Gujarat High Court
M/S Sahkar Seeds Corporation vs M/S Dharti Seeds on 17 April, 2017
Author: A.J.Desai
Bench: A.J.Desai
C/AO/384/2016 JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 384 of 2016
With
CIVIL APPLICATION NO. 10366 of 2016
In
APPEAL FROM ORDER NO. 384 of 2016
FOR APPROVAL AND SIGNATURE :
HONOURABLE MR.JUSTICE A.J.DESAI Sd/-
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1. Whether Reporters of Local Papers may be NO
allowed to see the judgment ?
2. To be referred to the Reporter or not ? NO
3. Whether their Lordships wish to see the fair NO
copy of the judgment ?
4. Whether this case involves a substantial NO
question of law as to the interpretation of the
constitution of India, 1950 or any order made
thereunder ?
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M/S SAHKAR SEEDS CORPORATION....Appellant
Versus
M/S DHARTI SEEDS....Respondent
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Appearance :
MR PERCY KAVINA, SENIOR ADVOCATE ASSISTED BY MR VIJAY H NANGESH,
ADVOCATE for the Appellant.
MR HARSHIT TOLIA, ADVOCATE WITH MR RH BHANSALI, ADVOCATE for the
Respondent.
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CORAM : HONOURABLE MR.JUSTICE A.J.DESAI
Date : 17/04/2017
ORAL JUDGMENT
1. By way of the present Appeal under Order XLIII, Rule 1 Page 1 of 34 HC-NIC Page 1 of 35 Created On Sat May 06 02:01:49 IST 2017 1 of 35 C/AO/384/2016 JUDGMENT
(r) of the Code of Civil Procedure, 1908 (hereinafter referred to as 'the Code'), the appellant - original defendant has challenged an order dated 31.8.2016 passed by learned Additional District Judge, Patan (hereinafter referred to as 'the learned Trial Court') below application Exh.6 in Trade Mark Suit No.1 of 2016 by which the learned Trial Court has allowed the application Exh.6 filed by the original plaintiff - respondent herein under Order XXXIX, Rule 1 and 2 of the Code and restrained the appellant - original defendant from using the name of "VADHIYARI" and/or other mark which may be identical and/or deceptively similar to the plaintiff's registered trademark "VADHIYAR BIJ" till the suit is finally disposed of.
2. Pursuant to the notice issued by this Court, the respondent has appeared and filed affidavit-in-reply and opposed grant of any relief prayed for by the appellant.
3. The parties have produced relevant documents which were part and parcel of the suit before the learned Trial Court. Learned advocates appearing for the respective parties have consented for final hearing of the appeal though the same was kept for admission hearing. Hence, the present appeal is taken up for final disposal. The matter is arising under the provisions of Trade Marks Act, 1990 (hereinafter referred to as 'T.M. Act') as well as Trade Mark Rules, 2002 (hereinafter referred to as 'T.M. Rules'). For the sake of convenience and brevity, the parties to the present proceedings are referred to as per their original position in the suit i.e. appellant - defendant and respondent - plaintiff.
4. The case of the plaintiff is as under :-
4.1 That the plaintiff, namely, M/s. Dharti Seeds is a sole Page 2 of 34 HC-NIC Page 2 of 35 Created On Sat May 06 02:01:49 IST 2017 2 of 35 C/AO/384/2016 JUDGMENT proprietary concern firm and carrying on business with regard to manufacturing and marketing of Seeds for Grains and Plants and allied goods. The plaintiff firm is registered with the Commercial Tax Department of Government of Gujarat under the Gujarat Value Added Tax Act, 2003 since 6.2.2010 for which a Certificate of Registration is issued. The plaintiff is also registered under the Central Sales Tax (Registration and Turnover) Rules, 1957, from 2010. It is the case of the plaintiff that he is dealing in different types of seeds under the name of "VADHIYAR BIJ" from 2008 and was selling products under different names with regard to the nature of the product. The plaintiff had applied under Section 23 (2) of the T.M. Act read with Rule 62 (1) of the T.M. Rules for having trademark "VADHIYAR BIJ" by applying on 7.7.2010. Prior to submission of the said application and thereafter, the plaintiff had submitted the designs of the bags to the competent authority in which the goods were being sold having name "VADHIYAR BIJ".
The application which was filed by the plaintiff under the provisions of T.M. Act for the registration of the word "VADHIYAR BIJ", was approved by the Registrar of Trademarks on 17.1.2014 and the effect of the Trademark was given from 7.7.2010 i.e. from the date of application submitted by the plaintiff. The Trademark was sought for registration under Clause 31 of Schedule IV of the T.M. Act, which was approved as stated herein above.
