Delhi High Court - Orders
M/S Bikaji Foods Int. Ltd vs M/S Desai Brothers Limited & Anr on 11 October, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~35 & 36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 695/2023, I.A.s 19395/2023 & 19396/2023
M/S BIKAJI FOODS INT. LTD. ..... Plaintiff
Through: Mr. Shailen Bhatia, Ms. Sheril Bhatia,
Ms. Sreelakshmi Menon, Ms. Ishita
Suri & Ms. Deeksha Gulati, Advs.
(M-9818558690)
versus
M/S DESAI BROTHERS LIMITED & ANR. ..... Defendants
Through: Mr. Aniruddha Valsangkar and Ms.
Akanksha Singh, Advocates for D-1
(M-9811045646).
Mr. Sumeet Lall, Mr Nikhil Lal and
Ms. Palak Rawat, Advocates for D-2
(M: 9810944600).
36 WITH
CS(COMM) 696/2023, I.A.s 19400/2023 & 19401/2023
BIKANER BHUJIA UDYOG SANGH ..... Plaintiff
Through: Mr. Shailen Bhatia, Ms. Sheril Bhatia,
Ms. Sreelakshmi Menon, Ms. Ishita
Suri & Ms. Deeksha Gulati, Advs.
(M-9818558690).
versus
M/S DESAI BROTHERS LIMITED & ANR. ..... Defendants
Through: Mr. Aniruddha Valsangkar and Ms.
Akanksha Singh, Advocates for D-1
(M-9811045646).
Mr. Sumeet Lall, Mr Nikhil Lal and
Ms. Palak Rawat, Advocates for D-2
(M: 9810944600).
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 11.10.2023
1. This hearing has been done through hybrid mode.
CS(COMM) 696/2023 Page 1 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:24 CS(COMM) 695/2023 and I.A. 19395/2023 (u/O XXXIX Rules 1 & 2 CPC) I.A. 19400/2023 (u/O XXXIX Rules 1 & 2 CPC) in CS(COMM) 696/2023
2. Commercial Suit CS(COMM) 695/2023, has been filed by the Plaintiff- M/s Bikaji Foods International against Defendant No.l - M/s Desai Brothers Limited and Defendant No.2-M/s Shree Ram Papad Private Limited seeking injunction against the packaging, get up, colour combination, and trade dress of the "PITAARA BIKANERI BHUJIA"
snack product which is manufactured by the Defendants.
3. The Plaintiff- M/s Bikaji Foods International Ltd. is a company engaged in the business of manufacturing and marketing of different kinds of Namkeen, Papad, Desi sweets, coffee, tea, sugar, cereals, pulses, biscuits, cookies and other ready to eat food products. The mark/label "BIKAJI" bearing number 592352 of the Plaintiff is registered in class 30 and the same has been extensively used. The Plaintiff also has Copyright Registration for its artistic work in the device mark/label "BIKAJI" bearing number A- 132663/2020.
4. The annual turnover of the Plaintiff for the last financial year 2022- 2023 is claimed to be more than Rs.2,087 crores. Plaintiff also has a website www.bikaii.com which is used for promotional and advertising activities of the said packaging. As per the plaint, in the last financial year 2022-23, the Plaintiff has invested more than 26 crores on advertising and publicity.
5. The Defendant No. l- M/s Desai Brothers Ltd. is also a company engaged in the similar business of namkeen, edibles etc. of which Defendant No. 2-M/s Shree Ram Papad Private Limited is the manufacturer and packer. As per paragraph 34 of the plaint Defendant No. l had filed the trade mark CS(COMM) 696/2023 Page 2 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:24 application bearing no. 3355470 in class 30 on 25th August, 2016 which was abandoned and opposed by the Plaintiff- M/s Bikaji Foods International Ltd.
6. Commercial suit CS(COMM) 696/2023, has been filed by the Plaintiff - Bikaner Bhujia Udyog Sangh against Defendant No. 1- M/s Desai Brothers Limited and Defendant No. 2- M/s Shree Ram Papad Private Limited.
