IN THE HIGH COURT OF DELHI AT NEW DELHI
SUBJECT : CODE OF CIVIL PROCEDURE
Judgment delivered on: 25.03.2008
IA No. 9165/2007 & 10779/2007 in CS(OS) 1459/2007
M/S RANA STEELS .......Plaintiff -versus -
M/S
RAN INDIA STEELS PVT. LTD. ........Defendant Advocates who appeared in this case:
For the Plaintiff
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: Mr S.K. Bansal with Mr Ajay
Amitabh Suman
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For the Defendant
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: Mr Sudhir Chandra, Sr
Advocate with Mr Amarjeet
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Singh,
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Mr
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Gurvinder
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Singh,
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Mr
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Bhagwati
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Prasad,
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Mr
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Abhyudai
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Singh, Ms Rinkoo Paliwal and
Ms Sheetal Dang
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CORAM:-HON'BLE MR JUSTICE BADAR DURREZ AHMED
BADAR DURREZ AHMED, J
1.
Two applications shall be disposed of by this order. The first application
(IA.No.9165/2007) has been filed by the plaintiff under Order 39 Rules 1 and 2
read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter
referred to as the 'CPC') and the second application (IA.No. 10779/2007) has
been filed by the defendant under the provisions of Order 39 Rule 4 CPC for
vacation of the ex parte interim injunction which was granted by this
Court on 14.08.2007 on the first application, that is, IA 9165/2007.
The Ex Parte Order:
IA No. 9165/2007 & IA 10779/2007 in
CS(OS)1459/2006 Page No.1 of 33
1
A
reading of the order dated 14.08.2007 reveals that the plaintiff claimed itself
to be the proprietor of the registered trademark “RANA” in respect of its
products which include steel rolled products, C. T. D bars, angles, flats,
rounds, channels and girders. The plaintiff had stated that it had used the
said trademark since 1993 continuously and that it had applied for the
registration of the trademark on 14.12.1994 which was finally granted on
03.03.2006. The said registration was in Class 6 specified in Schedule IV to
the Trade Marks Rules, 2002. It may be pertinent to note that while the
application for registration was made at the time when the Trade and
Merchandise Marks Act, 1958 was in operation, the actual registration was done
on 03.03.2006 and in view of Section 159(2) of the Trade Marks Act, 1999, it
would be deemed to be a registration under the said Act of 1999.
2
It
was also stated that the sales of the plaintiff in respect of the goods in
question run into several crores of rupees. It was alleged by the plaintiff
that the defendant had recently started using the trademark “RANA TOR” in
respect of identical products, namely, steel bars. The plaintiff, as stated in
the plaint, came to know of this in July 2007 and, consequently, had
immediately approached this Court by filing this suit. On the basis of the
statements made in the plaint and the documents filed along with the plaint as
well as the submissions made by the learned counsel for the plaintiff, the
following order was passed on 14.08.2007:
“In view of the averments
made in the plaint and submissions made by the learned counsel for the
plaintiff, I
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CS(OS)1459/2006 Page No.2 of 33
am of the
view that the plaintiff is entitled to ex parte orders. Accordingly, till the
next date of hearing the defendants by itself or through their proprietors,
partners, directors, agents, representatives, distributors, assigns, heirs,
successors, stockists and all others acting for and on their behalf shall
refrain from using, selling, advertising, displaying or through the visual,
audio, print mode or by any other mode manner or dealing in or using the trademark
RANA or any other identical or deceptively similar mark in respect of the
impugned goods in relation to metal building materials, pipes, tubes of steel
which include rods, flats, pipes, angles and building steels made of mild steel
and related / allied products.”
The Defendant's arguments:
4.
Being aggrieved by this order, the defendant has filed the second application,
that is, the application under Order 39 Rule 4 CPC for vacation of the same. It
was contended by Mr Sudhir Chandra, the learned senior counsel who appeared on
behalf of the defendant, that this Court would not have granted the ex parte
injunction to the plaintiff had the full facts been disclosed. He submitted
that, first of all, it was not disclosed to this Court that the defendant was
the registered proprietor of the trademark “RANA TOR”. The defendant's
trademark was registered on 06.04.2005 under Class 19 in respect of “building
material (steel)”. Since the application for the same had been made on
26.04.2001, the registration would relate back to that date. It was also
contended by Mr Sudhir Chandra that both the plaintiff and the defendant have
trademark registrations. The plaintiff has a registration in respect of the
trademark “RANA” whereas the defendant has a registration in respect of the
trademark “RANA TOR”. He submitted that in view of Section 28(3) of the Trade
Marks Act, 1999, there is a complete bar in respect of filing a suit by one
registered proprietor of a trademark
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.3 of 33
against another registered
proprietor of the same or similar mark. Section 28 (3) reads as under:
“28.Rights conferred by registration
1
xxxx
xxxx xxxx xxxx
2
xxxx
xxxx xxxx xxxx
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 persons 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.”
It wascontended by the learned counsel that while
the two registered
proprietors
had exclusive rights to use the trademarks in respect of third
parties,they did not have such exclusivity in
respect of each other.
Therefore,
the plaintiff could not have filed the present suit against the
defendant
in respect of the alleged infringement of the trademark. The
provisions
of Section 30 (2) (e) were also referred to by Mr Sudhir Chandra.
They
stipulate that a registered trademark is not infringed where the use of a
registered
trademark, being one of two or more trade marks registered under
this
Act which are identical or nearly resemble each other, is in exercise of
the
right to the use of that trade mark given by registration under this Act.
It wascontended that since the defendant had a
registered trademark,
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in CS(OS)1459/2006Page No.4 of 33
namely,
“RANA TOR”, no infringement action could lie against the defendant for the use
of the said trademark.
5.