4.2 It is the case of the plaintiff that when the plaintiff came to know that similar goods i.e. seeds etc. were being sold in the market under the name of "VADHIYARI", when a search was made from Ministry of Commerce and Industries, Controller General of Patent, Design and Trademarks, the plaintiff found that the defendant was manufacturing and selling similar goods in the market. The plaintiff, therefore, issued a registered notice on Page 3 of 34 HC-NIC Page 3 of 35 Created On Sat May 06 02:01:49 IST 2017 3 of 35 C/AO/384/2016 JUDGMENT 15.10.2015 to the defendant and asked the defendant not to infringe the trademark "VADHIYAR" and thereafter passing off the goods in the similar name. The notice was replied by the defendant on 2.11.2015 and refused the claim made by the plaintiff. Therefore, the plaintiff filed Trade Mark Suit No.1 of 2016 before the District Court, Patan and prayed for the following prayers :-
"(A) THAT, the Hon'ble Court be pleased to restrain the defendant, their servants, agents, retailers, stockiest, dealers and distributors by an order of temporary injunction from manufacturing and marketing Agriculture Seeds (Impugned Goods) under trade mark VADHIYARI (Impugned Mark) and/or any other mark which may be identical and/or deceptively similar to the plaintiff's registered trade mark VADHIYAR and thereby defendant be restrained from committing an act of infringement of the plaintiff's registered trade mark of VADHIYAR.
(B) THAT, the Hon'ble Court be pleased to restrain the defendant, their servants, agents, retailers, stockiest, dealers and distributors by an order of temporary injunction from using trade mark VADHIYARI and/or any other trade mark, which may be identical with and/or deceptively similar with the plaintiff's trade mark VADHIYAR and from manufacturing, marketing and using trade mark VADHIYARI in any manner and thereby restrain them from committing an act of passing off and enable others to pass off impugned goods as and for the goods of the plaintiff with trade mark Page 4 of 34 HC-NIC Page 4 of 35 Created On Sat May 06 02:01:49 IST 2017 4 of 35 C/AO/384/2016 JUDGMENT VADHIYARI and/or any other trade mark, which may be identical with and/or deceptively similar with the plaintiff's trade mark VADHIYAR in which the plaintiff has reputation and goodwill.
(C) THAT, the Hon'ble Court be pleased to order the defendant to pay the cost of the present proceeding.
(D) THAT, any other and further relief, that may be deemed fit and proper, looking to the facts and circumstances of the case, may be granted in favour of the plaintiff."
4.3 The plaintiff also filed an application Exh.6 under Order XXXIX, Rules 1 and 2 of the Code and requested the learned Trial Court that till the suit is finally heard, interim relief in similar nature of the suit prayers be granted. The defendants appeared and filed their reply-cum-written statement to the injunction application as well as suit at Exh.15. Various contentions were raised about the so-called claim of the plaintiff about using the name "VADHIYAR BIJ" since 2008 as well as grant of Trademark in "VADHIYAR BIJ" is illegal since "VADHIYAR" is an area located in certain part of northern Gujarat and arising from geographical region and, therefore, it cannot be said that using the similar name is an infringement by the defendant.
4.4 The learned Trial Court after examining the evidence and appreciating the arguments of the learned advocates appearing for the respective parties, by the impugned order allowed application Exh.6 filed by the plaintiff as stated herein Page 5 of 34 HC-NIC Page 5 of 35 Created On Sat May 06 02:01:49 IST 2017 5 of 35 C/AO/384/2016 JUDGMENT above.
4.6 Hence the present Appeal From Order is preferred by the defendant.
5. Mr. P.C. Kavina, learned Senior Counsel assisted by Mr. Vijay H. Nangesh appearing for the appellant - defendant has vehemently submitted that the learned Trial Court has erred in passing the impugned order since he has not dealt with several legal as well as factual aspects of the matter though specifically raised in the written statement filed by the defendant. He would further submit that "VADHIYAR" is an area located in the North Gujarat and is expanded from Sami Taluka of Patan District to Radhanpur and beginning of Kutch District. Therefore, "VADHIYAR" word which has been used in the trademark "VADHIYAR BIJ" is illegally registered as trade mark in view of the provisions of Section 9 of the T.M. Act. He would further submit that the Authority should have refused to register trade mark in view of Section 9 (1) (b) of the T.M. Act. He would further submit that the applicant has already filed an application for removal of the trade mark under Section 47 read with Sections 57, 125 of the T.M. Act before the Appellate Board constituted under the T. M. Act. He would further submit that since the plaintiff is using the word which is arising from geographical region, the Authority ought to have refused to register the name "VADHIYAR BIJ" in favour of the original plaintiff. He would submit that to establish that "VADHIYAR" is a geographical area, the defendant had produced a thesis of a researcher before the learned Trial Court which, prima facie, establishes the say of the defendant and, therefore, the learned Trial Court ought to have refused the interim relief prayed for by the plaintiff on this ground alone.
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He would further submit that the T.M. Act provides certain exceptions to infringement of trade mark granted to a person. In support of his submissions, he has relied upon Section 30 (2) (a) of the T.M. Act and would submit that since "VADHIYARI BIJ" which is a registered trademark is used and indicates geographical region, it cannot be said that the defendant has infringed the trademark by using the word "VADHIYARI" or "MAHA SAMRAT VADHIYARI 111". He would submit that the plaintiff had made an application for registration of the word "VADHIYARI" with a symbol on 25.6.2015. However, the same has been withdrawn on 14.3.2016. He would submit that subsequent to withdrawal of the said application, the defendant has applied for registration of the trademark in the name of "MAHA SAMRAT VADHIYARI 111" which is pending before the competent authority for its decision. He would further submit that different types of commercial ventures are using the name "VADHIYAR" and, therefore, the say of the plaintiff that VADHIYAR word has some distinct nature is without any basis. He would submit that different types of business in the name of Vadhiyar Petroleum, Gurudev Wadiyar Swasahaya Sangha, S.N. Vadhyar & Sons, Wadiyar Investments Private Limited etc. are carrying on the business wherein name Vadhiyar is used. Therefore, the plaintiff cannot claim any exclusive right in using the word "VADHIYAR" in his product. He would further submit that the business carried out by the plaintiff in the name of "VADHIYAR BIJ" is not a well-known trade mark which would mislead the public at large, if the defendant is carrying on his business in the name of "MAHA SAMRAT VADHIYARI 111".