7. The Plaintiff is an association of manufacturers of 'BIKANERI BHUJIA' claiming to have been created by consensus of all Bhujia/Namkeen manufactures of Bikaner, Rajasthan. The Plaintiff claims to be the registered proprietor of the Geographical Indication (hereinafter, 'GI') - 'BIKANERI BHUJIA' bearing number 142 in class 30. The Plaintiff claims that the registration in food related products in class 30 is valid and subsisting in favour of the Plaintiff Sangh, as the same has been renewed till 27th October, 2028.
8. The Plaintiff Sangh claims to have seven authorized users of the G.I 'BIKANERI BHUJIA', who have sought permission to use the said mark from Ld. Registrar of Geographical Indications. The Plaint also contains a list of all the authorised users of the said GI at paragraph 11 in terms of Section 17 of the GI Act.
9. The goods bearing the registered G.I of the Plaintiff Sangh are sold in various countries by its authorized users. The Plaintiffs are stated to have spent extensive amounts in advertising of their products.
10. The Defendant No.2- M/s Shree Ram Papad Private Limited is the manufacturer and packer of Defendant No.1- M/s Desai Brothers Limited. As per paragraph 23 of the Plaint, the Defendants are also engaged in a CS(COMM) 696/2023 Page 3 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:24 similar business of manufacturing and trading in Namkeen under the mark "PITAARA BIKANERI BHUJIA", as is the Plaintiff. The Defendant No.1 had also filed for the mark "PITAARA BIKANERI BHUJIA" bearing no. 3355470 in class 30, but the same was abandoned vide order dated 1st October, 2021 by Registrar of Trade Mark, as opposed by M/s Bikaji Foods International Ltd.
11. The present suit is for infringement of the said Geographical Indication 'BIKANERI BHUJIA' bearing registration no. 142 in class 30 under Section 16 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter, 'GI Act'). The Plaintiff claims to be a registered proprietor of the said GI.
12. On the last date, when the suit was listed for the first time on 5th October, 2023, ld. Counsel for the Defendant No.1 had appeared virtually and accepted summons/notices. Ld. Counsel for the Plaintiff was directed to supply a copy of the suit papers to the ld. Counsel and the matter was listed for today to consider the prayer for ad-interim relief. Ld. Counsel for the Defendant Nos. 1 and 2 have entered appearance today. They have filed their vakalatnama. They have also filed documents on record to oppose the grant of interim injunction.
13. The Court has heard the submissions of the ld. Counsel for the parties. Both counsels have made their common submissions in respect of both suits.
14. According to Mr. Bhatia, Id. Counsel for the Plaintiff, unless and until any party has a registration as an 'authorized user' under the GI Act, the term 'BIKANERI BHUJIA' cannot be used by such party. As per Section 22 of the GI Act, a GI is stated to be infringed, when a person, who is not an authorized user, uses a registered geographical indication in a way that CS(COMM) 696/2023 Page 4 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:24 suggests or indicates that the goods come from a different geographical area than their actual origin, thereby misleading people about the true geographical origin of those goods.
15. On behalf of the Plaintiff, the submission is that the GI Act defines the term "Authorised User" under Section 2 (1)(b), as a person who is an authorised user of a geographical indication registered under Section 17. Section 17 of the GI Act provides for an application elucidating the mode and manner of applying to become an authorised user. Section 24 of the GI Act, prohibits assignment, transmission, licensing, pledge, mortgage or any such other agreement of a registered geographical indication.
