Delhi District Court
Suit For Permanent Injunction ... vs M/S. Super Frontline Biscuits Factory & ... on 28 September, 2016
IN THE COURT OF SH. SANJAY KUMAR, ADDITIONAL
DISTRICT JUDGE-02, WEST, DELHI.
CS 12/14
M/s. Frontier Biscuits Factory (P) Ltd.
vs.
M/s. Super Frontline Biscuit Factory & Anr.
ORDER
28.09.2016
1. Suit for permanent injunction restraining infringement of Trade Mark, Copyright, Passing Off, Delivery up, rendition of accounts etc. filed by plaintiff M/s. Frontier Biscuit Factory (P) Ltd. (hereinafter referred to as the 'plaintiff company') against defendants M/s. Super Frontline Biscuit Factory and M/s. Shubham Confectioners (hereinafter referred to as 'defendant no.1' and 'defendant no.2' respectively).
2. The plaintiff company along with the suit filed an application under Order 39 Rule 1 & 2 CPC seeking ad-interim injunction, thereby restraining the defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf from using the mark/label containing word FRONTLINE and/or firm name containing word FRONTLINE or any other mark/label or trade name deceptively similar to the plaintiff's trade mark/label FRONTIER amounting to infringement of the plaintiff's trade mark FRONTIER, infringement of the plaintiff's copyright in label/packaging FRONTIER and passing off the defendant's goods/business as that of the plaintiff.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.1/203. In brief, the facts are that the plaintiff company is a private limited company incorporated under Companies Act, 1956. Mr. M.L. Rewari is the General manager of the plaintiff company and as such he is well acquainted with the facts and circumstances of the case and authorized to sign, verify and file the present suit. It is stated that plaintiff company has been carrying on old, established and reputed business of manufacturing and trading of biscuits, namkeens, cakes, pastry and various other goods (hereinafter referred to as 'said goods').
4. It is stated that late Sh. Mangal Sain Sethi, father of Sh. Munshi Ram Sethi (the present Chairman & managing Director of the Plaintiff Company) adopted and used the trade mark FRONTIER in respect of the said goods in 1921 at Hoti Mardan in West Pakistan. It was the ancestral business under the trade mark FRONTIER in India after partition. The plaintiff company had set up a production unit in Kasabpura, Sadar Bazar, Delhi. Thereafter, it becomes the partnership concern and consequently converted into Private Limited company in the year 1989 in the name and style of M/s. Frontier Biscuit Factory Private Limited.
5. The plaintiff company is the registered proprietor of the trade mark FRONTIER by virtue of registration thereof under no. 1386729 dated 22.09.2005 with registered trade mark in respect of namkeens, biscuits, cakes and pastry included in Class
30. The trade mark FRONTIER (label) by virtue of registration thereof under no. 662072 dated 10.04.1995 with registered trade mark in respect of sweets, namkeens, biscuits, cakes, pastry included in Class 30. The plaintiff company has exclusive right to use trade mark FRONTIER in respect of said goods by virtue of above said registrations. The plaintiff company's label FRONTIER CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.2/20 consists of unique get up, colour combination, font, design etc. and the same is an original artistic work and as such copyright vests in the said artistic label/logo FRONTIER and plaintiff company is lawful exclusive owner of the copyright vests in the said artistic work FRONTIER. The artistic label by virtue of registration thereof under no. A-72560/2005 under Copyright Act and same is valid and in force as per Copyright Act, 1957. The plaintiff company is also registered proprietor of copyright vest in the artistic packaging FRONTIER by virtue of registration thereof under no. A-98427/2013 under Copyright Act.
6. It is stated that the plaintiff company is recipient of various awards such as Quality Recognition Award, 1990; Bhartiya Udyog Ratan Award, 1996; Rashtriya Udyog Samman Puruskar, 1999; and Udyog Bhushan Award, 2001 and also life long member of Laghu Udyog Bharti due to excellent contributions in making quality, soft, crisps, hygienic and nutritious biscuits under the trade mark FRONTIER. The growth of the business of the plaintiff company implies that a very wide reputation and goodwill has been accrued to the plaintiff's trade mark FRONTIER amongst the customers and members of trade on account of superior quality goods and the public always identify and associate the trade mark FRONTIER exclusively with the plaintiff and no body else.