5.1 Mr. Kavina would further submit that the word "VADHIYAR BIJ" has not acquired any secondary meaning or Page 7 of 34 HC-NIC Page 7 of 35 Created On Sat May 06 02:01:49 IST 2017 7 of 35 C/AO/384/2016 JUDGMENT distinct nature since the plaintiff has miserably failed in establishing that he is carrying on the business from long standing extensive and continuous period. He would submit that the plaintiff has misled the trade mark authorities by specifically stating that they are carrying the business in the name of "VADHIYAR BIJ" since 2008. By taking me through the bills which were produced before the learned Trial Court by the plaintiff in support of his contention that if they are carrying on business since 2008, the bills of 2008 refers the same that "VADHIYAR BIJ" is a trade mark and having particular Registration Number under the provisions of Value Added Tax Act, since in 2008 neither Certificate was issued by VAT Authority, nor "VADHIYAR BIJ" was registered as Trade Mark in the year 2008. He would submit that the authority has not examined the claim made by the plaintiff in detail and has granted the trade mark as prayed for by the plaintiff which can be examined in the Civil Suit during the hearing of the suit as well as the application for interim relief. In support of his submissions, he has relied upon Section 124 of the T.M. Act. He would submit that under Section 124 of the T.M. Act, the Court trying the suit has ample power to stay the suit if it is brought on the record that the trade mark claimed by the party is under challenge before the Registrar or Appellate Board. In the present case, the challenge is already made to the Appellate Board and, therefore, the suit itself ought to have been stayed by the learned Trial Court. He would submit that the learned Trial Court has also erred in not accepting the say of the defendant that the suit suffers from delay and latches in view of the fact that the defendant is using the name "MAHA SAMRAT VADHIYARI 111" since 2012 whereas the present suit has been filed only in the year 2016. By taking me through the relevant bill of 2012, he would submit that the appellant - defendant is selling the seeds in the name of "MAHA Page 8 of 34 HC-NIC Page 8 of 35 Created On Sat May 06 02:01:49 IST 2017 8 of 35 C/AO/384/2016 JUDGMENT SAMRAT VADHIYARI 111" from 2012 which has not been objected by the plaintiff until the suit was filed in the year 2016. He would further submit that if the relief granted by the learned Trial Court would continue till the suit is finally heard, there would be irreparable loss to the defendant whereas there would be no loss to the plaintiff. In support of his submissions, he has relied upon the decision of the Delhi High Court in the case of Marico Limited v. Agro Tech Foods Limited, delivered on 23.10.2010.
5.2 He would further submit that even otherwise, there is no similarity between the names used by the parties. In support of his submissions, Mr. Kavina has relied upon the decision of the Hon'ble Supreme Court in the case of Cadila Health Care Limited v. Cadila Pharmaceuticals Limited, (2001) 5 SCC 73. He would, therefore, submit that the plaintiff is not entitled for the reliefs which has been granted by the learned Trial Court. Hence, the present appeal may be allowed and the impugned order of the learned Trial Court may be quashed and set aside.
6. On the other hand, Mr. Harshit Tolia, learned advocate appearing with Mr. R. H. Bhansali appearing for the respondent - original plaintiff has vehemently opposed this appeal and submitted that the learned Trial Court has dealt with all the contentions raised by the parties and has rightly come to the conclusion that there is a prima facie case made out by the plaintiff that the defendant has infringed upon the trade mark registered in favour of the plaintiff way back from 2000. He would submit that the plaintiff is in the business of grains from 2008 and started manufacturing and thereafter distributing various types of grains and attained popularity in the market in view of the good quality provided to the people at large. By taking me through the Page 9 of 34 HC-NIC Page 9 of 35 Created On Sat May 06 02:01:49 IST 2017 9 of 35 C/AO/384/2016 JUDGMENT communication dated 16.9.2009 issued by the concerned department of the State of Gujarat, he would submit that word "VADHIYAR BIJ" is used on the bags for selling the same. By taking me through such approved bags, he would submit that the same suggests of the year 2008-09 and lot number is also of 2008 which prima facie establishes use by the plaintiff from the year 2008. He would further submit that subsequent to an application made by the plaintiff for registration, a notice was served to the plaintiff from the trade mark registry for satisfying it about the usage of the word "VADHIYAR BIJ". The said notice was issued on 3.8.2011. In response to the said notice, a detailed reply was submitted by the plaintiff to the Registrar of Trademark on 29.2.2012 and ample material was provided by supporting affidavit. The turnover was shown of each year i.e. from 2008 onwards and after examining the same, Registration Certificate has been issued by the authority. He would submit that till "VADHIYAR BIJ" was registered by the Authority, objections were never raised by any person including the defendant about the same. He would submit that the defendant should have raised objection if it is his say that he is using the word "MAHA SAMRAT VADHIYARI 111" since 2012, because the registration has been finally granted on 17.1.2014. No steps and/or objection and/or defense have been taken by the defendant or any party with regard to using the word "VADHIYAR" for manufacturing and distributing under Clause 31 of Schedule IV of the T. M. Act. He, therefore, would submit that the defendant cannot now claim that he may also be permitted to use the word "VADHIYARI" or "MAHA SAMRAT VADHIYARI 111" for manufacturing and distributing the same items falls under Clause
