SHREEDHAR JUDGMENT

COMMENT: In this Judgment, the Hon’ble Delhi High Court has laid down the following important proposition.

 

Section 28 (3) of the TM Act cannot be interpreted in a manner that would be contrary to the above scheme of the Act and Rules. In other words Section 28 (3) of the TM Act should be understood as not permitting an infringement action being brought by one registered proprietor against another only where two conditions are satisfied: one, that the two registered marks "are identical with or nearly resemble each other"; and two, they are in respect of the same class of  goods and services. This will be in conformity with the object of Section 28 (1) read with Section 29 of the TM Act which seeks to grant protection to the registered proprietor of a mark from infringement in respect of the goods for which registration is granted.

 

 

IN THE HIGH COURT OF DELHI AT NEW DELHI

 

CS (OS) No. 1627 of 2011

 

Reserved on: August 07, 2013

 

Decision on: September 4, 2013

 

A. KUMAR MILK FOODS PVT. LTD. ..... Plaintiff Through: Mr. S.K. Bansal, Mr. Pankaj

Kumar, Mr. Santosh Kumar and Mr. Ajay Amitabh, Advocates.

 

Versus

 

VIKAS TYAGI & ANR. ..... Defendants Through: Mr. U.S. Sharma, Advocate.

 

CORAM: JUSTICE S. MURALIDHAR

 

JUDGMENT

 

04.09.2013

 

IA Nos. 10477 of 2011 (under Order XXXIX Rules 1 & 2 CPC) & 6818 of 2013 (under Order XXXIX Rule 3A CPC)

1. The aforementioned suit has been filed by M/s. A. Kumar Milk Foods Pvt. Ltd. against Mr. Vikas Tyagi (Defendant No.1) and M/s. Shreedhar Dairy Products (Defendant No.2), both at Meerut, for a decree of permanent injunction restraining the Defendants from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark SHREEDHAR or any other word/mark identical with and/or deceptively similar word/mark to the Plaintiff's trade mark/label/trade name/copyright in SHRIDHAR in relation to their impugned goods and business of dairy products and other related/allied products and from doing any other acts or deeds amounting to or likely to result in infringement of the Plaintiff's aforesaid registered trade mark SHRIDHAR; passing off or violating the Plaintiff's said trade mark SHRIDHAR; violation of Plaintiff's proprietary rights in its trade name SHRIDHAR.

2. The case of the Plaintiff is that it is the proprietor of trade mark SHRIDHAR in relation to ghee, edible oils, milk, dairy products and other allied and related goods. The Plaintiff has been carrying on the aforementioned business in the name and style of M/s. A. Kumar Milk Foods Pvt. Ltd. having its office at Khari Baoli, Delhi and a works office at 1Km. Ikonda Road, village Mubarek Pur, Joya, Distt. J.P. Nagar, Uttar Pradesh. The Plaintiff states that through its predecessor- in-interest it adopted the trade mark SHRIDHAR in 2003 and has been using it same ever since. The trade mark is registered under No. 1250774 in Class-29 under the Trade Marks Act, 1999 ('TM Act'). The trade mark was registered in the name of Mrs. Sadhana Goel trading as M/s. Shree Om Trading. The Plaintiff claims to have acquired the rights in the said trade mark by virtue of a deed of assignment dated 19th January 2010. An application has been filed with the Trade mark Registry for taking on record the said assignment. It is stated that the Plaintiff company was formed having common directors from the family of Mrs. Sadhana Goel which assigned the said trade mark to the Plaintiff company. The Plaintiff claims to be using the trade mark with the permission and consent of Mrs. Sadhana Goel.

3. The Plaintiff claims that the trade mark SHRIDHAR has become distinctive and is associated with the aforementioned goods of the Plaintiff on account of its long, continuous and extensive use. The Plaintiff claims to have priority in adoption and use of the said trade mark and it states to have acquired goodwill and reputation locally and internationally. The Plaintiff claims that the mark is a well known trade mark within the meaning of Section 2(1) (zg) of the TM Act. The Plaintiff claims to be a market leader and one of India's largest companies engaged in the manufacturing, distribution and sale of the aforementioned goods and business. It is claimed that the Plaintiff's products are known for their superior quality and reliability. The Plaintiff claims to be the exclusive proprietor and owner of the aforementioned trade mark and trade name and copyright therein.

