Shree Rajmoti Industries Vs Rajmoti Foods Products:07.02.2019:CS (COMM) 335/2018: 2019:DHC:834:Prathiba M Singh,H.J.
Delhi High Court granted permanent injunction in favour of the Plaintiff holding that even filing of a trademark application can amount to infringement and constitute sufficient ground for a quia timet action under the Trade Marks Act, 1999.
The Plaintiff, M/s Shree Rajmoti Industries, claimed long and continuous use of the trademark “RAJMOTI” since 1962 in relation to edible oils and allied products and relied upon several trademark registrations in different classes.
The dispute arose after the Defendant, M/s Rajmoti Foods Products, filed a trademark application for “RAJMOTI BRAND” in Class 30 claiming user since 1 April 1995 for food and cereal products. The Plaintiff contended that adoption of the identical mark and trading style amounted to trademark infringement and passing off.
The Defendant failed to appear before the Court despite substituted service and was proceeded ex parte. The Court examined whether mere filing of a trademark application without proof of actual sales was sufficient to grant injunction. Justice Prathiba M. Singh relied upon earlier Delhi High Court decisions including Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd., 2014 (58) PTC 585 (Del) and KRBL Limited v. Ramesh Bansal & Anr., 2009 (41) PTC 114 (Del), and held that a trademark application reflects intention to use the mark in trade and constitutes a real and imminent threat to the proprietary rights of the prior user.
The Court observed that under Section 18 of the Trade Marks Act, 1999, a trademark application can only be filed by a person claiming proprietorship through use or proposed use and therefore filing of such application itself amounts to use in relation to goods. Holding the Plaintiff to be the prior adopter and prior user of the mark “RAJMOTI”, the Court restrained the Defendant from using the mark “RAJMOTI” either as a trademark or trade name in relation to food products and allied goods. However, damages and other monetary reliefs were declined due to absence of proof of actual sales or damage.
Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Whether mere filing of a trademark application can amount to infringement or passing off?
Introduction:
The judgment delivered by the High Court of Delhi in Shree Rajmoti Industries Vs Rajmoti Foods Products is an important decision in Indian trademark jurisprudence dealing with the question whether mere filing of a trademark application can amount to infringement or passing off. The Court examined the scope of Sections 18 and 29 of the Trade Marks Act, 1999 and clarified that a trademark application itself reflects intention to use the mark in trade and can constitute a sufficient threat to justify a quia timet action and grant of permanent injunction.
The case is significant because the Defendant was not actively participating in the proceedings and there was limited evidence of actual commercial sale of goods. Despite this, the Court protected the long-standing trademark rights of the Plaintiff by recognizing that an application seeking registration of an identical mark was itself enough to establish imminent threat to the proprietary rights of the registered proprietor.
The judgment also reiterates the principle that prior user and prior adopter enjoy superior protection under trademark law. The Court emphasized that where a party has been using a trademark for several decades and has built substantial goodwill and reputation, adoption of an identical mark by another party, even through a trademark application, cannot be permitted.
Factual and Procedural Background:
The Plaintiff, Shree Rajmoti Industries, instituted a commercial suit seeking permanent injunction against infringement of trademark, passing off, delivery up and other ancillary reliefs against the Defendant, Rajmoti Foods Products.
The Plaintiff stated that it had adopted the trademark “RAJMOTI” in the year 1962 and had continuously used the mark as its trademark, trade name and trading style. The mark was registered in several classes including Classes 29, 31, 32, 35 and 42 under the Trade Marks Act, 1999. The Plaintiff was primarily dealing in edible oils and had also secured copyright registrations in the artistic label and style of writing of “RAJMOTI”.
The Plaintiff placed on record its sales figures from 1996 to 2004 showing annual sales exceeding Rs. 200 crores. It was also stated that the products were advertised through the website “www.rajmoti.com”.
The dispute arose when the Plaintiff discovered that the Defendant had filed Trademark Application No. 2322047 in Class 30 for the mark “RAJMOTI BRAND” claiming user since 1 April 1995 in respect of flour, cereals, coffee, tea, sugar, bread, pastry, spices and allied food products.
According to the Plaintiff, use of the expression “RAJMOTI” as a trademark and trading style by the Defendant amounted to infringement of the Plaintiff’s registered trademark and also constituted passing off.
The suit was initially listed before the Delhi High Court on 28 May 2014. Notice was issued in the injunction application and a Local Commissioner was appointed. However, the local commission could not be executed because the premises of the Defendant were found locked. Several attempts were made to serve the Defendant. Eventually substituted service through publication was carried out. On 13 March 2018, the Defendant was proceeded ex parte.
The Plaintiff relied upon earlier decisions of the Delhi High Court to argue that where the Defendant chooses not to appear, formal recording of oral evidence may be dispensed with.
Dispute Before the Court:
The principal issue before the Court was whether mere filing of a trademark application by the Defendant for the mark “RAJMOTI BRAND” constituted sufficient basis to grant permanent injunction for trademark infringement and passing off.