31. He would submit that even the defendant had applied for registration of word "VADHIYARI" only on 25.6.2015. However, the same has been withdrawn on 14.3.2016 i.e. after filing of the Page 10 of 34 HC-NIC Page 10 of 35 Created On Sat May 06 02:01:49 IST 2017 10 of 35 C/AO/384/2016 JUDGMENT suit by the plaintiff on 1.3.2016. He would submit that the case put forward by the defendant that they are selling the product in the name of "MAHA SAMRAT VADHIYARI 111" is baseless in view of the fact that the defendant themselves had applied for registration of "MAHA SAMRAT VADHIYARI 111" only on 14.3.2016 i.e. subsequent to filing of the suit by the plaintiff and on the same day, he withdrew his earlier application for registration of Trademark in the name of "VADHIYARI". He, therefore, would submit that the conduct of the plaintiff clearly established that he wants to infringe the rights of the plaintiff who have valid registration with regard to particular name. There is difference in the name of Vadhiyar Bij or and Vadhiyar or Maha Samrat Vadhiyari and that to using the same for selling the goods which fall under Clause 31 of the Act. When the plaintiff is owner of the registered trade mark, using similar name and for same goods would be squarely covered under Section 29 of the T.M. Act, public at large would be mislead at the time of purchase of the goods.
6.1 He would further submit that under old Trade Mark Act, 1958, the Trade Mark Registrar had power to refuse a trade mark under Section 9 (1) (d) if one applies which suggest use of geographical name, whereas under Section 9 (1) (b) of the new Act of 1999, the word 'geographical name' has been replaced by geographical origin. He, therefore, would submit that a person can use a geographical name however such name should not be suggestive as if the goods, service etc. are directly related to the geographical origin. The seeds manufactured and distributed by the plaintiff are not at all suggestive that Vadhiyar region is known for seed for years together. He would further submit that the defendant himself has applied for regularization of a Trade mark, which includes the origin "Vadhiyar".
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6.2 Mr. Tolia would further submit that the validity of the
word "VADHIYAR" is under challenge before the Appellate Board by the plaintiff. Therefore, the Board would be the competent authority to deal with the same. He would further submit that the Full Bench of the Bombay High Court in the case of Lupin Limited and another v. Johnson and Johnson and another, 2015 (61) PTC [Bom] [FB], after considering the decision of the Marico Limited v. Agro Tech Foods Limited (Supra) has held that only in cases where it is found by the Court that the registration granted for a trade mark is ex-facie illegal or fraudulent or shocks the conscience of the Court, it shall refuse the interim relief. By taking me through the conclusion and the answer to a reference made in the said decision, he would submit that the defendant has miserably failed in establishing that some fraud was committed by the plaintiff with regard to the registration of the trade mark word "VADHIYAR BIJ".
6.3 He would further submit that the Division Bench of the Delhi High Court in the case of Procter & Gamble Manufacturing (Tianjin) Company Limited and others v. Anchor Health and Beauty Care Private Limited, 2014 (59) PTC 421 [Del] [DB] has created doubt about the validity of the judgment in the case of Marico Limited v. Agro Tech Foods Limited (Supra) on merits.
6.4 As far as use of geographical name is concerned, Mr. Tolia has relied upon the decision of the coordinate Bench of this Court in the case of Bahuchar Gruh Udyog v. Talod Gruh Udyog, (2013) 5 GLR 4500. In the said decision, the coordinate Bench of this Court after examining the provisions of Section 9 of Page 12 of 34 HC-NIC Page 12 of 35 Created On Sat May 06 02:01:49 IST 2017 12 of 35 C/AO/384/2016 JUDGMENT the T.M. Act including the proviso, has held that if the applicant before the Registering Authority has acquired distinctive character as a result of use may appeal, the authority may not refuse the registration. He would further submit that in the present case, the plaintiff was able to establish his case before the Registering Authority and, therefore, trade mark has been granted in favour of the plaintiff. He has also relied upon the decision in the case of Gepee Ceval Proteins and Investment Private Limited v. Saroj Oil Industry, (2003) 27 PTC 190 (Del), M/s. Bikanervala v. M/s. New Bikanerwala (2005) 30 PTC 113 (Del), Sunder Nagar Association Regd. v. Welfare Cultural Club (Regd.), 1995 PTC 270 (Del), Mysore Saree Udyog v. Mysore Silk Udyog, 1999 PTC (19) 389 (Karnataka), M/s. Bikanerwala v. M/s. Aggarwal Bikanerwala, 2005 (30) PTC 156 (Del).