7. It is stated that the plaintiff company has been carrying out continuous, open and extensive sale of the said goods under the trade mark FRONTIER and widely published through pint as well as electronic media and spent huge amount on advertisement of trademark FRONTIER, which runs about more than a crore and the sale of the goods of the plaintiff as per year 2012-13 is amounting to Rs.32,74,00,000/-.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.3/208. It is stated that in second week of October, 2012, the plaintiff had come across the defendant no. 1's mark/label containing the word FRONTLINE which was published in Trade Mark Journal No. 1546 dated 23.07.2012 and thereafter, lodged its opposition vide notice of opposition dated 16.10.2012. The plaintiff company could not came across the defendants goods under the impugned mark/label containing the word FRONTLINE. Therefore could not immediately file the suit. However, in the first week of December, 2013, the plaintiff came to know that defendants are selling biscuits under the impugned mark/label containing word FRONTLINE. The impugned mark/label of defendants containing word FRONTLINE, which is deceptively similar to the plaintiff well known and registered mark FRONTIER without any permission and with malafide intention to make illegal profit under the garb of immense goodwill and reputation of the plaintiff's well known trade mark FRONTIER. The use of impugned mark/label by the defendants containing word FRONTLINE in the course of trade has caused and will further cause confusion or deception among the public and members of trade. The adoption of impugned mark by the defendant is with the malafide intention to mislead public and members of trade and to make illegal profits.
9. It is further stated that the defendants have pirated and are still pirating the plaintiff's well known trade mark FRONTIER by suing the impugned mark containing word FRONTLINE which is deceptively similar to the plaintiff's trade mark FRONTIER. The defendants are guilty of infringement of the plaintiff's copyright in label FRONTIER and passing off their goods as that of the plaintiff. The defendants also copied the colour CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.4/20 combination, design etc. of the plaintiff's label FRONTIER in their impugned label containing word FRONTLINE. The impugned label of defendants is the substantial reproduction of plaintiff label FRONTIER. The defendant is guilty of infringement of the plaintiff's copyright in label FRONTIER.
10. It is stated that the defendants activities are great monetary loss as well as gross irreparable loss and injury to the plaintiff's reputation and goodwill and eventual erosion of the distinctive character of the plaintiff's well known and registered trademark FRONTIER. The loss of goodwill and reputation of the plaintiffs due to the aforesaid illegal activities of the defendants is incalculable in terms of money. The use of impugned mark will lead to dilution and eventual erosion of the goodwill and reputation linked to the plaintiff's well known and registered trade mark FRONTIER. The profit earned by defendants is loss caused to the plaintiff and as such defendants are liable to render their accounts of profit made by them from doing the business activities under the impugned mark and firm name containing the word FRONTLINE. It is stated that plaintiff has prima-facie case in its favour. The balance of convenience also lies in favour of plaintiff and plaintiff would suffer irreparable loss and injury in case injunction is granted in favour of the plaintiff.
11. Defendant nos. 1 and 2 filed joint written statement and taken preliminary objection that the plaintiff has concealed the material facts from the court and present suit is nothing but an abuse of process of law and by the present suit, the plaintiff is trying to arm twist the defendants to extort money. It is stated that the present suit and application is liable to be dismissed in limine as the trade mark or copyright registrations as claimed by CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.5/20 the plaintiff are invalid and liable to be removed from the Register. It is further stated that plaintiff has concealed the material facts that its registration under numbers 1386729 and 662072, applications on form TM 26 have been filed for removal/rectification of these marks from the Register of the Registrar of Trade Marks by Sh. Basant Kumar Maakar, Sh. Praveen Kumar Maakar, Sh. Chander Bhan Maakar, Sh. Rajesh Kumar Maakar, Sh. Chander Mohan Maakar, Sh. Ashwani Kumar Maakar and Smt. Ram Kali Maakar of M/s. Frontier Bakery, 124, Deshbandhu Gupta Market, Ajmal Khan Road, Karol Bagh, New Delhi, claiming rights and priority in the mark FRONTIER. The said rectifications were filed on 04.05.2009 and 21.05.2009 respectively. Thus the title and the rights of the plaintiff in the word FRONTIER are questionable and in this light, the plaintiff has no right to sue a third party like the defendants. The plaintiff is merely trying to mislead the court by concealing the relevant and important information.