4. According to the Plaintiff, Defendant No.1, Mr. Vikas Tyagi, is the proprietor of Defendant No.2, M/s. Shreedhar Dairy Products, at Meerut and is also engaged in the same line of business. The Defendant started using the trade mark SHREEDHAR (hereafter impugned trade mark) in relation to the impugned goods. It is stated that the use of the impugned trade mark by the Defendants in relation to the impugned goods is identical with and deceptively similar phonetically, visually, structurally and in its basic idea and essential features to the Plaintiff's trade mark SHRIDHAR. The Plaintiff states that the Defendants have copied the artistic feature involved in the Plaintiff's trade mark thus infringing the Plaintiff's copyright in the said trade mark. It is stated that a wrong message is conveyed to the public and customers that the Plaintiff is the source and origin of the impugned goods.

5. The Plaintiff states that the impugned goods and business of the Defendants are same/similar/allied/cognate to that of the Plaintiff's business. It is stated that Defendants are also reproducing the impugned trade mark on their labels and packaging materials etc. and are otherwise dealing with it in the course of trade without the leave and license of the Plaintiff thereby infringing the Plaintiff's aforesaid trade mark. It is also stated that the Defendants are passing off their impugned goods and business as that of the Plaintiff as well as diluting the Plaintiff's proprietary rights therein. The use by the Defendants of the impugned trade mark is characterised by the Plaintiff as dishonest and fraudulent and with a view to taking advantage and to trade upon the established goodwill, reputation and proprietary rights of the Plaintiff. It is stated that by the said use and adoption of the trade mark, deception and confusion in the market is ensuing or is likely to so ensue.

6. The Plaintiff states that in September 2010, it learnt of the use by the Defendants of the impugned trade mark/label through the Plaintiff's distributors and dealers and that the Defendants were about to launch their products under the impugned trade mark but no such product has yet been launched. A search in the Trade Marks Registry revealed that the Defendant has applied for registration of the impugned trade mark in Class-29 and the Plaintiff filed an opposition thereto in October 2010. During March-April 2011, the Plaintiff came to know that the Defendant has launched the impugned product under the impugned trade mark. Claiming that the Court has territorial jurisdiction within the meaning of Section 134(2) of the TM Act, the present suit has been filed.

7. On 8th July 2011, while directing summons to be issued in the suit an interim order was passed by the Court restraining the Defendants from using, selling, soliciting, exporting, etc. impugned goods using the impugned trade mark SHREEDHAR. A Local Commissioner ('LC') was appointed to visit the premises of the Defendants and seize the impugned goods involving incriminating materials like moulds, packaging material, pouches, cartons, blocks, containers, display boards, sign boards, advertising material, dies or blocks, semi- finished, unfinished, packed, unpacked impugned goods or any other documents bearing the trade mark SHREEDHAR.

8. Pursuant to the above order, the LC filed a report on 3rd August 2011 stating that when he went to the premises at Meerut, the property was found locked. Thereafter, the LC reached the Defendant's residence and thereafter the premises were opened by the Defendants. It was found that the dairy work in the name of SHREEDHAR was being run by the Defendants. Defendant No.1 informed the LC that he is not maintaining the books of accounts. The LC noticed that there were about 20,000 empty boxes with the name 'Shreedhar Moderate Fat'. They were sealed and given on superdari to the Defendant No.1 and the photographs of the boxes were taken. One container of ghee was also found in the name of SHREEDHAR ghee and that too was sealed and given to the Defendant.