It was further contended on behalf of the defendant that, apart from the
question of infringement of trademark under the Trade Marks Act, 1999, this
suit has also been filed on account of allegations of passing off. In this
regard, he submitted that there is no evidence that the mark employed by the
plaintiff had acquired a distinctive character so as to connect the plaintiff
with the said mark exclusively. He submitted that there is no evidence produced
by the plaintiff in respect of any sales under the said trademark for the years
1996-2005. He submitted that prior to 1996 there may have been certain local
sales, most of which were cash sales and there were no excise records produced
by the plaintiff in respect of such sales. It was also submitted that the
defendant is based in Tamil Nadu and its business is confined to the southern
Indian states. He also submitted that the defendant has been in business since
1991 and has been using the said trademark since then. He referred to various
documents filed on behalf of the defendant and in particular the Chartered
Accountant's certificate at page 5 of the documents file which relates to sale
figures of 1996-97, the costs of advertisement etc. In any event, he submitted
that all the sales of the defendant are in South India and there are no sales
whatsoever in Delhi. A statement was also made at the Bar that the defendant
had no intention to sell its products in Delhi. On the basis of these
statements, it was submitted by Mr Sudhir Chandra that this Court would not
have territorial jurisdiction
IA No. 9165/2007 & IA
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to
entertain the present suit and, therefore, the plaint itself has to be returned
after the ex parte order is vacated. He submitted that insofar as the
action based on infringement of the trademark is concerned, that would not lie
because of the provisions of Section 28(3) read with Section 30(2)(e) of the
Trade Marks Act, 1999. As regards the passing off action, he submitted, the
same would only lie if there were sales by the defendant in Delhi or there was
any threat of any sales in Delhi. The threat aspect has been discussed in a
decision of this Court in the case of Pfizer Products Inc. v. Altamash Khan
& Anr.: 2006 (32) PTC 208 (Del). He submitted that there is not
an iota of evidence of any sale by the defendant of any product under the
trademark “RANA TOR” in Delhi. Furthermore, the defendant has no intention of
selling its products in Delhi and it is for this purpose that the statement at
the bar had been made that the defendant does not intend to sell any of its
products in Delhi. Therefore, not only are there no sales in Delhi, there is
also no threat of sales in Delhi. Consequently, it was submitted that in
respect of the passing off action, this Court would not have any territorial
jurisdiction.
6.
It was also contended that the balance of convenience lay in vacating the order
and not in maintaining it. He submitted that there is no evidence of user by
the defendant in Delhi. The defendant had substantial sales in South India. The
plaintiff has not furnished any sales figures for the period 1996-2005. No
invoices have been placed on record so as to enable this Court to take a prima
facie view that the plaintiff had a long and
IA No. 9165/2007 & IA
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continuous
user of the mark “RANA”. It was also contended by the learned counsel for the
defendant that the plaintiff has been guilty of suppression of facts. With
reference to the Supreme Court decision in the case of Salem Advocate
Bar Association, Tamil Nadu v. Union of India : (2005) 6 SCC 344,
he contended that this is a fit case where actual costs should be imposed on
the plaintiff. He submitted that because of the suppression of facts on the
part of the plaintiff, this Court was persuaded to pass the ex parte orders,
which has resulted in untold misery to the defendant. He submits that Rs 10
crores worth of goods are lying unsold and are rusting. He also submitted that
a suit of the present nature ought to be thrown out and such a practice should
be deprecated in strong words. Consequently, he submitted that the injunction
order passed on 14.08.2007 ought to be vacated.
The plaintiff's arguments:
7.
Mr Bansal, who appeared on behalf of the plaintiff, submitted that there was no
suppression of facts and that the order passed on 14.08.2007 ought to be
maintained. First of all, he submitted that the trademark registration, which
was obtained by the defendant, was in an entirely different Class from that of
the plaintiff's registration. The defendant's registration was in respect of
Class 19 whereas the plaintiff's
th
registration
was under Class 6. He referred to the IVSchedule to the Trade Mark Rules, 2002
and drew my attention to the contents of Class 6 and Class 19. He submitted
that Class 6 deals with metallic goods whereas
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.7 of 33
Class
19 dealt entirely with non-metallic goods. In this background he submitted that
the registration of the defendant's mark “RANA TOR” in Class 19 is ex facie wrong.
He submitted that in respect of steel, there could not have been any
registration under Class 19 and the same could only have been registered in
Class 6.
1
He
submitted that in 2005 the defendant had also filed an application No.1334903
for registration of the label mark “RANA TOR” under Class 6. The plaintiff
filed an opposition to the same in Form TM-5. In the counter statement to the
plaintiff's said opposition, no mention was made by the defendant that its
application for registration under Class 19 was pending. The counter statement
also revealed that the defendant had stated that it was the leading
manufacturer and merchant in India of a wide range of “building materials which
includes pipes and tubes of metals, flats, rods and angles”. The defendant had
also stated that by way of the “rich quality standards maintained”, wide
advertisements made in different media and promotional efforts undertaken “ever
since the year 2001”, the defendant had earned valuable reputation in the field
of manufacturing and marketing of the said goods. It was, therefore, contended
by Mr Bansal that the defendant, by its own statement made in the counter
statement, did not have any user in respect of the mark RANA prior to 2001.
Secondly, the defendant did not disclose in its counter statement that it had
applied for registration of the mark “RANA TOR” under Class 19.
2
Mr
Bansal sought to answer the allegations made by Mr Sudhir Chandra that there was
no evidence of any sales during the period 1996-2005 and more so no evidence
with regard to any excise documents. He drew my attention to page 44 of the
plaintiff's documents which was a bill raised by Rana Steels and was dated
01.01.1994 with respect to MS angles. A reference was also made to the sales
turnover for the year 31.03.1996 at pages 25 to 33 of the plaintiff's
documents. There is no doubt the sales figures are substantial but it must be
noted that they pertain to K.K. Steel Limited which, according to the learned
counsel for the plaintiff, is a part of the group of which Rana Steels is a
constituent. Mr Bansal then referred to page 50 of the plaintiff's documents to
show that there were excise documents also in respect of the Rana Steels in 1996.