12. It is stated that the defendants' trademarks/ trade name/ house marks/ label SUPER FRONTILINE BISCUITS are wholly dissimilar and distinct from the marks of the plaintiff being FRONTIER. There is no scope of confusion between the mark of plaintiff and defendants since there is not a single common element or feature between marks which can arise any doubt in the mind of consuming public and the traders. The aforesaid marks are easily distinguishable and are not even remotely similar whether visually, phonetically, structurally or in their overall get up. Any prudent man of average intelligence should judge the competing marks to assess their similarity or dissimilarity as there is no similarity between the two.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.6/2013. It is stated that plaintiff has wrongly claimed in the plaint that the cause of action first arose in the second week of October, 2012, when the plaintiff had for the first time came across the defendant no.1's mark/label "SUPER FRONTLINE BISCUIT" containing the word FRONTLINE published in the Trade Marks Journal No. 1546 dated 23.07.2012. It is stated that the defendant no.1 was earlier called SUPER FRONTIER BISCUITS, however, the plaintiff served a legal notice upon the defendant no.1 and also upon its distributors to restrain them from using the word FRONTIER as a part of their trade mark/ trade name in the year 1997/1998. The defendant no.1 had also applied for a trade mark registration of the trade mark "KS SUPER FRONTIER" vide application number 761777 dated 30.05.1997 claiming user details from 01.04.1997. However, upon receiving the legal notices from the plaintiff herein, the defendant agreed to change its trade name/ trade mark/ house mark to SUPER FRONTLINE BISCUITS from SUPER FRONTIER BISCUITS to the knowledge and in consensus with the plaintiff. Defendant no.1 subsequently also filed an application under Form TM 16 in the Trade Marks Registry to amend the proprietor's name and the trade mark to be replaced with the word FRONTLINE instead of FRONTIER.
14. Thereafter, the defendant no.1 chose to abandon the trade mark and the proprietor's name to avoid any unnecessary confrontation or conflict with the plaintiff. Thus it is unequivocally clear that the plaintiff has been wholly aware of the defendant's existence and presence in the market as well as the use of the word FRONTLINE as a part of its trade mark/ trade name since 1997 and present suit is nothing but an evil and cheap tactic by the plaintiff to throttle competition in the market from the defendants which the plaintiff has not foreseen at the time of settling the legal notices in the year 1997-1998.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.7/2015. It is stated that the defendants' adoption of the trade marks/ house marks/ trade name/ label SUPER FRONTLINE BISCUITS is honest, bonafide, in good faith, with the knowledge of the plaintiff and without any ill intention or object to mislead the public or the consumers. The defendants are law abiding and honest traders and never had any intention or will to misuse the goodwill of the plaintiff for their own sales as alleged by the plaintiff. The defendants themselves have substantial goodwill and reputation of their own and do not need to piggy ride the plaintiff to further their own business. The plaintiff had themselves agreed to the change of the word FRONTLINE from FRONTIER knowing and consenting that both the marks/ words are wholly different and easily distinguishable. The present suit is bad in law and filled with fallacies, concealments, misrepresentations, distortions of the facts and deserves to be dismissed with punitive costs against the plaintiff.
16. It is stated that plaintiff claimed to be a big reputed company having a huge workforce and it is inconceivable that the plaintiff had no knowledge of the defendant's use of the trade mark/ label SUPER FRONTLINE BISCUITS for its goods despite the consensus on the settlement of the legal notice. Plaintiff wrongly claimed in the plaint that it got to know the defendants' use of the marks containing the word FRONTLINE in the second week of October, 2013. The plaintiff never objected to the adoption and use of the trade mark/ label/ trade name SUPER FRONTLINE BISCUITS by the defendants for its goods since 1997. The suit is therefore defeated by delay, laches, acquiesces and it not maintainable as per Section 291 of the Companies Act as the suit filed by Sh. M.L. Rewari, who has no authority to file the present suit on behalf of the plaintiff company.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.8/2017. On merits, all the averments made in the plaint and application are denied. It is stated that plaintiff is guilty of concealment of material facts from the court with a view to gain favourable order and merely trying to mislead the court. It is stated that the marks of the plaintiff and defendants are highly dissimilar and bearing no resemblance to each other. It is stated that the present suit and application filed are liable to be dismissed.
18. Plaintiff filed replication and denied all the averments made in the written statement and reply to application and facts stated in the suit and application are reiterated.
19. I have heard Sh. A.K. Goel, Counsel for the plaintiff and Sh. Sumit Rajput, Counsel for the defendants and perused the record.