6.5 He would further submit that the appellant who intends to now use the word "MAHA SAMRAT VADHIYARI 111" and now restrained by the learned Trial Court from using the same if now is permitted to use the same, there is likely to create confusion in the people at large. In support of his submissions, he has relied upon the decision of this Court in the case of Bharat Tiles & Marble Private Limited v. Bharat Tiles Manufacturing Company 1978 GLR 518. He has also relied upon the decision of the Delhi High Court dated 4.1.2006 in the case of Hi-tech Pipes Limited v. Asian Mills Private Limited, 2006 (32) PTC 192 wherein it is held that if a geographical name has acquired secondary significance and has distinctiveness in respect to a particular goods, using the same name would not be permitted if it is established so.
6.6 He has also relied upon the decision in the case of
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Ramdev Food Products (P) Limited v. Arvindbhai Rambhai Patel and others, (2006) 8 SCC 726 wherein it is held that Ramdev word was used by one of the parties. However, another party wanted to use the word "Ramdev Masala" which was restrained by the Hon'ble Supreme Court. In the said decision, the Hon'ble Supreme Court has also dealt with the balance of convenience of the parties. He would, therefore, submit that the word "VADHIYAR" is already registered with the plaintiff. However, the defendant - appellant herein intends to use the word "VADHIYARI" and, therefore, the learned Trial Court has rightly granted interim relief in favour of the plaintiff.
6.7 As far as the submission made by Mr. Kavina with regard to the use of "VADHIYAR" word by other persons, Mr. Tolia would submit that the same would not help the appellant since the use of "MAHA SAMRAT VADHIYARI 111" directly affects the business of the plaintiff. By relying upon the decision of the Hon'ble Supreme Court in the case of T. V. Venugopal v. Ushodaya Enterprises Limited and another, (2011) 4 SCC 85, he would submit that it has been held that the plaintiff can choose to take action against any person with whom he has direct competition. He would submit that none of the users of VADHIYAR word are in the business of the seeds and have ever been granted any registration with regard to Clause 31 of Schedule IV of the T.M. Act.
6.8 As far as interim relief under Order XXXIX, Rule 1 and 2 of the Code is concerned, Mr. Tolia has relied upon a decision Heinza Italia and another v. Dabur India Limited, (2007) 6 SCC 1, the decision in the case of Midas Hygiene Industries (P) Limited and another v. Sudhir Bhatia and others, (2004) 3 Page 14 of 34 HC-NIC Page 14 of 35 Created On Sat May 06 02:01:49 IST 2017 14 of 35 C/AO/384/2016 JUDGMENT SCC 90 and the decision in the case of Laxmikant V. Patel v. Chetanbhai Shah and another, (2002) 3 SCC 65. He, therefore, would submit that the appeal is without any merits and hence, the same may be dismissed.
7. I have heard learned advocates appearing for the respective parties. The relevant provisions of the T.M. Act which have been heavily relied upon by the learned advocates appearing for the respective parties have been reproduced.
8. As far as submission made by learned advocates about validity of registration of Vadhiyari Bij in favour of plaintiff and its effects are concerned, provisions of Sections 9 and Section 30 of the T.M. Act would be relevant.
The authorities have power to refuse registration of a trade mark on certain grounds which have been incorporated under Section 9 of the T.M. Act. Section 9 of the T.M. Act reads as under :-
"9. Absolute grounds for refusal of registration : (1) The trade marks
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production Page 15 of 34 HC-NIC Page 15 of 35 Created On Sat May 06 02:01:49 IST 2017 15 of 35 C/AO/384/2016 JUDGMENT of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a wellknown trade mark.
(2) .......................
(3) ......................."
9. With regard to the contention raised by Mr. P.C. Kavina about the use of the word "VADHIYAR" which suggest geographical region, is concerned, I am of the opinion that "VADHIYAR" might be an area of State of Gujarat which is known as per its geographical situation, but there is nothing on record to suggest that this area is known for manufacturing of seeds of different types of grains. The seeds manufactured in Vadhiyari area neither create some impression about the qualities, reputation nor other characteristic which attribute to its geographic origin. It is difficult to accept at this stage that the grant of "VADHIYARI BIJ" as Trade Mark by the authority to original plaintiff would mislead the public about the product. When the registration of the "VADHIYARI BIJ"
was granted to the plaintiff, it is difficult to accept that the authority has not considered the same before issuing the Registration. In the case of Bahuchar Gruh Udyog v. Talod Gruh Page 16 of 34 HC-NIC Page 16 of 35 Created On Sat May 06 02:01:49 IST 2017
16 of 35 C/AO/384/2016 JUDGMENT Udyog (Supra), similar contentions have been answered by the coordinate Bench and paragraphs 42, 43 and 46 read as under :-
"42. Further, as could be seen from the Trade Marks Act 1999, it is a complete code providing for the procedure and mechanism and for any such grievance, the rights and remedies are available. The registration of a valid trade mark in favour of the party gives a right to that party to have an exclusive use of such mark, and so long as it is not taken out, modified, corrected pursuant to a proper remedy under the Act, it will continue to have a right in favour of the party which is the owner of such proprietary rights or registered trade mark. Therefore, when the respondent is having the registered trade mark with the word 'TALOD', it cannot be brushed aside or overlooked merely because an objection is raised that the authority has registered the trade mark containing a geographical name 'TALOD' and therefore it should be ignored. If that is so, it would make the other provisions of the Act redundant which provide for an appropriate remedy under the Act by making necessary application for the grievance made by others.