The said document does indicate that it pertains to the removal of certain
goods. However, the description of the goods is NS ingots. The document is
dated 27.03.1996. A reference was also made to the document at page 61 of the
plaintiff's document which is a bill dated 08.09.2006 raised on Rana Steels
with respect to the advertising charges over the radio. Similarly, the document
at page 68 also indicates that the plaintiff has, in the year 2007, extensively
advertised in radio-one FM in Delhi.
3
It
was next contended by Mr Bansal that the adoption of the mark RANA has a basis
and is not mischievous as in the case of the defendant. He submitted that a
look at the Memorandum and Articles of Association of K.K. Steels Limited would
show that the word RANA forms
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CS(OS)1459/2006 Page No.8 of 33
IA No. 9165/2007 & IA
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part
of the names of the promoter Directors and it is for this reason that the mark
RANA was employed by the plaintiff and in respect of which registration has
been obtained.
11.
Mr Bansal referred to page 1 of the second volume of the plaintiff's documents
to show an advertisement in the Punjab Kesari of 04.11.1993 which was brought
out by the plaintiff in respect of the mark RANA. Another advertisement was
brought out in the same newspaper but on a different date, i.e., 21.10.1993. He
referred to similar advertisements in Punjab Kesari of other dates as well as
of Amar Ujala in 1994. The advertisements which appear in 1993-94 in Amar Ujala
referred to the plaintiff's name RANA Steels as well as the mark RANA and they
clearly indicate that the plaintiff's “RANA Steels” is the first automatic
plant in North India and that it manufactures, inter alia, bars, angles,
channels, rounds, flats and girders of steel. A reference was also made to the
caution notice taken out on behalf of the advocates of the plaintiff with
regard to the use of the mark RANA. This caution notice was published in the
Vijayawada edition of the Hindu of 17.08.2006. A reference was then made to the
September 2006 edition of the Hindi Magazine Parvat Piyush, which is brought
out from Dehradun. The said Magazine contains an advertisement by the Rana
Group of Companies which includes RANA Steels (Plaintiff herein). The
advertisement is in respect of various steel products of the said Rana Group of
Companies and includes the expression “RANA SARIA” as well as RANA GIRDERS”. A
reference was also made
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.10 of 33
to
the estimate dated 17.03.2006 raised by Top Advertising in respect of
telecasting charges of T.V. advertisements on the Sun T.V. Channel at Chennai.
The said advertisements were in the month of March 2006. On the basis of the
aforesaid documents, Mr Bansal submitted that there is, prima facie,
evidence of continuous user from 1993-2006 of the mark RANA in respect of the
plaintiff's products. He submitted that there is also evidence that the
plaintiff has vigorously advertised its mark and because of which the mark has
become distinctive of the plaintiff's products. He submitted that on the other
hand the defendant has no right or logical basis to use the mark RANA. He
submitted that the defendant's name was and is RAN India Steels Pvt Limited and
its products were sold under the mark RAN. This would be apparent from the
invoice-cum-delivery challan dated 28.10.2001 which has been filed at page 60
of the defendant's documents. There are similar documents in respect of the
product TOR Steel at pages 60, 61, 62 and 63. All these are
invoice-cum-delivery challans of September and October, 2001. Mr Bansal also
submitted that apart from the fact that these invoice-cum-delivery challans
reveal that the defendant was using the mark RAN at that point of time and not
RANA, it also reveals that these documents have been fabricated because the
words “RANA TOR TESTED” appear to the eye to have been printed later and using
a different typewriter / printer. He submitted that this would be further
apparent by comparing similar invoice-cum-delivery challans of August 2005
which have been placed at pages 149 -150 of the documents file. On an
examination of all the invoice-cum-delivery challans filed by the defendant
IA No. 9165/2007 & IA
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beginning
from 16.04.2000 and ending with 24.07.2007 running from pages 1 to 210 of the
defendant' documents, it is clearly discernible that for the period prior to
May 2001 there is no mention of the mark RANA in any of the invoices of the
defendant. In respect of the period from May, 2001 right upto June, 2004, the
invoices apparently did not contain the expression “RANA TOR TESTED” when they
were originally issued. But the said expression has been subsequently
superimposed on each of the challans using a different ribbon, perhaps a
different printing devise. However, from July, 2005 onwards, the expression
“RANA TOR TESTED” appears to have been printed on the original invoices
themselves. On the basis of this, the learned counsel for the plaintiff
submitted that the invoices for the period 2001 to 2004 are clear fabrications.
He also submitted that the defendant has not been able to show any
advertisements prior to 2005 in respect of mark RANA.
12.
Mr Bansal referred to various decisions and they include:
1
N.R. Dongre and Others v Whirlpool Corporation and Others : AIR 1995 DELHI 300
2
Anand
Kumar Deepak Kumar and Another v Haldiram Bhujia Wala and Another : 1999
PTC (19) 466
3
M/s Niky Tasha India Pvt Ltd v M/s Faridabad Gas Gadgets Pvt Ltd : AIR 1985 DELHI 136
4
Veerumal Praveen Kumar v Needle Industries (India) Ltd &
Anr :
2001 PTC 889 (Del) (DB)
5
Bal
pharma Ltd Centaur Laboratories Pvt Ltd & Anr : 2002(24) PTC 226 (Bom) (DB)
IA No. 9165/2007 & IA 10779/2007 in CS(OS)1459/2006Page No.12 of 33
6.
