$~9
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IN THE
HIGH COURT OF DELHI AT NEW DELHI
Date of
decision: 7th February, 2019
+
CS (COMM) 335/2018 & I.A.10666/2014
M/S SHREE RAJMOTI INDUSTRIES .....
Plaintiff
Through: Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Kumar Giri
and Mr. Vinay Kumar Shukla,
Advocates.(M:9990389539)
versus
M/S
RAJMOTI FOODS PRODUCTS
Through: None.
..... Defendant
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1.
Plaintiff - M/s Shree Rajmoti
Industries has filed the present suit seeking permanent injunction restraining
infringement of trademark, passing off, delivery up, etc.
2.
Plaintiff avers that it adopted
the mark „RAJMOTI‟ in the year 1962
as a trademark, trade name and a prominent part of its trading style. The mark
„RAJMOTI‟
is registered both as a word mark and as a label mark in various classes
including classes 29, 31, 32, 35 & 42. The Plaintiff is primarily using the
mark „RAJMOTI‟ in respect of edible
oil. The products of the Plaintiff are also advertised and publicised through
the website www.rajmoti.com. The Plaintiff also claims to have copyright registrations in „RAJMOTI‟ label and artistic style of
writing. Along with the plaint, the Plaintiff has placed on record the sales
figures from 1996 till 2004, which
CS (COMM)
335/2018 Page 1
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show that
the annual sales were more than Rs.200 crores.
3.
The Plaintiff came to know of a
trademark application filed by the Defendant – M/s Rajmoti Foods Products
seeking registration of the mark
„RAJMOTI BRAND‟. The
application of the Defendant bearing no.2322047 in class 30 is based on claim
of user since 1st April, 1995 for the following
products.
“flour and
preparations made from cereals, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, bread,
pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces, (condiments); spices; ice.”
4.
The case of the Plaintiff is
that, use of the word „RAJMOTI‟ both
as a trademark and in the logo as also part of the trading style of Defendant,
constitutes infringement and passing off. The suit is, accordingly, filed
seeking the following reliefs.
“(a) For a
decree of permanent injunction restraining the Defendant by itself as also through its individual
proprietors,
partners, directors, agents, representatives, distributors, assigns,
stockiest(s) and all others acting for and on behalf of the Defendant from
manufacturing, using, selling, soliciting, exporting, displaying, advertising or
by any other mode or manner dealing with or carrying on their impugned goods
and business of flour, flour and preparations made from cereals, coffee, tea,
cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard;
vinegar, sauces, (condiments); spices; ice and allied/cognate goods or any
specification of goods and business under the impugned Trademark/Label bearing
the word/mark
CS (COMM)
335/2018 Page 2
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RAJMOTI
BRAND or any other Trademark/Label identical with or deceptively similar to the
Plaintiffs aforesaid Trademark/Trade Name consisting of the word RAJMOTI or
from doing any other acts amounting to or likely to-
(i).
Infringing the registered Trademarks of the Plaintiff under No. 289191 in class
29, 791444 in class 29, 1318742 in class 29, 1345896 in class 31, 1380312 in
class 32, 1380308 in class 35 and 1380304 in class 42.
(ii).
Passing off and violate the Plaintiff's rights in Plaintiffs aforesaid
Trademark/Label RAJMOTI.
(iii).
Violating the Plaintiff's rights in Plaintiffs aforesaid Trade name consisting
of the word RAJMOTI.
(iv).
Violating the Plaintiff's rights in Plaintiffs aforesaid domain name
www.rajmoti.com consisting of the word RAJMOTI.
(b).
Restraining the Defendant from disposing off or dealing with its assets
including its shops and premises at M/s Rajmoti Foods Products, Survey
No.167/1, Plot No.1, Opp.-Gate of Shantidham Society, Veraval (Shapar), Tai:
Kotda Sangani, Dist. Rajkot, Gujarat, Maharashtra and its stocks-in-trade or
any other assets as may be brought to the notice of this Hon'ble Court during
the course of the proceedings and on the defendants disclosure thereof and
which the defendants are called upon to disclose and/or on its ascertainment by
the Plaintiff as the Plaintiff is not aware of the same as per Section 135 (2)
(c) of the Trademarks Act, 1999 as it could adversely effect the Plaintiff's
ability to recover the costs and pecuniary relief thereon.
(c)
For an order for delivery up of all the impugned finished and unfinished
materials bearing the impugned and violative Trademark/Trade Name or any other
deceptively similar Trademark/label including its blocks, labels, display
boards, sign boards, trade
CS (COMM)
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literatures and goods etc. to the
Plaintiff for the purposes of destruction and erasure.