9. A written statement has been filed on behalf of the Defendants on 3rd October 2011. It is claimed that the Defendants are engaged in the business of manufacturing, packaging and trading in the food articles, especially milk and milk products since 1996. The Defendants claimed to have commenced the use of the word SHREEDHAR as part of their trading style namely SHREEDHAR DAIRY PRODUCTS since October 2003. It is claimed that the Defendants are using the word SHREEDHAR as part of their trading style prominently since October 2003 and that the said mark is indicative of the identity and goodwill of the Defendants. An advertisement dated 27th October 2003 in 'Vyapar Bharti' (Deepawali Special Edition- 2003), various returns filed and licences obtained by the Defendants from the concerned government departments under the Defendant's trading style M/s. SHREEDHAR DAIRY PRODUCTS have also been filed in support of the claim to establish use and reputation of the trade name SHREEDHAR. It is claimed that the Defendants began trading under the name and style of M/s. SHREEDHAR DAIRY PRODUCTS on 1st April 2004 and commenced the commercial use of the same since 1st May 2004. The fact of applying for the registration of trade mark SHREEDHAR under application No. 1823896 in Class- 30 advertised in the Trade Marks Journal No. 1444 dated 16th July 2010 is admitted. It was admitted that since the advertisement was not opposed by any person including the Plaintiff, the said trade mark SHREEDHAR was registered in the name of the Plaintiff. Copies of the registration certificate as well as its details have been filed. It is stated that Defendants also sought registration of their trade mark SHREEDHAR in Class-29 in respect of milk and milk products under No. 1823897 which was advertised in the Trade Marks Journal No. 1444 dated 16th July 2010. The said registration is still pending. It is acknowledged that the said advertisement has been opposed by the Plaintiff.

10. The Defendants claim that since 1st May 2004, they have been continuously and extensively using the trade mark SHREEDHAR in respect of their products including dairy products especially the subject product 'ghee'. The Defendants claim to be using the said mark in English script as well as in Hindi in Devnagri script on the labels of the packaging of their products. A sampling of the labels have been filed in respect of the subject product i.e. ghee. The Defendants claim to have been selling their goods only in the state of Uttar Pradesh. It is stated that Defendant No.1 never sold "his products in the NCT of Delhi". The Defendants claim that they have no distributor, dealer or any other out let authorised by them for the sales of their products in the NCT of Delhi and that the Defendant No.1 never intended "to sell his products in the NCT of Delhi". In para 'J' of the written statement, the annual sales figures of the Defendants' dairy products for the years 2003-04 up to 30th June 2011 has been set out. Some invoices have been filed to establish the Defendants sale from May 2004 onwards.

11. On the above basis, the Defendants contend that the suit is barred by the principles of waiver, acquiescence and estoppel. It is submitted that the Plaintiff has filed the present suit 8 years after the Defendants commenced using SHREEDHAR as a prominent feature of the trade name SHREEDHAR DAIRY PRODUCTS and this was within the knowledge of the Plaintiff. It is stated that in respect of the cause of action of passing off, the Court has no jurisdiction as the Defendants are not residing or carrying on business within the jurisdiction of the Court. It is stated that the Plaintiff has adduced no evidence in respect of any cause of action of infringement or passing off within the jurisdiction of this Court. The Defendants claim to have honestly and independently adopted the use of the mark SHREEDHAR. The Defendants claim to be a prior user of the trade mark SHREEDHAR as compared to the Plaintiff. It is contended that there is no question of the Defendants passing off their goods as that of the Plaintiff. On the contrary, the Plaintiff is passing off its goods as that of the Defendants since the Defendants are the prior user. It is claimed that the Plaintiff has actually copied the Defendants' trade mark by subsequent adoption and use of the identical trade mark SHRIDHAR in respect of the same goods as that of the Defendants. The Defendants too claim to have acquired reputation and goodwill in respect of their products under the trade mark SHREEDHAR by virtue of its prior, long, continuous and voluminous use since 1st May of 21 2004. It is stated that the Defendants are separately seeking removal of the Plaintiff's registration under No. 1250774 for the trade mark SHREEDHAR in view of the prior use of the mark by the Defendants.

12. In the replication filed by the Plaintiff, the Plaintiff has reiterated the averments in the plaint and denied what has been stated in the written statement. It is stated that the Defendants' advertisement in Vyapar Bharti dated 27th August 2003 is a fabricated document. The appropriation by the Defendants of the word SHREEDHAR as trade mark since 1st April 2004 and the commercial use of the same since 1st May 2004 is denied. It is pointed out that the registration of the mark SHREEDHAR in favour of the Defendants under Class-30 under No. 1823896 has no territorial limitation and is for the whole country. It is stated that the Defendants are soliciting trade and business of their product under the impugned trade mark. It is stated that the Plaintiff has already taken steps for cancellation of the said registration. The Plaintiff reiterates that it has been using the trade mark SHRIDHAR since 20th November 2003 and, therefore, is the prior user.