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Ansul Industries v
Shiva Tobacco Company : 2007 (34) PTC 392 (Del)
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7.
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M/s Gujarat Bottling Co
Ltd and Others Company and Others : AIR 1995 SC 2372
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v
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Coca
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Cola
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8.
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State of Orissa &
Ors v Prasana Kumar Sahoo : JT 2007 (6) SC 182
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9.
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Union of India &
Ors v Bashir Ahmed : AIR 2006 SC 2487
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10.
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Union of India &
Ors v Rakesh Kumar : AIR 2001 SC 1877
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1
Flower Tobacco Company v State and Another : (1986 – PTC-352)
2
Gopal Krishan v M/s Mex Switchgear (P) Ltd & Another : (1993 PTC-1)
3
M/s Hidesign v Hi-Design Creations : 1991 (1) Delhi Lawyer
125.
13. Mr Bansal then
referred to the jurisdictional argument which was raised by Mr Sudhir Chandra.
He drew my attention to paragraph 26 of the plaint where it is stated that this
court has territorial jurisdiction to try and adjudicate the present suit
inasmuch as the defendant's impugned acts of infringement and passing off are
taking place in Delhi. It is also alleged that the defendant has intention to
use the impugned trademark / label in Delhi, if not already used inasmuch as
the defendant has filed the impugned application for registration, on an All
India basis. It is also alleged that the defendant is otherwise soliciting
trade and has distribution networks in Delhi in relation to the said trade mark
/ labels. In view of these averments, the learned counsel for the plaintiff
submitted that this court would have
IA No. 9165/2007 & IA 10779/2007
in CS(OS)1459/2006Page No.13 of 33
territorial jurisdiction to
entertain this present suit. He submitted that the defence taken by the
defendant in the written statement is not required to be gone into at this
stage and as to whether the allegations contained in para 26 of the plaint are
established or not can only be determined on evidence. He referred to the
decision of a learned Single Judge of this court in the case of
S. Oliver Bernd Freier GmbH & Co. KG V Karni Enterprises & Anr : 2006 (33) PTC 574 (Del) to submit that the
defendants are functioning on an All India basis and the threat looms large in
Delhi also. He also reiterated that in the counter statement to the opposition
filed by the plaintiff referred to above, the defendant had itself stated that
it is the leading manufacturer of building materials in India. Therefore, it
was contended by Mr Bansal that this court has jurisdiction both in respect of
the infringement action and in respect of the passing off action.
The defendant's further
arguments:
14.
Mr Sudhir Chandra, the learned senior counsel appearing on behalf of the
defendant, submitted, in rejoinder, that the registration of the defendant's
mark “RANA TOR” in Class 19 was not defective. He submitted that the
application was made under the Trade and Merchandise Marks Act, 1958. The
registration, however, was granted when the said Act had been replaced by the
Trade Marks Act 1999. He submitted that Class
th
19
in the IVSchedule to the Trade and Merchandise Marks Rules 1959
th
was
materially different from Class 19 of the IVSchedule to the Trade Marks Rules,
2002. The old Class 19 referred to building materials whereas
IA No. 9165/2007 & IA
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the
new Class 19, inter alia, referred to building materials (Non-metallic).
It was submitted by Mr Sudhir Chandra that old Class 19 included both metallic
and non-metallic materials whereas new Class 19 has reference only to
non-metallic building materials. Therefore, the registration of the defendant's
mark under Class 19 in respect of the building materials (steels) cannot be
regarded as a fractured registration or a registration under a mistake.
15. Mr Sudhir Chandra also
submitted that with regard to the passing off action, Delhi has no
jurisdiction. Moreover, no use has been indicated by the plaintiff between
1996-2005 and, therefore, the plaintiff can be assumed to have abandoned the
mark. Mr Sudhir Chandra also referred to
P.M. Dissels Pvt Ltd v Thukral Mechanical Word : AIR 1988 Del 282; Pfizer
Products, Inc v Rajesh Chopra & Ors : 2006 (32) PTC 301 (Del) ; and Dabur
India limited v K.R. Industries : 2006(33) PTC 348 (Del.).
16.
He also submitted that, essentially, in a passing off action, the plaintiff
must show that its mark has acquired distinctiveness by continuous user. In
this context, he submitted that the mark RANA is not known at all as being
distinctive of the plaintiff's products. He reiterated that there is no invoice
for the periods 1996 to 2005 and the sales figures that have been given by the
plaintiff are those of K.K. Steels and not of the plaintiff (RANA Steels).
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Jurisdiction:
17.
The argument advanced on the part of the defendant is that the plaintiff’s suit
for infringement is not maintainable on account of the provisions of section 28
(3) of the trademarks act, 1999 and, therefore, section 134 (2) of the said act
would not be available to the plaintiff. The further argument is that in
respect of the alleged passing off action nothing has happened in Delhi as the
defendant has neither sold nor offered its products for sale in Delhi and,
therefore, this court would not have territorial jurisdiction over this suit.
At this juncture, it would be instructive to remember that the suit filed by
the plaintiff is composite in nature. It is both, a suit for infringement of
the trademark RANA as well as a suit for passing off. Therefore, the question
of territorial jurisdiction has to be examined keeping in mind this composite
nature of the suit. The learned counsel for the defendant wanted this court to
hold that the infringement action was barred on account of the provisions of
section 28 (3) read with section 30 (2) (e) of the said act. And, then, to look
at the suit merely as one of passing off. But, as will be clear from the
discussion that follows, it cannot be held at this stage that the plaintiff has
no case on infringement or that section 28(3) would come into play or that the
defence under section 30(2)(e) would be available to the defendant. Though the
position appears to be to the contrary, those are issues which will have to
determined in the suit after considering the evidence led by the parties.