16. The term registered proprietor is also defined under Section 2(1)(n) as under:-
"(n) registered proprietor, in relation to a geographical indication, means any association of persons or of producers or any organisation for the time being entered in the register as proprietor of the geographical indication;"
17. It is the submission of Mr. Bhatia, ld. Counsel for the Plaintiff that since 2008, the Plaintiff is the registered proprietor of the GI "BIKANERI BHUJIA". Any entity or person, who is not an authorized user cannot use the said GI for its products. Reference is made to the outsourcing agreement placed on record by the Defendant dated 1st July, 2020, as per which, Defendant No.l- M/s Desai Brothers Ltd. and Defendant No. 2-M/s Shree Ram Papad Private Limited have agreed that the vendor i.e., Defendant No. 2-M/s Shree Ram Papad Private Limited would be manufacturing the products for Defendant No.l- M/s Desai Brothers Ltd. Clause 4.1 of the Outsourcing Agreement between Desai Brothers Ltd. and M/s. Shree Ram CS(COMM) 696/2023 Page 5 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:24 Papads Pvt. Ltd. has been relied upon.
18. He also relies upon an application filed by Defendant No.l- M/s Desai Brothers Ltd. dated 8th May, 2023, for registration as an authorised user in Part B of the Register, for the registered geographical indication "BIKANERI BHUJIA" bearing no. 142 in class 30, which is still pending. He submits that since Defendant No. 2-M/s Shree Ram Papad Private Limited is not an authorised user, it cannot be permitted to manufacture "BIKANERI BHUJIA", and any Bhujia that is manufactured by Defendant No. 2 cannot be called as "BIKANERI BHUJIA".
19. On the other hand, ld. Counsel for the Defendants i.e. Mr. Aniruddha Valsangkar and Mr. Sumit Lal submit that unless and until there is any misleading conduct by the person who is manufacturing the products that the goods originate in an area which is not the true place of origin, there would be no infringement of the GI. It is submitted that the three conditions under Section 22(1)(a) and (b) are that :-
1) The person should be an unauthorised user; and 2(a) The person is misleading about the geographical origin of the goods; or 2(b) The person is indulging in any act using which is an unfair competition or constituting passing off.
20. On behalf of Defendant No. 2-M/s Shree Ram Papad Private Limited it is submitted that it is one of the founding members of the Sangh itself and is also a registered proprietor under the GI, therefore, it is entitled to manufacture and sell "BIKANERI BHUJIA" .
21. The Court has considered the submissions. The legal issue which has been raised in this case is in respect of the interpretation of Section 22 of the CS(COMM) 696/2023 Page 6 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25 GI Act,1999 which deserves consideration. The Court has also perused the physical packets which have been handed over by the counsel for the parties. There are two concerns, at this stage, insofar as the Court has seen in the physical products - one is that the Defendants are using the same packaging for "BIKANERI BHUJIA" and for "BHUJIA SEV" images of which are set out below:-
CS(COMM) 696/2023 Page 7 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25
22. The packaging of the Defendants extracted above would also show that it is not clear as to which is the entity which is manufacturing the Bhujia and which entity is involved in the packaging of Bhujia.
23. Whenever a manufacturer is dealing or using a registered GI, there ought to be a proper distinction between the GI product and the non-GI product, failing which, there would be confusion and passing off. The non- GI product cannot be permitted to encash upon the goodwill and reputation of the GI product by using an identical or similar packaging for both sets of products. Secondly, the Court is also concerned that the Defendants were earlier using a different packaging and have thereafter switched to the impugned packaging. The earlier packaging of the Defendant is set out below:-
CS(COMM) 696/2023 Page 8 of 12This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25
24. Thus, it has been put to the ld. Counsel for the Defendants that they ought to produce some alternate packaging on the next date of hearing so as to distinguish their products completely from the Plaintiff's products, and also maintain a distinction between the GI and non-GI product, so that any chances of passing off is completely eliminated.
25. Insofar as the use of the GI is concerned, while the legal question is to be determined by the Court, this Court deems it appropriate to appoint a Local Commissioner to examine the extent of manufacturing taking place in the premises of Defendant Nos. 1 and 2 in Bikaner, as claimed by them for CS(COMM) 696/2023 Page 9 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25 manufacture of "BIKANERI BHUJIA".
