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