Therefore, in the facts and circumstances of the present case at this
preliminary stage, it cannot be held that the plaintiff’s alleged infringement
action is not maintainable.
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Consequently,
the argument that this court does not have jurisdiction would have to be
rejected.
Infringement:
1
The
plaintiff has alleged that its mark RANA which is registered in respect of “steel
rolled products, CTD bars, angles, flats, rounds, channels and girders”
falling under class 6 of the Fourth Schedule to the Trade Marks Rules, 2002 has
been infringed by the defendant inasmuch as the defendant has used and is using
the mark “RANA TOR” in respect of its products. The defendant, on the other
hand, has taken the stand that there is no infringement on its part because it
is a registered proprietor of the mark “RANATOR” in respect of “Building
materials (steels)” falling under class
2
It
was, therefore, contended on the strength of section 28(3) and 30(2)(e) of the
said Act that the defendant has not infringed the plaintiff’s registered trade
mark RANA and that both the plaintiff and the defendant can co-exist in the
market using their respective marks. The plaintiff also propounded the view
that the defendant’s registration under class 19 is invalid as the said class
does relate to to metallic products at all.
19. To examine the relative
merits of these contentions a brief survey of the relevant provisions of the
said Act would be necessary. Section 28
(1)
of the said act prescribes that, subject to the other provisions of the said
act, the registration of a trademark, if valid, gives to the registered
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proprietor
of the trademark, the exclusive right to the use of the trademark "in
relation to the goods or services in respect of which the trademark is
registered" and to obtain relief in respect of infringement of the
trademark in the manner provided by the act. Sub-section (2) stipulates that
the exclusive right to the use of a trademark given under sub-section (1) shall
be subject to any conditions and limitations to which the registration is
subject. As already indicated earlier, sub-section (3) deals with a situation
where two or more persons are registered proprietors of trademarks which are
identical to or nearly resemble each other. In such a situation, the exclusive
right to the use of any of those trademarks shall not be deemed to have been
acquired by anyone of those persons as against the other “merely by
registration of the trademarks”. Of course, each of those persons would
otherwise have 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. It is noteworthy that the registered proprietor of a
trademark gets the exclusive right to use the trademark in relation to the
goods or services in respect of which the trademark is registered. This
means that a trademark is registered not merely in favour of a person but also
bears relation to goods or services. So, while a particular trademark may be
registered in favour of one person in respect of certain goods, that person may
not have the exclusive right to use the mark in respect of other goods. This
means that under normal circumstances the right to use a trademark to the
exclusion of others is only in respect of the goods or
IA No. 9165/2007 & IA 10779/2007 in
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services
in connection with which the trademark is registered. There are exceptions
which shall be alluded to presently.
20. Section 29 (1) of the
Trade Marks Act, 1999, which deals with the issue of infringement of registered
trade marks indicates that a 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. So, for an infringement
action, it must be shown that --(1) the registered trade mark is being used by
a person other than the registered proprietor or by a person permitted to use
the same; and (2) the use must be in the course of trade; and (3) in
relation to goods or services in respect of which the trade mark is registered.
This means that if a trade mark is registered in respect of a certain set of
goods or services, then the use of that trade mark by a person other than the
registered proprietor or by a person permitted to use the same would not, ipso
facto, amount to infringement if such person uses the trade mark in
relation to an entirely different set of goods or services. However, sub-section
(2) of section 29 of
the said Act brings within the fold of
infringement, uses of the registered trade mark by a person other than a
registered proprietor in respect of “similar” goods also in three
different sets of circumstances --where there is (a) identity with the
registered trade mark and similarity of the goods or
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.19 of 33
services
covered by the registered trade mark; or (b) similarity to the registered trade
mark and identity or similarity of goods or services covered by such
registered trade mark; or (c) identity with the registered trade mark and
identity of the goods or services covered by the registered trade mark --and
there is likelihood of confusion being caused on the part of the public or
the likelihood of such user having an association with the registered trade
mark. Sub-Section (3) of Section 29 of the said Act provides that where there
is an identity of the impugned trade mark with the registered trade mark and
there is also an identity of the goods or services covered by the registered
trade mark, the court shall presume that it is likely to cause confusion on the
part of the public. By virtue of sub-section (4) of Section 29, there may be
infringement of a registered trade mark even where the mark is used in relation
to goods or services which are not similar to those for which the trade
mark is registered provided, inter alia, 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.
21.
A reading of the relevant provisions of Sections 28 and 29 of the said Act,
therefore, reveals that the registration of a trade mark is linked to the goods
or services in respect of which the trade mark is registered. If a person uses
a registered trade mark in relation to goods and services which are different
and distinct from the goods or services in respect of which the trade mark is registered,
then he would not be infringing the registered trade
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mark
except in the case covered by Sub-Section (4) of Section 29 which requires that
the registered trade mark must have a reputation in India and the use of the
mark without due cause would be amounting to taking unfair advantage of or
would be detrimental to the distinctive character or repute of the registered
trade mark.
22.
Since the defendant has taken the defence of section 30 (2) (e), it also needs
to be taken note of. This provision stipulates that a registered trade mark is
not infringed where there is use of a registered trade mark, being one of two
or more trade marks registered under the said Act which are identical or nearly
resemble each other, in exercise of the right to the use of that trade mark
given by registration under the said Act. Thus, where there are two registered
trade marks, which are identical or nearly resemble each other, the use of such
trade marks by their respective registered proprietors would not amount to
infringement of the others' registered trade mark. But, when can there be
registration of marks which are identical or similar? Section 9 of the said
Act, inter alia, absolutely prohibits the registration of trade marks 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. Section 11(1), save as provided in section 12, also conditionally
prohibits the registration of a trade mark if, because of its (a) identity with
an earlier trade mark and similarity of goods or services covered by the trade
mark; or (b) similarity to an earlier trade mark and the identity or similarity
of the goods or services covered by the
IA No. 9165/2007 & IA
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trade mark, there exists a likelihood of
confusion on the part of the public, which includes the likelihood of association
with the earlier trade mark. Section 12 permits the registration of trade marks
which are identical or similar (whether any such trade mark is already
registered or not) in respect of the same or similar goods or services in cases
of honest concurrent use or of other special circumstances. It is
obvious that where identical or similar trade marks are registered in relation
to the same or similar goods or services in exercise of the powers under
sections 11 and 12, the use of such marks by their respective proprietors would
not amount to infringement. This is what is specifically provided for under
section 30(2)(e).