The Plaintiff argued that filing of the trademark application itself demonstrated clear intention to use the mark and therefore constituted “use” within the meaning of the Trade Marks Act, 1999.
The Defendant had not appeared before the Court to contest the proceedings. Therefore, the Court had to determine whether the Plaintiff could succeed solely on the basis of the trademark application and documentary material placed on record.
Another connected question was whether a quia timet action could be maintained where actual commercial sale of infringing products was not conclusively proved.
Reasoning and Analysis of the Court:
The Court returned the finding that the Defendant had applied for registration of a mark identical to the Plaintiff’s mark. The Court noted that the Plaintiff’s mark “RAJMOTI” was registered both as a word mark and label mark and that the dominant and essential feature of the Plaintiff’s labels was the word “RAJMOTI”.
The Court also took note of the fact that the Plaintiff had been vigilant in protecting its trademark rights and had immediately filed objections before the Trademark Registry after becoming aware of the Defendant’s application.
The Court observed that the Defendant’s trademark application not only claimed use of the mark since 1995 but also showed adoption of the trading style “Rajmoti Foods Products”. The Defendant’s application therefore reflected a clear intention to commercially exploit the mark.
The Court relied heavily upon the judgment in Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd., 2014 (58) PTC 585 (Del) . where the Delhi High Court had held that filing of a trademark application itself demonstrates intention to use the mark and that a suit for infringement or passing off can be maintained in anticipation.
The Court also referred to KRBL Limited v. Ramesh Bansal & Anr. concerning quia timet actions, where it was recognized that a trademark application reflects intention to use the mark in trade and may justify preventive relief.
Another important judgment referred to by the Court was Everstone Capital Advisors Pvt Ltd. & Anr. Vs.Akansha Sharma & Ors [CS(Comm)1028/2016 decided on 17th July, 2018] in which it was held that where a Defendant remains ex parte, the formality of recording oral evidence may be dispensed with.
The Court then examined Section 18 of the Trade Marks Act, 1999. It observed that a trademark application can only be filed by a person claiming to be proprietor of the trademark either through actual use or proposed use. Therefore, filing such an application inherently indicates intention to claim proprietary rights and to use the mark in trade.
Court further interpreted Section 2(c) and Section 29 of the Trade Marks Act, 1999. The Court held that filing of a trademark application constitutes “use in relation to goods” and therefore can amount to infringement under Section 29.
The Court observed that the Defendant’s conduct created an imminent and grave threat to the Plaintiff’s rights. Since the Defendant had claimed use since 1995 and adopted the mark as part of its business name, the threat was real and substantial.
The Court emphasized that the Plaintiff was the prior adopter and prior user of the mark for more than five decades. Therefore, the Plaintiff’s statutory and common law rights deserved protection.
Importantly, the Court held that use of the mark “RAJMOTI” either as trademark or trading style violated Sections 29(1), 29(2) and 29(5) of the Trade Marks Act, 1999.
Final Decision of the Court:
The Delhi High Court decreed the suit in favour of the Plaintiff and granted permanent injunction restraining the Defendant from using the mark “RAJMOTI” either as a trademark or trade name in relation to food products or goods allied and cognate to edible oil.All pending applications were disposed of and decree sheet was directed to be prepared.
Point of Law Settled in the Case:
The judgment settled an important principle in trademark law that filing of a trademark application itself may constitute sufficient evidence of intention to use the mark and may amount to “use” under the Trade Marks Act, 1999.
The Court clarified that a trademark proprietor need not wait for actual commercial sale of infringing goods before approaching the Court. A quia timet action can be maintained where there exists imminent threat to trademark rights.
The judgment also reinforces the supremacy of prior user rights and confirms that adoption of an identical mark as part of business name or trading style may independently amount to infringement under Section 29(5) of the Trade Marks Act, 1999.
Case Detail Title: Shree Rajmoti Industries Vs Rajmoti Foods Products
Date of Order: 7 February 2019
Case Number: CS (COMM) 335/2018
Neutral Citation: 2019:DHC:834
Name of Court: High Court of Delhi
Name of Hon’ble Judge: Justice Prathiba M. Singh
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation.
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Headnote
The Delhi High Court in M/S Shree Rajmoti Industries v. M/S Rajmoti Foods Products, 2019:DHC:834, held that mere filing of a trademark application can constitute intention to use the mark and may amount to “use” under the Trade Marks Act, 1999. The Court ruled that a quia timet action is maintainable even in absence of proof of actual sale of infringing goods. Recognizing the Plaintiff as prior adopter and prior user of the mark “RAJMOTI” since 1962, the Court granted permanent injunction restraining the Defendant from using the identical mark as trademark or trade name. The judgment interpreted Sections 18, 29(1), 29(2) and 29(5) of the Trade Marks Act, 1999 and reaffirmed protection of prior user rights in trademark law.
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