43. Chapter IV of the Act refers to 'the Effect of Registration'. Section 28 provides a right which is conferred by registration with regard to exclusive right to use the trade mark by the person who is having proprietary right of such trade mark. Section 29 provides for infringement of the trade mark, and as rightly emphasized by learned Sr. Counsel Shri Mehta Page 17 of 34 HC-NIC Page 17 of 35 Created On Sat May 06 02:01:49 IST 2017
17 of 35 C/AO/384/2016 JUDGMENT for the respondent, sec. 29(3) provides " in any case falling under clause (c) of subsection (2), the court shall presume that it is likely to cause confusion on the part of the public." Clause (c) of sec. 29(2) provides with regard to the identity of the trade mark and the goods, and as discussed herein above, the items of both the appellant herein and the respondent are identical i.e. instant mix and when the word 'TALOD' is also sought to be used by the appellant, it may have the possibility of confusion with the products of the respondent who is doing the business in the name and style of Talod Gruh Udyog. Therefore, such presumption has been provided. It is wellaccepted that in such cases of proprietary right in respect of the marks, the registered owner of the trade mark has a valuable right in the form of registered trade mark for the purpose of using it in connection with the goods which has acquired a reputation and goodwill. The use of the word 'TALOD' is an essential feature in respect of the mark of both the appellant and the respondent.
46. Moreover, the submission made by learned counsel Shri Daruwalla as to whether the similarity of the products or the mark is likely to cause confusion and the principles of comparison of mark is required to be considered. Though he has emphasized referring to the label marks trying to suggest the point of distinction or dissimilarities, it is well accepted that while considering the similarity, whether the goods of one party is likely to be confused and passed off or not with the mark or the label of the other has to be Page 18 of 34 HC-NIC Page 18 of 35 Created On Sat May 06 02:01:49 IST 2017 18 of 35 C/AO/384/2016 JUDGMENT compared as a whole. Again, the criteria for the purpose of injunction in case of infringement and passing off would be different, though in both the cases when the goods are similar, the aspect of similarity or dissimilarity between the two products as well as the marks as a whole are always considered. In other words, in an action for alleged infringement of a registered trade mark it has to be seen whether the mark of the defendant is identical with the registered mark of the plaintiff. If it is identical, the question does not arise. Even if it is not identical, it has to be considered whether it is deceptively similar and/or likely to cause confusion in relation to the goods for which the plaintiff has got his mark registered. It is at this stage the approach in case of infringement of the registered trade mark and in case of passing off would differ. In case of infringement of a trade mark if it is prima facie shown that the mark of the defendant is similar or the moment it is prima facie suggested by the registered owner of the trade mark that it has a resemblance with his mark or the product, he may be entitled for injunction."
10. The Coordinate Bench of this Court in the said decision also relied upon the decision in the case of Heinza Italia and another v. Dabur India Limited (Supra) and in the said decision, has held in paragraph 50 as under :-
"50. A useful reference can also be made to the observations made by the Hon'ble Apex Court in a judgment in the case of Heinz Italia and anr. v. Dabur Page 19 of 34 HC-NIC Page 19 of 35 Created On Sat May 06 02:01:49 IST 2017 19 of 35 C/AO/384/2016 JUDGMENT India Ltd. (supra) where it has been observed referring to the criteria to be applied that the test is whether the particular mark has obtained acceptability in the market so as to confuse the buyer as to the nature of product he was purchasing. It is observed that in passing off again similarities rather than dissimilarities have to be noted. It is required to be mentioned that in the present case it is a case of infringement by the registered owner of the trade mark. Similar contention with regard to the use of generic word like 'glucose' was raised that it could not be appropriated by anybody and even if its exclusive use could be justified, the decision could be arrived at only after the evidence has been recorded. The Hon'ble Apex Court referring to the various aspects including the facts had granted injunction."
11. It is an undisputed fact that the application submitted by the plaintiff for registering the word "VADHIYAR" was processed by the authority and after inviting objections from the public at large and after examining the material produced, has granted the same in favour of the plaintiff. If the documents produced by the plaintiff are perused, necessary documents have been produced before the Authority and after examining the same, registered trade mark has been granted to the plaintiff w.e.f. 7.7.2010. It is true that the documents which are produced with regard to bills of 2008, the registered trade mark is mentioned though it was not registered. However, at the stage of hearing of an interim injunction application, I would not like to express any opinion in view of the fact that the present appellant had withdrawn his application for using the word "VADHIYARI"
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subsequent to filing of the suit in question and applied for registered trade mark word "MAHA SAMRAT VADHIYARI 111" as well as the case put forward by the appellant that he was using the said word from 2012 since the application has been filed in the year 2016. At this, I would not like to observe anything about the documents of 2012 produced by the defendant by which he has tried to establish that he is doing business in the name of "MAHA SAMRAT VADHIYARI 111" though he has applied for registration of the said name in the year 2016 and that too after filing of the suit and withdrawing his earlier application.
12. As far as the submissions made by Mr. Kavina that there is no infringement of the trade mark in view of Section 30 of the Act is concerned, Section 30 of the T.M. Act is reproduced which reads as under :-
"30. Limits on effect of registered trade mark. (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
(2) A registered trade mark is not infringed where
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(a) the use in relation to goods or services indicates
the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;
(b) ..............