23. But, does section 30(2)(e) also cover cases
where identical or similar trade marks are registered in respect of different
classes of goods or services? The answer is – no. Section 28 deals with the
rights conferred by registration. And, it has already been clarified that the
use of a registered mark must be in relation to the goods or services in
respect of which the trade mark is registered. It follows that where the goods
or services, in respect of which two or more identical or similar (nearly
resemble) marks are registered, are different then section 30 (2)(e) does not
come into play. The question of infringement would, itself, not arise as the
registered marks would be used in respect of different classes of goods or
services by their respective proprietors. A couple of examples would further
clarify the position:
IA No. 9165/2007 & IA 10779/2007 in
CS(OS)1459/2006 Page No.22 of 33
Example
1: Assume
that a trade mark “M” has been registered in favour of Mr “X” as well as in
favour of Mr “Y” in relation to the same goods or services. In such a
situation, by virtue of section 28(3), neither Mr “X” nor Mr “Y” can claim
exclusivity against each other for the use of the said mark in relation to the
goods or services for which it was registered. If Mr “X” were to bring an
action for infringement against Mr “Y”, the latter would have a complete
defence under section 30(2)(e).
Example
2: Let us
now assume that there are two different goods “A” and “B” in respect of which
the same trademark “M” has been registered in favour of different persons “X”
and “Y”, respectively. Here, although the same mark “M” is registered in favour
of both Mr “X” and Mr “Y”, Mr “X” has exclusive right to use the same in
respect of good “A” and Mr “Y” has exclusive right to use the said mark in
respect of good “B”. Therefore, section 28(3) is not attracted. Moreover, if Mr
“X” were to bring an action of infringement against Mr “Y” alleging that Mr “Y”
was using the said mark “M” in relation to good “A”, then, the defence of
section 30(2)(e) would not be available to Mr “Y” as he does not have any right
to use the mark “M” in relation to good “A”, his registration being in relation
to good “B”.
24.
At this point, it would be appropriate to refer to Section 7 of the
said
Act which provides for classification of goods and services. Sub-
Section
(1) stipulates that the Registrar shall classify the goods and services,
as
far as may be, in accordance with the international classification of goods
and
services for the purposes of registration of trade marks. Rule 22 of the
Trade
Marks Rules, 2002 provides that for the purposes of registration of
trade
marks, goods and services shall be classified in the manner specified
in
the Fourth Schedule. Clearly, registration of trademarks is in relation to
specified
goods or services. Goods and services have been classified. It is
obvious
that, prima facie, goods falling under one class would be different
from
goods falling under another class. Ordinarily, when registration of a
trade
mark is granted under one class of goods, it does not cover goods of
another
class.
IA No. 9165/2007 & IA 10779/2007 in
CS(OS)1459/2006 Page No.23 of 33
25. The
plaintiff is the registered proprietor of the mark RANA
w.e.f.
14.12.1994 in relation to “steel rolled products, CTD bars, angles,
1
flats, rounds, channels and girders” falling under class 6of
the Fourth Schedule to the Trade Marks Rules, 2002. The defendant does not have
a registered trade mark in respect of goods falling under class 6 of the said
2
schedule. However, as things stand today, the
defendant is the registered proprietor of the mark “RANATOR” w.e.f. 26.04.2001
in respect of
3
“Building materials (steels)” falling under
class 19. Whether the registration is liable to be cancelled, as alleged by the
plaintiff, or not, as contended by the defendant, is not a matter for
consideration before this court. For the present, in view of section 31 of the
said Act, the registration of the trade mark is prima facie evidence of
its validity. So, considering the defendant’s registration to be valid, for the
time being, it must be kept in mind that the mark RANATOR is registered in
class 19 and not class 6. The plaintiff has brought this suit claiming its
exclusive right to the use of the trade mark RANA in relation to “steel
rolled products, CTD bars,
1“6. Common metals and their alloys; metal building
materials; transportable buildings of metal; materials of metal for railway
tracks; non-electric cables and wires of common metal; ironmongery, small items
of metal hardware; pipes and tubes of metal; safes; goods of common metal not
included in other classes; ores.”
2 The plaintiff has filed a rectification application under
section 57 of the said Act before the Intellectual Property Appellate Board,
Chennai seeking cancellation/removal of the defendant’s registration on various
grounds. The application was filed 11.09.2007, after the filing of the written
statement in this case. It is alleged by the plaintiff that it became aware of
the defendant’s said registration only upon reading the written statement. The
said application is pending.
3 “19. Building materials (non-metallic), non-metallic rigid pipes
for building; asphalt, pitch and bitumen; non-metallic transportable buildings;
monument, not of metal.”
IA No. 9165/2007 & IA 10779/2007 in CS(OS)1459/2006Page No.24 of 33
angles, flats, rounds, channels and girders” falling under class 6 of
the Fourth Schedule to the Trade Marks Rules, 2002. The defendant, admittedly,
does not have any registration in class 6 (its registration being under class
19). Therefore, the situation which presents itself in the case at hand is
similar to the situation explained in Example 2 above. Consequently, neither is
section 28(3) attracted nor can the defendant take refuge under section
30(2)(e).