13. The Plaintiff filed Crl. M.A. No. 415 of 2012 under Section 340 read with Section 195(1) (b) of the CrPC on 5th January 2012. It was stated in the said application that the documents filed by the Defendants were ex facie fabricated. In particular, it was stated that documents at pages 41 to 50 of the list of documents dated 22nd November 2011 filed by the Defendants pertaining to copies of some invoices of sales of the Defendants along with copies of bill book No. 0116 of Krishi Utpadan Mandi Samiti, Meerut for the year 2004-05 was never issued to the Defendants. It was further alleged that the copies of all trade literature, price lists, bills, and challans of the period prior to 2008 have been created for the purposes of the present suit. Plaintiff's counsel filed an RTI application dated 28th November 2011 enquiring whether Krishi Utpadan Mandi Samiti has issued such a bill book. The reply of the said Samiti dated 9th December 2011 stating that they have not issued such bill book has been placed on record.

14. In reply to the said application, it is stated that the Defendants personally visited the office of the Samiti and showed the bill book No. 0116 issued in the year 2004 by the concerned authority. The Samiti is stated to have realised its mistake since no year was stated by the learned counsel for the Plaintiff in its application. A revised letter dated 18th January 2012 issued by the Samiti confirming that it had issued the said bill book to the Defendants has now been placed on record.

15. On 7th September 2012 as far as Crl. MA No. 415 of 2012 is concerned, the Court directed that the application would be considered at the time of final hearing of the suit.

16. The Defendants filed IA No. 6818 of 2013 for advancing the date of hearing. This application was allowed and the date was advanced to 1st August 2013. IA No. 12053 of 2013 was then filed by the Plaintiff for postponing the hearing. The date was then fixed as 23rd September 2013 but again on the request of the Defendants, the applications were directed to be listed on 7th August 2013 for hearing.

17. This Court has heard the submissions of Mr. S.K. Bansal, learned counsel for the Plaintiff and Mr. U.S. Sharma, learned counsel appearing for the Defendants.

18. The narration of the above facts shows that while the Plaintiff's trade mark SHRIDHAR is registered under Class-29 in respect of ghee, milk and dairy products as of 20th November 2003, the Defendants' trade mark SHREEDHAR is registered under Class-30 in respect of Atta, Maida, and Besan as on 1st June 2009. It is, therefore, apparent that both registrations are not in the same class of goods. As far as Plaintiff is concerned, its registration is in respect of ghee, milk and dairy products as of 20th November 2003. Mr. Bansal, learned counsel for the Plaintiffs repeatedly stressed that the Plaintiff is at this moment not seeking to restrain the Defendants from dealing in Atta, Maida, Besan etc. but only in the products in respect of which the Plaintiff's mark SHRIDHAR was registered, i.e. ghee, milk and dairy products,

19. Under Section 28(3) of the TM Act, where two or more persons are registered proprietors of trademarks, which are either identical or nearly resemble each other, such concurrent registered proprietors do not have rights against each other but each of them has a right against third party for infringement of their respective trademarks. Mr. Sharma, learned counsel for the Defendants emphasized the opening words of Section 28(1) of the Act which made that provision "subject to other provisions of this Act" including Section 28(3) of the Act. It was submitted that Section 28(3) does not contain any reference to the goods in respect of which registration was granted. In other words it was contended by Mr. Sharma for the defendants that irrespective of the class of goods, as long as the Plaintiff and the Defendant held registrations in respect of an identical or nearly similar mark, neither could seek to restrain the other in an infringement action. However, the Plaintiff could always seek to sue Defendants for passing off under Section 28(2) of the Act which, in this case, the Plaintiff does not seek to do. Reliance was placed upon the decision in P.M. Diesels Private Limited v. Thukral Mechanical Works PTC (Suppl) (2) 863 (Del). Reliance was also placed on the decision in Century Traders v. Roshan Lal Duggar & Co. PTC (Suppl) (1) 720 (Del) (DB) to urge that since the Defendant was a prior user, the Plaintiff was not entitled to any interim relief.