20. Ld. Counsel for the plaintiff Sh. A.K. Goel submitted that the plaintiff company since 1921 has been manufacturing and trading Biscuits, Namkeen, Cake and Pastry, all items as classified under Class 30 by the Registrar Trade Marks and acquired great reputation and goodwill with the customers and in the trade. He submitted that the trademark FRONTIER has been registered under registration no. 662072 dated 10.04.1995, the label is registered under registration no. A-72560/2005 and artistic work registered vide registration no.A-98427/2013 under the Copyright Act. It is further submitted that the plaintiff company has been honoured with several awards. The trademark, label and copyright of the mark FRONTIER has been exclusively used by the plaintiff company from the pre-partition era. He further submitted that as per the sales turnover, the plaintiff CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.9/20 company is having around more than Rs.32 Crores on the day of filing of the present suit. He submitted that the impugned trademark used by the defendants SUPER FRONTLINE BISCUIT is deceptively, phonetically and visually similar and has been used with dishonest and malafide intention to grab the business of the plaintiff company or to create confusion among customers and in trade of the commodities manufactured and sold by the plaintiff company. It has been causing great dis-reputation, loss and injury to the plaintiff company. He referred to the documents filed on record which supports the averments mentioned in the plaint. He referred to the judgments of (1) Mukesh Khadaria Trading vs. DCM Shriram Consolidated Limited, 2010 (43) PTC 321 (Del.) (DB); (2) Mex Switchgears Pvt. Ltd. vs. Max Switchgears Pvt. Ltd. 2014 (58) PTC 136 (Del), (3) FMI Limited vs. Ashok Jain & Ors. 2013 (54) PTC 429 (Del.); (4) Syncom Formulations vs. SAS Pharmaceuticals 2004 (28) PTC 632 (Del); (5) M/s SAS Pharmaceuticals v. M/s Emerson Labs Ltd. And Anr. MIPR 2008 (1) 0053; (6) RSPL Health Private Limited vs. Deep Industry 2015 (61) PTC 438 (Del); and (7) Frito-Lay India & Ors. v. Radesh Foods & Anr. 2009 (40) PTC 37 (Del.).
21. Ld. Counsel for the defendants submitted that the plaintiff has not approached the court with clean hands and suppressed the material facts. There are vital facts concealed by the plaintiff company, therefore, not entitled to any ad-interim injunction at this stage. Ld. Counsel submitted that a rectification application has been filed against the trademark of the plaintiff company by Sh. Basant Kumar Maakar, Sh. Praveen Kumar Maakar, Sh. Chander Bhan Maakar, Sh. Rajesh Kumar Maakar, Sh. Chander Mohan Maakar, Sh. Ashwani Kumar Maakar and Smt. CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.10/20 Ram Kali Maakar of M/s. Frontier Bakery, 124, Deshbandhu Gupta Market, Ajmal Khan Road, Karol Bagh, New Delhi, claiming rights and priority in the mark FRONTIER. Therefore, plaintiff has no exclusive right to sue the third party. Ld. Counsel further submitted that in the year 1997, legal notices were issued by the plaintiff company for the use of KS SUPER FRONTIER mark for the Biscuits and after defendant no. 1 chose to abandon the trademark and new application filed for SUPER FRONTLINE BISCUIT, which is the honest, bonafide and used in good faith. The plaintiff company since 1997 never took any objection for the trademark/ trade name of SUPER FRONTLINE BISCUIT. Therefore, plaintiff company acquiesced the business of the defendants.