26. In Ramdev Food Products (P) Ltd. v.
Arvindbhai Rambhai Patel: (2006) 8 SCC 726 ( at page 754), the
Supreme Court observed that the purpose of a trade mark is to establish a
connection between the goods and the source thereof which would suggest the
quality of goods and that if the trade mark is registered, indisputably the
user thereof by a person who is not otherwise authorised to do so would
constitute infringement. It was further noted that a proprietor of a registered
trade mark indisputably has a statutory right thereto. In the event of such use
by any person other than the person in whose name the trade mark is registered,
he will have a statutory remedy in terms of Section 29 of the 1958 Act. The
registration of the trade mark RANA in relation to “steel rolled products,
CTD bars, angles, flats, rounds, channels and girders” falling under class
6 has established a connection between such goods and the plaintiff who
manufactures them. Whenever such goods are found in the market and they bear
the mark RANA, the prospective consumer connects the goods with the source,
that is, the plaintiff (RANA STEELS). If another person such as the defendant
IA No.
9165/2007 & IA 10779/2007 in CS(OS)1459/2006 Page No.25 of 33
uses the same mark or a similar mark in relation to
the very same goods (steel rolled products, CTD bars, angles, flats, rounds,
channels and girders falling under class 6) then, that would be seen as an
interference and an attempt at breaking the connection between the goods
bearing the mark RANA and the source, the plaintiff. In such a situation, the
plaintiff would have the statutory remedy of seeking injunction for preventing
further infringement.
27. The plaintiff has certainly established a prima
facie case in its favour. Because of registration and by virtue of section
28 (1) of the said Act, an exclusive right of using the trade mark RANA has
been conferred upon the plaintiff in relation to steel rolled products, CTD
bars, angles, flats, rounds, channels and girders falling under class 6.
And, such right is absolute [see: Ramdev Food Products (supra)(para
83)]. As observed in Ramdev Food Products (supra)(para
82), what is needed by way of cause of action for filing a suit of infringement
of trade mark is use of a deceptively similar mark which may not be identical.
It was contended on behalf of the plaintiff that the marks RANA and RANATOR are
identical inasmuch as TOR is merely descriptive of a kind of high strength
steel. While this may be debatable, there cannot be any escape from the fact
that RANATOR is deceptively similar to RANA. It is interesting to note that
though the defendant’s registration under class 19 is in respect of the trade
mark RANATOR used as one word, the defendant has been using it in the form of
two words RANA TOR. This clearly signifies the defendant’s
IA No.
9165/2007 & IA 10779/2007 in CS(OS)1459/2006 Page No.26 of 33
intention to break up the mark RANATOR into RANA
and TOR. It is this separation of RANA and TOR which, in fact, lays emphasis on
the mark RANA because the other word TOR, as is commonly understood, is merely
descriptive of a type of steel. The moment this happens there is every
possibility that the mark RANA TOR used by the defendant is confused by the
public at large with the plaintiff’s registered trade mark RANA which is used
for the plaintiff’s TOR steel products.
28. The balance of convenience is also in favour of
the plaintiff. The plaintiff’s user is since 1993. Its registration relates
back to 14.12.1994. As discussed above the plaintiff has been extensively
advertising its products under the said mark RANA in Punjab Kesari (04.11.1993
& 21.10.1993 and 1994), Amar Ujala (1993-94), Hindi Magazine Parvat Piyush
(September, 2006), TV advertisements in Sun TV channel at Chennai (March,
2006). On the other hand, the defendant’s alleged user (even as per its own
admission in its application for registration) is from the year 2001 and its
registration under class 19 relates back to 26.04.2001. Even the user of the mark
by the defendant after 2001 is suspect. This aspect will be discussed in some
detail later. The defendant’s name is RAN India Steels Pvt Ltd and it sold its
products (including TOR steel) under the mark RAN. There appears to be no
reasonable cause for its subsequent adoption of the mark RANA TOR when the mark
RANA was already being used by the plaintiff and for the registration of which
the plaintiff’s application was pending since
IA No.
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14.12.1994.
Then, there is the circumstance of the defendant not opposing the plaintiff’s
application for registration in relation to goods under class 6 but, in
applying for registration of the mark RANATOR in class 19. The plaintiff has a
valid registration in relation to steel rolled products, CTD bars, angles,
flats, rounds, channels and girders falling under class 6. The defendant
has a registration under class 19 but not in relation to steel rolled
products, CTD bars, angles, flats, rounds, channels and girders falling
under class 6. It is obvious, that it is the plaintiff’s statutory right which
requires protection and not the defendant’s improper use of the mark RANA TOR
in relation to steel rolled products, CTD bars, angles, flats, rounds,
channels and girders falling under class 6. The balance of convenience is
clearly in favour of the plaintiff and against the defendant. Furthermore, in
an infringement action, when the plaintiff has demonstrated that it has a prima
facie case and also that the balance of convenience lies in its favour, not
granting an interim injunction restraining the defendant from further
infringing the plaintiff’s registered trade mark would result in causing
irreparable injury to the plaintiff.
29.
For all these reasons, even de hors the question of passing off, I am of
the view that the plaintiff is entitled to an order confirming the ex parte
injunction dated 14.08.2007, though, with a slight modification. The said order
was in respect of “metal building materials, pipes, tubes of steel which
include rods, flats, pipes, angles and building steels made of mild steel and
related/ allied products”. But, as noted above the plaintiff’s
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.28 of 33
registration is only in relation
to “steel rolled products, CTD bars, angles, flats, rounds, channels and
girders falling under class 6”. Consequently, the plaintiff is entitled to
an interim injunction order only in respect of “steel rolled products, CTD
bars, angles, flats, rounds, channels and girders
falling
under class 6”.