20. Mr. Bansal, learned counsel for the Plaintiff, on the other hand pointed out that since the registration was not in the same class of goods on a collective reading of Section 28(1) and Section 28(3) of the TM Act, the position that emerged was that while the Plaintiff can seek to restrain the Defendants from using the impugned mark in respect of the goods for which the Plaintiff held the registration of its trade mark i.e. Class 29 goods. He pointed out that the Plaintiff's registration is prior to the Defendants admitted use. Mr. Bansal relied upon the decisions of this Court in Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises 2009 (41) PTC 362(Del.) (DB), Swaran Singh v. Usha Industries (India) 1986 (6) PTC 287 (Del) (DB) and urged that the evidence placed on record by the Defendants did not show that they were the prior user in respect of the Class-29 goods for which the Plaintiff held registration. He also referred to the invoices placed on record by the Defendants which, according to him, were of doubtful validity. Reliance was also placed on the report of the LC which showed that the Defendants did not maintain any books of accounts and there was no invoice available in the Defendants' premises. Reliance was also placed on the decision in Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill Tolly Vill 2010 (44) PTC 293 (Del) (DB) to urge that the Defendants had to produce some credible documents in support of their case.

21. The above submissions require the Court to interpret Section 28 of the TM Act which reads as under:

"Section 28 - Rights conferred by registration. (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks 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.

22. Section 28(1) gives the registered proprietor of the trade mark exclusive right to use the trade mark "in relation to the goods and services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided". Consequently, as far as the present case is concerned, the Plaintiff is entitled to seek protection against infringement in respect of Class-29 goods i.e. ghee, milk and dairy products for which it holds registration for the mark SHRIDHAR. As of date, the said registration is valid. Likewise, the Defendants are entitled to exclusive right and use of the trade mark SHREEDHAR in relation to Class-30 goods i.e. Atta, Maida, Besan etc., for which they hold registration.

23. Section 28(3) provides that:

(a) when two or more persons are registered proprietors of trade marks

(b) that are identical with or nearly resemble each other, then (c) the exclusive right to use any of those trademarks shall not be deemed to have been acquired by any one of those persons as against any other of those persons merely by the registration of the trade marks but

(d) each of those persons has otherwise the same rights as against other persons (not being registered user using by way of permitted use)

(e) as he would have if he were the sole registered proprietor.

24. In P.M. Diesels, the Court discussed Section 28 of the Trade and Merchandise Marks Act, 1958 ('TMM Act') which was the provision corresponding to Section 28 of the TM Act. It was held that till such time the registration of the mark is not rectified, the person who is shown as the proprietor of the registered trade mark would continue to have all rights and privileges and the registration would be prima facie evidence of the validity thereof. In the said case, the Plaintiff was a registered proprietor of the mark 'Field Marshal' in respect of diesel oil engines or parts thereof. The Defendants were the registered proprietor of the trade mark 'Field Marshal' in respect of centrifugal pumps. The dispute was regarding the use of the above trademark with respect to centrifugal pumps for which the registration was in favour of the Defendant. The Plaintiff tried to restrain the Defendants from using the said mark in respect of centrifugal pumps on the basis of prior use, and not on the basis of proprietorship arising out of registration of the mark. In that context, it was explained by the Court that by virtue of Section 28(3) of the TMM Act, the exclusive right to use the trade mark 'Field Marshal' shall not be deemed to have been acquired either by the Plaintiff or by the Defendant as against each other but both the Plaintiff as well as the Defendant have otherwise the same rights as against other persons as they would have if they were the sole proprietors. While they would not be entitled to sue each other, because both of them were the registered proprietors of an identical trade mark, though in respect of different types of goods, they would, however, be entitled to take actions against any one if that trade mark is infringed.

25. The said decision in P.M. Diesels is distinguishable on facts since in the present case the Plaintiff is not seeking at this stage to restrain the Defendants from using the mark SHREDHAR in respect of Class 30 goods for which they hold the registration. The Plaintiff is seeking is restrain the Defendants from using the mark SHREDHAR in respect of Class 29 goods for which they do not yet hold the registration and in respect of which class of goods, the Plaintiff holds registration of a mark that nearly resembles the Defendants' mark.