(c) ..............
(d) ..............
(e) ..............
(3) .............
(4) ............."
13. As far as the above argument is concerned, I have already answered that the word "VADHIYAR" has already acquired distinctive character as a result of use made by it and the original plaintiff is in the business from 2008 or at least since 2010 as well as the differences between a use of geographical name and not geographical origin.
14. As far as the case put forward about the infringement of registered Trade Mark is concerned, provisions of Section 29 of the T.M. Act would be relevant which reads as under :-
"29. Infringement of registered trade marks (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 Page 22 of 34 HC-NIC Page 22 of 35 Created On Sat May 06 02:01:49 IST 2017 22 of 35 C/AO/384/2016 JUDGMENT 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 subsection (2), the court shall presume that it is likely to cause confusion on the part of the public.
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HC-NIC Page 23 of 35 Created On Sat May 06 02:01:49 IST 2017 23 of 35 C/AO/384/2016 JUDGMENT (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
(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 of which the trade mark is registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he
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(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 authorized 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.
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(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."
Considering the above provisions and the name used by defendant is concerned, the same would be governed by the above provisions.
15. Section 124 of the T.M. Act reads as under :-
"124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. (1) Where in any suit for infringement of a trade mark
(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of subsection (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;Page 26 of 34
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(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of subsection (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in subsection (1) or subsection (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any Page 27 of 34 HC-NIC Page 27 of 35 Created On Sat May 06 02:01:49 IST 2017 27 of 35 C/AO/384/2016 JUDGMENT order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit."
16. The said aspect has been considered by the Full Bench of the Bombay High Court in the case of Lupin Limited and another v. Johnson and Johnson and another (Supra). In the said decision, the Full Bench of the Bombay High Court was examining a reference made by the learned Single Judge of the Bombay High Court which reads as under :-
"Whether the Court can go into the question of the validity of the registration of the plaintiffs trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the registration of the plaintiffs trade mark in an infringement suit ?"
17. After discussing various decisions of various High Courts including the decision in the case of Marico Limited, the conclusions arrived at by the Full Bench in paragraph 59 reads as under :-
"59. In a nutshell, our conclusions are as under : (1) The expression 'if valid' in Section 28 and the words 'prima facie evidence of the validity of the trade mark' in Section 31 of the Trade Marks Act, 1999 (the Act) must be given their plain and natural meaning.
The plain and natural meaning is given to these phrases by various High Courts. (paras 24, 26, 29, 31, 35, 44 & 56) Page 28 of 34 HC-NIC Page 28 of 35 Created On Sat May 06 02:01:49 IST 2017 28 of 35 C/AO/384/2016 JUDGMENT (2) Though the object of providing registration of trade mark is to obviate the difficulty in proving each and every case the plaintiff's title to the trade mark, the object is achieved by raising a strong presumption in law to the validity of the registration of the trade mark and heavy burden is cast on the defendant to question the validity of the trade mark. (Paras 34, 43, 55 & 57) (3) A challenge to the validity of the registration of the trade mark can finally succeed only in rectification proceedings before the Intellectual Property Appellate Board. However, there is no express or implied bar taking away the jurisdiction and power of the Civil Court to consider the challenge to the validity of the trade mark at the interlocutory stage by way of prima facie finding. (Paras 34 and 53) (4) There is nothing in the Act to suggest that any different parameters for grant of injunction are required to be applied when a plaintiff seeks injunction on the basis of registered trade mark. The relief of injunction being a relief in equity, when the Court is convinced that the grant of interim injunction would lead to highly inequitable results, Court is not powerless to refuse such relief. (Paras 35, 36 & 47) (5) However, a very heavy burden lies on the defendants to rebut the strong presumption in favour of the plaintiff on the basis of the registration at the Page 29 of 34 HC-NIC Page 29 of 35 Created On Sat May 06 02:01:49 IST 2017 29 of 35 C/AO/384/2016 JUDGMENT interlocutory stage. The plaintiff is not required to prove that the registration of a trade mark is not invalid, but only in the cases where the factum of registration is ex facie totally illegal or fraudulent or shocks the conscience of the Court that the Court may decline to grant relief in favour of the plaintiff. (Paras 25, 27 & 55) (6) It is not sufficient for the defendant to show that the defendant has an arguable case for showing invalidity. The prima facie satisfaction of the Court to stay the trial under Section 124 of the Act is not enough to refuse grant of interim injunction. It is only in exceptional circumstances, such as, the registration being ex facie illegal or fraudulent or which shocks the conscience of the Court that Court will refuse the interim injunction in favour of the registered proprietor of the trade mark. (Para 57) 86 (7) The Division Bench in the case of Maxheal Pharmaceuticals considered it as the view of Vimadalal, J. that it is "the practice of this Court" to grant injunction to the holder of a registered trade mark. However, there was no sound footing for the Division Bench to recognize it as a longstanding practice of this Court. (Para 33) (8) Though it is considered as a practice of this Court in granting injunction in favour of the plaintiff having a registered trade mark, the same cannot be Page 30 of 34 HC-NIC Page 30 of 35 Created On Sat May 06 02:01:49 IST 2017 30 of 35 C/AO/384/2016 JUDGMENT treated as a total embargo on the power of the Court to refuse grant of interim injunction. In exceptional cases, that is in cases of registration of trade mark being ex facie illegal, fraudulent or such as to shock the conscience of the Court, the Court would be justified in refusing to grant interim injunction. (Para 33) (9) As regards the controversy at hand, the provisions of the Trade Marks Act, 1999 are not comparable with the provisions of the Designs Act, 2000 and the Patent Act, 1970. (Paras 37 and 38)"
18. The reference was answered in paragraph 60 which reads as under :-
"60. The question posed for consideration in the reference : "Whether the Court can go into the question of the validity of the registration of the plaintiff's trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the registration of the plaintiff's trade mark in an infringement suit?" is answered thus : In cases where the registration of trade mark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds, a very high threshold of prima facie proof is required. Page 31 of 34 HC-NIC Page 31 of 35 Created On Sat May 06 02:01:49 IST 2017
31 of 35 C/AO/384/2016 JUDGMENT It is, therefore, open to the Court to go into the question of validity of registration of plaintiff's trade mark for this limited purpose, to arrive at a prima facie finding."
