KIWI FOODS(INDIA) PVT LTD VS DUGAR SPICES

COMMENT: IN THIS CASE THE HON'BLE HIGH COURT OF DELHI HAS RETURNED THE FINDING THAT USE OF TRADEMARK IN A CALENDER DOES NOT AMOUNT TO BE USE OF A TRADE MARK.



IN THE HIGH COURT OF DELHI AT NEW DELHI
  CS(OS) 2426/2009

  M/S KIWI FOODS(INDIA) PVT LTD

  ..... Plaintiff

  Through: Mr. A.A. Suman and Mr. Santosh Kumar, Advocates




versus



  M/S DUGAR SPICES and EATABLES PVT LTD

  ..... Defendant

  Through: Mr. Umesh Mishra, Advocate



  CORAM:

   HON'BLE MR. JUSTICE VIPIN SANGHI



   O R D E R

   24.07.2013



  I.A. No.16410/2009

  I have heard learned counsel for the parties. The case of the plaintiff
  is that it is engaged in the business of manufacturing and marketing of
  confectionary, snacks and namkeens and other related goods. The
  plaintiff claims that it has adopted the mark FUN POP since April 2005
  and has also been using FUN STAR and FUN RINGS. The plaintiff applied for
  registration of FUN POP on 08.04.2005 and for FUN STAR on 12.11.2007.
  FUN RINGS is applied for on 06.10.2008. All these applications were in
  respect of Class 30 and they are still pending.

  The plaintiff has placed on record the documents to show that it
  has been using, inter alia, FUN RINGS since 2008. Certain invoices
  issued by the plaintiff to the purchasers have been placed on record.
  The plaintiff has also filed the packaging used by both the parties. A
  bare comparison of the packaging adopted by the defendant shows that
  there is stark similarly in the two, and it is evident that by adopting
  similar packaging, the defendant has sought to pass of its products as
  that of the plaintiff. The words FUN and RINGS have been written more or
  less in the same font and in both the packaging, above the word FUN,

  there is a smiling face. The puffs which are sold in the packaging are also displayed on the packaging. In these circumstances, the plaintiff
  seeks ad interim injunctive relief.

  The case of the defendant, firstly, is that the plaintiff cannot
  appropriate the word FUN, which is generic. He further submits that the
  defendant has been using FUN RINGS since 2006. He, therefore, submits
  that the defendant is entitled to continue to use the mark FUN RINGS. In
  support of his case that the defendant has been using FUN RINGS since
  2006, the defendant has placed on record the calendar stated to have been
  circulated by it in the year 2006 and 2007. In these calendars apart
  from other products, the product FUN RINGS has also been displayed.
  However, the other documents placed on record, such as the invoices
  issued by the defendant show that the use of the mark FUN RINGS by the
  defendant is in the year 2009 and not before that.

  There appears to be merit in the submission of the defendant that
  the plaintiff cannot appropriate the word FUN in respect of the goods in
  question. At the same time, the combination of FUN with RINGS as FUN
  RINGS appears to have been adopted by the plaintiff earlier than adoption
  of the same by the defendant. Mere use of the picture of FUN RINGS on
  the calendar of the year 2006 does not establish the actual user of the
  said mark on the product by the defendant. Therefore, the plaintiff is
  entitled to protection in respect of FUN RINGS. Moreover, the packaging
  adopted by the defendant, as aforesaid, is very similar to that of the
  plaintiff.

  Prima facie, it appears that the defendant has sought to pass of
  its goods as that of the plaintiff. Accordingly, the defendant is
  restrained from using, selling, displaying, advertising by visual audio
  or print mode with the mark/label FUN RINGS or any other trademark/label
  or packaging which is identical or deceptively similar to that of the
  plaintiff in respect of confectionaries, snacks and namkeens and other
  like products.

  Application stands disposed of.





  VIPIN SANGHI, J

  JULY 24, 2013

  sr

  $ 3