22. Ld. Counsel for the defendant submitted that the adoption and use of trademark/ label/ trade name SUPER FRONTLINE Biscuit by the defendants of its case since 1997 as agreed by the plaintiff company while settling the legal notices for the last 15 years. Therefore, plaintiff company has no prima-facie case. Ld. Counsel further submitted that the trademark of the defendant SUPER FRONTLINE BISCUIT is absolutely dissimilar and unrelated and cannot be compared. The trademark/label of the defendant company is having unique getup, colour combination, font and design. It is visually and phonetically distinguishable and cannot create any confusion to a prudent man of average intelligence. The word FRONTIER at the time of receiving of the legal notices was immediately abandoned and after settlement with the plaintiff company, new distinctive trademark/ label adopted by the defendant no.1 after service of legal notices in the year 1993. Therefore, petitioner has no prima-facie case.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.11/2023. Ld. Counsel further submitted that the plaintiff's company has misrepresented and concealed the fact and taken a false plea that in the year 2012, it has come to the notice of the plaintiff company with regard to the use of label/trademark/trade name/house mark of defendant no.1 as SUPER FRONTLINE BISCUIT. It was well within the knowledge of the plaintiff company since 1997. The plaintiff company has concealed the true and correct facts from the court. Therefore, not entitled to any interim injunction. Ld. Counsel for the defendants has referred to the judgments of (1) Amritdhara Pharmacy vs. Satya Deo Gupta AIR 1963 SC 449 (V50 C63) (2) Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories AIR 1965 SC 980 (V52 C157) (3) Virumal Praveen Kumar v. Gokal Chand Hari Chand 2001 (1) RAJ 129 (Del) (4) Vikas Makhija v. Bengal Phenyle & Allied Products (P) 2001 (93) DLT 817 (5) The Gillette Company and others vs. A.K. Stationery and others 2001 (21) PTC 513 (Del) (6) B.L. and Co. and others vs. Pfizer Products Incl. 93 (2001) DLT 346 (7) Intel Corporation v. Mr. Anil Hada & Anr. & Intel Corporation v. Mr. Avinash Chander & Anr. 2007 (2) R.A.J. 281 (Del) and (8) Wheels India v. Nirmal Singh & Ors. FAO (OS) No. 1 of 2010 and CM No. 51/2010 decided on 20.08.2010 by Hon'ble High Court of Delhi.
24. I have considered the respective submissions of the parties and perused the record. I have also gone through the judgment relied by the parties. The law relating to infringement of a registered trademark has been envisaged under Section 29 of the Trade Marks Act, 1999 and exclusive rights granted by virtue of registration under Section 28 which reads as under:-
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.12/20"29. Infringement of registered trademarks -
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.13/20
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect f which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters;
or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.14/20(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark 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."
"28. Rights conferred by registration -
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) 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 person as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor."
25. By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.15/2026. So far as infringement qua different goods is concerned, separate enactment of Section 29(4) makes it clear that the strict rigors are prescribed as against the ordinary case of similar goods wherein a registered proprietor has to establish that the registered trademark has reputation in India and is of such a nature wherein the use of the mark by the other side without due cause would tantamount to taking unfair advantage or detrimental to the distinctive character or repute of a trademark.
27. A reading of Section 29(4) of the Act would reveal that the said protection qua different goods is earmarked by the Legislature for the trademarks which are either highly reputed or well known or famous trademarks and enjoy either high level of distinctiveness or the marks which are inherently distinctive in nature or has become distinctive due to their repute; the use of which will cause detrimental to the distinctive character and repute of the trademark only when the ingredients of Section 29(4) are satisfied conjunctively which is sub sections (a), (b) and
(c) the infringement qua Section 29(4) in relation to different goods is attracted. In the present case, no doubt, in view of the goodwill, reputation, huge sale and advertisement, prime facie, it establishes that the trade mark "FRONTIER" has acquired a unique name in the market and by virtue of that it is satisfied that it comes within the meanings of Section 29 (4) of the Act.
28. The judgment relied by defendants Amritdhara Pharmacy (Supra) and Mex Switchgears P Ltd. (Supra) by the plaintiff, discussed several Supreme Court and High Courts judgments wherein proposition of law has been settled.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.16/2029. Now applying in the present facts and circumstances of the case, the trademark/ label/ trade name/ House mark of the defendant from visual eye is of the same colour i.e. red and same oval shape as of the plaintiff company. The word FRONTLINE has been mentioned in dominant manner, therefore, it make the impugned trademark of defendant as phonetically and visually similar to the trademark/label/trade name/ house name of the plaintiff. Further, it is admitted case of the defendant no.1 that the manufacturing of biscuits is the same Class as of plaintiff company and also the territory i.e. Delhi for trade. The similarity in both the trademarks of the plaintiff and defendant no.1 regarding the colour, oval shape and the use of word FRONTLINE which is the dominant part makes it deceptively similar.
30. In view of the above discussed circumstances, the two marks, one of plaintiff registered mark FRONTIER and the impugned mark of defendant SUPER FRONTLINE BISCUIT having dominant part FRONTLINE, which is phonetically and structurally are deceptively similar. The trademark of the defendant no.1 is in relation to the similar goods and in trade in the same territory. Thus it would be creating confusion and deception among the customers and in traders. The defendant's contention that some third persons i.e. Sh. Basant Kumar Maakar, Sh. Praveen Kumar Maakar, Sh. Chander Bhan Maakar, Sh. Rajesh Kumar Maakar, Sh. Chander Mohan Maakar, Sh. Ashwani Kumar Maakar and Smt. Ram Kali Maakar of M/s. Frontier Bakery, 124, Deshbandhu Gupta Market, Ajmal Khan Road, Karol Bagh, New Delhi, have filed rectification before the registry of trademark does not give any right to the defendant to use impugned trademark in the same colour combination and in the oval shape. The rectification has been filed by a third party and it will not affect the legal right of CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.17/20 plaintiff qua defendants. Therefore, I do not find any merit in the contention.