19. In the case of Procter & Gamble Manufacturing (Tianjin) Company Limited and others v. Anchor Health and Beauty Care Private Limited (Supra), the Division Bench of the Delhi High Court has held in paragraph 10 (x) and has raised doubt about the validity of the decision in the case of Marico Limited (Supra) since other decisions were not considered by the learned Single Judge.
20. As far as the use of word "VADHIYAR" by other organizations are concerned, the Hon'ble Supreme Court in the case of T. V. Venugopal v. Ushodaya Enterprises Limited and another (Supra) has held in paragraph 87 which reads as under :-
"87. Learned counsel for the respondent company also placed reliance on Prakash Roadline Limited v. Prakash Parcel Service (P) Ltd. 48 (1992) Delhi Law Times 390, the Delhi High Court held that : ".........Merely because no action is taken against certain other parties, it does not mean that the plaintiff is not entitled to take action against the defendant. The other parties may not be affecting the business of the plaintiff. They may be smalltime operators who really do not matter to the plaintiff. Therefore, the plaintiff may not chose to take any action against them. On the contrary, the plaintiff feels Page 32 of 34 HC-NIC Page 32 of 35 Created On Sat May 06 02:01:49 IST 2017 32 of 35 C/AO/384/2016 JUDGMENT danger from defendant in view of the fact that the defendant's promoters are the exDirectors/employees of the plaintiff who are fully in the know of the business secrets of the plaintiff. Therefore, the mere fact that the plaintiff has not chosen to take any action against such other parties cannot disentitle the plaintiff from taking the present action. This contention is, therefore, primafacie without any merit and is rejected."
21. Therefore, in my opinion, the plaintiff has made out a strong prima facie case which has been properly dealt with by the learned Trial Court and has rightly restrained the defendant (Appellant herein) from using word "VADHIYAR" or "MAHA SAMRAT VADHIYAR 111" till the suit is finally heard.
As far as interim relief is concerned, the decision in the case of Midas Hygiene Industries (P) Limited and another v. Sudhir Bhatia and others (Supra) would be applicable in the present case.
22. In this view of the matter, I am of the opinion that the present appeal is meritless and the impugned order dated 31.8.2016 passed by learned Additional District Judge, Patan below application Exh.6 in Trade Mark Suit No.1 of 2016 does not call for any interference. Hence, the present appeal is accordingly dismissed. Civil Application also stands dismissed.
23. The learned Trial Court is hereby directed to expedite the hearing of the suit being Trade Mark Suit No.1 of 2016.
Sd/-
(A.J.DESAI, J.)
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Savariya
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 384 of 2016
[On note for speaking to minutes of order dated 17/04/2017 in C/AO/384/2016 ] =========================================================== M/S SAHKAR SEEDS CORPORATION....Appellant(s) Versus M/S DHARTI SEEDS....Respondent(s) ================================================================ Appearance:
MR VIJAY H NANGESH, ADVOCATE for the Appellant(s) No. 1 MR RH BHANSALI, CAVEATOR for the Respondent(s) No. 1 ================================================================ CORAM: HONOURABLE MR.JUSTICE A.J.DESAI Date : 05/05/2017 ORAL ORDER Considering the averments made in the present note for Speaking to Minutes, the same is hereby allowed.
In 8th line of para6 of the judgment dated 17.04.2017, words "From 2000" be substituted and read as "From 2010", in 10th line of para 9 of the judgment, the words "grant of VADHIYARI BIJ" be substituted and read as "grant of VADHIYAR BIJ", in 12th line of para9 of the judgment, the words "VADHIYARI BIJ" be substituted and read as "VADHIYAR BIJ" and in 4th and 5th line of para21 of the judgment the words 'VADHIYAR or MAHA SAMRAT VADHIYAR 111" be substituted and read as "VADHIYARI or MAHA SAMRAT VADHIYARI 111".
Rest of the judgment shall remain unaltered. Direct service is permitted.
(A.J.DESAI, J.) siddharth Page 1 of 1 HC-NIC Page 35 of 35 Created On Sat May 06 02:01:49 IST 2017 35 of 35