26. List before the Joint Registrar on 21st November, 2023.
27. List before the Court on 30th January, 2024.
I.A. 19396/2023 (for appointment of Local Commissioner) in CS(COMM) 695/2023 I.A. 19401/2023 (for appointment of Local Commissioner) in CS(COMM) 696/2023
28. These are applications filed by the Plaintiff seeking appointment of Local Commissioner to visit the premises of the Defendants and seal infringing products.
29. For the reasons stated above, a Local Commissioner is appointed to visit the premises of the Defendants' premises at the following location:
Defendant's Premises Local Commissioner
F- 133 & 134, Bichhwal Industrial
Area, Bikaner - 334001, Rajasthan
Mr. Mumtaz Ali Bhati,
Advocate
Mob. No. 9414140741
F/138-139, Bichhwal Industrial
Area, Bikaner- 334001, Rajasthan
i) The Local Commissioner shall firstly determine as to which
entity is manufacturing Bhujia using the mark 'PITAARA BIKANERI BHUJIA' and which entity is involved in the packaging of the 'PITAARA BIKANERI BHUJIA' as also any marks, labels or CS(COMM) 696/2023 Page 10 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25 get-ups which are identical/deceptively similar to the Plaintiff Sangh's G.I. "BIKANERI BHUJIA", in both the premises.
ii) The Local Commissioner shall also inspect the accounts for obtaining the sales record to determine the extent of sales of "PITAARA BIKANERI BHUJIA" and since when the Defendants are manufacturing the same. If the same is on the computer, access and password shall be provided by the Defendants so as to ensure that the Local Commissioner can make the copy of the accounts;
iii) The Local Commissioner shall also pick up samples of the packaging under the mark/getup/label "PITAARA BIKANERI BHUJIA" used by the Defendants, as also any mark which is identical/deceptively similar to the Plaintiff Sangh's G.I. "BIKANERI BHUJIA";
iv) The Local Commissioner shall also determine the extent of the manufacturing operation, in terms of the staff engaged and daily output of the Defendants' qua "BIKANERI BHUJIA" as also any mark which is identical/deceptively similar to the Plaintiff's G.I. "BIKANERI BHUJIA";
v) The Local Commissioner shall also obtain information as to the relationship between two parties;
vi) The Local Commissioner shall prepare an inventory of the goods, packaging materials, labels, printing materials bearing the mark "PITAARA BIKANERI BHUJIA" and any other mark which is identical/ deceptively similar to Plaintiff Sangh's GI "BIKANERI BHUJIA".
vii) After preparation of the inventory under the mark/getup/label CS(COMM) 696/2023 Page 11 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25 "PITAARA BIKANERI BHUJIA" and any other mark/getup/label which is identical/deceptively similar to the Plaintiffs' " BIKAJI BIKANERI BHUJIA" including the packaging, semi manufactured and fully manufactured goods, the same shall be handed over back to the Defendants to be dealt with in the usual course of business;
viii) The Local Commissioner is permitted to take photographs and videographs of the proceedings of the Commissions, if it is deemed appropriate.
ix) The Local Commissioner, while executing the commission, shall ensure that there is no disruption to the business of the Defendants, except for the purposes of the execution of the commission. The commission shall be executed in a peaceful manner;
x) Upon being requested, the concerned DSP/S.H.O. of the location mentioned above shall extend complete assistance to the Local Commissioner in executing the commission, as per this order, at the Defendants' premises and other premises as may be required by the Local Commissioner;
30. Mr. Mumtaz Ali Bhati, ld. Counsel shall execute the Commission within two days and thereafter a report shall be filed by the Local Commissioner within two weeks of the execution of the commission.
31. The fee of the Local Commissioner is fixed at Rs.1,50,000/- excluding out-of-pocket expenses, including travel, accommodation etc., which is to be borne by the Plaintiff.
32. Order Dasti.
PRATHIBA M. SINGH, J.
OCTOBER 11, 2023/mr/ks CS(COMM) 696/2023 Page 12 of 12 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/10/2023 at 13:50:25