26. The facts of the present case are closer to the facts in Rana Steels v. Ran India Steels Pvt. Ltd., 2008 (102) DRJ 503. The dispute there concerned the use of the Plaintiff's trademark, RANA, registered under Class 6, by the Defendant who had a registered trademark, CS (OS) No. 1627 of 2011 Page 16 of 21 RANA TOR, under Class 19. While allowing the Plaintiff's prayer for confirmation of an earlier ex parte injunction granted against the Defendant, the Court explained the scope Section 28 of the Act, in para 23, as follows:

"...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:

Example 1: Assume that a trade mark "M" has been registered in favor of Mr "X" as well as in favor 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 defense 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 favor of different persons "X" and "Y", respectively. Here, although the same mark "M" is registered in favor 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 CS (OS) No. 1627 of 2011 Page 17 of 21 against Mr "Y" alleging that Mr "Y" was using the said mark "M" in relation to good "A", then, the defense 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".

27. The case on hand is covered on all fours by Example 2 above. Indeed the legislative intent was to extend the protection of the registered mark against infringement in respect of the goods for which the registration was granted. A reading of Section 7 of the TM Act, which provides for classification of goods and services, with Rule 22 of the Trade Marks Rules, 2002 which provides that for the purposes of registration of trademarks, goods and services shall be classified in the manner specified in the Fourth Schedule, shows that registration of trademarks is meant to be for goods or services that have been specified in the Fourth Schedule under different 'Classes'. This explains the rationale behind indicating the particular class of goods for which the registration has been granted.

28. Section 28 (3) of the TM Act cannot be interpreted in a manner that would be contrary to the above scheme of the Act and Rules. In other words Section 28 (3) of the TM Act should be understood as not permitting an infringement action being brought by one registered proprietor against another only where two conditions are satisfied: one, that the two registered marks "are identical with or nearly resemble each other"; and two, they are in respect of the same class of  goods and services. This will be in conformity with the object of Section 28 (1) read with Section 29 of the TM Act which seeks to grant protection to the registered proprietor of a mark from infringement in respect of the goods for which registration is granted.

29. Both in T.T. K. Prestige Ltd. v. Har Parasad Gupta 77 (1999) DLT 357 and Marc Enterprises Pvt. Ltd v. Five Star Electricals (India) (2008) ILR 2 Delhi 771, the marks in question were registered by the Plaintiff and the Defendant in the same class of goods. In both cases, this Court followed PM Diesels Pvt. Ltd. and declined injunction. As noticed earlier, in the present case the Plaintiff is, unlike the Plaintiff in P.M. Diesels, not at this stage seeking to restrain the Defendants from using the mark SHREEDHAR in respect of the goods for which the Defendants hold the registration i.e. Class 30 goods. The Plaintiff is seeking to protect its own trademark SHRIDHAR, registered in respect of Class 29 goods from infringement, by restraining the Defendants from using SHREEDHAR to describe their Class 29 goods. This is permissible on a reading of Section 28 (1) with Section 28 (3) of the TM Act as explained in Rana Steels.

30. The Plaintiff's claim of prior user is based on the fact that it holds registration for the trade mark SHRIDHAR with user date from 20th November 2003 in Class 29 goods (milk and dairy products) whereas on their own showing the Defendants commenced commercially using the mark SHREEDHAR for Class 29 goods only on 27th August 2004. Both parties have claimed having issued advertisements on 27th October 2003. The invoices produced by one party have been challenged by the other. At this stage it is not possible to form a conclusive opinion on who is the prior user. That would have to await evidence of the parties. On the issue of passing off, the Plaintiff would have to lead evidence of sale by the Defendants of their products in Delhi so as to justify the territorial jurisdiction of this Court for the grant of that relief. That issue too does not lend itself to a decision at this stage.

31. As a result of the above discussion, an interim order is passed restraining the Defendants, their agents, servants, successors, assigns and representatives from using, selling, soliciting, exporting, or otherwise dealing in any Class 29 goods, i.e. milk and dairy products including ghee, using the impugned trade mark SHREEDHAR, or any other mark that is identical to or nearly resembles the Plaintiff's trademark SHRIDHAR, during the pendency of the suit. IA No. 6818 of 2013 is dismissed and I.A. No. 10477 of 2011 is disposed of in the above terms.

CS (OS) No. 1627 of 2011

32. List before the Joint Registrar on 3rd December 2013 for admission/denial of the documents. By that date, the parties will file their affidavits by way of admission/denial and produce the originals of the documents relied upon by them respectively.

33. List before the Court for framing of issues on 27th February 2014.

S. MURALIDHAR, J.

SEPTEMBER 4, 2013