(e)
For an
order for cost of proceedings,”
5.
The suit was first listed on 28th May, 2014 when this Court had
issued notice in the interim injunction application and then appointed a Local
Commissioner. The local commission was, however, not got executed by the
Plaintiff. The summons and notices were also received back on the ground that
the premises were found locked. Since the Defendant could not be served, the
Plaintiff sought substituted service in the matter and finally publication was
carried out by the Plaintiff. On 13th March, 2018, the Defendant was proceeded ex-parte. Affidavit by way ex-parte
evidence was directed to be filed. Ld. counsel for Plaintiff relies on various
judgments of this Court to submit that in the cases where Defendants do not put
in appearance, there is no requirement of filing of evidence.
6.
Ld. counsel for the Plaintiff,
prays for a permanent injunction on the ground that filing of the trademark
application itself is sufficient evidence of an intention to use by the
Defendant. Ld. counsel for the Plaintiff submits that filing of the trademark
application with a claim of user itself shows that Defendant intends to use the
mark and the same constitutes use as per the Trade Mark Act, 1999 (hereinafter „Act‟). He relies on the observations in the order passed by this
Court in CS (COMM) 365/2016 to the following effect.
“6. It is the
settled position that when the Defendant is ex-parte, the formality of filing of evidence can be dispensed with as
laid down by this Court in Everstone Capital Advisors Pvt. Ltd. & Anr. v
Akansha Sharma & Ors., CS(COMM) 1028/2016, (judgment dated 17th
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335/2018 Page 4
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July,
2018). Thereafter, it was recorded by the Joint Registrar that the learned
counsel for the Plaintiff wishes to withdraw the suit. However, on the last
date, learned counsel for the Plaintiff had sought time to take instructions
from the Plaintiff. Learned counsel for the Plaintiff, upon instructions, now
submits that since the Defendant had adopted the mark illegally and had used
the mark for some time, the interim injunction should be made absolute and a
permanent injunction ought to be granted.
7.
The plaint and the documents filed clearly reveal that the word „PARAS‟
has acquired distinctiveness as being associated with the products and business
of the
Plaintiff.
The Plaintiff‟s mark being well known in the area of milk and milk products,
use of the same in respect of edible oil, fats, milk and other products used in
the kitchen, results in violation of the Plaintiff‟s rights and the same would
constitute passing off. Edible oil fats, milk and dairy products, vanaspati
edible oil are identical as also allied and cognate to milk and milk products.
The Defendant had also claimed user of the mark since 2000 as per the trademark
application, which was filed, though, the same has now been abandoned pursuant
to the opposition proceedings filed by the Plaintiff. The report of the Local
Commissioner also reveals that the Defendant was in fact using the mark until
six months prior to the execution of the commission.”
7.
Plaintiff also relies upon the following other
judgments.
1)
Analco (India) Pvt. Ltd. v.
Navodya Exim Pvt Ltd., 2014 (58) PTC 585 (Del)
2)
KRBL Limited v. Ramesh Bansal
& Anr., 2009 (41) PTC 114 (Del)
CS (COMM)
335/2018 Page 5
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8.
This Court has heard ld. counsel for the Plaintiff.
The Plaintiff‟s mark
RAJMOTI and the mark applied for by the Defendant are extracted
hereinbelow:
Plaintiff's mark
Defendant's mark
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335/2018 Page 6
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Defendant's trademark application
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9.
There is no doubt that the Defendant has applied
for registration of the
mark „RAJMOTI‟,
which is identical to that of the Plaintiff. A perusal of the Defendant‟s
trademark application shows that the Defendant is not only claiming user of the
mark „RAJMOTI‟ from 1st April, 1995 but is also using
the trading style “Rajmoti Foods Products”.
The products, for which the Defendant has made the application, are in class
30. The trademark „RAJMOTI‟ is
registered in favour of the Plaintiff, both as a label mark and a word mark.
The essential and prominent feature of the various labels used by the Plaintiff
is the word „RAJMOTI‟. The Plaintiff
has been diligent in protecting its rights, inasmuch, as soon as it acquired
the knowledge of the Defendant‟s mark, it immediately filed objections to the
same before the Trademark Registry. Further, in the present suit, steps have
been taken for
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serving the Defendant repeatedly. The service
report, which is on record, shows that the Bailiff, who was appointed, has
given a report that the factory of the Defendant was closed. The Bailiff, in
fact, visited the premises of the Defendant on 25th July, 2014 and 1st August, 2014.
10.
