prior to respondent, this application may be allowed. Further, in view of the decision of Delhi High Court dated 06.11.2023 in Civil Suit (Comm) No. 738 of 2023, it is established that the mark due to its widespread and continuous use has garnered immense goodwill and reputation in relation to its service in Tours and Travels industry and Cargo related services. Therefore, present application deserves consideration by allowing the same. Learned advocate for the applicant therefore submitted that the Court therefore may rectify the Trade Mark registered by Page 11 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined expunging the impugned mark.
5. This application is opposed by learned advocate Mr. Raajen Jadav with the submission that respondent No. 1 is using Trade Mark since 2014 and to that effect the user affidavit has been filed with the Registry with the proof of prior use while filing the application on 30.11.2019 for registration of Trade Mark. Learned advocate submitted that for registration of Trade Mark, respondent No. 1 had made all the requirements of uniqueness, distinctiveness and non- descriptiveness and availability of registration. Accordingly, the mark of respondent No. 1 was registered from the year 2014 and therefore the present application deserves to be rejected. 5.1 Learned advocate for respondent No. 1 further submitted that the Trade Mark was open for public objection for 4 months when it was advertised in Trade Mark Journal by respondent No. 2 inviting public objections. The applicant herein had not raised any objections within the time period Page 12 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined and therefore at this stage they are not entitled for the relief claimed. The application filed by the applicant under Section 57 of the Act is filed at a belated stage deserves to be rejected on the ground of delay and latches.
5.2 Further, no case of Civil or Criminal nature is made out by the applicant, as the Trade Mark was in use by respondent No. 1 in the same area and route of applicant for 9 years. Further, the applicant failed to compete in the market with respondent No. 2 and this application is filed to defeat the mark used by respondent and therefore the present application deserves to be rejected.
5.3 Learned advocate submitted that since respondent No. 2 has registered Trade Mark of respondent No. 1 after meticulous examination and lengthy process involving expertise in the domain and therefore the applicant is required to be relegated to approach respondent No. 2 under Section 91 of the Act. The applicant has preferred the present application after long delay Page 13 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined and therefore this may not be allowed by relegating the applicant to approach respondent No. 2 who is expert and best person having vast experience in the domain of Trade Marks. Learned advocate therefore submitted that this application may be rejected.
6. Considered the submissions. On the aspect of issue of jurisdiction, it is noticed that the impugned mark and the Trade Mark of the applicant are registered with the Trade Mark Registry, Ahmedabad and therefore as per Section 57 of the Act the rectification application is maintainable before this Court.
6.1 Further, it is also noticed that the applicant herein is prior user of mark and the said mark is used since many years. Moreover, the ground raised by the applicant of prior use and the ground of identically or deceptively similar has been considered by High Court of Delhi in the suit filed by the applicant seeking interlocutory Page 14 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined injunction, pending disposal of the suit. In the suit filed before High C ourt of Delhi, Respondent no.1 herein was defendant no.3, and Delhi High Court in its decision dated 06.11.2023 in Civil Suit (Comm) No. 738 of 2023 held as under: -
"15. The predominant feature of the impugned marks of Defendant 3 and 4 is the word "SHREENATH" or "SHRINATH", which Defendant 3 writes as SHREENATH and Defendant 4 writes as SHRINATH, the slight difference in spelling really making no difference to the aspect of infringement, as plaintiffs holds a registration for the word mark SHRINATH per se. Besides, infringement, it is trite, has to be examined from the point of view of a consumer of average intelligence and imperfect recollection, and such a consumer is certainly unlikely to distinguish between the marks of the plaintiffs and Defendants 3 and 4, which are otherwise structurally similar, merely because of the slight difference in spelling between SHRINATH and SHREENATH.
16. One may borrow a leaf, in this regard, from the decision of the Supreme Court in K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.4 . The Supreme Court, in that case, was concerned with two device marks, both of which were used for snuff. The word, in one case, was "Shri Ambal"
and in the other, "Sri Andal". The Supreme Court records, in its judgment, the fact that the two device marks were visually completely different. Nonetheless, as the words which formed the predominant part of the two device marks were Page 15 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025 NEUTRAL CITATION C/RA/25/2023 JUDGMENT DATED: 17/02/2025 undefined phonetically similar, the Supreme Court went ahead to injunct the use of the impugned device mark.
17. Applying that principle to the facts of the present case, as the word SHREENATH used by Defendant 3 is phonetically similar to SHRINATH and the word SHRINATH as used by Defendant 4 is identical to mark used by the plaintiffs, the likelihood of confusion in the market is apparent. Insofar as the device marks of the defendants are concerned, as the word component of the said marks (SHREENATH/SHRINATH) is identical/deceptively similar to the word SHRINATH in respect of which the plaintiffs possess a word mark registration, the aspect of likelihood of confusion stands exacerbated.
18. A prima facie case for injuncting the Defendants 3 and 4 from using the impugned, and therefore exists. Inasmuch as continued use of the impugned marks is likely to further infringe and possibly dilute the plaintiff's brand value, the considerations of balance of convenience and irreparable loss would also be in favour of grant of injunction as sought by the plaintiffs. Moreover, the Supreme Court has, in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia5 , held thus:
"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
23. Resultantly, the present application stands disposed of in the following terms:
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(i) There shall be an injunction against the defendants as well as all others acting on their behalf from using the words "SHRINATH" or "SHREENATH", or the marks , and in any manner whatsoever or any other mark which may be similar to the plaintiff's registered trade marks SHRINATH and SHRINATH.
(ii) Defendants 3 and 4 are also directed to remove, from all physical and virtual sites, including social media platforms, the impugned marks , and , within a period of one week from the date of communication of this order.
(iii) Defendants 3 and 4 are also directed to disclose, on affiadvit, duly certified by a Chartered Accountant (CA), the earnings made by them by use of the impugned , and marks, since the time the said marks have been in use.
(iv) The prayer for injunction against the use of the mark by Defendant 5 is, however rejected.
(v) The defendants are also directed to cease and desist from using the domain names www.ajayshreenathtravellers.com and www.shrinathnandutravels.com.
(vi) Defendant 6 is directed to provide on affidavit, the details of the domain name registrant www.ajayshreenathtravellers.com and to ensure that the said domain name remains blocked pending disposal of the present suit.
(vii) Defendant 7 is directed to provide on affidavit, the details of the domain name registrant www.shrinathnandutravels.com. and to block the said domain name pending disposal of the present suit.
24. IA 20396/2023 stands disposed of accordingly. Page 17 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025
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25. The views expressed in this order are merely prima facie and shall not influence the decision of the court at the time of final hearing of the suit."
7. Further, it is also noticed that the High Court of Delhi has considered the registration of the applicant since 01.01.1978 in Paragraph No. 6 of its decision. Moreover, it is also noticed from the order of High Court of Delhi that respondent No. 1 though opportunities were granted had chosen not to appear and file their reply.
8. In view of detailed reasoned order of High Court of Delhi dated 06.11.2023 in Civil Suit (Comm) No. 738 of 2023 and since this Court has the jurisdiction to entertain the present application, the present Rectification Application is allowed.
9. Respondent No. 2 is directed to strike down and delete registration of Trade Mark belonging to respondent No. 1 as being deceptively similar to the prior and registered Trade Mark of the applicant as per the present order. Page 18 of 19 Uploaded by SHRIJIT PILLAI(HC01400) on Thu Feb 27 2025 Downloaded on : Fri Feb 28 23:29:00 IST 2025
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10. In view of above, the present Rectification Application is disposed of as allowed. Rule is made absolute.
Direct service is permitted.
sd/-
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