Suppression:
30.
It has been submitted on behalf of the defendant that the plaintiff had
deliberately withheld and suppressed the factum of the defendant’s registration
from this court and that had the full facts been disclosed, this court would
not have granted the ex parte ad interim injunction to the plaintiff.
Suppression of facts is undoubtedly a good ground for refusal of the equitable
relief of injunction. That is a principle which is well engrained in our
judicial system. But, the question is --was there any suppression on the part
of the plaintiff? First of all, the plaintiff’s explanation is that the
defendant’s registration was in an entirely different class of goods with which
the plaintiff is not concerned. Secondly, the plaintiff was not aware of the
defendants registration under class 19. It, apparently, came to know of the
same through the defendant’s written statement filed in the present suit. Prima
facie, I would tend to believe the plaintiff. There are reasons for this.
It must be remembered that in 2005 the defendant had also filed and application
for registration of the mark RANA TOR under class 6. The plaintiff filed an
opposition to the same. In the counter-statement to the plaintiff’s said
opposition, the defendant made no
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.29 of 33
mention
that it had applied for the same mark in relation to goods falling under class
19. The plaintiff was interested in goods and services under class 6 and not
under other classes including class 19. Therefore, it is not unreasonable for
the plaintiff to have not known about the defendant’s registration under class
19. Moreover, after the filing of the written statement, from which the plaintiff
allegedly derived knowledge of the defendant’s registration, the plaintiff has
filed a rectification application under section 57 of the said Act before the
Intellectual Property Appellate Board, Chennai seeking cancellation/removal of
the defendant’s registration on various grounds. These actions, the filing of
the opposition to the defendant’s application in relation to class 6 goods and
the filing of the rectification application, clearly demonstrate that the
plaintiff is quick to guard its rights flowing from its registration. The sequitur
is that the plaintiff was unaware of the defendant’s said registration and
could not have reasonably been expected to have known about it.
Defendant’s
conduct:
31.
In Gujarat Bottling Co. Ltd v. Coca Cola Company: (1995) 5 SCC 545
(para 47), the Supreme Court, in the context of an application under
Order 39 Rule 4 for vacating a temporary injunction, observed:-
“Under Order
39 of the Code of Civil Procedure, jurisdiction of the Court to interfere with
an order of interlocutory or temporary injunction is purely equitable and,
therefore, the Court, on being approached, will, apart from other
considerations, also look to the conduct of the party invoking the jurisdiction
of the Court, and may refuse
IA No. 9165/2007 & IA 10779/2007 in
CS(OS)1459/2006 Page No.30 of 33
to interfere
unless his conduct was free from blame. Since the relief is wholly equitable in
nature, the party invoking the jurisdiction of the Court has to show that he
himself was not at fault and that he himself was not responsible for bringing
about the state of things complained of and that he was not unfair or
inequitable in his dealings with the party against whom he was seeking relief.
His conduct should be fair and honest. These considerations will arise not only
in respect of the person who seeks an order of injunction under Order 39 Rule 1
or Rule 2 of the Code of Civil Procedure, but also in respect of the party
approaching the Court for vacating the ad interim or temporary injunction order
already granted in the pending suit or proceedings.”
32. The defendant has moved
the application under Order 39 Rule 4 for vacating the ex parte ad interim injunction
granted in favour of the plaintiff. So, the defendant’s conduct is as much
under the scanner as is the plaintiff’s. This takes me to the consideration of
the invoice-cum-delivery challans filed by the defendant with the object of,
perhaps, showing user of the mark 'RANA TOR' since 2001. It has been noticed by
me in the earlier part of this judgment that the defendant has filed such
challans for the period 16.04.2000 to 24.07.2007 at pages 1 to 210 of the
defendant’s documents. In the challans prior to May, 2001 there is no mention
of the marks RANA or RANATOR. In the challans for the period May, 2001 to June,
2004, the expression “(RANA TOR TESTED)” is apparently printed subsequently and
using a different printing device. This becomes clear on comparing the challans
for this period with the challans for July, 2004 onwards where the said
expression appears to have been printed contemporaneously with the other matter
filled therein and using the same printing device. By way of illustrative
samples, photographs of challans for
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.31 of 33
the
periods May, 2001 – June, 2004 and July, 2004 onwards are given below:
Photograph
1 [sample of an invoice-cum-delivery challan during May, 2001 – June, 2004]
Photograph 2
[sample of an invoice-cum-delivery challan during July, 2004 onwards]
33.
These photographs reveal that the expression “(RANA TOR TESTED)” is apparently
superimposed and in different typeface in photograph 1. Whereas in photograph
2, the said expression and the rest of the typed matter match in ribbon
intensity, alignment as well as in typeface.
IA No. 9165/2007 & IA
10779/2007 in CS(OS)1459/2006 Page No.32 of 33
This
does give rise to grave suspicion as regards the challans for the period May,
2001 to June, 2004. Perhaps there is a plausible reason for this, but, none was
forthcoming on the part of the defendant in the course of arguments. However,
as I have already concluded that the plaintiff is entitled to interim
injunction, I shall not dwell on this matter further at this stage and leave
the matter to be conclusively dealt with at the trial stage.
Conclusion:
34.
The ex parte injunction granted on 14.08.2007 is confirmed till the
disposal of the suit, though, with the modification that the injunction would
be only in respect of “steel rolled products, CTD bars, angles, flats,
rounds, channels and girders falling under class 6”. I.A. 9165/2007 (under
Order 39 Rules 1 & 2, CPC) stands allowed to this extent. I.A. 10779/2007
(under Order 39 Rule 4 CPC) is dismissed. The parties shall bear their own
costs.
Sd/
BADAR
DURREZ AHMED ( JUDGE )
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