The Bailiff had visited the
address of Defendant as given in the trademark application i.e. at Rajkot,
Gujarat. Clearly, therefore, after filing of the trademark application, at some
point the Defendant appears to have either moved its premises or stopped its
business altogether.
11.
The publication having been
affected and the Defendant having not been served, the only question that
remains is as to whether the mere filing of a trademark application entitles
the Plaintiff for a permanent injunction. This Court has held in Everstone
Capital Advisors Pvt Ltd. & Anr. v.
Akansha Sharma & Ors. [CS(Comm)1028/2016
decided on 17th July, 2018] that the requirement of leading
evidence can be dispensed with if the Defendant chooses not to appear and
contest the case. Thus, the Defendant having been proceeded ex-parte and the Plaintiff having filed
its evidence by way of affidavit, oral testimony can be dispensed with.
12.
The registrations of the
Plaintiff for the mark „RAJMOTI‟ are
not in question. The same are part of public record and copies of the
registration certificates have been placed on record. The earliest registration
of the Plaintiff dates back to 1973. Several orders of this Court have been
placed on record wherein the Plaintiff‟s trade mark „RAJMOTI‟ has been protected. The same include orders dated 29th September 2004, 14th July 2005, 31st
13.
The only question that remains is whether filing of
the trade mark
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335/2018 Page 9
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application,
by itself, is sufficient to maintain a suit for infringement of trade
mark. In Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd., 2014 (58)
PTC 585
(Del), a ld. Single Judge of this Court has held as
under:
“12. It is
also settled proposition of law that even filing of application for registration of the trade mark, shows the intention
on the part of the person to use the same in due course. The suit for passing
of an infringement is maintainable and in anticipation.”
14.
A similar view was also taken in
the context of quia timet actions in
the judgment in KRBL Limited v. Ramesh Bansal & Anr., 2009 (41) PTC
114
(Del). The Court observed that a trademark application reflects the intention
of the Defendant to use the mark in the course of trade.
15.
Under the Trade Marks Act, 1999,
a trademark application is filed by any applicant, who wishes to register the
mark. The filing of the application means that the person concerned is either
already using the mark or intending to use the mark in the course of trade. The
application under Section 18 of the Act can be filed only by a person, who
claims to be the proprietor of the trademark, either by user or proposed user.
Thus, for every trademark application, the person filing, has to do so with the
intention of claiming proprietary rights in the mark.
16.
In the present case, the
trademark application has been filed by the Defendant clearly making a
representation that the same is in use from 1995. The question as to whether
the claim of user is genuine or not is not to be gone into in this case,
inasmuch as, the suit is based only on the basis of the trademark application.
The date of application is 25th April, 2012. Thus, on the date when the application is made, the
Defendant claims a user of 17
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335/2018 Page 10
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years in the mark „RAJMOTI‟. There is no reason why this Court should not accept the
representation made by the Defendant on its own, in its trademark application.
The trademark application being based on use of a mark under Section 2(c) of
the Act, use of a mark can be “upon goods
or in any physical or in any other
relation whatsoever, to such goods.” Filing of a trademark application constitutes “use in relation to goods.” Thus, the
same would constitute infringement under Section 29 of the Act. Moreover, the
Defendant has not just adopted the word „RAJMOTI‟
as a trademark, but has also sought use of the same in the form of its trading
style „Rajmoti Foods Products‟.
17.
The filing of the application is
clearly an imminent and a grave threat that if the mark is not already in use,
it is likely to be used. The Defendant having chosen not to appear in the
present case, and having expressed a clear intention to use the mark, by filing
an application, the Court has to conclude that the same is adoption and use of
the mark „RAJMOTI‟. The Plaintiff‟s trademark
„RAJMOTI‟ has been in use since at
least 5 decades. The Plaintiff is the prior user and the prior adopter of the
mark. Use of a mark either upon goods or as a trading style would constitute
violation of the
Plaintiff‟s
rights under Section 29(1), 29(2) and 29 (5) of the Act.
18.
Accordingly, the Plaintiff is
entitled to a decree of permanent injunction. The suit is decreed and a decree
of permanent injunction is granted in favour of the Plaintiff against the
Defendant from using the mark
„RAJMOTI‟
either as trademark or as a trade name in relation to food products or any
other goods which are cognate and allied to edible oil. Since there is no
actual damage or sale of products which has been shown
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on record, the Plaintiff is not entitled to the remaining reliefs.
Decree sheet be drawn up. All pending I.A.s are disposed of.
PRATHIBA M. SINGH, J.
FEBRUARY 07, 2019/dk
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