31. Now coming to the next contention regarding the legal notice served by the plaintiff company. The legal notices have been filed on record by the defendants. The first legal notice is dated 27.02.1998 to M/s. Gupta Pastries at Rohini; M/s. Sudesh, The Confectionery & Gift Shop, Pitam Pura; M/s. Pastry Shop, Jwala Heri, Paschim Vihar dated 12.05.1997. There is no other legal notice filed by defendants which were served either to defendant no.1 or defendant no.2. There is no document filed on record in pursuance of aforesaid legal notices that any settlement arrived between the plaintiff and defendant no.1, whereby defendant no.1 was permitted to use trademark/label/trade name/ house name SUPER FRONTLINE BISCUIT. The contention is not supported with any document. Therefore, it has not substance. The plaintiff as per record at no point of time entered into any agreement with the defendant no.1 for permitting the use of trademark/label/ trade name/ house name SUPER FRONTLINE BISCUIT. In case defendant no.1 has been using under this impression, then the principle of acquiescence cannot be invoked. There is no document filed on record which shows that at any point of time plaintiff company acquiesced to the defendant no.1. Further the contention is regarding the concealment and suppression of material facts by the plaintiff. The present case is against the defendants for impugned trademark SUPER FRONTLINE BISCUIT. The plaintiff company never corresponded with the defendants. The rectification is not filed by defendants. There is no agreement with the defendants as alleged in the year 1997. Therefore, I do not find any material fact which has been suppressed or concealed by the plaintiff.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.18/2032. The defendant also contended that there is a delay of 15 years in filing the present suit by the plaintiff. In the judgment of Mex Switchgears Pvt. Ltd. (Supra), discussed the well settled proposition of law. In the present case, as per averments of the plaint, the plaintiff came to know about the impugned trademark in the year 2012 and when the product and label came into possession of the plaintiff, immediately present suit has been filed. Defendants have not brought any documentary proof with regard to the knowledge for last 15 years. The defendant relied on Intel Corporation's case (Supra), which is distinguishable in the present facts and circumstances of the case.
33. The plaintiff is registered for trademark FRONTIER, trade label/logo FRONTIER and artistic work FRONTIER and has been using it since decades and having turn over about Rs.32 Crores and has a strong prima-facie case. The defendant no.1 initially started with the similar name KS SUPER FRONTIER, therefore, the intention of the defendant no.1 since the beginning is dishonest as dealing with the same goods and in the same territory. The defendant no.1 lateron changed to SUPER FRONTLINE BISCUIT. However, it is similar in the colour combination and in same oval shape. Therefore, it is bound to create confusion and likely to deceive the customers and traders. In my considered opinion, the essential features of trademark of the plaintiff have been adopted by the defendant regarding getup, colour combination and dominant word of FRONTLINE. In view of above said facts and circumstances, the plaintiff has been able to make out a strong prima-facie case in its favour and against the defendants. Balance of convenience also lies in favour of the plaintiff. If the interim restrain order is not passed, then the plaintiff is bound to suffer irreparable loss and injury.
CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.19/2034. On the basis of above observation and discussion, the application under Order 39 Rule 1 and 2 read with Section 151 CPC of the plaintiff is allowed. Accordingly, defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf are restrained from using the mark/label containing word FRONTLINE and/or firm name containing word FRONTLINE or any other mark/label or trade name deceptively similar to the plaintiff's trade mark/ label FRONTIER amounting to infringement of the plaintiff's trade mark FRONTIER, infringement of the plaintiff's copyright in label/packaging FRONTIER and passing off the defendant's goods/ business as that of the plaintiff.
35. Nothing expressed herein shall tantamount to expression of opinion on the merits of the case.
Announced in the open court today the 28th September, 2016.
(Sanjay Kumar) ADJ-02,West/Delhi 28.09.2016 CS No. 12/14 M/s. Frontier Biscuits Factory (P) Ltd. vs. M/s. Super Frontline Biscuits Factory & Anr. Page No.20/20